To: | LEE, Ju Chon (trademark@lucemlaw.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88237884 - MICHIN DAK - 7198TM10 |
Sent: | 3/21/2019 5:57:19 PM |
Sent As: | ECOM113@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88237884
MARK: MICHIN DAK
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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: LEE, Ju Chon
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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: 3/21/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
The applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Here, the applicant’s mark is MICHIN DAK for restaurants, and the registrants’ marks are THE CRAZY CHICKEN (U.S. Registration No. 1237519) and MICHON’S SMOKEHOUSE (U.S. Registration No. 4312098) both also for restaurants.
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 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 [services] and differences in the marks.”); TMEP §1207.01.
In this case, the following factors are the most relevant: similarity of the marks, identical services, and encompassing services. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Here, the applicant's standard character mark MICHIN DAK is confusingly similar to the registrant’s typed mark THE CRAZY CHICKEN (U.S. Registration No. 1237519) and design mark MICHON’S SMOKEHOUSE (U.S. Registration No. 4312098).
U.S. Registration No. 1237519
Specifically, though the applicant’s and registrant’s mark differ in sound and appearance, they convey identical commercial impressions of “[a] common domesticated fowl” that is “mentally deranged” because the applicant’s mark MICHIN DAK is the Korean version of the registrant’s mark THE CRAZY CHICKEN except for the article THE that appears in the registrant’s mark. http://www.ahdictionary.com/word/search.html?q=chicken; http://www.ahdictionary.com/word/search.html?q=crazy; see http://www.latimes.com/food/dailydish/la-fo-re-newsfeed-hinterhof-20190101-story.html
Applicant’s mark is in Korean, see http://www.latimes.com/food/dailydish/la-fo-re-newsfeed-hinterhof-20190101-story.html, which is a common, modern language in the United States. Specifically, the evidence from the U.S. Census Bureau shows the large number of U.S. consumers who speak this language, notably, over one million individuals. http://www2.census.gov/library/publications/2013/acs/acs-22/acs-22.pdf.
The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A). The ordinary American purchaser includes those proficient in the foreign language. In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.
In this case, the ordinary American purchaser would likely stop and translate the mark because the Korean language is a common, modern language spoken by an appreciable number of consumers in the United States.
U.S. Registration No. 4312098
Additionally, the applicant’s and registrant’s marks begin with highly similar and distinctive wording MICHIN and MICHON’S, which are virtually identical in appearance and sound, except for the possessive nature of the registrant’s mark and the substitution of the letter O in the registrant’s mark with the letter I, and are identical in commercial impression to the average American, English-speaking consumer, namely, evoking coined or fanciful terms. See http://www.ahdictionary.com/word/search.html?q=michin (showing no definition for MICHIN); http://www.ahdictionary.com/word/search.html?q=michon (showing no definition for MICHON). Consumers are generally more inclined to focus on the first word, prefix, or syllable in any service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Because MICHIN and MICHON’S are the first wording in the marks, consumers will focus on this wording for source identification, thereby making them the dominant features of the marks.
Additionally, though the applicant and registrant append the wording DAK and SMOKEHOUSE to the ends of their marks, these additions, too, do not obviate the similarities between the marks because the registrant disclaimed the wording SMOKEHOUSE in its mark as it refers to the fact that the registrant operates “[a] structure in which meat or fish is cured with smoke.” http://www.ahdictionary.com/word/search.html?q=smokehouse. Similarly, the applicant must disclaim the wording DAK in its mark for the reasons stated below because it merely describes a feature of the applicant’s restaurants, namely, the applicant serves chicken. Matter, including disclaimed matter, that is descriptive of or generic for a party’s services is typically less significant or less dominant in relation to other wording in a mark. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); see Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)); TMEP §1207.01(b)(viii), (c)(ii). Thus, this wording is less significant in terms of affecting the marks’ commercial impressions, and renders the wording MICHIN and MICHON’S the more dominant elements of the marks.
Lastly, though the registrant’s mark includes a design of a rectangle with rounded ends, this addition, as well, does not obviate the similarities between the marks because it is a common geometric shape that does not alter the commercial impression of the mark. Additionally, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). 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. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Therefore, this design is less significant in terms of affecting the mark’s commercial impression, and renders the wording MICHON’S the more dominant element of the mark.
Accordingly, the marks are confusingly similar.
Relatedness of the Services
Here, the applicant's and registrants’ restaurants are closely related.
Specifically, the applicant’s “Restaurant”, “Restaurant services”, and “Restaurants” are identical to the registrants’ “Restaurant services” even though “Restaurant” and “Restaurants” in the applicant’s identification is not verbatim identical to the registrants’ identifications. Additionally, determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the registrations uses broad wording to describe “Restaurant services”, which presumably encompasses all services of the type described, including applicant’s more narrow “Restaurant services, including sit-down service of food and take-out restaurant services; Restaurant services, namely, providing of food and beverages for consumption on and off the premises”. 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 registrants’ 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 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 registrants’ services are related.
Because the marks are confusingly similar and the services are closely related, consumers are likely to be confused as to the source of the services. Thus, registration is refused pursuant to Trademark Act Section 2(d).
Response to Refusal
Although the applicant's mark has been refused registration, the applicant may respond to the refusal by submitting evidence and offering argument against the refusal and in support of registration.
REQUIREMENTS
If the applicant responds to the refusal, then the applicant also must respond to the below requirements.
TRANSLATION REQUIRED
$125.00 REQUIRED FOR LOST TEAS PLUS STATUS
Applicant must submit an additional processing fee of $125 because the application as filed did not meet the TEAS Plus application filing requirements. See 37 C.F.R. §§2.6(a)(1)(v), 2.22(a), (c); TMEP §§819.01 et seq., 819.04. Specifically, applicant failed to meet the following application filing requirement: a translation of all non-English wording in the mark was not provided.
The additional fee is required even if applicant later corrects this application requirement.
DISCLAIMER REQUIRED
Applicant must provide a disclaimer of the unregistrable part of the applied-for mark even though the mark as a whole appears to be registrable. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). A disclaimer of an unregistrable part of a mark will not affect the mark’s appearance. See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
In this case, applicant must disclaim the wording “DAK” because it is not inherently distinctive. This unregistrable term at best is merely descriptive of a 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, as discussed above, the wording “DAK” is the Korean word for chicken, which is “[a] common domesticated fowl”. http://www.ahdictionary.com/word/search.html?q=chicken. Non-English wording that is merely descriptive in connection with the identified services, is an unregistrable component of the mark that is subject to disclaimer. TMEP §§1213.03(a), 1213.08(d); see Bausch & Lomb Optical Co. v. Overseas Fin. & Trading Co., 112 USPQ 6, 8 (Comm’r Pats. 1956). The disclaimer must refer to the actual non-English wording that appears in the mark, not the English translation of that wording. TMEP §1213.08(d).
In light of the preceding definition, the wording “DAK” in the applied-for mark merely describes a feature of the applicant’s restaurants, namely, the applicant serves chicken. Additionally, the attached evidence establishes that third parties routinely use the English equivalent of this wording to describe a feature of the same services. See, e.g., http://www.bigshakeshotchicken.com/ (serving chicken in a restaurant); http://www.usfriedchickencharlotte.com/aboutus.aspx (same); http://www.laweekly.com/microsites/wingsoverla (same). Thus, this wording must be disclaimed.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “DAK” 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.
RESPONSE GUIDELINES
/Kevin G. Crennan/
Trademark Examining Attorney
Law Office 113
(571) 272-7949
kevin.crennan@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.