| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87503213 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87503213/mark.png |
| LITERAL ELEMENT | INFERNO |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
The Examiner has repeated a refusal to register Inferno for use in connection with pizza due to a perceived likelihood of confusion with US Registration 4661403 (‘403 Registration) for the mark Inferno for use in connection with a variety of foods which includes pasta. Procedural Background The Examiner initially refused to register the applied-for mark for use in connection with pizza in a First Office Action dated September 21, 2017 due to a perceived likelihood of confusion with the ‘403 Registration for the mark Inferno because the description of goods in the ‘403 Registration included pizza and pizza products. At Applicant’s request, the owner of the ‘403 Registration voluntarily amended the ‘403 Registration to remove all references to “pizza and pizza products” from the description of goods in the registration. The voluntary amendment was entered on February 6, 2018. Applicant filed a response to the First Office Action on February 21, 2018, advising that pizza and pizza products had been removed from the description of goods in the ‘403 Registration, and requesting withdrawal of the refusal to register. The Examiner responded by refusing to register Inferno for use in connection with pizza in a Second Office Action dated February 23, 2018 based upon a perceived likelihood of confusion with the ‘403 Registration because the description of goods in the ‘403 Registration included references to pasta. The Examiner subsequently mailed a clarifying Office Action on March 12, 2018, referenced therein as both supplemental to and superseding the February 23, 2018 Second Office Action, which repeated the refusal to register set forth in the Second Office Action. At Applicant’s request, the owner of the ‘403 Registration again voluntarily amended the ‘403 Registration, this time to remove “pasta, including ready-to-serve and/or frozen” from the description of goods. This second voluntary amendment was entered on June 7, 2018. Applicant discovered, upon review of the second amended ‘403 Registration, that the second voluntary amendment to the ‘403 Registration was incomplete. The ‘403 Registration still contained a lone reference to “pasta” in the description of goods. Due to time constraints for entering a third voluntary amendment, Applicant instituted an Ex parte Appeal from the Second Office Action on August 30, 2018, and subsequently filed both (i) an Appeal Brief in the Ex parte Appeal, and (ii) a Petition for Cancellation of the ‘403 Registration (Cancellation No. 92069857) as to “pasta”. The Ex parte Appeal was promptly suspended pending the outcome of the ‘857 Cancellation Proceeding. After commencement of the ‘857 Cancellation Proceeding, the owner of the ‘403 Registration agreed to amended the ‘403 Registration a third time, this time to remove “pasta” from the description of goods. This third voluntary amendment was accepted and approved by the TTAB on January 30, 2019 in the ‘857 Cancellation Proceeding. On May 13, 2019, upon being advised by Applicant that the ‘857 Cancellation Proceeding had been concluded, the Examiner mailed a Third Office Action lifting the suspension, resuming examination, and again refusing registration with the lone statement “The arguments and evidence attached to the previous final office action are incorporated by reference”. The arguments and evidence presented in the previous final office action (i.e., the March 12, 2018 Second Office Action as supplemented on February 23, 2018) were based upon an alleged relationship between “pizza” in Applicant’s application and “pasta” in the ‘403 Registration. The ‘403 Registration, however, no longer includes “pasta”. Hence, the arguments and evidence in the previous final office action are no longer germane. Argument Applicant submits that the arguments presented in the Appeal Brief filed on October 26, 2018 in the Ex parte Appeal from the Second Office Action are fully responsive to the current refusal, and reiterates those arguments here. The '403 Registration has thrice been voluntarily amended, a first time on February 6, 2018 to delete “pizzas and pizza products in the nature of pizza, cheese sticks, pizza dough, pizza sauce, kits comprised of ingredients for preparing pizza” from the description of goods, a second time on June 7, 2018 to delete “pasta, including ready-to-serve and/or frozen” from the description of goods, and a third time on January 30, 2019 to delete “pasta” from the description of goods. Applicant respectfully submits that the applied-for mark is not confusingly similar to the mark in the '403 Registration as the goods are distinct. See, Hi-Country Foods Corp. v. Hi Country Beef Jerky, 4 USPQ2d 1169, 1171–72 (TTAB 1987) (No 'per se' rule that all food products are related goods by nature or by virtue of their capability of being sold in the same food markets. Virtually identical trademarks can be registered for different foods sold in the same food markets.). The application seeks registration of the applied-for mark in connection with pizza. None of the food products now listed in the ‘403 Registration are related to pizza. Applicant respectfully submits that the mark is registrable upon the Principal Register and the Examiner’s refusal to register should be reversed. |
|
| ATTORNEY SECTION (current) | |
| NAME | Michael Sherrill |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | SHERRILL LAW OFFICES PLLC |
| STREET | 4756 BANNING AVESUITE 212 |
| CITY | WHITE BEAR LAKE |
| STATE | Minnesota |
| POSTAL CODE | 55110 |
| COUNTRY | US |
| PHONE | 651.426.2400 |
| FAX | 651.426.2322 |
| docketing@sherrilllaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | PIZZA004USTM |
| ATTORNEY SECTION (proposed) | |
| NAME | Michael Sherrill |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | SHERRILL LAW OFFICES PLLC |
| INTERNAL ADDRESS | SUITE 212 |
| STREET | 4756 BANNING AVE |
| CITY | WHITE BEAR LAKE |
| STATE | Minnesota |
| POSTAL CODE | 55110 |
| COUNTRY | United States |
| PHONE | 651.426.2400 |
| FAX | 651.426.2322 |
| Docketing@SherrillLaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | PIZZA004USTM |
| CORRESPONDENCE SECTION (current) | |
| NAME | MICHAEL SHERRILL |
| FIRM NAME | SHERRILL LAW OFFICES PLLC |
| STREET | 4756 BANNING AVESUITE 212 |
| CITY | WHITE BEAR LAKE |
| STATE | Minnesota |
| POSTAL CODE | 55110 |
| COUNTRY | US |
| PHONE | 651.426.2400 |
| FAX | 651.426.2322 |
| docketing@sherrilllaw.com; michaels@sherrilllaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | PIZZA004USTM |
| CORRESPONDENCE SECTION (proposed) | |
| NAME | Michael Sherrill |
| FIRM NAME | SHERRILL LAW OFFICES PLLC |
| INTERNAL ADDRESS | SUITE 212 |
| STREET | 4756 BANNING AVE |
| CITY | WHITE BEAR LAKE |
| STATE | Minnesota |
| POSTAL CODE | 55110 |
| COUNTRY | United States |
| PHONE | 651.426.2400 |
| FAX | 651.426.2322 |
| Docketing@SherrillLaw.com; MichaelS@SherrillLaw.com | |
| AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
| DOCKET/REFERENCE NUMBER | PIZZA004USTM |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /M. Sherrill/ |
| SIGNATORY'S NAME | Michael Sherrill |
| SIGNATORY'S POSITION | Attorney of Record, Minnesota Bar Member |
| SIGNATORY'S PHONE NUMBER | 651.426.2400 |
| DATE SIGNED | 08/06/2019 |
| AUTHORIZED SIGNATORY | YES |
| CONCURRENT APPEAL NOTICE FILED | NO |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Aug 06 17:22:47 EDT 2019 |
| TEAS STAMP | USPTO/RFR-XX.XXX.XXX.XXX- 20190806172247290302-8750 3213-610a4a7c4456866fecad c6f19f81c2bedf4befd23d218 fe64f92f7cf39859c3b3-N/A- N/A-20190806171013484210 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1960 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
The Examiner has repeated a refusal to register Inferno for use in connection with pizza due to a perceived likelihood of confusion with US Registration 4661403 (‘403 Registration) for the mark Inferno for use in connection with a variety of foods which includes pasta.
Procedural Background
The Examiner initially refused to register the applied-for mark for use in connection with pizza in a First Office Action dated September 21, 2017 due to a perceived likelihood of confusion with the ‘403 Registration for the mark Inferno because the description of goods in the ‘403 Registration included pizza and pizza products.
At Applicant’s request, the owner of the ‘403 Registration voluntarily amended the ‘403 Registration to remove all references to “pizza and pizza products” from the description of goods in the registration. The voluntary amendment was entered on February 6, 2018.
Applicant filed a response to the First Office Action on February 21, 2018, advising that pizza and pizza products had been removed from the description of goods in the ‘403 Registration, and requesting withdrawal of the refusal to register.
The Examiner responded by refusing to register Inferno for use in connection with pizza in a Second Office Action dated February 23, 2018 based upon a perceived likelihood of confusion with the ‘403 Registration because the description of goods in the ‘403 Registration included references to pasta. The Examiner subsequently mailed a clarifying Office Action on March 12, 2018, referenced therein as both supplemental to and superseding the February 23, 2018 Second Office Action, which repeated the refusal to register set forth in the Second Office Action.
At Applicant’s request, the owner of the ‘403 Registration again voluntarily amended the ‘403 Registration, this time to remove “pasta, including ready-to-serve and/or frozen” from the description of goods. This second voluntary amendment was entered on June 7, 2018.
Applicant discovered, upon review of the second amended ‘403 Registration, that the second voluntary amendment to the ‘403 Registration was incomplete. The ‘403 Registration still contained a lone reference to “pasta” in the description of goods. Due to time constraints for entering a third voluntary amendment, Applicant instituted an Ex parte Appeal from the Second Office Action on August 30, 2018, and subsequently filed both (i) an Appeal Brief in the Ex parte Appeal, and (ii) a Petition for Cancellation of the ‘403 Registration (Cancellation No. 92069857) as to “pasta”. The Ex parte Appeal was promptly suspended pending the outcome of the ‘857 Cancellation Proceeding.
After commencement of the ‘857 Cancellation Proceeding, the owner of the ‘403 Registration agreed to amended the ‘403 Registration a third time, this time to remove “pasta” from the description of goods. This third voluntary amendment was accepted and approved by the TTAB on January 30, 2019 in the ‘857 Cancellation Proceeding.
On May 13, 2019, upon being advised by Applicant that the ‘857 Cancellation Proceeding had been concluded, the Examiner mailed a Third Office Action lifting the suspension, resuming examination, and again refusing registration with the lone statement “The arguments and evidence attached to the previous final office action are incorporated by reference”.
The arguments and evidence presented in the previous final office action (i.e., the March 12, 2018 Second Office Action as supplemented on February 23, 2018) were based upon an alleged relationship between “pizza” in Applicant’s application and “pasta” in the ‘403 Registration. The ‘403 Registration, however, no longer includes “pasta”. Hence, the arguments and evidence in the previous final office action are no longer germane.
Argument
Applicant submits that the arguments presented in the Appeal Brief filed on October 26, 2018 in the Ex parte Appeal from the Second Office Action are fully responsive to the current refusal, and reiterates those arguments here.
The '403 Registration has thrice been voluntarily amended, a first time on February 6, 2018 to delete “pizzas and pizza products in the nature of pizza, cheese sticks, pizza dough, pizza sauce, kits comprised of ingredients for preparing pizza” from the description of goods, a second time on June 7, 2018 to delete “pasta, including ready-to-serve and/or frozen” from the description of goods, and a third time on January 30, 2019 to delete “pasta” from the description of goods.
Applicant respectfully submits that the applied-for mark is not confusingly similar to the mark in the '403 Registration as the goods are distinct. See, Hi-Country Foods Corp. v. Hi Country Beef Jerky, 4 USPQ2d 1169, 1171–72 (TTAB 1987) (No 'per se' rule that all food products are related goods by nature or by virtue of their capability of being sold in the same food markets. Virtually identical trademarks can be registered for different foods sold in the same food markets.).
The application seeks registration of the applied-for mark in connection with pizza. None of the food products now listed in the ‘403 Registration are related to pizza.
Applicant respectfully submits that the mark is registrable upon the Principal Register and the Examiner’s refusal to register should be reversed.