To: | Stuart Jackson (jackson1564@gmail.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88104750 - THE CODFATHER PROPER FISH & CHIPS - N/A |
Sent: | 3/1/2019 3:49:17 PM |
Sent As: | ECOM110@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88104750
MARK: THE CODFATHER PROPER FISH & CHIPS
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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: Stuart Jackson
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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FINAL 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. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 3/1/2019
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on February 7, 2019.
In a previous Office action dated December 17, 2018, the trademark examining attorney refused registration of the applied-for mark under Trademark Act Section 2(d) due to a likelihood of confusion with the marks in U.S. Registration Nos. 4315156 and 4315157. In addition, registration was refused because the drawing and specimen did not match, and the trademark examining attorney required that applicant submit a disclaimer of the descriptive wording in the mark, clarify the nature of applicant’s entity, and amend the mark description and color claim.
Because applicant’s response consisted only of the signatures of both joint applicants,[1] without any arguments or evidence against the refusals and requirements that were previously issued, the following issues are all maintained and made FINAL:
See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In the previous Office action, registration of the applied-for mark was refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 4315156 and 4315157, owned by the same registrant. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. This refusal is maintained and made final for the reasons stated below.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks
The applied-for mark is THE CODFATHER PROPER FISH & CHIPS in stylized characters with a stylized fish design with anthropomorphic features.
The mark in U.S. Registration No. 4315156 is CODFATHER’S SEAFOOD in standard characters with a disclaimer of SEAFOOD.
The mark in U.S. Registration No. 4315157 is CODFATHER’S SEAFOOD …AND MORE in stylized characters with a stylized fish design with anthropomorphic features.
When comparing marks, the test is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods and/or services offered under the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049, (TTAB 2014); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); TMEP §1207.01(b).
In the present case, the applied-for mark and registered mark share the same common wording “CODFATHER,” which in each mark is the dominant feature of the mark and would likely be the element most remembered by consumers who encounter the marks. Additionally, with respect to U.S. Registration No. 4315157, the applied-for mark and registered mark each feature anthropomorphic stylized fish designs, and while these designs do differ in a number of respects, they create a similar overall impression when paired with the dominant wording CODFATHER.
Comparison of the Services
Applicant’s services are:
Restaurant and bar services, including restaurant carryout services;
Registrant’s services are identified the same in each cited registration, namely:
Restaurant services;
Thus, applicant and registrant offer the same identical services “restaurants,” while applicant also offers the closely related “bar services.”
In this case, the application uses broad wording to describe the restaurant and bar services, which presumably encompasses all services of the type described, including registrant’s narrower restaurant services. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods and/or services 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.” 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)). Thus, applicant’s and registrant’s goods and/or services are related.
In sum, applicant’s mark is highly similar to registrant’s mark and applicant’s and registrant’s services are identical in part and overlap significantly, thus are closely related. Therefore, the application is refused under Section 2(d) of the Trademark Act.
Applicant Submitted No Arguments Against Refusal
Applicant’s response did not include any arguments against the stated refusal or in favor of registration.
Conclusion
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
In sum, applicant’s mark is highly similar to registrant’s mark and applicant’s and registrant’s services are closely related. Therefore, the refusal of registration under Section 2(d) of the Trademark Act is hereby maintained and made FINAL.
MATCHING REFUSAL
Registration is refused because the specimen does not show the mark in the drawing in use in commerce in association with the services, which is required in the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a), 1301.04(g)(i). The mark appearing on the specimen and in the drawing must match; that is, the mark in the drawing “must be a substantially exact representation of the mark” on the specimen. See 37 C.F.R. §2.51(a)-(b); TMEP §807.12(a).
In this case, the specimen displays the mark as THE CODFATHER at the top of a circular design, with PROPER FISH & CHIPS · HOUSE-MADE PIES · PUB & BEER GARDEN at the bottom of the circl3e, a stylized anthropomorphic fish in the center of the circle, a knife and fork design on the left, and design of two beer glasses clinking on the right. However, the drawing displays the mark as a stylized anthropomorphic fish at the top, THE CODFATHER below this design (and stylized differently from the specimen), and the wording “PROPER FISH & CHIPS” at the bottom between two horizontal lines. The mark on the specimen does not match the mark in the drawing because it adds significant design elements and non-generic wording to the mark shown in the drawing, as well as rearranging the elements shown on the drawing and changing the stylization of the wording. Applicant has thus failed to provide the required evidence of use of the mark in commerce. See TMEP §807.12(a).
Applicant may respond to this refusal by satisfying one of the following:
(1) Submit a different specimen (a verified “substitute” specimen) for each applicable international class that (a) shows the mark in the drawing in actual use in commerce for the goods and/or services in the application or amendment to allege use, and (b) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use.
Examples of specimens for services include advertising and marketing materials, brochures, photographs of business signage and billboards, and webpages that show the mark used in the actual sale, rendering, or advertising of the services. See TMEP §1301.04(a), (h)(iv)(C).
(2) Submit a request to amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
The USPTO will not accept an amended drawing submitted in response to this refusal because the changes would materially alter the drawing of the mark in the original application or as previously acceptably amended. See 37 C.F.R. §2.72(a)-(b); TMEP §807.14. Specifically, the specimen adds distinctive design elements and non-generic wording to the mark shown in the drawing, as well as rearranging the drawing elements and changing the stylization of the wording.
For more information about drawings and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) form, see the Drawing webpage.
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “FISH & CHIPS” because it is not inherently distinctive. These unregistrable terms at best are merely descriptive of a characteristic, function or feature of applicant’s services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
Specifically, the evidence attached to the previous Office action shows that “fish & chips” describes a dish that is commonly the primary dish offered via restaurant and bar services, including take-out services.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “FISH & CHIPS” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
CLARIFICATION REQUIRED REGARDING APPLICANT’S ENTITY
If these individuals are applying together as joint owners/applicants, they must amend the legal entity from “limited liability company” to “individual” and each joint applicant must indicate his or her country of citizenship. See TMEP §803.03(d). Alternatively, if applicant is a limited liability company, applicant must set forth its correct name and U.S. state or foreign country under whose laws it was established. TMEP §803.03(h).
If, in response to the above request, applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed. See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b). An application must be filed by the party who owns or is entitled to use the mark as of the application filing date. See 37 C.F.R. §2.71(d); TMEP §1201.02(b).
MARK DESCRIPTION AND COLOR CLAIM REQUIRE AMENDMENT
The following are suggested, if accurate:
Color claim:
The colors black, white, royal blue, baby blue and beige are claimed as a feature of the mark.
Mark description:
The mark consists of a stylized fish design above the stylized wording “THE CODFATHER” with “THE” in white, outlined in black; “COD” in black, and “FATHER” in white outlined in black, which is above the black stylized wording “PROPER FISH & CHIPS” with black horizontal lines above and below the wording. The aforementioned fish design is outlined in black, with a royal blue body and eyelids, baby blue dorsal and pectoral fins, a beige face, white teeth and eyes, and a red, white, and blue tail fin stylized like the flag of Great Britain.
APPLICANT’S OPTIONS FOR RESPONDING TO A FINAL OFFICE ACTION
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
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 $125 per 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 or e-mail without incurring this additional fee.
/Wendell S. Phillips III/
Trademark Examining Attorney
Law Office 110
(571) 272-5271
wendell.phillips@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.
[1] This situation is addressed in TMEP §718.03:
If an examining attorney receives a TEAS response to a nonfinal action that consists solely of a signature or is missing significant data or attachments, the examining attorney should not treat the response as non-responsive or issue a notice of incomplete response granting the applicant additional time to complete the response. Instead, the examining attorney must issue a final action[.]