UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 8/17/2009

 

THIS IS A FINAL ACTION.

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

On July 13, 2006, the previously assigned examining attorney refused registration of the proposed mark under Trademark Act Section 2(d) due to a likelihood of confusion with the marks BURGER CHEF in U.S. Registration No. 1776896 and BURGER CHEF plus design in U.S. Registration No. 1832980[1] and required a disclaimer of “BURGER.”

 

On January 15, 2007, the applicant responded to the Office Action by entering a disclaimer of “BURGER” and requesting suspension pending the cancellation of U.S. Registration Nos. 1776896 and 1832980, but not submitting any argument against the refusal of registration.

 

On January 16, 2007, the application was suspended pending the disposition of Cancellation No. 92046880.

 

On April 22, 2009, the cancellation proceeding was cancelled.

 

Accordingly, for the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 1776896 and 1832980.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).

 

Refusal of Registration under Trademark Act Section 2(d) Continued and Made FINAL

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark BURGER CHEF in U.S. Registration No. 1776896 and the mark BURGER CHEF plus design in U.S. Registration No. 1832980.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or 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).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 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 of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

 

Comparison of Marks

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  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).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 

U.S. Registration No. 1776896

Registrant’s mark is BURGER CHEF in typed drawing form. Applicant’s mark is BURGER CHEF in standard characters.

 

Similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); see TMEP §1207.01(b)(iv). In this case, in addition to having an identical sound, applicant’s mark is identical to registrant’s mark in appearance and commercial impression as well. Moreover, applicant’s mark does not contain any stylized elements or dissimilar wording to detract from the similarity to registrant’s mark.

 

U.S. Registration No. 1832980

Registrant’s mark is BURGER CHEF plus the design of a chef’s hat. The dominant portion of registrant’s portion is the wording BURGER CHEF. When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods and/or services.  Therefore, the word portion is normally accorded greater weight in determining likelihood of confusion.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); In re Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729, 735 (TTAB 1976); TMEP §1207.01(c)(ii).

 

Applicant’s mark is BURGER CHEF in standard characters. Applicant’s mark is identical in sound, appearance and commercial impression to the literal portion of registrant’s mark. The mere deletion of the design element from registrant’s mark is insufficient to obviate the similarity of applicant’s mark to registrant’s mark.

 

Comparison of Goods/Services

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, they need only be related in some manner, or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

Registrant’s services in both registrations are “restaurant services”. Applicant’s services are identically identified as “restaurant services.” Neither the registrations nor the present application include any limitation or restriction on commerce or channels of trade.

 

Likelihood of confusion is determined on the basis of the goods and/or services as they are identified in the application and registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); TMEP §1207.01(a)(iii).

 

In this case, both the registrant’s and applicant’s services are identified broadly.  Therefore, it is presumed that both the registration and application encompass all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(a)(iii); see, e.g., In re Americor Health Servs., 1 USPQ2d 1670, 1670-71 (TTAB 1986); In re Equitable Bancorporation, 229 USPQ 709, 710 (TTAB 1986).

 

Applicant’s goods are “frozen meat and fish”. While its goods are not directly competitive with applicant’s restaurant services, applicant’s goods fall within the normal range of expansion of registrant’s services. Any goods or services in the registrant’s normal fields of expansion should be considered when determining whether the registrant’s goods and/or services are related to the applicant’s goods and/or services.  TMEP §1207.01(a)(v); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581 1584 (TTAB 2007).  Evidence that third parties offer the goods and/or services of both the registrant and applicant suggest that it is likely that the registrant would expand its business to include applicant’s goods and/or services.  In that event, customers are likely to believe the goods and/or services at issue come from or, are in some way connected with, the same source.  In re 1st USA Realty Prof’ls, 84 USPQ2d at 1584 n.4; see TMEP §1207.01(a)(v).

 

Attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods and/or services as those of applicant and registrant in this case.  These printouts have probative value to the extent that they serve to suggest that the goods and/or services listed therein are of a kind that may emanate from a single source.  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).

 

Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  TMEP §1207.01(a)(ii); see In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S for retail grocery and general merchandise store services likely to be confused with BIGGS for furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding design for distributorship services in the field of health and beauty aids likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (holding 21 CLUB for various items of men’s, boys’, girls’ and women’s clothing likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE (stylized) for retail women’s clothing store services and clothing likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (holding STEELCARE INC. for refinishing of furniture, office furniture, and machinery likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (holding similar marks for trucking services and on motor trucks and buses likely to cause confusion).

 

Food products and food-related services have been considered related goods and services under Trademark Act Section 2(d).  See In re H. J. Seiler Co., 289 F.2d 674, 129 USPQ 347 (C.C.P.A. 1961) (holding SEILER'S catering services likely to be confused with SEILER'S smoked and cured meats); In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001) (holding OPUS ONE for restaurant services likely to be confused with the identical mark for wine); In re Comexa Ltda., 60 USPQ2d 1118 (TTAB 2001) (holding AMAZON for restaurant services likely to be confused with AMAZON and design for chili sauce and pepper sauce); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999) (holding AZTECA MEXICAN RESTAURANT for restaurant services likely to be confused with AZTECA for Mexican food products); In re Golden Griddle Pancake House Ltd., 17 USPQ2d 1074 (TTAB 1990) (holding GOLDEN GRIDDLE PANCAKE HOUSE for restaurant services likely to be confused with GOLDEN GRIDDLE for table syrup); In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988) (holding MUCKY DUCK with duck design used on mustard likely to be confused with MUCKY DUCK with duck design used on restaurant services); In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987) (holding APPETITO and design used on Italian sausage likely to be confused with A APPETITO'S with sandwich design used on restaurant services); In re Best W. Family Steak House, Inc., 222 USPQ 827 (TTAB 1984) (holding BEEFMASTER used on restaurant services likely to be confused with BEEF MASTER used on frankfurters and bologna); Roush Bakery Prods. Co. v. Ridlen, 190 USPQ 445 (TTAB 1976) (holding HILLBILLY and design used on bread likely to be confused with HILLBILLY RESTAURANT used on restaurant services); In re Pick-N-Pay Supermarkets, Inc., 185 USPQ 172 (TTAB 1974) (holding PICK-N-PAY used on grocery items and supermarket services likely to be confused with PIK-N-PAY used on cafeteria services); TMEP §1207.01(a)(ii)(A).

 

Applicant’s mark is identical to the mark in U.S. Registration No. 1776896 and is identical to the literal element and dominant portion of the mark in U.S. Registration No. 1832980. In addition, applicant’s services are identical to registrant’s services. Applicant’s goods fall within the normal range of expansion of registrant’s services and are highly related to registrant’s services. Accordingly, the refusal of registration under Trademark Act Section 2(d) is continued and made FINAL.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Proper Response to Final Office Action

If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by: 

 

(1)     Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)     Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

If applicant has questions about its application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.

 

 

 

 

/Julie Thomas Veppumthara/

Examining Attorney

Law Office 107

Phone: 571-272-1582

Fax: 571-273-9107

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.uspto.gov/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.