To: | Carbon Concepts LLC (keisler@nilanjohnson.com) |
Subject: | U.S. Trademark Application Serial No. 88509455 - CARBON - 53622-0003 |
Sent: | October 07, 2019 12:03:17 PM |
Sent As: | ecom103@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88509455
Mark: CARBON
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Correspondence Address: |
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Applicant: Carbon Concepts LLC
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Reference/Docket No. 53622-0003
Correspondence Email Address: |
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Issue date: October 07, 2019
The USPTO must receive applicant’s response to this letter within six months of the issue date above or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
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.
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. 3076689, 3383412, 4208614, 4407786, 4669532, 4738959, and 5199117. 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 so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and 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) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or 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.
Specifically, applicant seeks registration of CARBON (a standard character mark) for use with “Restaurant, bar, and/or catering services, including restaurant carry out services, featuring coal-fired foods; such services provided in various settings, namely, food halls, food trucks, pop-up booths, and restaurants,” in International Class 43.
El Pollo Regio IP, LLC holds a valid and subsisting United States service mark registration for EL POLLO REGIO POLLOS ASADOS AL CARBON and Design (Reg. No. 3076689) for use with “Restaurant, delicatessen and catering services,” in International Class 43.
MANI MBI (DE), LLC holds a valid and subsisting United States service mark registration for CARBON BEACH CLUB MALIBU BEACH INN in a stylized font (Reg. No. 3383412) for use with “Restaurant services,” in International Class 43.
Ta Carbon The Real Mexican Grill holds a valid and subsisting United States service mark registration for TA'CARBON THE REAL MEXICAN GRILL in a stylized font (Reg. No. 4208614) for use with “Restaurant services,” in International Class 43.
Major Intellectual LLC holds a valid and subsisting United States service mark registration for CARBONE RESTAURANT (a standard character mark) (Reg. No. 4407786) for use with “restaurant services; bar services,” in International Class 43.
Inversiones Alimenticias La Pampa S.A. holds a valid and subsisting United States service mark registration for SAN CARBÓN PARRILLA – BAR and Design (Reg. No. 4669532) for use with “Restaurant services; Bar services,” in International Class 43.
Carlos Roberts Avalos holds a valid and subsisting United States service mark registration for EL FOGONCITO EXQUISITOS TACOS AL CARBON in a stylized font (Reg. No. 4738959) for use with “Bar and restaurant services; Cafeteria and restaurant services; Café and restaurant services; Café-restaurants; Catering for the provision of food and beverages; Catering of food and drinks; Fast-food restaurants; Fast-food restaurants and snackbars; Food preparation; Rental of cooking apparatus; Rental of food service equipment; Restaurant; Restaurant and bar services, including restaurant carryout services; 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; Serving food and drinks,” in International Class 43.
Don Carbon Corporation holds a valid and subsisting United States service mark registration for DON CARBON (a standard character mark) (Reg. No. 5199117) for use with “Restaurant services,” in International Class 43.
In light of the similarities between the marks and given the relatedness of their uses, consumer confusion is likely.
COMPARISON 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 wording CARBBONE in the cited CARBONE RESTAURANT (Reg. No. 4407786) mark is in Italian, which is a common, modern language in the United States. See In re Ithaca Indus., Inc., 230 USPQ 702 (TTAB 1986).
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 Italian language is a common, modern language spoken by an appreciable number of consumers in the United States. The English translation of the wording CARBONE in the cited CARBONE RESTAURANT (Reg. No. 4407786) mark is “carbon,” which is identical to the applied-for mark. Given these similar elements the applied-for and cited CARBONE RESTAURANT (Reg. No. 4407786) marks create overall similar commercial impressions and are confusingly similar.
COMPARISON OF SERVICES
The goods and/or services 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 and/or 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/or 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).
The applied-for mark and each of the cited marks are used with restaurant services. Therefore, the parties’ marks are used with related services.
SUMMARY – LIKELIHOOD OF CONFUSION
In light of the similarities between the marks and the relatedness of the services, it is likely that consumers who encounter the parties’ services will falsely conclude that they originate from the same source.
Based on the foregoing, registration of the applied-for mark is refused under Trademark Act Section 2(d).
Applicant should note the following prior-filed application that may present a bar to the registration of the applied-for mark.
PRIOR-FILED APPLICATION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
INDEFINITE IDENTIFICATION OF SERVICES
An application must specify, in an explicit manner, the particular goods or services on or in connection with which the applicant uses, or has a bona fide intention to use, the mark in commerce. See 15 U.S.C. §1051(a)(2), (b)(2); 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Therefore, applicant should replace “and/or” or “or” with “and” in the identification of goods or services, if appropriate, or rewrite the identification with the “and/or” or “or” deleted and the goods or services specified using definite and unambiguous language.
Applicant may adopt the following wording, if accurate:
International Class 43 – Restaurant, bar, and catering services featuring coal-fired foods; carry-out restaurant services featuring coal-fired foods; all of the foregoing provided in various settings, namely, food halls, food trucks, pop-up booths, and restaurants
Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended. See TMEP §1402.06(a)-(b). The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification. TMEP §§1402.06(b), 1402.07(a)-(b). Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted. TMEP §1402.07(e).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
ADVISORY – RESPONSE ASSISTANCE
How to respond. Click to file a response to this nonfinal Office action
/Christopher M. Law/
Trademark Examining Attorney
Law Office 103
(571) 272-2913
christopher.law@uspto.gov
RESPONSE GUIDANCE