To: | Francis Busuttil and Sons Limited (docket@lawabel.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86829315 - TIARA - 877823 |
Sent: | 1/23/2016 2:45:31 PM |
Sent As: | ECOM106@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 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86829315
MARK: TIARA
|
|
CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
|
APPLICANT: Francis Busuttil and Sons Limited
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
|
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: 1/23/2016
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 0752585; 2825296; 2825297and 3843484. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
Applicant has applied to register the following mark:
TIARA for “Preserved, dried and cooked fruits and vegetables; pulses; dried pulses; canned pulses; salt; mustard; vinegar; sauces; barbecue sauces; tomato sauce; hot sauce; mayonnaise; salad sauces; ketchup; sweet and sour sauces; brown sauces; spices; salad dressings; salad dressings containing cream; Mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups; syrup for making beverages; syrup for making lemonade; instant flavoured drinks and soft drinks; and other preparations in liquid or powder form for making non-alcoholic fruit, vegetable and cola beverages.”
The registrants own the following marks:
LA TIARA and design for “Spices, Cooked Taco Shells.”
LA TIARA for “taco shells, picante sauce and spices.”
LA TIARA for “refried beans.”
TIARA for “wines”
With respect to the first step in the likelihood of confusion analysis, the marks are all comprised entirely, or in significant part, of the term TIARA. Therefore, the marks are confusingly similar.
With respect to the second step in the likelihood of confusion analysis, the goods of the applicant (e.g., spices and sauces) are either identical to or are encompassed within the goods identified in the registrations. With respect to the registrant’s wines, the applicant’s beverage goods are related thereto, as evidenced by the attached third party registrations.
The respective goods 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).
Applicant may adopt the following identification, if accurate:
Culinary colors, namely, food coloring, in International Class 2
Preserved, dried and cooked fruits and vegetables; processed pulses; dried pulses; canned pulses; jellies; jams; eggs; milk; skimmed milk; dried milk; cream; cream products, namely, {identify products by common commercial name, e.g., sour cream, cream fraiche, ice cream shakes, etc.}; whipped cream for use on cakes and or fruit; edible oils and fats, in International Class 29
Coffee; tea; iced tea and tea-based beverages; cocoa and cocoa powder; cakes; cake powder, namely, cake mixes; sugar; tapioca; sago; artificial coffee; flour and preparations made from cereals and corn namely, {identify preparations by common commercial name}; corn flour; custards; custard powder and custard mixes; fruit jelly candy; sugar and mixes for making jelly candies; mixes for making dessert pudding; dessert puddings in powder form; flour for making dumplings; puddings; traditional dessert pudding with rose flavour base; crème caramel; glucose for culinary purposes, namely, preparations composed of glucose for use as substitute for cream; baking powder; ices; honey; treacle; yeast; salt; mustard; vinegar; sauces; barbeque sauces; tomato sauce; hot sauce; mayonnaise; salad sauces; ketchup; sweet and sour sauces; brown sauce; spices; salad dressings; salad dressings containing cream; sweetened vanilla extract; coffee essences for culinary use; Syrups for making tea; topping syrups, in International Class 30
Mineral and aerated waters and other non-alcoholic drinks, namely, {specify drinks, e.g., beer, cider, cocktails, fruit
juice beverages, etc.}; fruit drinks; fruit juices; syrups for making beverages; syrups for making lemonade; instant flavoured drinks, namely, {specify drinks by common commercial name}; soft drinks; and other preparations in liquid or powder form for making non-alcoholic fruit, vegetable and
cola beverages; Culinary essences for making non-alcoholic beverages, in International Class 32
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual at http://tess2.gov.uspto.report/netahtml/tidm.html. See TMEP §1402.04.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp). The application identifies goods and/or services that are classified in at least 4 classes; however, applicant submitted a fee(s) sufficient for only 3 classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
PRIOR-FILED APPLICATION = Advisory
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 mark in the referenced application. 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.
/David Elton/
Examining Attorney
Law Office 106
Phone: (571) 272- 9317
david.elton@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.