To: | Ralph's Famous Italian Ices Franchise Co ETC. (nptm@nixonpeabody.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86396856 - TWISTER - 030466-37 |
Sent: | 12/29/2014 8:41:13 PM |
Sent As: | ECOM114@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86396856
MARK: TWISTER
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Ralph's Famous Italian Ices Franchise Co ETC.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 12/29/2014
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
SUMMARY OF ISSUES that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
COMPARISON OF THE MARKS
U.S. Registration No. 3469462
The applied-for mark TWISTER and TWISTER are identical in sound, appearance and meaning in the context of the listed confectionary goods. Therefore the marks create similar commercial impressions.
U.S. Registration No. 4558891
The applied-for mark TWISTER and the registered mark TWISTERS make similar commercial impressions because the registered mark is merely the plural form of the applied-for mark. An applied-for mark that is the singular form of a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the marks are confusingly similar. Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark); In re Pix of Am., Inc., 225 USPQ 691, 692 (TTAB 1985) (noting that the pluralization of NEWPORT is “almost totally insignificant” in terms of likelihood of confusion among purchasers); In re Sarjanian, 136 USPQ 307, 308 (TTAB 1962) (finding no material difference between the singular and plural forms of RED DEVIL)).
The addition of the “S” in this case does not create a distinct sound, appearance, or meaning. Therefore the marks make similar commercial impressions.
U.S. Registration No. 3164939
When the marks TWISTER and TWISTERS FROZEN CUSTARD are compared they make similar commercial impressions because they share the common wording “TWISTER”. The addition of the wording “FROZEN CUSTARD” will not differentiate the marks because those words are generic for both registrant’s and applicant’s services, which includes frozen confections. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d at 1060, 224 USPQ at 752; TMEP §1207.01(b)(viii), (c)(ii). In the present case the words “FROZEN CUSTARD” describe the foods sold out of registrant’s restaurants. The words also are a generic identifier for types of frozen confections. Because the words “FROZEN CUSTARD” are a generic identifier for applicant’s and registrant’s goods, consumers are unlikely to ascribe any source identifying meaning to the words.
In addition the design elements in the registration will not differentiate the marks because the applied-for mark is in standard character format. A mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in standard character will not avoid likelihood of confusion with a mark featuring design elements. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Therefore, because the marks share common wording and because no elements in the marks will differentiate them in the minds of consumers the marks make similar commercial impressions.
COMPARISON OF THE GOODS/SERVICES
Applicant’s mark is for the goods and services “Frozen Confections” and “Restaurant services”.
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
U.S. Registration No. 3469462
The goods in the registration are listed as “Confectionery, namely, wafer roll and cream-filled wafer roll”. Applicant’s more broadly listed goods “frozen confectionary”, includes frozen wafer rolls. See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)). Neither the application nor the registration are restricted to channels of trade or advertising. Therefore, because applicant’s goods encompass registrant’s it is assumed that they travel in the same or similar channels of trade and advertising and target similar consumers.
In conclusion, because the marks TWISTER and TWISTER are identical and because the goods in the application encompass the goods in the registration the application is refused registration under Section 2(d) for a likelihood of confusion with the mark in Registration No. 3469462 for the goods “frozen confections”.
U.S. Registration No. 4558891
The goods in the 4558891 registration are listed as “Unpackaged frozen yogurt-based beverages, to be sold only in applicant's stores”. As above, these goods are encompassed by the broad wording “frozen confections” in the application. In addition, the goods in the registration are closely related to restaurant services such as those listed in the application because registrant sells frozen yogurt beverages through a retail environment which is in effect a restaurant. Thus the goods and services in the application are directly related to the goods listed in the registration. Although the registered goods are restricted to a specific channel of trade, applicant’s goods and services are not restricted to any channels. Therefore because the goods and services overlap it is assumed that the channels are similar. Regardless, the goods and services target similar consumers, namely those seeking frozen confections.
In conclusion, because the marks TWISTER and TWISTER are identical and because the goods and services in the application encompass or are directly related to the goods in the registration the application is refused registration under Section 2(d) for a likelihood of confusion with the mark in Registration No. 4558891.
U.S. Registration No. 3164939
The registered services are for “Restaurant services”. In this case the application and the registration share the identical services “restaurant services”. In addition the goods listed in the application, “frozen confections”, are commonly sold through retail environments under a common mark. Please see the attached evidence from Ben and Jerry’s, Baskin Robbins and Pink Berry showing restaurant services and frozen confections advertised and distributed thorough the same channels and under the same mark.
In conclusion, because the applied-for mark and the registered mark make similar commercial impressions and because the goods/services are identical in part and otherwise closely related there is a likelihood of confusion between the two marks and the applied-for mark must be refused registration under Trademark Act Section 2(d).
RESPONSE GUIDELINES
If applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end, the trademark will fail to register, and the application fee will not be refunded. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a), 2.209(a); TMEP §§405.04, 718.01, 718.02. Where the application has been abandoned for failure to respond to an Office action, applicant’s only option would be to file a timely petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. There is a $100 fee for such petitions. See 37 C.F.R. §§2.6, 2.66(b)(1).
/David A. Brookshire/
Examining Attorney
Law Office 114
(571) 272-7991
David.Brookshire@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.