To: | Different Rules, LLC (dmtmdocketing@sheppardmullin.com) |
Subject: | U.S. Trademark Application Serial No. 88725495 - THE ROOST REPUBLIC - 07DK-307799 |
Sent: | March 13, 2020 01:36:32 PM |
Sent As: | ecom105@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88725495
Mark: THE ROOST REPUBLIC
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Correspondence Address: SHEPPARD MULLIN RICHTER & HAMPTON LLP 12275 EL CAMINO REAL, SUITE 200
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Applicant: Different Rules, LLC
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Reference/Docket No. 07DK-307799
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: March 13, 2020
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark THE ROOST REPUBLIC is refused because of a likelihood of confusion with the mark ROOST CHICKEN SALAD & DELI in U.S. Registration No. 5906678. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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. 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] and differences in the marks.”); TMEP §1207.01.
In this case, the applied-for mark is likely to cause confusion because the compared marks are similar and the compared goods are related, as discussed below.
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In this case, applicant has applied for the mark THE ROOST REPUBLIC in standard characters.
Registrant has registered the mark ROOST CHICKEN SALAD & DELI in stylized form.
The marks contain the identical wording “ROOST.” 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); 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). Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). In the present case, registrant has disclaimed the wording “CHICKEN SALAD & DELI.” Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording “ROOST” the more dominant element of the mark.
Further, the applied-for mark is in standard characters. A mark in standard characters 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 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”). Accordingly, the stylization and design element in the registered mark are not sufficient to avoid a likelihood of confusion between the marks because the applied-for mark could be presented in the same manner of display.
Applicant’s mark and registrant’s mark are identical in part in appearance, sound, connotation, and commercial impression. As such, the marks are confusingly similar.
Comparison of Goods
In the present case, applicant has applied for its mark for use in connection with “Chicken, chicken strips, cheese, bacon, eggs, french fries, jalapenos, potato fries, onion rings, prepared meals and entrees consisting primarily of chicken” in International Class 29 and “Sandwiches, chicken sandwiches, marshmallow bars, cookies, bakery desserts, savory sauces used as condiments, sauces, dipping sauces, ketchup” in International Class 30.
Registrant has registered its mark for use in connection with, in relevant part, “Chicken salad” in International Class 29.
The attached evidence from http://www.davesdowntown.com/, http://cafe-express.com/, http://downtownproduce.com/, and http://chappysdeli.com/ shows Dave’s Downtown, Café Express, Downtown Produce, and Chappy’s Deli offering chicken salad, chicken sandwiches, chicken strips, french fries, and desserts. This evidence establishes that the same entity commonly produces the relevant goods and markets the goods under the same mark.
Thus, applicant’s and registrant’s goods 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 applicant and registrant’s marks and goods are similar, it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant. Accordingly, the proposed mark THE ROOST REPUBLIC creates a likelihood of confusion with a registered mark, and registration is properly refused on the Principal Register under Section 2(d).
CLARIFICATION OF IDENTIFICATION OF GOODS REQUIRED
The wording “jalapenos” in the identification of goods is indefinite and must be clarified because it fails to specify whether the jalapenos are fresh or processed. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
International Class 29: Chicken, chicken strips, cheese, bacon, eggs, french fries, pickled jalapenos, potato fries, onion rings, prepared meals and entrees consisting primarily of chicken.
International Class 30: Sandwiches, chicken sandwiches, marshmallow bars, cookies, bakery desserts, savory sauces used as condiments, sauces, dipping sauces, ketchup.
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.
ASSISTANCE
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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/Monica L. Beggs/
Examining Attorney
Law Office 105
(571) 272-6614
monica.beggs@uspto.gov
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