| 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 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88236877 |
| LAW OFFICE ASSIGNED | LAW OFFICE 114 |
| MARK SECTION | |
| MARK | mark |
| LITERAL ELEMENT | VESSEL |
| 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. |
| OWNER SECTION (current) | |
| NAME | PARKJOCKEY GLOBAL LLC |
| MAILING ADDRESS | 950 Brickell Bay Dr., Suite 2209 |
| CITY | Miami |
| STATE | Florida |
| ZIP/POSTAL CODE | 33131 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 305-448-7988 |
| XXXX | |
| OWNER SECTION (proposed) | |
| NAME | PARKJOCKEY GLOBAL LLC |
| MAILING ADDRESS | 950 Brickell Bay Dr., Suite 2209 |
| CITY | Miami |
| STATE | Florida |
| ZIP/POSTAL CODE | 33131 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 305-448-7988 |
| XXXX | |
| ARGUMENT(S) | |
|
The Examining Attorney raises the following registrations as presenting potential likelihood of confusion issues, namely:
For a finding of likelihood of confusion, the Examining Attorney must consider whether the services of the respective parties are related, and whether the activities surrounding the marketing of the respective services are such that confusion as to source is likely. In re August Storck KG, 218 U.S.P.Q. 823 (T.T.A.B. 1983). Applicant respectfully asserts that a number of contextual factors weigh against a finding of likelihood of confusion. An examination of each cited registration appears below. Reg. No. 5859848 for VESSEL KITCHEN in Class 43 For cited Reg. No. 5859848 for VESSEL in Class 43, Applicant stresses that: (1) the services in the cited registration and Applicant’s application are different, (2) the cited registration is phonetically distinct, and (3) the cited registration is currently coexisting on the Principal Register with another VESSEL mark in Class 43, indicating tolerance for Applicant’s mark to also coexist. This cited registration covers “catering services; restaurant and café services, excluding restaurant, catering and café services provided in connection with a recreational landmark structure” in Class 43. According to the specimen submitted by the Registrant on January 24, 2018, it is operating a standard “brick and mortar” restaurant that also provides catering services. Practically, Applicant’s application covers different services, including those housed in an entirely different Class – like software for food delivery in Class 9, mobile food kiosks in Class 35 and design of kitchens in Class 42. It is important to note that Applicant is not operating a standard brick and mortar restaurant. Instead, Applicant provides dark kitchen facilities for food preparation. Food prepared in these dark kitchens is then delivered by Applicant or by a third party provider, like Uber Eats or DoorDash. Consumers do not come in contact with a “brick and mortar” restaurant. Applicant’s brands exist in a virtual sense – there is no seating area, wait staff, counter to order from, or physical location to visit. In addition, Applicant’s application also covers services that are quite different from catering or restaurant services, including planning and design of kitchens in Class 41. These services are not typically provided by restaurant or catering companies and represent entirely different channels of trade. Applicant’s target consumers for these types of services are different – they do not include the typical customer purchasing a meal from a restaurant – instead, Applicant’s target consumers for its kitchen design services include food industry professionals. Applicant also notes that the Examining Attorney has focused on the shared element of the marks at issue and has not properly weighed the differences between VESSEL KITCHEN and Applicant’s mark. A disclaimer does not remove the disclaimed term from the mark. The mark must still be regarded as a whole, taking into consideration the disclaimed term in evaluating likelihood of confusion. See TMEP § 1213.10; In re Nat'l Data Corp., 224 U.S.P.Q 749, 751 (Fed. Cir. 1985). When considered as a whole, the combination of VESSEL and KITCHEN in the cited registration assists in signaling to consumers that the Registrant is operating a “brick and mortar” kitchen or restaurant. Where the common element between two marks is itself commonly used, even minor differences between the remaining elements are sufficient to avoid a likelihood of confusion. See King Candy Co. v. Eunice King’s Kitchen, Inc., 182 USPQ at 109-110; Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d 1477 (TTAB. 1987). This is particularly true considering that the cited registration is currently coexisting with an allowed application for VESSEL covering “café and restaurant services; café services, restaurant and bar services; all of the foregoing used in connection with a recreational landmark structure in a park (App. No. 87978121; attached at Exhibit A). While this allowed application has specifically carved out restaurant and café services offered in connection with a recreational landmark structure, it is still coexisting with the same Class in connection with identical restaurant services. Regardless of whether these restaurant services are offered inside a park or landmark structure or outside a park or landmark structure, they still include rendering the exact same restaurant services to a consumer looking to purchase a meal. The Trademark Office must have determined that consumers are able to rely on the other element in VESSEL KITCHEN (i.e., KITCHEN) to distinguish the cited registration from this allowed application for VESSEL. See Sure-Fit Prods. Co. v. Saltzon Drapery Co., 117 U.S.P.Q. 295, 297 (C.C.P.A. 1958). The scope of protection afforded to the cited registration is therefore quite limited. The fact that the cited registration and this allowed application are coexisting indicates tolerance for Applicant’s application to also coexist, especially considering that Applicant’s application does not include restaurant or catering services – or any services listed in Class 43. Instead Applicant’s application covers planning and design of kitchens, mobile food kiosks, and software for food delivery. Reg. No. 5778775 for VESSEL in Class 9 For cited Reg. No. 5778775 for VESSEL in Class 9, Applicant stresses that: (1) the software listed in the cited registration and Applicant’s application are different and (2) the coexistence of the cited registration with two other third party VESSEL registrations in Class 9 indicates tolerance for Applicant’s mark to also coexist. This cited registration covers software for “measuring consumer engagement for food service industry customers.” Based on the specimen submitted on March 26, 2018 by the Registrant, it appears that Registrant’s software is used for consumers to post content (like 10 second videos) and reviews about their experiences at food service establishments. This measuring of consumer engagement is fundamentally distinct from Applicant’s software, which actually assists in delivering food to those that have placed an online order from Applicant’s dark kitchen facilities. In addition, Registrant’s software is distinct from the other services listed in Applicant’s application, including the services in Class 35 and Class 42. The cited registration does not cover any type of mobile food kiosk, nor does it cover design of kitchens – both of these types of services are unrelated to the consumer engagement software that the Registrant appears to provide. This is furthered by the fact that the Trademark Office has allowed this cited registration to coexist with the VESSEL KITCHEN registration in Class 43. Clearly, the Trademark Office has drawn a line of distinction between restaurants and software used in connection with those restaurant – this same line should be drawn with regard to Applicant’s services in Class 35 and Class 42. Further, the Trademark Office has allowed Reg. No. 4928063 and Reg. No. 4928218 for VESSEL covering “computer software used to aggregate and provide digital audio and video files on demand over the Internet and other communications networks in the fields of… food and drink…” (attached at Exhibit A) to coexist with the cited registration in Class 9. If anything, the software products listed in these registrations are far more similar and related to Registrant’s consumer engagement software than Applicant’s software. The software in both the cited registration and these third party registrations allow for the sharing of digital content, like videos, in the field of food and drink. By virtue of the cited registration coexisting on the Principal Register with these third party registrations, the Trademark Office has taken the position that consumers are able to distinguish between third party “VESSEL” formative marks in Class 9 and, as a result, are not likely to be confused. Standard Brands Inc. v. RJR Foods, Inc., 192 USPQ 383, 385 (TTAB 1976). To maintain consistency in the Office’s prior examination practices, Applicant’s VESSEL trademark should also be allowed to coexist on the register in Class 9, and should certainly be able to coexist in unrelated Classes, like Class 35 and 42, as well. In light of the above arguments now made of record, Applicant respectfully requests that the Examining Attorney carefully conduct a Class by Class analysis, withdraw each refusal, and approve Applicant’s mark for publication on the Principal Register. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_747853135-20200410144 740932310_._Exhibit_A.pdf |
| CONVERTED PDF FILE(S) (6 pages) |
\\TICRS\EXPORT18\IMAGEOUT 18\882\368\88236877\xml1\ ROA0002.JPG |
| \\TICRS\EXPORT18\IMAGEOUT 18\882\368\88236877\xml1\ ROA0003.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\882\368\88236877\xml1\ ROA0004.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\882\368\88236877\xml1\ ROA0005.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\882\368\88236877\xml1\ ROA0006.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT 18\882\368\88236877\xml1\ ROA0007.JPG | |
| DESCRIPTION OF EVIDENCE FILE | Applicant's Exhibit A |
| ATTORNEY INFORMATION (current) | |
| NAME | Kelly A. Donahue |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | Verrill Dana, LLP |
| STREET | One Portland Square |
| CITY | Portland |
| STATE | Maine |
| POSTAL CODE | 04101-4054 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 207-774-4000 |
| FAX | 207-774-7499 |
| trademarks@verrilldana.com | |
| DOCKET/REFERENCE NUMBER | 11736-9016 |
| ATTORNEY INFORMATION (proposed) | |
| NAME | Kelly A. Donahue |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | Verrill Dana, LLP |
| STREET | One Portland Square |
| CITY | Portland |
| STATE | Maine |
| POSTAL CODE | 04101 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 207-774-4000 |
| trademarks@verrill-law.com | |
| DOCKET/REFERENCE NUMBER | 11736-9016 |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | Kelly A. Donahue |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | trademarks@verrilldana.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | kdonahue@verrilldana.com; mfuller@verrilldana.com |
| DOCKET/REFERENCE NUMBER | 11736-9016 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Kelly A. Donahue |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | trademarks@verrill-law.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | kdonahue@verrilldana.com |
| DOCKET/REFERENCE NUMBER | 11736-9016 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /KAD/ |
| SIGNATORY'S NAME | Kelly A. Donahue |
| SIGNATORY'S POSITION | Attorney of Record, Maine Bar Member |
| DATE SIGNED | 04/10/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Apr 10 14:51:25 ET 2020 |
| TEAS STAMP | USPTO/ROA-XX.XX.XX.XXX-20 200410145125768410-882368 77-71012e231a1b64728d6114 17c413aef9885f4be779d5753 b4637465730910f824-N/A-N/ A-20200410144740932310 |
| 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 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
The Examining Attorney raises the following registrations as presenting potential likelihood of confusion issues, namely:
U.S. Registration No. 5859848 for VESSEL KITCHEN covering “catering services; restaurant and café services, excluding restaurant, catering and café services provided in connection with a recreational landmark structure.”
U.S. Registration No. 5778775 for VESSEL covering “computer application software for mobile electronic devices, namely, measuring consumer engagement for food service industry customers.”
For a finding of likelihood of confusion, the Examining Attorney must consider whether the services of the respective parties are related, and whether the activities surrounding the marketing of the respective services are such that confusion as to source is likely. In re August Storck KG, 218 U.S.P.Q. 823 (T.T.A.B. 1983). Applicant respectfully asserts that a number of contextual factors weigh against a finding of likelihood of confusion. An examination of each cited registration appears below.
Reg. No. 5859848 for VESSEL KITCHEN in Class 43
For cited Reg. No. 5859848 for VESSEL in Class 43, Applicant stresses that: (1) the services in the cited registration and Applicant’s application are different, (2) the cited registration is phonetically distinct, and (3) the cited registration is currently coexisting on the Principal Register with another VESSEL mark in Class 43, indicating tolerance for Applicant’s mark to also coexist.
This cited registration covers “catering services; restaurant and café services, excluding restaurant, catering and café services provided in connection with a recreational landmark structure” in Class 43. According to the specimen submitted by the Registrant on January 24, 2018, it is operating a standard “brick and mortar” restaurant that also provides catering services.
Practically, Applicant’s application covers different services, including those housed in an entirely different Class – like software for food delivery in Class 9, mobile food kiosks in Class 35 and design of kitchens in Class 42.
It is important to note that Applicant is not operating a standard brick and mortar restaurant. Instead, Applicant provides dark kitchen facilities for food preparation. Food prepared in these dark kitchens is then delivered by Applicant or by a third party provider, like Uber Eats or DoorDash. Consumers do not come in contact with a “brick and mortar” restaurant. Applicant’s brands exist in a virtual sense – there is no seating area, wait staff, counter to order from, or physical location to visit.
In addition, Applicant’s application also covers services that are quite different from catering or restaurant services, including planning and design of kitchens in Class 41. These services are not typically provided by restaurant or catering companies and represent entirely different channels of trade. Applicant’s target consumers for these types of services are different – they do not include the typical customer purchasing a meal from a restaurant – instead, Applicant’s target consumers for its kitchen design services include food industry professionals.
Applicant also notes that the Examining Attorney has focused on the shared element of the marks at issue and has not properly weighed the differences between VESSEL KITCHEN and Applicant’s mark. A disclaimer does not remove the disclaimed term from the mark. The mark must still be regarded as a whole, taking into consideration the disclaimed term in evaluating likelihood of confusion. See TMEP § 1213.10; In re Nat'l Data Corp., 224 U.S.P.Q 749, 751 (Fed. Cir. 1985). When considered as a whole, the combination of VESSEL and KITCHEN in the cited registration assists in signaling to consumers that the Registrant is operating a “brick and mortar” kitchen or restaurant.
Where the common element between two marks is itself commonly used, even minor differences between the remaining elements are sufficient to avoid a likelihood of confusion. See King Candy Co. v. Eunice King’s Kitchen, Inc., 182 USPQ at 109-110; Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d 1477 (TTAB. 1987). This is particularly true considering that the cited registration is currently coexisting with an allowed application for VESSEL covering “café and restaurant services; café services, restaurant and bar services; all of the foregoing used in connection with a recreational landmark structure in a park (App. No. 87978121; attached at Exhibit A).
While this allowed application has specifically carved out restaurant and café services offered in connection with a recreational landmark structure, it is still coexisting with the same Class in connection with identical restaurant services. Regardless of whether these restaurant services are offered inside a park or landmark structure or outside a park or landmark structure, they still include rendering the exact same restaurant services to a consumer looking to purchase a meal.
The Trademark Office must have determined that consumers are able to rely on the other element in VESSEL KITCHEN (i.e., KITCHEN) to distinguish the cited registration from this allowed application for VESSEL. See Sure-Fit Prods. Co. v. Saltzon Drapery Co., 117 U.S.P.Q. 295, 297 (C.C.P.A. 1958). The scope of protection afforded to the cited registration is therefore quite limited. The fact that the cited registration and this allowed application are coexisting indicates tolerance for Applicant’s application to also coexist, especially considering that Applicant’s application does not include restaurant or catering services – or any services listed in Class 43. Instead Applicant’s application covers planning and design of kitchens, mobile food kiosks, and software for food delivery.
Reg. No. 5778775 for VESSEL in Class 9
For cited Reg. No. 5778775 for VESSEL in Class 9, Applicant stresses that: (1) the software listed in the cited registration and Applicant’s application are different and (2) the coexistence of the cited registration with two other third party VESSEL registrations in Class 9 indicates tolerance for Applicant’s mark to also coexist.
This cited registration covers software for “measuring consumer engagement for food service industry customers.” Based on the specimen submitted on March 26, 2018 by the Registrant, it appears that Registrant’s software is used for consumers to post content (like 10 second videos) and reviews about their experiences at food service establishments. This measuring of consumer engagement is fundamentally distinct from Applicant’s software, which actually assists in delivering food to those that have placed an online order from Applicant’s dark kitchen facilities.
In addition, Registrant’s software is distinct from the other services listed in Applicant’s application, including the services in Class 35 and Class 42. The cited registration does not cover any type of mobile food kiosk, nor does it cover design of kitchens – both of these types of services are unrelated to the consumer engagement software that the Registrant appears to provide. This is furthered by the fact that the Trademark Office has allowed this cited registration to coexist with the VESSEL KITCHEN registration in Class 43. Clearly, the Trademark Office has drawn a line of distinction between restaurants and software used in connection with those restaurant – this same line should be drawn with regard to Applicant’s services in Class 35 and Class 42.
Further, the Trademark Office has allowed Reg. No. 4928063 and Reg. No. 4928218 for VESSEL covering “computer software used to aggregate and provide digital audio and video files on demand over the Internet and other communications networks in the fields of… food and drink…” (attached at Exhibit A) to coexist with the cited registration in Class 9. If anything, the software products listed in these registrations are far more similar and related to Registrant’s consumer engagement software than Applicant’s software. The software in both the cited registration and these third party registrations allow for the sharing of digital content, like videos, in the field of food and drink.
By virtue of the cited registration coexisting on the Principal Register with these third party registrations, the Trademark Office has taken the position that consumers are able to distinguish between third party “VESSEL” formative marks in Class 9 and, as a result, are not likely to be confused. Standard Brands Inc. v. RJR Foods, Inc., 192 USPQ 383, 385 (TTAB 1976). To maintain consistency in the Office’s prior examination practices, Applicant’s VESSEL trademark should also be allowed to coexist on the register in Class 9, and should certainly be able to coexist in unrelated Classes, like Class 35 and 42, as well.
In light of the above arguments now made of record, Applicant respectfully requests that the Examining Attorney carefully conduct a Class by Class analysis, withdraw each refusal, and approve Applicant’s mark for publication on the Principal Register.
