To: | Cortopassi Partners (ipprosecutionsf@orrick.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88342342 - TRATTORIA - 5511-2 |
Sent: | 6/10/2019 1:00:59 PM |
Sent As: | ECOM107@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 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88342342
MARK: TRATTORIA
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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: Cortopassi Partners
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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: 6/10/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Summary of Issues
· Section 2(d) Refusal – Likelihood of Confusion
· Section 2(e)(1) Refusal – Mark is Merely Descriptive
· Registration Notice on Specimen
Section 2(d) Refusal – Likelihood of Confusion
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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.
Applicant has applied to register the mark “TRATTORIA” in standard characters for use in connection with “sauces; tomato-based sauces; ready-made sauces; tomato sauce; canned tomato sauce; spaghetti and pasta sauce; marinara sauce.” in International Class 30.
The mark in U.S. Registration No. 4435625 is “FRATELLI TRATTORIA” in stylized text for use in connection with “pasta sauce; pizza sauce; sauces; spaghetti sauce; tomato sauce” in International Class 30.
The mark in U.S. Registration No. 4400195 is “TRATTORIA ALFREDO” in standard character for use in connection with “bread, pastry, confectionery, namely, biscuits, cookies, chocolate, chocolate candy, peanut butter confectionery chips, confectionery chips for baking, chocolate mousse, chocolate truffles, pralines, chocolate covered nuts and almonds, marzipan, liquorices, candies, chewing gum, sweetmeats, lollipops, candy covered popcorn, candy mints, caramel, toffee, edible ices, pasta, pizza, baguettes, prepared meals consisting primarily of noodles; sauces, namely, soy sauce, spaghetti sauce, fruit sauces excluding cranberry sauce and applesauce, tartar sauce, tomato sauce, artichoke sauce, barbecue sauce, cheese sauce, ketchup, mustard, mayonnaise, ready made sauces, teriyaki sauce, chocolate sauce; prepared, refrigerated or deep-frozen meals consisting primarily of rice or pasta and also containing meat, fish, poultry, game, sausages, fruits, vegetables, mushrooms, potatoes, cheese or cream” in International Class 30.
The mark in U.S. Registration No. 5283157 is “TRATTORIA ALFREDO” in standard character for use in connection with “bread; pastry; confectionery, namely, frozen confectionery, confectionery made of sugar, confectionery chips for baking; gateaux; edible ices; pasta; pizzas; baguettes; prepared meals consisting primarily of pasta; sauces being condiments; prepared meals, included in this class, consisting primarily of rice or pasta served with added meat, fish, poultry, game, sausage, prepared fruit, prepared vegetables, processed mushrooms, processed potatoes, cheese, or cream; including the aforesaid goods being chilled or frozen” in International Class 30.
The mark in U.S. Registration No. 5254976 is “TRATTORIA PARISI” in standard character for use in connection with “pasta sauce [and] sauces” in International Class 30.
Comparison of the Goods
The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The compared goods need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
The applicant’s relevant goods include “sauces; tomato-based sauces; ready-made sauces; tomato sauce; canned tomato sauce; spaghetti and pasta sauce; marinara sauce” in International Class 30.
The relevant goods of the mark in U.S. Registration No. 4435625 are “pasta sauce; sauces; spaghetti sauce; [and] tomato sauce” in International Class 30.
The relevant goods of the mark in U.S. Registration No. 4400195 are “sauces, namely, spaghetti sauce, tomato sauce, ready-made sauces,” in International Class 30.
The relevant goods of the mark in U.S. Registration No. 5283157 are “sauces being condiments” in International Class 30.
The relevant goods of the mark in U.S. Registration No. 5254976 are “pasta sauce [and] sauces” in International Class 30.
Determining likelihood of confusion is based on the description of the goods 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)). All of the cited registrations include identifications that encompass or include different kinds of sauces.
In this case, the application uses broad wording to describe “sauces; tomato-based sauces; ready-made sauces; tomato sauce; canned tomato sauce; spaghetti and pasta sauce,” which presumably encompasses all goods of the type described, including all of the registrant’s more narrow goods. 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 goods 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 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 are related.
Because the goods of the applicant and the registrant’s are related or identical, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark is not entitled to registration.
Comparison 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).
In this case, applicant’s mark is “TRATTORIA.”
The mark in U.S. Registration No. 4435625 is “FRATELLI TRATTORIA.”
The mark in U.S. Registration No. 4400195 is “TRATTORIA ALFREDO.”
The mark in U.S. Registration No. 5283157 is “TRATTORIA ALFREDO.”
The mark in U.S. Registration No. 5254976 is “TRATTORIA PARISI.”
Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the totality of applicant’s mark is incorporated in of all of the cited registrations. Thus, the mark of the applicant is identical in part to all of the registrants.
Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). With regards to the mark in U.S. Registration No. 4435625, “FRATELLI TRATTORIA,” the addition of the word “FRATELLI” to registrant’s mark does not alter the mark sufficiently to obviate a likelihood of confusion finding. The identical portion of the mark appears on its own line and in a different font and stylization to the additional term in the mark, causing it to stand out and apart. Because of these differences, and the fact that applicant’s mark encompasses an identical half of the registrant’s, the marks can be held to be confusingly similar.
With respect to the marks in U.S. Registration Nos. 4400195 and 5283157, “TRATTORIA ALFREDO,” the term “ALFREDO” can be considered descriptive of or generic for the goods of both the applicant and the registrant and is thus less significant. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., __ F.3d __, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)); TMEP §1207.01(b)(viii), (c)(ii). Matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant in relation to other wording in a mark. 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)). In this case, the term “ALFREDO” is merely descriptive of or generic for “sauces, pasta sauces, and sauces being condiments.” Thus the term “ALFREDO” is less significant in terms of affecting the marks commercial impression, leaving the dominant element of the marks the identical term “TRATTORIA.” Because the dominant portion of the marks of the registrant are identical to that of the applicant, the marks can be held to be confusingly similar.
Finally, with regards to the mark in U.S. Registration No. 5254976, “TRATTORIA PARISI,” adding a house mark to an otherwise confusingly similar mark will not obviate a likelihood of confusion under Section 2(d). See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007) (finding CLUB PALMS MVP and MVP confusingly similar); In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE DIOR and CACHET confusingly similar); TMEP §1207.01(b)(iii). It is likely that goods sold under the marks of the applicant and the registrant would be attributed to the same source. See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007). Accordingly, in the present case, the marks are confusingly similar.
Notice
The examining attorney has noted and acknowledged applicant’s prior incontestable registration (73754511) for the identical mark. However, ownership of an incontestable registration does not give the applicant a right to register the same mark for different goods, even if they are closely related to the goods in the incontestable registration. See In re Merrill Lynch, Pierce, Fenner, & Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987) (incontestable registration of CASH MANAGEMENT ACCOUNT for credit card services did not automatically entitle applicant to registration of the same mark for broader financial services).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the refusal set forth below.
Section 2(e)(1) Refusal – Mark is Merely Descriptive
Registration is refused because the applied-for mark merely describes an ingredient, feature, characteristic, purpose, function or use of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
Applicant has applied for the mark “TRATTORIA” in standard characters for use in connection with “sauces; tomato-based sauces; ready-made sauces; tomato sauce; canned tomato sauce; spaghetti and pasta sauce; marinara sauce” in International Class 30.
The term “TRATTORIA” merely describes an aspect of applicant’s goods and does not serve as an indicator of source. As shown in the attached evidence from Merriam-webster.com and Wikipeida.org, the term “TRATTORIA” identifies a small Italian style restaurant that serves simple food, which would include pasta sauce. The attached evidence from Patsys.com, Raos.com, and Alvolodc.net demonstrates that Italian style restaurants traditionally sell and market their own brand of sauces. Therefore, the wording “TRATTORIA” merely describes and would be seen by consumers to be describing a feature of applicant’s goods (e.g., sauces that originate from Italian style restaurants or restaurants serving Italian food).
Therefore, the mark is merely descriptive and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
Comments
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.
/Faucette, Max/
Trademark Examining Attorney
Law Office 107
(571)270-5655
max.faucette@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.