UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
| U.S. APPLICATION SERIAL NO. 85655744 MARK: ASIAGO | |
| CORRESPONDENT ADDRESS: | CLICK HERE TO RESPOND TO THIS LETTER: http://www.uspto.gov/trademarks/teas/response_forms.jsp |
| APPLICANT: Consorzio Tutela Formaggio Asiago | |
| CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: | |
OFFICE ACTION
STRICT DEADLINE TO RESPOND TO THIS LETTER
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 1/10/2013
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.
SUMMARY OF ISSUES
- Likelihood of Confusion
- Prior Pending Application
- Disclaimer
- Clarification of Mark Sought to be Registered
- Advisory - Requirements for a Certification Mark
SECTION 2(d) REFUSAL - LIKELIHOOD OF CONFUSION
In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); TMEP §1207.01; see also In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). 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).
Applicant applied to register ASIAGO and design for cheese.
The registered mark is ASIAGO CELLO and design for “cheese.”
For a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and/or services. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)). Thus, although such 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, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
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); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).
In this case, both marks contain the term ASIAGO. It is the dominant element in both marks. ASIAGO is the only wording in applicant’s mark. As indicated above the word portion of a mark is more dominant. Thus, the addition of a design element in both marks does not obviate the likelihood of confusion. ASIAGO appears first in the registered mark.
The goods are identical. Both marks will be used for cheese.
Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).
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, 1025 (Fed. Cir. 1988).
Accordingly, registration is denied on the Principal Register.
PRIOR PENDING APPLICATION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant must disclaim the descriptive wording “ASIAGO” apart from the mark as shown because it merely describes applicant’s goods. See 15 U.S.C. §§1052(e)(1), 1056(a); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005); In re Gyulay, 820 F.2d 1216, 1217-18, 3 USPQ2d 1009, 1010 (Fed. Cir. 1987); TMEP §§1213, 1213.03(a).
Asiago refers to a type/style of cheese. Please see the following excerpts taken from a variety of websites about cheese.
http://www.eatwisconsincheese.com/cheese/article.aspx?cid=4
Asiago derives its name from a small town in northern Italy. In Italy, Asiago usually means Asiago Fresco (fresh), which has a mild flavor and semi-hard texture. In Wisconsin, cheesemakers age Asiago to develop sharper flavors. It resembles a cross between sharp white Cheddar and Parmesan.
http://www.ibfoods.com/store/item.asp?ITEM_ID=494&DEPARTMENT_ID=95
American Asiago is different than Italian Asiago both in texture and flavor. There are no holes in Asiago made in the U.S. and the cheese is much sharper than Italian Asiago, even when not aged. Stella Aged Asiago is very hard with a sharp taste but a richness and somewhat sweet, fruity flavor to go along with the sharpness, giving it depth and interest. Both are delicious table cheeses and nice for grating; compliments bread, salami and olives perfectly.
http://www.whatamieating.com/american_asiago.html
American Asiago
Language: English
Description: A semisoft cheese made with cow's milk, sometimes similar to Provolone. It has a rubbery, spongy paste and a smooth rind. The quality varies depending on the producers in North America. This cheese is eaten all year round and is made with raw, skimmed milk and contains 45% fat (dry), 29% fat (total). The curds are cooked and pressed. Affinage is from 3-5 months. It has a piquant, penetrating flavour but no smell.
http://lynnescountrykitchen.net/cheese/cheese.html
A sharp-flavored Italian cheese, originally made of sheep’s milk, now of cow’s milk. The poor man’s Parmesan. When young it is firm, slightly salty cheese and good for sandwiches. Best for grating when it becomes older and hardens. American Asiago isn’t as fine as cheese as its Italian counterpart.
(Fox News website)
The demand for some types of specialty cheeses has exploded, according to Dan Carter, chairman of artisan-cheese marketer Dan Carter Inc. Asiago cheese production jumped by 52.4 percent in a single year in 2001, Gorgonzola by 37.3 percent. In Wisconsin, still the nation's largest maker of cheese, some 233 million pounds of the stuff was artisan cheese — 11 percent of total cheese production in the state. Five years ago, specialty cheeses accounted for only 3 percent of the cheese made in Wisconsin.
Read more: http://www.foxnews.com/story/0,2933,57404,00.html#ixzz2HbUPKbRq
http://cheezman.com/index.php/popular-wi-cheeses/
Asiago derives its name from a small town in northern Italy. In Italy, Asiago usually means Asiago Fresco (fresh), which has a mild flavor and semi-hard texture. In Wisconsin, cheesemakers age Asiago to develop sharper flavors. It resembles a cross between sharp white Cheddar and Parmesan.
http://www.savorwisconsin.com/AllListings/prodbusiness.asp?recordid=754&type=product
Savorwisconsin features a wide variety of products from producers all across Wisconsin. Below is a list of Wisconsin businesses that produce Asiago. Click on any business listing to learn more.
Asiago cheese, while originating in Asiago, is now produced by a variety of cheese manufacturers in the United States. Please see the attached evidence consisting of 15 cheese manufacturers in the United States that make asiago cheese.
- Widmer Cheese
http://www.widmerscheese.com/products/Asiago-Cheese-12-oz.html
- Carr Valley Cheese
http://www.carrvalleycheese.com/aged-or-selected-by-owner-sid-cook/asiago.html
- Eau Galle Cheese
http://eaugallecheese.com/Asiago-Cheese
- Mouse House Cheese
http://www.mousehousecheese.net/proddetail.asp?prod=C-ASIAGO&cat=11
- Paolie Cheese
http://www.paolicheese.com/asiago.aspx
- Seguin’s Cheese
http://www.seguinscheese.com/products/Wisconsin-Romano%2C-Parmesan%2C-%26-Asiago-Cheese.html
- Crystal Farms Cheese
http://www.crystalfarmscheese.com/products/product-view.cfm?ProductID=218&sel1=&sel2=&sel3=
- Mullin’s Cheese
http://www.mullinscheese.com/index.php?option=com_content&view=category&layout=blog&id=35&Itemid=71
- Homestead Cheese
http://www.homesteadcheese.com/wisconsin-asiago-cheese.html
- Sartori Cheese
http://www.wisconsinchalet.com/SearchResults.asp?Search=asiago (Sartori)
- Henning’s Cheese
http://cheesestore.henningscheese.com/index.php?main_page=product_info&cPath=12&products_id=232
- Dairi Concepts
http://www.dairiconcepts.com/2008/04/17/world-class-cheeses-produced-by-dairiconcepts/
Springfield, MO. – DairiConcepts, L.P., gained international esteem at the 2008 World Championship Cheese Contest sponsored by the Wisconsin Cheese Makers Association.
DairiConcepts was awarded first place in its category for their Dry Grated Asiago Cheese
- Belgioioso Cheese
http://www.belgioioso.com/Asiago.htm
Aged at least 5 months, this sweet, nutty cheese has a wonderfully pronounced flavor that is perfect for snacking. A semi-hard table cheese, made from part skim milk, it is easily shredded into your favorite recipes or served cubed with beer or a full-bodied red wine.
- Boar’s Head
http://boarshead.com/products/detail/15010-mild-creamy-asiago
- Vella Cheese
http://www.vellacheese.com/pages/cheeses.html#italian
This cheese originated in the commune of Asiago in the province of Vicenza, region of II Veneto in Italy. It was originally made from sheeps' milk, but it is now universally made from cows' milk. The result is a sweet curd, grana-type cheese with a pleasant aroma. In concert with our other grating cheese, Dry Monterey Jack, Asiago may be used as a table cheese when young. Our founder, Thomas G. Vella, proudly claimed that this is the first Asiago made in California in 70 years.
A “disclaimer” is a statement that applicant does not claim exclusive rights to an unregistrable component of a mark; it does not affect the appearance of the mark. TMEP §1213. An unregistrable component of a mark includes wording and designs that are merely descriptive or generic of the goods and/or services, and is wording or an illustration that others would need to use to describe or show their goods and services in the marketplace. 15 U.S.C. §1052(e); see TMEP §§1209.03(f), 1213.03 et seq.
Applicant may submit the following standardized format for a disclaimer:
No claim is made to the exclusive right to use “ASIAGO” apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983).
UNCLEAR IF TRADEMARK OR CERTIFICTION MARK IS SOUGHT
It is unclear as to whether applicant is seeking registration of a certification mark or a trademark. Applicant also filed co-pending application serial no. 85666956. The mark consists of the letter A and a design identical to the design in this application. In that application applicant seeks a certification mark. Therefore, applicant must specify which type of mark is intended. See TMEP §1307.
A trademark or service mark is used by the mark’s owner to indicate the source of his or her goods and/or services. See 15 U.S.C. §1127. A certification mark, however, is used by a person other than its owner and does not identify the source of goods or services but rather signifies that goods or services meet certain qualifications or standards. See id. Generally, there are three types of certification marks:
(1) Certification marks that certify that goods and/or services originate in a specific geographic region;
(2) Certification marks that certify that goods and/or services meet certain standards in relation to quality, materials, or mode of manufacture; and
(3) Certification marks that certify that members of a union or other organization performed the work or labor on the goods and/or services.
15 U.S.C. §1127; TMEP §1306.01.
Advisory
If applicant does seek to register a certification mark please state so for the record and then the following is required:
APPLICATION REQUIREMENTS FOR A CERTIFICATION MARK
STATEMENT OF LEGITIMATE CONTROL: Applicant must amend the application to provide the following statement: “As of the application filing date, applicant has had a bona fide intention to exercise legitimate control over the use of the certification mark in commerce that the United States Congress can regulate.” TMEP §1306.06(f)(iii); see 37 C.F.R. §§2.33(e)(1), 2.45(b); TMEP §804.05. This statement must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20. See 37 C.F.R. §§2.33(a), (e)(1), 2.34(a)(5), 2.45(b), 2.193(e)(1); TMEP §806.01(e).
CERTIFICATION STATEMENT: The application does not include the required certification statement. See 37 C.F.R. §2.45(b); TMEP §1306.06(f)(i). Therefore, applicant must submit a certification statement specifying the characteristics, standards or other features of the goods and/or services that the mark is intended to certify.
The certification statement should specify all of the characteristics or features of the goods and/or services that the mark is intended to certify. TMEP §1306.06(f)(i). A mark does not have to be limited to certifying a single characteristic or feature. The characteristics or features that the mark is intended to certify should be explained in reasonable detail. Terms such as “quality,” “mode of manufacture” or “excellence” should not be used without further explanation because they are too broad and do not accurately reveal what characteristics or features are intended to be certified. Id.
The following format is suggested:
The certification mark, as used by authorized persons, certifies that the cheese comes from the ASIAGO D.O.P. production area, as defined in the official standards, and satisfies certain quality standards.
CERTIFICATION STANDARDS: Applicant must submit a copy of its certification standards. See 37 C.F.R. §2.45(b); TMEP §1306.06(f)(ii). The standards do not have to be created by the applicant. They may be standards established by another party, such as specifications promulgated by a government agency, or standards developed through research of a private research organization. TMEP §1306.06(f)(ii).
STATEMENT ABOUT NOT ENGAGING IN PRODUCTION/MARKETING OF GOODS/SERVICES BEING CERTIFIED: The application does not include the required statement that applicant will not engage in the production or marketing of the goods or services to which the mark is applied. 37 C.F.R. §2.45(b); TMEP §1306.06(f)(v); see 15 U.S.C. §1054. Therefore, applicant must submit the following statement: “Applicant will not engage in the production or marketing of the goods or services to which the mark is applied.”
If applicant responds to this Office action online via TEAS, applicant must provide the declaration text below as an attachment to the TEAS response form. This declaration text is not available online.
DECLARATION:
The undersigned being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. §1001, and that such willful false statements and the like may jeopardize the validity of the application or document or any registration resulting therefrom, declares that he/she is properly authorized to execute this declaration on behalf of applicant; he/she believes that, as of the application filing date, the applicant has had a bona fide intention to exercise legitimate control over the use of the certification mark in commerce that the United States Congress can regulate; he/she believes the applicant to be entitled to exercise legitimate control over the use of the mark in commerce that the United States Congress can regulate; applicant will not engage in the production or marketing of the goods or services to which the mark is applied; to the best of his/her knowledge and belief, no other person, firm, corporation, or association has the right to use the mark in commerce that the United States Congress can regulate, either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods/services of such other person, firm, corporation, or association to cause confusion, or to cause mistake, or to deceive; and that all statements made of his/her own knowledge are true; and all statements made on information and belief are believed to be true.
_____________________________________________________
(Signature)
_____________________________________________________
(Print or Type Name and Position)
_____________________________________________________
(Date)
CLASSIFICATION OF GOODS
/Karen M. Strzyz/
Attorney Advisor
Office of the Deputy Commissioner
for Trademark Examination Policy
571-272-9419
karen.strzyz@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.uspto.gov/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.uspto.gov/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.