Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  April 24, 2021

 

INTRODUCTION

 

This Office action is supplemental to and supersedes the previous Office action issued on December 16, 2020 in connection with this application.  Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new requirement(s):  Amendment to Mark Description and Color Claim Required based on the amended drawing. Applicant’s amended drawing is accepted and made part of the record.  See TMEP §§706, 711.02. 

 

In a previous Office action(s) dated December 16, 2020, 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 registered marks. Applicant did not include a Response to the Trademark Act Section 2(d) refusal based on a likelihood of confusion with the following registered marks: GRACE'S ON KIRBY (U.S. Reg No. 3848141), GRACE STREET (U.S. Reg No. 5286200), GRACE HOTELS (U.S. Reg No. 3931488), and GRACE & FLAVOR (U.S. Reg No. 6054070). Therefore, the Trademark Act Section 2(d) for a likelihood of confusion with registered marks is maintained and continued.

 

The following is a SUMMARY OF ISSUES that applicant must address:

 

• NEW ISSUE:  Mark Description Amendment Required
• NEW ISSUE: Advisory: Provided Translation Unnecessary – Term in English Dictionary
• NEW ISSUES: Advisory: Claim of Acquired Distinctiveness is Unnecessary

·       Maintained and Continued: Section 2(d) Refusal – Likelihood of Confusion

 

NEW ISSUE:  MARK DESCRIPTION AMENDMENT REQUIRED

 

Applicant must amend the color claim and description to identify all the colors in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §807.07(a)-(a)(ii).  The following colors have been omitted from the color claim:  blue.  In addition, the location of the colors in the mark were not included in the description. Further, applicant identified the colors radiant, neon, molten copper and gold color, however, generic color names must be used to describe the colors in a color claim and description, e.g., red, yellow, blue.  TMEP §807.07(a)(i)-(ii). Therefore, the color claim must be revised to reference generic colors.

 

A complete color claim must reference all the colors appearing in the drawing of the mark.  See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.  Similarly, a complete description of a mark depicted in color must specify where the colors appear in the literal and design elements of the mark.  See 37 C.F.R. §§2.37, 2.52(b)(1); TMEP §§807.07(a) et seq.  If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description.  See TMEP §807.07(d).

 

The following color claim and description are suggested, if accurate:

 

Color claim:  “The colors yellow, orange, and blue are claimed as a feature of the mark.”

 

Description:  “The mark consists of the stylized word "GRACE" in yellow text placed diagonally across the center of a yellow circle. The circle is broken on the right and left where the loop of the letter “g” and the terminal of the letter “e” cross the circumference. The background of the mark is blue. A gradient orange color outlines the wording and the circle design giving a glowing appearance.”

 

NEW ISSUE: ADVISORY: PROVIDED TRANSLATION UNNECESSARY – TERM IN ENGLISH DICTIONARY

 

Applicant’s English translation of GRACE in the application is unnecessary because this term appears in an English dictionary.  TMEP §809.01(b)(i); see 37 C.F.R. §2.32(a)(9).  The USPTO will disregard the translation; it will not be printed on any registration certificate that may issue from this application.  TMEP §809.03.

 

NEW ISSUES: ADVISORY: CLAIM OF ACQUIRED DISTINCTIVENESS IS UNNECESSARY

 

Applicant claims that the entire applied-for mark has acquired distinctiveness under Trademark Act Section 2(f) in part; however, the mark appears to be inherently distinctive and is eligible for registration on the Principal Register without proof of acquired distinctiveness.  See 15 U.S.C. §1052(f); TMEP §1212.02(d).  As this Section 2(f) claim appears to be unnecessary, applicant has the option to withdraw this claim.  See TMEP §1212.02(d).

 

Applicant may withdraw this claim by instructing the trademark examining attorney to delete it from the application record.  See id.  If applicant does not withdraw the claim, it will remain in the application record and be printed on the registration certificate.  See TMEP §1212.10.

 

A claim of acquired distinctiveness may be construed as a concession by applicant that the applied-for mark is not inherently distinctive.  See Cold War Museum, Inc. v. Cold War Air Museum, Inc., 586 F.3d 1352, 1358, 92 USPQ2d 1626, 1629 (Fed. Cir. 2009) (citing Yamaha Int’l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 1577, 6 USPQ2d 1001, 1005 (Fed. Cir. 1988)); TMEP §1212.02(b).

 

ADDITIONAL CONSIDERATIONS PERTAINING TO APPLICANT’S MARCH 12, 2021 RESPONSE TO OFFICE ACTION

 

CONTINUED REFUSAL - SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Applicant’s Response March 12 2021 included a negative translation statement, an amended drawing of the applied for mark, a claim of acquired distinctiveness, and a statement as to the significance of the mark. However, none of the information in the Response to Office Action was responsive to the refusal on the basis of Trademark Act Section 2(d) for a likelihood of confusion with the U.S. Registration Nos. 3848141, 5286200, 3931488, and 6054070.  Therefore the refusal to register the applied-for mark is continued and maintained because of a likelihood of confusion with the marks in U.S. Registration Nos. 3848141, 5286200, 3931488, and 6054070.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously attached registrations.

 

As indicated in the October 16, 2020 Office Action, the marks are confusingly similar as they are identical in part and contain the same prominent feature, the word “GRACE”. 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).  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).

 

As the marks are identical in part as to the word portion, they share a similar appearance and pronunciation in part. Additionally, as noted in the December 16, 2020 Office Action, the word GRACE is a common forename in the United States, consisting of the first name to over 242,000 individuals in the United States. The word GRACE is the sole term in the mark and would reasonably understood by the public to refer to a person named GRACE. Thus, the terms in the cited marks and the applied-for mark have a highly similar connotation. Applicant included the significance of the word GRACE in the March 12 2021 Response to Office Action, however, applicant did not address in the Response how the appearance, pronunciation, connotation, or overall commercial impression distinguishes the marks or reduces the likelihood of confusion between the applied-for mark and the registered marks. Therefore, applicant’s the March 12 2021 Response is not responsive to the likelihood of confusion refusal.

 

Finally, the design portions of the mark do not obviate the likelihood of confusion. 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).  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)).  Thus, the marks are confusingly similar.

 

The services identified as used in connection with the applied-for mark and the registered marks are related. The services are in the field of restaurant services and are of a kind that commonly emanate from the same source under the same mark. The previously attached Internet evidence featuring restaurants offering services similar to registrants and applicant demonstrate that the services are in the same channels of trade and are provided 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)).  Thus, applicant’s and registrants services are related.

 

Thus, a likelihood of confusion exists because the applied-for mark and the registered marks are confusingly similar in appearance, pronunciation, and connotation creating an overall similar commercial impression and the services at issue are closely related. Therefore, the refusal under Trademark Act Section 2(d) is continued.

 

HIRING TRADEMARK COUNSEL SUGGESTED

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information. 

 

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.

 

Applicant must respond to all issues raised in this Office action and the previous October 16, 2020 Office action, within six (6) months of the date of issuance of this Office action.  37 C.F.R. §2.62(a); see TMEP §711.02.  If applicant does not respond within this time limit, the application will be abandoned.  37 C.F.R. §2.65(a).

 

How to respond.  Click to file a response to this nonfinal Office action.    

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06. 

 

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. 

 

 

 

Mary Rummery

/Mary Rummery/

Examining Attorney

Law Officer 105

571-270-0964

Mary.Rummery@USPTO.GOV

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on April 24, 2021 for

U.S. Trademark Application Serial No. 90033647

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Mary Rummery

/Mary Rummery/

Examining Attorney

Law Officer 105

571-270-0964

Mary.Rummery@USPTO.GOV

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from April 24, 2021, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”