To: | Merrimack Valley Foods LLC (trevor@trevorcaudlelaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88205210 - CORTINA - MERR |
Sent: | 3/14/2019 5:47:17 PM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88205210
MARK: CORTINA
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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: Merrimack Valley Foods LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 3/14/2019
This Office action is in response to applicant’s communication filed on March 12, 2019.
In the previous Office action dated February 27, 2019, the trademark examining attorney refused registration of the applied-for mark based Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.
Based on applicant’s response, the examining attorney continues and maintains the refusal at this time. See 37 C.F.R. §2.63(b); TMEP §714.04. Further, applicant’s response raises a new issue, which applicant must address. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
NEW ISSUE: IDENTIFICATION OF GOODS REQUIREMENT
This highlighted portion of the proposed amendment is beyond the scope of the original identification because it lists goods that are not covered by the goods identified in the original. For example, “toppings” may include goods outside “topping syrup,” and applicant identifies a variety of flavored spreads outside of the “chocolate spread” identified in the original identification.
Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment. See 37 C.F.R. §2.71(a); TMEP §1402.07(d).
The identification of goods in International Classes 029 and 032 are acceptable as written.
Applicant may adopt the following identification, if accurate (changes in bold):
International Class 030: Fruit-based sauces and topping syrups, namely, pomegranate, fig, and date sauces and topping syrups; Cooking sauces; Vinegar
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. See TMEP §1402.04.
ISSUE CONTINUED AND MAINTAINED: SECTION 2(d) PARTIAL REFUSAL – LIKELIHOOD OF CONFUSION
Applicant has narrowed its identification of goods in the relevant class, presumably for the purpose of creating distinction between applicant’s and registrant’s goods. However, the fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.
Moreover, applicant should note that generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). In this instance, the marks are highly similar; thus the degree of relatedness between the respective goods need not be as great.
Therefore, the Section 2(d) partial refusal is continued and maintained at this time.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
If applicant does not timely respond to this Office action, the following goods in International Class 030 will be deleted from the application: “Sauces; Topping syrup; Chocolate-based spreads.” See 37 C.F.R. §2.65(a); TMEP §718.02(a). In such case, the application will then proceed with the remaining goods and classes only. See TMEP §718.02(a).
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.
ASSISTANCE
/Tamara Hudson/
Examining Attorney
Law Office 104
571.272.2575
tamara.hudson@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.