Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

 

 

EXAMINING ATTORNEY’S APPEAL BRIEF

 

 

 

The applicant has appealed the trademark examining attorney’s refusal to register the trademark YUMMIES for “Latin American style food products, namely, processed flavored plantains slices, processed flavored yucca chips, Latin American style food products, namely, fired flavored peanuts and baked flavored peanuts” in Class 29 based on likelihood of confusion with registered marks under 2(d) of the Trademark Act, 15 U.S.C. §1052(d).

 

It is respectfully requested that this refusal be affirmed.

 

Statement of Facts

 

On 12/29/15, ADVANCED TOTAL MARKETING SYSTEMS, INC. applied for a federal trademark registration for the wording YUMMIES with a face and crown design. Applicant identified its trademark for “Snacks and/or snacks using fried corn tortilla with different flavors, fried plantain slices with different flavors, fried yucca chips with different flavors, fried pork with salt and chili, extruded corn with different flavors, popcorn of different flavors, potato flakes of different flavors” in Class 29.

 

On 1/28/16, the examining attorney refused registration of applicant’s trademark due to a likelihood of confusion with U.S. Registration Serial No. 1458548, a potential refusal based on the prior-filed U.S. Application Serial No. 86791053 and required that the applicant amend the description, color claim, and identification of goods.

 

On 7/27/16, the applicant filed a timely response that satisfied the description and color claim requirements.

 

On 8/17/16, the trademark examining attorney refused registration of applicant’s trademark due to a likelihood of confusion with U.S. Registration Serial Nos. 1458548, 4025559, & 4957659 based on the applicant’s amended identification and the registration of the prior-filed application.

 

On 1/25/17, the applicant filed a timely response with arguments in favor of registration and improperly amended the identification of goods.

 

On 2/14/17, the examining attorney continued the Section 2(d) refusal and again required that the applicant amend the identification of goods.

 

On 4/4/17, the applicant filed a timely response that satisfied the identification of goods requirement.

 

On 4/26/17, the examining attorney issued a final partial refusal due to a likelihood of confusion with U.S. Registration Serial Nos. 1458548, 4025559, & 4957659.

 

On 5/19/17, the applicant filed a Notice of Appeal.

 

On 7/31/17, the applicant filed a timely appeal brief.

 

Issue

 

The sole issue on appeal is whether under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), there is a likelihood of confusion between the applicant’s mark consisting of the wording YUMMIES with a face and crown design for “Latin American style food products, namely, processed flavored plantains slices, processed flavored yucca chips, Latin American style food products, namely, fired flavored peanuts and baked flavored peanuts” in Class 29 and U.S. Registration No. 1458548 for the wording YUMMIES with a heart design for “roasted nuts and dried fruits for consumption on and off the premises” in Class 29, U.S. Registration No. 4025559 for the wording YUMMY’S CHOICE with an oval and ribbon design for “vegetable-based snack foods” in Class 29, and U.S. Registration No. 4957659 for the standard character mark SUPER YUMMYS for “vegetable-based snack foods; fruit-based snack foods; vegetable chips; fruit chips” in Class 29.

 

Arguments

 

APPLICANT’S MARK IS CONFUSINGLY SIMILAR TO REGISTRANTS’ MARKS AND THE GOODS ARE CLOSELY RELATED SUCH THAT A LIKELIHOOD OF CONFUSION, MISTAKE, OR DECEPTION EXISTS UNDER SECTION 2(D) OF THE TRADEMARK ACT

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  A determination of likelihood of confusion under Section 2(d) is made on a case-by-case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

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.

 

THE MARKS ARE CONFUSINGLY SIMILAR

 

The application is for the stylized word YUMMIES with a face and crown design.

 

Reg. No. 1458548 is for the word YUMMIES with a heart design.

 

Reg. No. 4957659 is for the standard character mark SUPER YUMMYS.

 

Reg. No. 4025559 is for the stylized wording YUMMY’S CHOICE with a ribbon and oval design.

 

YUMMIES, YUMMYS, and YUMMY’S are all similar in appearance, sound, meaning, and commercial impression.

 

The wording YUMMIES in the applied-for mark and Reg. No. 1458548 are also identical in spelling.

 

Although composite marks containing both words and a design must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

Reg. No. 1458548 is able to coexist with the other cited registrations because the goods are different.

 

Reg. Nos. 4025559 & 4957659 are able to coexist with each other because they are differentiated by additional wording.

 

Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registered marks, and there is no other wording to distinguish it from the registered marks. The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). 

 

Therefore, the marks are confusingly similar.

 

Applicant argues that the applied-for mark is part of a family of marks and that the purchasing public’s familiarity with these marks obviates any likelihood of confusion.  However, the Trademark Trial and Appeal Board has found that a family of marks argument is “not available to an applicant seeking to overcome a [likelihood of confusion] refusal.”  In re Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009).  Specifically, an applicant’s ownership of other similar marks has little relevance in this context because the focus of a likelihood of confusion analysis in an ex parte case is on the mark applicant seeks to register, rather than other marks applicant has used or registered.  In re Cynosure, Inc., 90 USPQ2d at 1645-46; In re Ald, Inc., 148 USPQ 520, 521 (TTAB 1965); TMEP §1207.01(d)(xi). 

 

In addition, the applicant’s arguments regarding the descriptiveness of the word YUMMY is not supported by evidence and is not relevant because the wording in the applied-for mark and cited registrations are not simply YUMMY but variations like YUMMIES, YUMMYS, and YUMMY’S.

 

Lastly, the applicant has not provided evidence of third-party registrations to support their dilution arguments and may not do so at this stage. The record in an application should be complete prior to the filing of an appeal.  37 C.F.R. §2.142(d); TBMP §§1203.02(e), 1207.01; TMEP §710.01(c).

 

THE GOODS ARE RELATED

 

The application includes “Latin American style food products, namely, processed flavored plantains slices, processed flavored yucca chips, Latin American style food products, namely, fired flavored peanuts and baked flavored peanuts” in Class 29.

 

Reg. No. 1458548 includes “roasted nuts and dried fruits for consumption on and off the premises” in Class 29.

 

Reg. No. 4025559 includes “vegetable-based snack foods” in Class 29.

 

Reg. No. 4957659 includes “vegetable-based snack foods; fruit-based snack foods; vegetable chips; fruit chips” in Class 29.

 

The broad wording in the cited registrations include, encompass, and/or overlap with the goods in the application.

 

With respect to applicant’s and registrant’s goods and/or services, the question of likelihood of confusion is determined based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Absent restrictions in an application and/or registration, the identified goods and/or services are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described.  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).   

 

In this case, the identification set forth in the application and registration(s) has no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, it is presumed that these goods and/or services travel in all normal channels of trade, and are available to the same class of purchasers.  Further, the registrations use broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in applicant’s more narrow identification.

 

Therefore, the applicant’s “Latin American style food products, namely, processed flavored plantains slices, processed flavored yucca chips, Latin American style food products, namely, fired flavored peanuts and baked flavored peanuts” in Class 29 are related to the registrant’s goods.

 

Conclusion

 

The examining attorney, having established that the respective marks are similar and the respective goods and services are closely related, respectfully submits that the applicant’s mark so resembles the registrants’ marks that it is likely, when applied to the applicant’s goods, to cause confusion, or to cause mistake, or to deceive. Accordingly, the Trademark Attorney respectfully submits that registration of applicant’s mark for “Latin American style food products, namely, processed flavored plantains slices, processed flavored yucca chips, Latin American style food products, namely, fired flavored peanuts and baked flavored peanuts” in Class 29 is properly refused under Trademark Act Section 2(d).

 

 

                                                                        Respectfully submitted,

 

 

/Samuel R. Paquin/

Examining Attorney

Law Office 101

(571) 272-2514

samuel.paquin@uspto.gov     

 

 

Ronald R. Sussman

Managing Attorney

Law Office 101

 

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO EXAMINING ATTORNEY’S APPEAL BRIEF

HAS ISSUED ON 9/22/2017 FOR U.S. APPLICATION SERIAL NO. 86860062

 

Please follow the instructions below:

 

(1)  TO READ THE APPEAL BRIEF:  Click on this link or go to http://tsdr.gov.uspto.report/, enter the U.S. application serial number, and click on “Documents.”

 

The Examining Attorney’s Appeal Brief may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  FILING A REPLY BRIEF:  You may file a reply brief within twenty (20) days of 9/22/2017, the date from which the Examining Attorney’s Appeal Brief issued. 

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail a reply brief because this mailbox is not monitored.  Instead, the Trademark Trial and Appeal Board requires that you file a reply brief online using the Electronic System for Trademark Trials and Appeals (ESTTA) located at http://estta.uspto.gov.  A reply brief transmitted through ESTTA must be received before midnight Eastern Time of the last day of the reply period.

 

(3)  QUESTIONS:  For technical assistance in accessing or viewing the appeal brief in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.