UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 6/28/2019

 

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.

 

SUMMARY OF ISSUES

• Section 2(d) Refusal – Likelihood of Confusion
• Disclaimer Requirement

 

SECTION 2(d) REFUSAL - LIKELIHOOD OF CONFUSION  

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4655471, 4601291, 4676618, and 4761309.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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 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 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’s applied-for mark is: “SWEETEN YOUR LIFE BAKERY CAFE” for “Beverages made of coffee; Beverages made of tea; Biscuits; Bread; Buns; Cakes; Candy; Chocolate; Chocolate food beverages not being dairy-based or vegetable based; Cocoa; Cocoa beverages with milk; Coffee; Coffee-based beverage containing milk; Cookies; Custard; Edible fruit ices; Edible decorations for cakes; Farinaceous food pastes for human consumption; Fruit jelly candy; Honey; Ice cream; Iced tea; Milk chocolate; Noodles; Pancakes; Pastries; Pastries, namely, pasties; Pies; Pizza; Popcorn; Prepared cocoa and cocoa-based beverages; Processed oats; Rusks; Sandwiches; Sherbet; Sorbets; Spaghetti; Sushi; Sweetmeats; Tea-based beverages with fruit flavoring; Tortillas; Meat pies; Prepared coffee and coffee-based beverages” and “Aerated water; Aperitifs, non-alcoholic; Fruit juices; Fruit nectars; Fruit-based soft drinks flavored with tea; Grape must; Lemonades; Must; Non-alcoholic beverages containing fruit juices; Non-alcoholic beverages with tea flavor; Non-alcoholic cocktail mixes; Non-alcoholic fruit extracts used in the preparation of beverages; Soft drinks flavored with tea; Tomato juice beverages; Vegetable juices; Drinking water; Mineral water; Non-alcoholic fruit juice beverages; Seltzer water; Soda water; Whey beverages.”

 

The cited registered marks are:  

• Reg. No. 4655471: “SWEETEN YOUR LIFE” for “Bottles, sold empty; Boxes for sweetmeats; Bread bins; Cake molds; Candlesticks; Candy boxes; China ornaments; Chopsticks; Cleaning, dusting and polishing cloths; Coasters, not of paper and other than table linen; Cocktail shakers; Coffee filters not of paper being part of non-electric coffee makers; Coffee services; Comb cases; Confectioners' decorating bags; Containers for household or kitchen use; Cookery molds; Cookie cutters; Cookie jars; Portable coolers and Butter coolers; Cruets; Crumb trays; Crystal glasses, stemware, coffee services being tableware, tea services being tableware; Cups; Cutting boards for the kitchen; Dishes; Disposable table plates; Drinking flasks for travelers; Drinking glasses; Drinking straws; Drinking vessels; Figurines of porcelain, ceramic, earthenware or glass; Fitted picnic baskets; Flasks; Floss for dental purposes; Fruit cups, namely, cups for fruit; Glass jars; Glass bowls; Glass beverageware; Hand-operated coffee grinders; Heat-insulated containers for beverages; Household utensils, namely, spatulas; Ice buckets; Ice cube molds; Lunch boxes; Menu card holders; Mess-tins; Mugs; Non-electric coffee percolators; Non-electric coffeepots of precious metal; Non-electric fruit squeezers; Non-electric griddles; Paper and plastic cups; Paper plates; Pastry cutters; Pie servers; Piggy banks; Pitchers; Portable beverage coolers; Portable coldboxes; Serving trays, namely, cabarets; salt shakers and pepper shakers; Signboards of porcelain or glass; Tableware, other than knives, forks and spoons, namely, plates, saucers, serving bowls, sugar bowls, and tea pots; Tea balls; Tea caddies; Tea cozies; Tea services; Thermal insulated bags for food or beverages; Thermal insulated containers for food or beverages; Toilet tissue holders; Wine tasters.”
• Reg. No. 4601291: “SWEETEN YOUR LIFE” for “Bar services; Cafe; Cafeterias; Canteen services; Carryout restaurants; Cocktail lounges; Cocktail lounge buffets; Coffee-house and snack-bar services; Coffee shops; Food and drink catering; Office coffee supply service; Rental of cooking apparatus; Rental of chairs, tables, table linen, glassware; Rental of drinking water dispensers; Restaurants; Restaurants featuring home delivery; Salad bars; Self-service restaurants; Snack-bars; Tea rooms.”
• Reg. No. 4676618: “SWEETEN YOUR LIFE” for “Bar services; Cafe; Cafeterias; Food and drink catering; Rental of cooking apparatus; Rental of chairs, tables, table linen, glassware; Rental of drinking water dispensers; Restaurants; Self-service restaurants; Snack-bars; Tea rooms; Canteen services; Coffee-house and snack-bar services; Coffee shops; Carry-out restaurants; Cocktail lounges; Cocktail lounge buffets; Office coffee supply service; Restaurants featuring home delivery; Salad bars.”
• Reg. No. 4761309: “SWEETEN YOUR LIFE” for “Heat-insulated containers for beverages; glass bowls; boxes for sweetmeats; bread bins; cake molds; candlesticks; candy boxes; china ornaments; chopsticks; coasters, not of paper and other than table linen; hand-operated coffee grinders; non-electric coffee percolators; coffee services; non-electric coffeepots of precious metal; portable coldboxes; comb cases; confectioners' decorating bags; containers for household or kitchen use; cookery molds; cookie cutters; cookie jars; portable coolers and butter coolers; tea cosies; crumb trays; crystal glasses, stemware, coffee services being tableware, tea services being tableware; cups; fruit cups, namely, cups for fruit; paper and plastic cups; cutting boards for the kitchen; disposable table plates; drinking glasses; drinking straws; drinking vessels; figurines of porcelain, ceramic, earthenware or glass; flasks; drinking flasks for travellers; floss for dental purposes; glass jars; ice buckets; ice cube molds; thermal insulated bags for food or beverages; lunch boxes; menu card holders; mess-tins; mugs; paper plates; fitted picnic baskets; pie servers; piggy banks; wine tasters; pitchers; dishes; salt shakers and pepper shakers; signboards of porcelain or glass; tableware, other than knives, forks and spoons, namely, plates, saucers, serving bowls, sugar bowls, and tea pots; tea balls; tea caddies; tea services; bottles, sold empty; cleaning, dusting and polishing cloths; cocktail shakers; coffee filters not of paper being part of non-electric coffee makers; cruets; glass beverageware; household utensils, namely, spatulas; non-electric fruit squeezers; non-electric griddles; pastry cutters; portable beverage coolers; serving trays, namely, cabarets; thermal insulated containers for food or beverages; toilet tissue holders.”

 

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).

 

Applicant’s mark is “SWEETEN YOUR LIFE BAKERY CAFE”.

 

Registrant’s marks are for “SWEETEN YOUR LIFE”.

 

Applicant’s mark is confusingly similar to the registered mark because it merely adds descriptive wording to the registered mark. Adding a term to a registered mark generally 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 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 and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part.

 

Applicant’s mark fully contains registrant’s mark in its own. 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 marks are identical in part.

 

The design features in applicant’s mark are insufficient to distinguish it, especially since some of registrant’s marks are in standard characters and could appear in any stylization or design. 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 goods and 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)).

 

A mark in typed or standard characters, such as Reg. Nos. 4676618 and 4761309, may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).

 

Based on the foregoing, the applicant’s applied-for and registrant’s marks are sufficiently similar to find a likelihood of confusion.

 

Comparison of the Goods and Services

 

The compared goods and services 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 and services] 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).

 

Applicant’s mark is for “Beverages made of coffee; Beverages made of tea; Biscuits; Bread; Buns; Cakes; Candy; Chocolate; Chocolate food beverages not being dairy-based or vegetable based; Cocoa; Cocoa beverages with milk; Coffee; Coffee-based beverage containing milk; Cookies; Custard; Edible fruit ices; Edible decorations for cakes; Farinaceous food pastes for human consumption; Fruit jelly candy; Honey; Ice cream; Iced tea; Milk chocolate; Noodles; Pancakes; Pastries; Pastries, namely, pasties; Pies; Pizza; Popcorn; Prepared cocoa and cocoa-based beverages; Processed oats; Rusks; Sandwiches; Sherbet; Sorbets; Spaghetti; Sushi; Sweetmeats; Tea-based beverages with fruit flavoring; Tortillas; Meat pies; Prepared coffee and coffee-based beverages” and “Aerated water; Aperitifs, non-alcoholic; Fruit juices; Fruit nectars; Fruit-based soft drinks flavored with tea; Grape must; Lemonades; Must; Non-alcoholic beverages containing fruit juices; Non-alcoholic beverages with tea flavor; Non-alcoholic cocktail mixes; Non-alcoholic fruit extracts used in the preparation of beverages; Soft drinks flavored with tea; Tomato juice beverages; Vegetable juices; Drinking water; Mineral water; Non-alcoholic fruit juice beverages; Seltzer water; Soda water; Whey beverages.”

 

Registrant’s marks are for:

• “Bottles, sold empty; Boxes for sweetmeats; Bread bins; Cake molds; Candlesticks; Candy boxes; China ornaments; Chopsticks; Cleaning, dusting and polishing cloths; Coasters, not of paper and other than table linen; Cocktail shakers; Coffee filters not of paper being part of non-electric coffee makers; Coffee services; Comb cases; Confectioners' decorating bags; Containers for household or kitchen use; Cookery molds; Cookie cutters; Cookie jars; Portable coolers and Butter coolers; Cruets; Crumb trays; Crystal glasses, stemware, coffee services being tableware, tea services being tableware; Cups; Cutting boards for the kitchen; Dishes; Disposable table plates; Drinking flasks for travelers; Drinking glasses; Drinking straws; Drinking vessels; Figurines of porcelain, ceramic, earthenware or glass; Fitted picnic baskets; Flasks; Floss for dental purposes; Fruit cups, namely, cups for fruit; Glass jars; Glass bowls; Glass beverageware; Hand-operated coffee grinders; Heat-insulated containers for beverages; Household utensils, namely, spatulas; Ice buckets; Ice cube molds; Lunch boxes; Menu card holders; Mess-tins; Mugs; Non-electric coffee percolators; Non-electric coffeepots of precious metal; Non-electric fruit squeezers; Non-electric griddles; Paper and plastic cups; Paper plates; Pastry cutters; Pie servers; Piggy banks; Pitchers; Portable beverage coolers; Portable coldboxes; Serving trays, namely, cabarets; salt shakers and pepper shakers; Signboards of porcelain or glass; Tableware, other than knives, forks and spoons, namely, plates, saucers, serving bowls, sugar bowls, and tea pots; Tea balls; Tea caddies; Tea cozies; Tea services; Thermal insulated bags for food or beverages; Thermal insulated containers for food or beverages; Toilet tissue holders; Wine tasters.”
• “Bar services; Cafe; Cafeterias; Canteen services; Carryout restaurants; Cocktail lounges; Cocktail lounge buffets; Coffee-house and snack-bar services; Coffee shops; Food and drink catering; Office coffee supply service; Rental of cooking apparatus; Rental of chairs, tables, table linen, glassware; Rental of drinking water dispensers; Restaurants; Restaurants featuring home delivery; Salad bars; Self-service restaurants; Snack-bars; Tea rooms.”
• “Bar services; Cafe; Cafeterias; Food and drink catering; Rental of cooking apparatus; Rental of chairs, tables, table linen, glassware; Rental of drinking water dispensers; Restaurants; Self-service restaurants; Snack-bars; Tea rooms; Canteen services; Coffee-house and snack-bar services; Coffee shops; Carry-out restaurants; Cocktail lounges; Cocktail lounge buffets; Office coffee supply service; Restaurants featuring home delivery; Salad bars.”
• “Heat-insulated containers for beverages; glass bowls; boxes for sweetmeats; bread bins; cake molds; candlesticks; candy boxes; china ornaments; chopsticks; coasters, not of paper and other than table linen; hand-operated coffee grinders; non-electric coffee percolators; coffee services; non-electric coffeepots of precious metal; portable coldboxes; comb cases; confectioners' decorating bags; containers for household or kitchen use; cookery molds; cookie cutters; cookie jars; portable coolers and butter coolers; tea cosies; crumb trays; crystal glasses, stemware, coffee services being tableware, tea services being tableware; cups; fruit cups, namely, cups for fruit; paper and plastic cups; cutting boards for the kitchen; disposable table plates; drinking glasses; drinking straws; drinking vessels; figurines of porcelain, ceramic, earthenware or glass; flasks; drinking flasks for travellers; floss for dental purposes; glass jars; ice buckets; ice cube molds; thermal insulated bags for food or beverages; lunch boxes; menu card holders; mess-tins; mugs; paper plates; fitted picnic baskets; pie servers; piggy banks; wine tasters; pitchers; dishes; salt shakers and pepper shakers; signboards of porcelain or glass; tableware, other than knives, forks and spoons, namely, plates, saucers, serving bowls, sugar bowls, and tea pots; tea balls; tea caddies; tea services; bottles, sold empty; cleaning, dusting and polishing cloths; cocktail shakers; coffee filters not of paper being part of non-electric coffee makers; cruets; glass beverageware; household utensils, namely, spatulas; non-electric fruit squeezers; non-electric griddles; pastry cutters; portable beverage coolers; serving trays, namely, cabarets; thermal insulated containers for food or beverages; toilet tissue holders.”

 

Determining likelihood of confusion is based on the description of the goods and services stated in the application and registration at issue, not on evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Absent restrictions in an application and/or registration, the identified goods and services 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)).  Additionally, unrestricted and broad identifications are presumed to encompass all goods and services of the type described.  See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000). 

 

Applicant’s mark is for various beverages, and two of registrant’s marks are for café, bar, and restaurant services that sell beverages. Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  TMEP §1207.01(a)(ii); see In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (finding retail shops featuring sports team related clothing and apparel related to various clothing items, including athletic uniforms); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (finding retail grocery and general merchandise store services related to furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (finding distributorship services in the field of health and beauty aids related to skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (finding various items of men’s, boys’, girls’ and women’s clothing related to restaurant services and towels); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (finding refinishing of furniture, office furniture, and machinery related to office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (finding trucking services related to motor trucks and buses).

 

Further, the attached Internet evidence, from Starbucks, Peet’s Coffee, Illy, establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark. The evidence also shows that the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  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).

 

Accordingly, when consumers encounter coffee and other beverages sold under a partially identical mark that features café, bar, restaurant services and drink containers, they are likely to be confused.

 

Based on the analysis above, applicant’s and registrant’s goods and services are related.

 

Conclusion

 

Because applicant’s and registrant’s marks are similar and the goods and services are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Lanham Act.

 

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 requirements set forth below.

 

DISCLAIMER REQUIREMENT

 

Applicant has properly submitted disclaimers for the descriptive word in the mark; however, the disclaimer must be amended to fit the proper required format, disclaiming the words as they appear together in the mark as “BAKERY CAFE” rather than separately as “BAKERY” and “CAFE”. TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).  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).

 

Applicant may respond to this issue by submitting an amended disclaimer in the following format: 

 

No claim is made to the exclusive right to use “BAKERY CAFE” 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 AND ASSISTANCE: Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

ADVISORY: U.S. Counsel Rules Changes: In spring 2019, the USPTO is likely to issue proposed changes to the federal trademark regulations to require trademark applicants, registrants, and parties to Trademark Trial and Appeal Board proceedings who are foreign-domiciled (have a permanent legal residence or a principal place of business outside of the United States), including Canadian filers, to have an attorney who is licensed to practice law in the United States represent them at the USPTO.  In addition, U.S.-licensed attorneys representing a trademark applicant, registrant, or party will generally be required to provide their bar membership information, a statement attesting to their good standing in that bar, and their postal/email addresses in trademark-related submissions.  All U.S.-licensed attorneys who practice before the USPTO are subject to the rules in 37 C.F.R. Part 11 governing representation of others, including the USPTO’s Rules of Professional Conduct. 

 

These changes are being made to increase customer compliance with federal trademark law, improve the accuracy of trademark submissions to the USPTO, and safeguard the integrity of the U.S. trademark register.  See the U.S. Counsel Rule change webpage for more information.

 

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 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.  

 

 

/Kimberly M. Ray/

Examining Attorney

Law Office 122

(571) 272-7834

Kimberly.Ray@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 6/28/2019 FOR U.S. APPLICATION SERIAL NO. 88393151

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 6/28/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.