United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 90037012
Mark: GRACE
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Correspondence Address: |
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Applicant: Westover, Ryan, a citizen of the United ETC.
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Reference/Docket No. N/A
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: October 21, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. The 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.
1. Likelihood-of-confusion refusals.
A.
(as to “cocoa; coffee; coffee based beverages; cocoa based beverages; dressings for use with sandwiches; espresso; … lasagna; macaroni; macaroni and cheese; macaroni salad; frozen, prepared and packaged entrees consisting primarily of pasta; frozen, prepared and packaged meals consisting primarily of pasta; pasta; pasta salad; pasta shells; pies; pizza; pizza crust; pizza dough; pizza rolls; pizza sauce; ravioli; … spaghetti sauce; tomato sauce; sauces; pasta sauces”)
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3600200. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the referenced registration (second attachment).
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 any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1516 (TTAB 2016) (citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); see TMEP §1207.01. That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v). Additionally, the goods and/or services are compared to determine whether they are similar or 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, (a)(vi).
i. Comparison of goods/services.
The goods and/or services of the parties 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) (“even if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods and/or services 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).
In the instant case, certain of the applicant’s Class 30 goods…
cocoa; coffee; coffee based beverages; cocoa based beverages; dressings for use with sandwiches; espresso; … lasagna; macaroni; macaroni and cheese; macaroni salad; frozen, prepared and packaged entrees consisting primarily of pasta; frozen, prepared and packaged meals consisting primarily of pasta; pasta; pasta salad; pasta shells; pies; pizza; pizza crust; pizza dough; pizza rolls; pizza sauce; ravioli; … spaghetti sauce; tomato sauce; sauces; pasta sauces
…are similar in kind and/or closely related to the registrant’s goods…
[coffee and coffee extracts; ] tea and tea extracts; [ cocoa and preparations having a base of cocoa, sugar, ] rice, seasoning products for food, namely, chicken seasoning, fish seasoning and meat seasoning; condiments, namely, sauces, pepper sauces, hot sauces [, chutney and ketchup ]
…so the respective parties’ goods are likely to travel through the same channels of trade to the same classes of purchasers. To illustrate, the registrant’s “sauces” include the applicant’s “pizza sauce; … spaghetti sauce; tomato sauce; sauces; pasta sauces,” and the applicant’s “dressings for use with sandwiches” are related to the registrant’s “condiments,” and the applicant’s “cocoa; coffee; coffee based beverages; cocoa based beverages; … espresso” are related to the “tea and tea extracts” of the registrant (which also used to produce “coffee and coffee extracts; … cocoa and preparations having a base of cocoa”—demonstrating that such goods are marketed by the same entity under the same brand name), and the applicant’s many pasta items are related to the registrant’s “rice” (see first attachment).
ii. 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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
In the instant case, the applicant’s mark GRACE-inside-circle is similar to the registered mark GRACE-inside-oval (with crown) because they would be pronounced identically; thus the respective parties’ marks share a common appearance, sound, connotation, and overall commercial impression. The marks are phonetic equivalents and thus sound the same. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
As for the respective parties’ designs: 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/or 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)).
B.
(as to “restaurant services, take-out restaurant services, bar and cocktail lounge services”)
As in the applicant’s App. Ser. No. 90033647:
Registration of the applied-for mark is refused 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 attached registrations.
General Principles
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 and Registrants’ Marks and [Services]
Applicant has applied for the mark “GRACE” in connection with “Restaurant services, take-out restaurant services, bar and cocktail lounge services” in International Class 43.
U.S. Reg No. 3848141
Mark: GRACE'S ON KIRBY
Goods/Services:
“Restaurants” in International Class 43.
U.S. Reg No. 5286200
Mark: GRACE STREET
Goods/Services:
“Coffee and juice bar services; Restaurant and café services; Coffee and tea bars; Restaurant and bar services” in International Class 43.
U.S. Reg No. 3931488
Mark: GRACE HOTELS
Goods/Services:
“Hotels, motels, inns, restaurants, bars, and catering services; hotel, motel, inn, restaurant, bar and catering services” in International Class 43.
U.S. Reg No. 6054070
Mark: GRACE & FLAVOR
Goods/Services:
“Bar services; Café services” in International Class 43.
As Pertaining to U.S. Reg. No. 3848141 (GRACE'S ON KIRBY with design)
Comparison of the Marks GRACE'S ON KIRBY and GRACE
In the present case, both the applied-for mark and the registered mark begin with the wording “GRACE”. Indeed, the entirety of applicant’s mark, “GRACE”, is included in registrant’s mark, “GRACE'S ON KIRBY”. 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.
Further, the marks share a common connotation, namely, that of the first name “GRACE.” See the attached excerpt from an entertainment website featuring famous women named “GRACE”, indicating the public is familiar with the name “GRACE.”
Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. 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”). In this case, the prominent feature in both marks is the wording “GRACE”. Therefore, although registrant’s mark includes the additional wording “ON KIRBY”, which appears to merely indicate a location, the dominant commercial impression of the marks is the same, the wording “GRACE”.
Further, the public is familiar with restaurants abbreviating their marks to just the first word of their marks. For instance, Carrabba’s Italian Grill makes reference to itself as “Carrabba’s” on its website and in advertising. See attached excerpt from Carrabba’s Italian Grill. See also similar website excerpts from Panera Bread as “Panera” and Maggiano’s Little Italy as “Maggiano’s”. Therefore, the public seeing just the initial wording of the registered mark could reasonably be understood as an abbreviation of the registered mark.
Therefore, the marks are confusingly similar.
Relatedness of the Compared Services
Applicant’s services are identified as follows: “Restaurant services, take-out restaurant services, bar and cocktail lounge services”
Registrant’s services are identified as follows: “Restaurants” in International Class 43.
The registration and application each identify services in the field of restaurant services. Determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the application uses broad wording to describe “Restaurant services, take-out restaurant services, bar and cocktail lounge services”, which presumably encompasses all services of the type described, including registrant’s more narrow “Restaurants”. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s services are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)). Thus, applicant’s and registrant’s goods and/or services are related.
Thus, a likelihood of confusion exists because the marks create a confusingly similar commercial impression and the services at issue are closely related.
As Pertaining to U.S. Reg. No. 5286200 (GRACE STREET in standard characters)
Comparison of the Marks GRACE STREET and GRACE
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
In the present case, applicant has applied to register the mark “GRACE” with a circle design. Registrant’s mark is “GRACE STREET” in standard characters. As in the previous section, the wording of the applied for mark is completely encompassed in the registrant’s mark. Therefore, the word portion “GRACE” in each of these marks is identical in appearance and sound and thus the marks are identical in part. Additionally, as discussed in the previous section, these marks carry the same connotation of an individual’s name, with registrant’s full mark being the name “GRACE” combined with a word to indicate location. Further, the evidence referenced in the previous section provided examples of restaurants that abbreviated their full mark to just the first word in the mark. Thus, the relevant public is familiar with the practice of restaurants, such as registrant’s “GRACE STREET”, abbreviating to a single word, for example applicant’s mark “GRACE”.
Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Here, the marks share the similar terms “GRACE”, created a similar overall commercial impression.
A mark in typed or 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 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”). Here, the applied-for mark is written in a stylized manner, however, the registered mark is in standard characters and has the potential to be presented in the same style.
As discussed in the previous section, 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 services. See previous section for relevant citations. Thus, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar. See previous section for relevant citations. Therefore, the design portion of the applied-for mark does not obviate the likelihood of confusion with the registered mark.
Thus, the marks are confusingly similar.
Relatedness of the Compared Services
The 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 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).
Applicant’s services are identified as follows: “Restaurant services, take-out restaurant services, bar and cocktail lounge services” in International Class 43.
Registrant’s services are identified as follows: “Coffee and juice bar services; Restaurant and café services; Coffee and tea bars; Restaurant and bar services” in International Class 43.
The plain reading of the above identifications indicates that the applicant and registrant have common services, such as restaurant and bar services. As demonstrated in the previous section, restaurant services, similar to registrant’s services, travel in the same channels of trade as take-out restaurant services and bar and cocktail lounge services, similar to applicant’s services.
Further, bars featuring items such as coffee, juice, and tea are commonly incorporated into restaurants, bars, and cocktail lounges. The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar services as those of both applicant and registrant in this case. This evidence shows that the services listed therein, namely, take-out restaurant services, bar and cocktail lounge services, similar to applicant’s services, and coffee and juice bar services, restaurant and café services, and restaurant and bar services, similar to registrant’s services, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
Thus, a likelihood of confusion exists because the marks create a confusingly similar commercial impression and the services at issue are closely related.
As Pertaining to U.S. Reg. No. 3931488 (GRACE HOTELS with design)
Comparison of the Marks GRACE HOTELS and GRACE
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
In the present case, applicant has applied to register the mark “GRACE” with a circle design. Registrant’s mark is “GRACE HOTELS” with design. Thus, applicant and registrant share the common first word “GRACE”. As was the case in the previous sections, the wording of the applied-for mark, “GRACE”, is completely encompassed in the registrant’s mark, “GRACE HOTELS”. Therefore, the word portion “GRACE” in each of these marks is similar in appearance and identical in sound. Additionally, as discussed in the previous section, these marks carry the same connotation of an individual’s name, with registrant’s full mark being the name “GRACE” combined with a descriptive word. See previous sections references and evidence for this similar in part discussion.
As previously noted, 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 services. See previous sections of this Office Action for references. Therefore, the design portion of the referenced marks does not obviate the likelihood of confusion and the marks are confusingly similar.
Relatedness of the Compared Services
The 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).
Applicant’s services are identified as follows: “Restaurant services, take-out restaurant services, bar and cocktail lounge services” in International Class 43.
Registrant’s services are identified as follows: “Hotels, motels, inns, restaurants, bars, and catering services; hotel, motel, inn, restaurant, bar and catering services” in International Class 43.
The plain reading of the identification of services found in the application and registration demonstrates similarities in service, namely, the shared services of restaurant and bar services. Indeed, it appears that all of applicant’s services more narrow services are of a type that may be offered by the registrant, reviewing the respective identifications alone.
Registrant offers additional services in the nature of hotel, motel, and inn services. However, these services are likely to be perceived by the public as being a complementary service to restaurants, as the relevant public is familiar with restaurants being a feature of hotels, motels, and inn services. The attached Internet evidence, consisting of excerpts from hotel websites featuring restaurant and cocktail services, establishes that the services are similar or complementary in terms of purpose or function. See attached websites from Four Seasons Hotel Washington D.C., the Watergate Hotel, and 1 Hotel South Beach. See also attached article from Washington Magazine discussing 13 hotels with notable restaurants in Washington DC. Thus, applicant’s and registrant’s 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).
The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar services as those of both applicant and registrant in this case. This evidence shows that the services listed therein, namely, restaurant and hotel services, similar to registrant’s services, and bar and cocktail lounge services, similar to applicant’s services, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii).
Thus, a likelihood of confusion exists because the marks create a confusingly similar commercial impression and the services at issue are closely related.
As Pertaining to U.S. Reg. No. 6054070 (GRACE & FLAVOR in standard characters)
Comparison of the Marks GRACE & FLAVOR and GRACE
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
As noted in the previous sections, the applied-for mark, “GRACE” with design, and the registered mark, “GRACE & FLAVOR” in standard characters, share the similar term “GRACE” creating a similar overall commercial impression. See previous sections discussions and evidence indicating the wording is identical in part. Further, the entirety of the wording in the applied-for mark, “GRACE”, is found in the registered mark. Thus, both words are pronounced identically, in part and share the same connotation, in part, that of the name “GRACE”. See previous sections discussions and evidence indicating the marks have a similar pronunciation, in part, and similar connotation. Further, as discussed in the previous section, a mark in standard characters may be presented in any fashion. See references in comparison with “GRACE STREET”. Therefore, while the applied-for mark is written in a stylized manner, the registered mark is in standard characters and thus the registered mark has the potential to be presented in the same style as the applied-for mark.
In the present case, the attached evidence shows that the wording “FLAVOR” in the registered mark is merely descriptive of or generic for the registrant’s café and bar services. The attached definition from online dictionary MacMillan dictionary defines the word “FLAVOR” as a pleasant or strong taste, thus the word merely describes the food and drink provided in registrant’s café and bar services. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording the more dominant element of the mark. Therefore, the additional wording in the registered mark does not obviate the likelihood of confusion between the two marks.
As previously noted, 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 services. See comparison with “GRACE'S ON KIRBY” discussion for evidence and references. Therefore, the design portion of the applied for mark does not obviate the likelihood of confusion and the marks are confusingly similar.
Relatedness of the Compared Services
The 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).
Applicant’s services are identified as follows: “Restaurant services, take-out restaurant services, bar and cocktail lounge services” in International Class 43.
Registrant’s services are identified as follows: “Bar services; Café services” in International Class 43.
The registration and application each identify services in the field of bar services. The registration also identifies the service “café service”. A café is a small restaurant selling light meals and drinks. See attached definition from online dictionary Lexico. Thus, registrant’s café services and applicant’s restaurant services are also similar. As noted in the previous sections, determining likelihood of confusion is based on the description of the services stated in the application and registration at issue, not on extrinsic evidence of actual use. See the “GRACE'S ON KIRBY” comparison above for citations. In this case, the application has broader services that encompass all of the services identified in the registration. See the “GRACE'S ON KIRBY” comparison above for citations. Thus, applicant’s and registrant’s services are legally identical.
Additionally, the services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)). Thus, applicant’s and registrant’s services are related.
Thus, a likelihood of confusion exists because the marks create a confusingly similar commercial impression and the services at issue are closely related.
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The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Accordingly, because confusion as to source is likely in the instant case, registration is refused under Trademark Act §2(d). Although the examining attorney has refused registration, the applicant may respond to the refusals to register by submitting evidence and arguments in support of registration.
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The stated refusals refers to the above-listed goods and services, and do not bar registration for the other goods and services:
Applicant may respond to the stated refusals by submitting evidence and arguments against the refusal. In addition, applicant may respond by doing one of the following:
(1) Deleting the goods and services to which the refusals pertain;
(2) Filing a Request to Divide Application form (form #3) to divide out the goods and services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods and services to which the refusals do not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusals. 37 C.F.R. §2.87(e).; or
(3) Amending the basis for the goods and services identified in the refusals, if appropriate. TMEP §806.03(h). (The basis cannot be changed for applications filed under Trademark Act Section 66(a). TMEP §1904.01(a).)
* * *
If the applicant responds to the above refusals to register, the applicant must also respond to the following.
2. Identification of goods/services.
An application’s identification of goods/services must be specific, definite, clear, accurate and concise. See In re Societe Generale des Eaux Minerales de Vittel S.A., 1 USPQ2d 1296 (TTAB 1986), rev'd on other grounds, 824 F.2d 957, 3 USPQ2d 1450 (Fed. Cir. 1987); Procter & Gamble Co. v. Economics Laboratory, Inc., 175 USPQ 505 (TTAB 1972), modified without opinion, 498 F.2d 1406, 181 USPQ 722 (C.C.P.A. 1974); In re Cardinal Laboratories, Inc., 149 USPQ 709 (TTAB 1966); California Spray-Chemical Corp. v. Osmose Wood Preserving Co. of America, Inc., 102 USPQ 321 (Comm'r Pats. 1954); Ex parte A.C. Gilbert Co., 99 USPQ 344 (Comm'r Pats. 1953); TMEP §1402.01.
In the instant case, the identification of services is unacceptable as containing indefinite and overbroad wording. Specifically, “restaurant services and the franchising of restaurant services” in Class 42 lists misclassified wording (“restaurant services,” which the applicant also properly lists in Class 43) followed by wording (“franchising of restaurant services”) that requires clarification for proper classification; see below.
Also, the wording “PIZZA ROLLS” in the identification of goods is a registered mark not owned by the applicant; accordingly, the applicant must amend the identification to delete this wording and provide the common commercial or generic name of the goods. TMEP §1402.09; see 37 C.F.R. §2.32(a)(6); Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958). See Appendix below for U.S. Registration Nos. 1382551 and 1390096. Identifications of goods and/or services should generally be comprised of generic everyday wording for the goods and/or services, and exclude proprietary or potentially-proprietary wording. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods or services that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ at 264 n.1). In the instant case, the applicant may replace such wording with the following, if appropriate: “pasta snacks filled primarily with meat and/or cheese and spices.”
Accordingly, the applicant must clarify along the lines indicated below. The applicant may adopt the following identification (to the extent accurate):
Class 30—bread; bread sticks; cakes; cheese cake; cheese bread; cookies; cocoa; coffee; coffee based beverages; cocoa based beverages; dressings for
use with sandwiches; espresso; focaccia bread, focaccia sticks; lasagna; macaroni; macaroni and cheese; macaroni salad; frozen, prepared and packaged entrees consisting primarily of pasta; frozen,
prepared and packaged meals consisting primarily of pasta; pasta; pasta salad; pasta shells; pies; pizza; pizza crust; pizza dough; pizza rollspasta snacks filled primarily
with meat and/or cheese and spices; pizza sauce; ravioli; rolls; sandwiches; spaghetti sauce; tomato sauce; sauces; pasta sauces
Class 39—delivery services, namely, delivery of prepared food
Class 42—restaurant services and the franchising of restaurant services, namely planning and design of information technology systems for business franchises
Class 35—restaurant franchising, namely offering business management assistance in the establishment and/or operation of restaurants
Class 36—franchising services, namely providing financial information and advice regarding the establishment and/or operation of restaurants
Class 43—restaurant services, take-out restaurant services, bar and cocktail lounge services
An applicant may amend an identification of goods and services only to clarify or limit the goods and services; adding to or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07 et seq.
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 at http://tmidm.uspto.gov. See TMEP §1402.04.
3. Fee.
The application identifies goods and/or services that are classified in at least five classes; however, the applicant’s current fee structure is sufficient for only four classes. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01. Therefore, the applicant must either restrict the application to the number of classes covered by the fees already paid, or submit the fees for each additional class.
If the applicant prosecutes this application as a more-than-four–, rather than as a four-, class application, then the applicant must comply with both of the requirements below for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b) or a foreign registration under Trademark Act Section 44(e) or both:
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule at http://www.gov.uspto.report/trademarks/tm_fee_info.jsp).
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a multiple-class application based on Section 1(b) or Section 44 or both, and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, the applicant should visit http://www.gov.uspto.report/trademarks/law/multiclass.jsp.
4. Mark description.
The following description is suggested, if accurate:
The mark consists of "GRACE" in stylized script bifurcating a circle. The rectangular shape of the background [specify is or is not] claimed as a feature of the mark.
• Responding to this Office Action.
How to respond. Click to file a response to this nonfinal Office action.
/J. Brendan Regan/
Examining Attorney, Law Office 113
571-272-9212
brendan.regan@uspto.gov
RESPONSE GUIDANCE
APPENDIX TO OFFICE ACTION
Mark
PIZZA ROLLS
Goods and Services
IC 030. US 046. G & S: PASTA SNACKS, NAMELY [HAMBURGER FLAVOR PASTA SNACKS, CHEESEBURGER FLAVOR PASTA SNACKS, ] PEPPERONI AND CHEESE FLAVOR PASTA
SNACKS, SAUSAGE AND CHEESE FLAVOR PASTA SNACKS, [ AND SHRIMP AND CHEESE FLAVOR PASTA SNACKS ]. FIRST USE: 19670726. FIRST USE IN COMMERCE: 19670726
Mark Drawing Code
(1) TYPED DRAWING
Serial Number
73201439
Filing Date
January 26, 1979
Current Filing Basis
1A
Original Filing Basis
1A
Publication for Opposition Date
November 19, 1985
Change in Registration
CHANGE IN REGISTRATION HAS OCCURRED
Registration Number
1382551
Registration Date
February 11, 1986
Owner Name and Address
(REGISTRANT) PILLSBURY COMPANY, THE CORPORATION DELAWARE PILLSBURY CENTER MINNEAPOLIS MINNESOTA 55402
(LAST LISTED OWNER) GENERAL MILLS MARKETING, INC. CORPORATION DELAWARE NUMBER ONE GENERAL MILLS BLVD. MINNEAPOLIS MINNESOTA
55426
Assignment Recorded
ASSIGNMENT RECORDED
Type of Mark
TRADEMARK
Register
PRINCIPAL
Affidavit Text
SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20160106.
Renewal
2ND RENEWAL 20160106
Live Dead Indicator
LIVE
Attorney of Record
Joshua J. Burke
Mark
PIZZA ROLLS BRAND
Goods and Services
IC 030. US 046. G & S: PASTA SNACKS FILLED PRIMARILY WITH MEAT AND/OR CHEESE AND SPICES. FIRST USE: 19830210. FIRST USE IN COMMERCE: 19830210
Mark Drawing Code
(5) WORDS, LETTERS, AND/OR NUMBERS IN STYLIZED FORM
Serial Number
73413535
Filing Date
February 15, 1983
Current Filing Basis
1A
Original Filing Basis
1A
Publication for Opposition Date
January 21, 1986
Change in Registration
CHANGE IN REGISTRATION HAS OCCURRED
Registration Number
1390096
Registration Date
April 15, 1986
Owner Name and Address
(REGISTRANT) PILLSBURY COMPANY, THE CORPORATION DELAWARE PILLSBURY CENTER MINNEAPOLIS MINNESOTA 55402
(LAST LISTED OWNER) GENERAL MILLS MARKETING, INC. CORPORATION DELAWARE NUMBER ONE GENERAL MILLS BLVD. MINNEAPOLIS MINNESOTA
55426
Assignment Recorded
ASSIGNMENT RECORDED
Disclaimer Statement
NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE "BRAND" APART FROM THE MARK AS SHOWN
Type of Mark
TRADEMARK
Register
PRINCIPAL
Affidavit Text
SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20160426.
Renewal
2ND RENEWAL 20160426
Live Dead Indicator
LIVE
Attorney of Record
Joshua J. Burke
