United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88582103
Mark: BYTE
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Correspondence Address: 40900 WOODWARD AVENUE SUITE 111
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Applicant: MICHAEL KATZ
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Reference/Docket No. N/A
Correspondence Email Address: |
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: November 16, 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.
Section 2(d) Refusal
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’s mark is “BYTE” (with bite mark design), and the identified services are:
“Restaurant services, namely, providing of food and beverages for consumption on and off the premises; Take-out restaurant services; Drive through restaurant services; Restaurants serving grilled, non-grilled and artisanal sandwiches, fresh cut fries, freshly squeezed lemonade; restaurant services featuring casual dining; Bar and restaurant services; Cafeteria and restaurant services; Café and restaurant services; Café-restaurants; Consulting in the field of restaurant menu development; Delicatessen services; Fast-food restaurant services; Fast-food restaurants; Fast-food restaurants and snack bars; Ice cream shop services in the nature of a restaurant; Mobile restaurant services; Providing progressive dinner events where participants sample meals and drinks at a series of restaurants; Providing reviews of restaurants; Providing reviews of restaurants and bars; Provision of food and drink in restaurants; Restaurant; Restaurant and bar information services; Restaurant and bar services; Restaurant and bar services, including restaurant carryout services; Restaurant and café services; Restaurant and catering services; Restaurant information services; Restaurant services; Restaurant services featuring sandwiches; 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; Restaurant, bar and catering services; Restaurants; Restaurants featuring home delivery; Salad bars; Self service restaurants; Self-service restaurants; Take-out restaurant services; Restaurants featuring home delivery; Food preparation services featuring fresh, properly proportioned, healthy meals designed to fuel metabolism and burn fat and made to order for delivery or pick up ”.
Registrant’s mark is “THE BYTE SHOP”, and the relevant services are:
“Snack bar services”.
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 does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark. Given the nature of the services, each mark uses the identical term “BYTE” as a play on words for the term “bite”. (This double entendre is further evidenced by the bite mark design appearing in the applied-for mark.) Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii).
In this case, both parties specify “snack bar” services, while Applicant’s other food services are frequently offered under the same mark and/or in the same channels of trade as “snack bar services”.
For example, attached U.S. Registration No. 5906782 identifies “snack bar services, restaurants, cafes, and cafeterias”, while U.S. Registration No. 5745005 specifies “café and snack bar services” as well as “consulting in the field of menu planning for others”. Similarly, attached web page screen captures from www.nancysrestaurant.com and www.midcarolinaclub.com demonstrate that such services are offered under the same mark and/or in the same channels of trade.
Identification of Services
THIS PARTIAL REQUIREMENT APPLIES ONLY TO THE SERVICES SPECIFIED THEREIN
Applicant must clarify the identification of services by deleting at least one instance of the following duplicate wording:
“Restaurant services, namely, providing of food and beverages for consumption on and off the premises; Take-out restaurant services; Restaurants featuring home delivery”.
TMEP §1402.01.
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.
Mark Description
The following description is suggested, if accurate:
The mark consists of the stylized term “BYTE”, with a bite mark imprint design appearing in the upper left portion of the letter “B” where a piece of the letter is missing.
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 response to this nonfinal Office action
/Nelson B. Snyder III/
Trademark Examining Attorney
Law Office 107
571-272-9284
nelson.snyder@uspto.gov (Informal comms only
RESPONSE GUIDANCE