TEAS Petition to Revive Abandon Applic

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 2194 (Rev 03/2012)

OMB No. 0651-0054 (Exp 12/31/2020)

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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 2194 (Rev 03/2012)

OMB No. 0651-0054 (Exp 12/31/2020)

Petition To Revive Abandoned Application - Failure To Respond Timely To Office Action

To the Commissioner for Trademarks:

Application serial no. 88020393 COSTA (Stylized and/or with Design, see http://uspto.report/TM/88020393/mark.png) has been amended as follows: PETITION Petition Statement
Applicant has firsthand knowledge that the failure to respond to the Office Action by the specified deadline was unintentional, and requests the USPTO to revive the abandoned application.RESPONSE TO OFFICE ACTION

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

APPLICANT’S RESPONSE TO OFFICE ACTION

 

I. Response to Primary Basis for Refusal of Registration Under Trademark Act Section 2(d), 15 U.S.C. Û¬§1052(d)

 

In the Office Action for U.S. Trademark Application No. 88020393 COSTA Design (the “Applicant’s Mark) the examining attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), on the grounds that it creates a likelihood of confusion with U.S. Registration Nos. 3236603 for COSTA (the “First Cited Registration), 1274496 for COSTA (the “Second Cited Registration), 4562054 for DALLA COSTA (the “Third Cited Registration”, and 5494152 for COSTA CAMPANIA (the “Fourth Cited Registration), collectively (the “Cited Registrations”). Applicant does not agree with this conclusion, and in further support of its original application (“Application”), hereby submits this Response and requests that the examining attorney reconsider his prior determination concluding that the Application should be refused.

 

The Applicant’s Mark is for COSTA (Design) under International Class 030: “Vegan pasta sauce; Vegan pasta, namely ravioli, lasagna, gnocchi, cannelloni”.

 

The Cited Registrations are all for various regular pasta related goods.

 

 II. The Applicant’s Mark Passes The DuPont Multi-Factor Test And Proves There Is No Confusion, Mistake, or Deception With The Registered Marks

 

In testing for likelihood of confusion under Section 2(d), the Du Pont factors need to be considered, including factors such as the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression; the similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use; the purchasers of the goods i.e. “impulse” vs. careful, sophisticated purchasing; and the number and nature of similar marks in use on similar

goods. In   476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).

 

A.     The Applicant’s Mark Is Different From The Registrant’s Mark In Appearance, Sound, Connotation, and Commercial Impression

 

In regards to the First and Second Cited Registrations, the Examining Attorney sets out that “In the present case, in regards to registrants 3236603 and 1274496, applicant’s mark is COSTA and registrants’ mark are COSTA.  The word portion of the marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner. Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services.”

 

She further sets out that “Further, in regards to registrant 1274496, when evaluating a composite mark containing both words and designs, the word portion is more likely to indicate the origin of the goods and/or services because it is that portion of the mark that consumers use when referring to or requesting the goods and/or services.   Thus, although marks 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. 

 

Additionally, the Examining Attorney sets out that the Third and Fourth Cited Registrations “are confusingly similar to the applied-for mark because the applied-for mark is featured entirely in the registrants’ marks. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  In the present case, the marks are identical in part.”

 

However, when considering the Cited Registrations, the examining attorney fails to take into account the significant differences that exist between Cited Registrations and the Applicant’s Mark, including the appearance of the marks and the sounds of the marks. In Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538, the Supreme Court laid down the Anti-Dissection Rule and held that composite conflicting marks are to be compared by looking at them as a whole rather than breaking the marks up into their component parts for comparison. The rationale of this rule is that the commercial impression of a composite trademark on an ordinary prospective buyer or customer is created by the mark as a whole, not by its component parts.

 

Based upon the fact that the Cited Registrations and the Applicant’s Mark contain some similar wording, the Examining Attorney concludes that the marks are identical in appearance, connotation and commercial impression. Furthermore, the Examining Attorney states that “Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  In the present case, the marks are identical in part”[emphasis added].

However, it has been held that additions to marks may be sufficient to avoid a likelihood of confusion if the matter common to the marks is not likely to be perceived by purchasers as a distinguishing source because it is merely descriptive or diluted. For instance, in Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011), the court affirmed the TTAB’S holding that contemporaneous use of applicant’s CAPITAL CITY BANK marks for banking and financial services, and opposer’s CITIBANK marks for banking and financial services, is not likely cause confusion, based, in part, on findings that the phrase “City Bank” is frequently used in the banking industry and that ”CAPITAL” is the dominant element of applicant’s marks, which gives the marks a look and sound distinct from opposer’s marks. 

 

B.     Neither The Applicant’s Mark, Nor the Registrants’ Marks Cater To Impulse Purchasers

 

The Examining Attorney has set out that “ the compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source. The registrations use broad wording to describe its “pasta”, “alimentary pasta, dehydrated pasta, flavoured pasta, organic pasta, rice pasta, corn pasta, gluten-free pasta not for medical purposes”, and “sauces”, which presumably encompasses all goods of the type described, including applicant’s more narrow “vegan pasta sauce; Vegan pasta, namely ravioli, lasagna, gnocchi, cannelloni.  Further, the application uses broad wording to describe its “vegan pasta”, which presumably encompasses all goods of the type described, including registrant’s more narrow  “macaroni products”. Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers. Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on evidence of actual use.  

 

However, the Examining Attorney has not taken into account the significant differences that exist between the goods of the Applicant and those of the Cited Registrations. The Applicant would like to point out that it’s goods, although set out in the same class as the Cited Registrations, the Examining Attorney must take into consideration that the Applicant’s goods are Vegan in nature.

 

Individuals who lead a vegan lifestyle take great care in ensuring that any of the food goods that are consumed are free of any kind of animal or animal biproduct.  As such, they will do their research with respect to brands that they choose to consume and read ingredient lists with a fine-tooth comb.  A Vegan lifestyle also often means that vegan brands are well known and sought by such individuals.  Veganism is not just about choosing products that are animal free, it is about leading a cruelty free life and about choosing very specific brands that support such a lifestyle.  Vegans will spend a considerable time and research into brands that support their lifestyle.  They do not choose products in haste. They will demonstrate a high level of care when choosing products. As noted in Electronic Design & Sales Inc. v. Electronic Data Systems Corp., 21 USPQ2d 1388, 1392 (Fed. Cir. 1992), “sophisticated consumers may be expected to exercise greater care;” and “[t]here is always less likelihood of confusion where goods are expensive and purchased after careful consideration.” Astra Pharmaceuticals Prods., Inc. v. Beckman Instruments, Inc., 220 USPQ 786, 790 (1st Cir. 1993).

 

The USPTO should look to “something more” than the mere fact that the Subject Mark and the Registered Mark contain some of the same words and are in some way connected to potentially providing goods and/or services in connection with boats. See Jacobs v. International Multifoods Corp., 668 F.2d 1234, 1236 (CCPA 1982).

C.      Registrants Do Not Have the Exclusive Right to the word “COSTA”.

 

Aside from the Applicant’s Mark and the Cited Registrations, a search of the USPTO Register reveals over 30 Registered or Allowed Trademarks in which the word “COSTA” appear in connection Class 030 goods including, but not limited to:

Mark/Name	Registration No.	Brief Goods/Services	Owner Information
COSTA	5326531	(Int'l Class: 30) coffee, tea, cocoa, sugar, tapioca, sago, coffee substitutes; flavored ices; sandwiches; honey, treacle; yeast, baking-powder; salt, mustard; pepper, vinegar, sauces,... (Int'l Class: 43) cafes; cafeterias; restaurants; snack bars; bars; catering services	Costa Limited (United Kingdom Limited Company (Ltd.)) Houghton Hall Business Park Whitbread Court, Porz Avenue Dunstable Bedfordshire Lu55xe United Kingdom
COSTA and Design	4642872	(Int'l Class: 29) milk and milk products, namely, condensed milk and evaporated milk; milk beverages, namely, beverages having a milk base; milk predominating... (Int'l Class: 30) * almond paste; * [ chocolate-based beverages, tea-based beverages; ] honey; flour and preparations made from cereals, namely, breakfast cereals,... (Int'l Class: 32) non-alcoholic beverages, namely, carbonated beverages, soft drinks with honey; fruit drinks and fruit juices; soy-based beverages not being milk substitutes;...	Costa Concentrados Levantinos, S.A. (Spain Sociedad Anónima) Avda. Antic Regne De Valencía, S/N. E-46290 Alcacer (Valencia) Spain
COSTA	1918205	(Int'l Class: 30) crackers, biscuits and cookies	Empresas Carozzi S.A. (Chile Corp.) Camino Longitudinal Sur No. 5201 San Bernardo Chile
COSTA D'ORO (Stylized)	1800938	(Int'l Class: 29) olive oil (Int'l Class: 30) Cancelled - Sec. 8 [vinegar; italian pasta]	Costa D'oro S.P.A. (Italy Corp.) Loc. Madonna Di Lugo Spoleto (Perugia) Italy
COSTAMAR	1894209	(Int'l Class: 29) canned and dried food products; namely, mushrooms; cream of coconut and anchovy fillets (Int'l Class: 30) Cancelled - Sec. 8 [- pepper sauce -]	Costamar Corp. (Puerto Rico Corp.) Apartado 51542 Toa Baja 00950-154 Puerto Rico
GOMES DA COSTA and Design	4513479	(Int'l Class: 29) canned fruit; canned fish; apple puree; sardines not live; tomato pulp; octopus not live; compotes; broth concentrates; cooked fruit; chantilly... (Int'l Class: 30) mustard; pepper; sugar; cocoa bean-based beverages; spaghetti; spices; royal jelly for human food; bread; ravioli; oatmeal; bonbons; flakes of oat;...	Gdc Alimentos S/A (Brazil Corp.) Rua Eugenio Pezzini 500 Itajai, S.C. 88311-000 Brazil

 

 

 

These registrations show that the “COSTA” cannot be said to be distinctive of Class 030 goods and that the public will look to other elements to distinguish the source of the goods or services. See, e.g., AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269-70 (C.C.P.A. 1973); Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983).

 

Copy of state of the register report is attached for ease of Examining Attorney’s reference.

 

 

D.     The Applicant’s Mark is Phonetically and Visually Different

 

Even where two marks are phonetically similar, it has been held that no likelihood of confusion exists if other differentiating factors can be established. See National Distillers & Chemical Corporation v. William Grant and Sons, Inc., 505 F.2d 719. As outlined by the Supreme Court in DuPont, a determination on likelihood of confusion must be made by comparing the marks in their entireties and considering them in connection with the particular goods or services for which they are used. The phonetic and visual differences between Applicant’s mark and the Registrant’s mark present explicit differences refuting a claim of likelihood of confusion. The distinct design element which forms part of the Cited Registrations create different looks, sound and impression on the listener than the Applicant’s mark.

 

 

 

Conclusion

 

In view of the arguments above, Applicant respectfully requests that Examiner withdraw all objections listed in the office action and allow the Applicant's trademark application to proceed for publication in the Official Gazette.

 

 

EVIDENCE
Evidence in the nature of EXHIBITS REFERENCED IN RESPONSE has been attached.
Original PDF file:
evi_184162133112-20190426182813058784_._State_of_Register_-_COSTA.pdf
Converted PDF file(s) ( 23 pages)
Evidence-1
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CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 030 for Vegan pasta sauce; Vegan pasta, namely, ravioli, lasagna, gnocchi, cannelloni
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on[ Canada application number 1900809 filed 05/24/2018]. 15 U.S.C.Section 1126(d), as amended.

Proposed:
Tracked Text Description: Vegan pasta sauce; Vegan pasta, namely, ravioli, lasagna, gnocchi, cannelloni; Vegan pasta, namely, ravioli, lasagna, flour based gnocchi, cannelloniClass 030 for Vegan pasta sauce; Vegan pasta, namely, ravioli, lasagna, flour based gnocchi, cannelloni
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Filing Basis: Section 44(d), Priority based on foreign filing:For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services, and asserts a claim of priority based upon a foreign application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization, and asserts a claim of priority based upon a foreign application. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods or services that meet the certification standards of the applicant, and the applicant asserts a claim of priority based upon a foreign application. Claim of priority is based on [ Canada application number 1900809 filed 05/24/2018]. 15 U.S.C.Section 1126(d), as amended.
INTENT TO PERFECT 44(d) : At this time, the applicant intends to rely on Section 44(e) as a basis for registration and requests that the application be suspended to await the submission of the foreign registration. If ultimately the applicant does not rely on §44(e) as a basis for registration, a valid claim of priority may be retained.

ADDITIONAL STATEMENTS
Miscellaneous Statement
The foreign application(s) No(s).1900809 being used as the basis for a priority claim under Section 44(d) of the Trademark Act has/have not yet matured into a registration in the applicant's country of origin. We hereby request that the application be suspended.


FEE(S)
Fee(s) in the amount of $100 is being submitted.

SIGNATURE(S)

Signature: /JB/      Date: 04/26/2019
Signatory's Name: Jamie Bashtanyk
Signatory's Position: Trademark Agent of Record

Response Signature
Signature: /JB/     Date: 04/26/2019
Signatory's Name: Jamie Bashtanyk
Signatory's Position: Trademark Agent of Record

Signatory's Phone Number: 5142443900

The signatory has confirmed that he/she is a Canadian attorney/agent, or an associate thereof, who represents an owner/holder located in Canada; that he/she is either registered with the USPTO and in good standing as a patent agent under 37 C.F.R. §11.6(c) or he/she has been granted reciprocal recognition under 37 C.F.R. §11.14(c) by the USPTO's Office of Enrollment and Discipline; and, that to the best of his/her knowledge, if prior to his/her appointment another Canadian attorney/agent or a U.S. attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner/holder's appointed Canadian attorney/agent or U.S. attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
RAM Sale Number: 88020393
RAM Accounting Date: 04/29/2019
        
Serial Number: 88020393
Internet Transmission Date: Fri Apr 26 18:36:58 EDT 2019
TEAS Stamp: USPTO/POA-XXX.XXX.XXX.XXX-20190426183658
094265-88020393-620969b41f1da5ec6a1f8c05
e87dde7d8b4d0baf6f33c1f7f8d6a3efca474374
a6-CC-5064-20190426182813058784