| To: | SSNS Express LLC (mnipdocket@nortonrosefulbright.com) |
| Subject: | U.S. Trademark Application Serial No. 88237157 - SEASONS - SSNS.T0003US - Request for Reconsideration Denied - Return to TTAB |
| Sent: | May 13, 2020 07:09:54 PM |
| Sent As: | ecom124@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88237157
Mark: SEASONS
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Correspondence Address: |
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Applicant: SSNS Express LLC
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Reference/Docket No. SSNS.T0003US
Correspondence Email Address: |
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REQUEST FOR RECONSIDERATION
AFTER FINAL ACTION
DENIED
Issue date: May 13, 2020
Applicant’s arguments set forth in the Request for Reconsideration are cumulative, and restate the arguments which were previously considered and found unpersuasive from the September 23, 2019, Office action.
Applicant’s argument relies on the legally and factually unsubstantiated argument that the services identified in the application and registration are legally distinguishable. Applicant’s argument collaterally attacks the registration as it asserts applicant provides not retail grocery store services but “olive oil and vinegar retail services.” (Request for Reconsideration 2) There is no requirement that retail grocery stores with a specialized dietary focus provide any additional specification in this regard. See TMEP § 1402.03. Accordingly, a retail grocery store which provides exclusively kashrut foods is still a “retail grocery store.” Since retail grocery stores encompass kosher retail grocery stores and supermarkets, then the goods are legally identical.
While additional specification in identifications can provide a distinction where provided, no such specification was required of registrant, and where such specification has not been provided, the Trademark Trial and Appeal Board has “no authority to read any restrictions or limitations into the registrant’s description of [services].” In re Thor Tech Inc., 90 USPQ2d 1634, 1638 (TTAB 2009). Nor may an applicant restrict the scope of the services covered in the cited registration by argument or extrinsic evidence. In re Midwest Gaming & Entertainment LLC, 106 USPQ2d 1163, 1165 (TTAB 2013); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). Accordingly, applicant’s continuing arguments regarding the differences between the services based upon extrinsic evidence as to registrant’s actual use of its mark remains unpersuasive.
Similarly, applicant’s arguments regarding its channels of trade are found unpersuasive. In this case, applicant has failed to establish that purchasers of Kosher goods do not shop in “normal channels of trade.” The previously attached evidence, along with the additional evidence attached hereto which supplements that previously provided, clearly establishes the overlapping channels of trade and purchasers. The “general” grocery store, as applicant terms it, very commonly offers special stores and sections of their stores, which are marketed under the same marks as their “general” grocery stores, which are specifically tailored to purchasers who cannot risk the possibility of consumer non-Kosher products. As the evidence establishes, markets go through a painstaking process to provide Kashrut products to the exact same purchasers as those who show for Kosher products of the type at applicant’s markets.
While there is no legal basis upon which to conclude that the services identified in the application would not encompass specialty grocery services of the type identified in the application, the evidence clearly establishes that the channels of trade and purchasers are not distinct.
Applicant restates the same argument regarding the weakness of the mark when viewed in conjunction with the differences between the services. However, applicant’s argument regarding the distinction in commercial impression relies upon its collateral attack on the registration, namely, that the registration is limited to “general” grocery store services, as opposed to encompassing the full breadth of the registered services. Accordingly, applicant’s argument regarding the different commercial impressions “especially in the context of the different services offered by the parties” (Request for Reconsideration 15) remains unpersuasive.
Similarly, applicant’s argument regarding the weakness of the wording remains unpersuasive. Of the third party registrations provided, one of the registrations is for a catalog featuring recipes and outdoor furnishings, and tips for use in the preparation and use of seasonal grocery offerings, but is not a retail store service. For the other marks, there are only five other owners of marks which include the term SEASONS, and the use shown therein is distinguishable.
The record lacks the extensive evidence of third party use which has been found by the Trademark Trial and Appeal Board to indicate that the terms common to the marks carry a suggestive or descriptive connotation, or are otherwise so extensively used that in the relevant industry are weak and only entitled to a narrow scope of protection. Cf., Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1339, 1339-40, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (remanding to the Board for consideration of whether and to what degree substantial evidence of third-party use and registrations, i.e., more than twenty-six registered and unregistered marks, indicated that the terms common in the applied-for mark and registered marks carried a suggestive or descriptive connotation in the relevant industry, and thus were weak). Nothing provided by applicant shows extensive, overlapping use of the terms in the marketplace. The registrations provided by applicant suggested a limited use of this wording by third parties in a highly distinguishable manner.
The evidence previously provided by the examining attorney, in addition to the supplemental evidence attached hereto comprising third party registrations for services of the same type as those in the application and registration, establishes that third party providers of grocery and supermarket services, commonly add descriptive and/or generic wording in conjunction with their marks such that the use of such wording in conjunction with the identical wording in the marks would fail to distinguish the source of the services.
Accordingly, as the overall similarities between the marks are such that prospective purchasers are likely to assume a connection between the parties when used in conjunction with the legally identical services, the marks are confusingly similar.
To make third party registrations or applications part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03. Accordingly, these registrations and/or pending applications will not be considered.
Even assuming, arguendo, the underlying documentation had been submitted, the examining attorney has previously addressed the probative value of applicant’s arguments, as applicant has provided a listing of marks (1) for unrelated goods in other classes, as well as (2) marks which are completely dissimilar to those in the application. Further, applicant’s new listing contains unregistered marks. Third-party applications merely serve to show that applications were filed; they are not evidence of use of the mark. In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016); see In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1270 n.8 (TTAB 2009); TBMP §1208.02; TMEP §710.03.
Conclusion
Accordingly, the Section 2(d) Refusal made final in the Office action dated October 22, 2019, because of a likelihood of confusion with the mark in U.S. Reg. No. 4252606 is maintained and continued.
See TMEP §§715.03(a)(ii)(B), 715.04(a).
If applicant has already filed an appeal with the Trademark Trial and Appeal Board, the Board will be notified to resume the appeal. See TMEP §715.04(a).
If applicant has not filed an appeal and time remains in the six-month response period, applicant has the remainder of that time to (1) file another request for reconsideration that complies with and/or overcomes any outstanding final requirement(s) and/or refusal(s), and/or (2) file a notice of appeal to the Board. TMEP §715.03(a)(ii)(B). Filing a request for reconsideration does not stay or extend the time for filing an appeal. 37 C.F.R. §2.63(b)(3); see TMEP §715.03(c).
/Christina M. Riepel/
Trademark Examining Attorney
Law Office 124
(571) 272-6358
christina.riepel@uspto.gov
