To: | Schmitt, Brett (psweepers@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 88353084 - TACOS2GO - N/A |
Sent: | December 20, 2019 09:10:10 AM |
Sent As: | ecom104@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 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88353084
Mark: TACOS2GO
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Correspondence Address: 4603 SILVERHEEL, SHAWNEE, KS 66226
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Applicant: Schmitt, Brett
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Reference/Docket No. N/A
Correspondence Email Address: |
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FINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: December 20, 2019
INTRODUCTION
This Office action is in response to applicant’s communication filed on 12/05/2019.
In a previous Office action(s) dated 06/06/2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark; Descriptiveness under Trademark Act Section 2(e)(1).
Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.
The trademark examining attorney maintains and now makes FINAL the refusal(s) in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
U.S. Registration No. 4763679 is for the mark CALIFORNIA TACOS TO GO applied to the services of “restaurant services” in class 43.
U.S. Registration No. 2428307 is for the mark ANNA’S TAQUERIA BURRITOS & TACOS TO GO! applied to the services of “restaurant, catering, and food take-out services” in class 42.
The application is for the mark TACOS2GO applied to the goods of “Food package combinations consisting primarily of cheese, meat and/or processed fruit” in class 29.
Similarity of 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).
The marks are highly similar in sound, appearance, meaning, and commercial impression. Particularly, all of the marks have the common phrasing of TACOS TO GO.
Applicant argues that the proposed mark uses a number 2 instead of the word TO.
Similarity of Goods and Services
Applicant argues that packaged food and restaurant services would not be confusing. The examining attorney respectfully disagrees. Specifically, consumers are accustomed to both restaurant services and packaged food products having the same source in the marketplace.
In support of these channels of trade, in the first Office action of 06/06/2019, the examining attorney presented evidence of the third party registrations from the USPTO’s X-Search database to show that the same entity or source commonly provides both packaged food for sale as a good and restaurant services under the same mark.
Additionally, the attached Internet website evidence further establishes that the same entity commonly manufactures, produces, and provides the relevant goods and also provides the relevant services, and markets the goods and services under the same mark. See attached website evidence at:
Phillip’s
Restaurants: http://www.phillipsseafood.com/locations/
Packaged Food: http://www.phillipsseafood.com/locations/
Frontera
Restaurants: http://www.rickbayless.com/restaurants/frontera-grill/
Packaged Food:
and
http://www.fronterafoods.com/frozen-mexican-dinners
TGI Fridays
Restaurants: http://www.tgifridays.com/menu/dine-in
Packaged Food: http://www.fridaysinyourfreezer.com/
Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Conclusion
Because the marks are highly similar in sound, appearance, meaning, and commercial impression, and the goods and services are highly related, confusion is highly likely in this case. Thus, registration must be refused for a likelihood of confusion with the mark in U.S. Registration Nos. 4763679 and 2428307.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
In the first Office action of 06/06/2019, dictionary evidence was provided to show that a TACOS are a type of food consisting of a tortilla folded and stuffed with a mixture, typically of meat, cheese, and lettuce. Dictionary evidence was also provided to show that the wording TO GO describes a purchased cooked or prepared food bought to be taken elsewhere to eat.
The wording TACOS2GO would be immediately understood to describe tacos that can be taken elsewhere to eat. Website evidence was also provided to show that the wording TACOS2GO is commonly understood to describe tacos that can be taken elsewhere to eat.
The applicant’s goods are food package combinations consisting primarily of cheese, meat and/or processed fruit. When the mark is applied to the applicant’s goods, the consumer is immediately informed that the food packages are TACOS2GO, or tacos that are purchased and taken elsewhere to eat. Thus, the mark immediately describes a feature or characteristic of the goods, and must be refused.
It is noted that applicant did not argue against this refusal.
Generic Advisory
For the foregoing reasons, these refusals are maintained and made FINAL.
RESPONSE GUIDELINES
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.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Joanna M. Shanoski/
Joanna M. Shanoski
Examining Attorney
Law Office 104
Phone: (571) 272-9707
E-mail: Joanna.Shanoski@uspto.gov
RESPONSE GUIDANCE