From: Abrams, Jacky
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`Sent: 5/18/2016 3:31:28 PM
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`To: TTAB EFiling
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`CC:
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`Subject: U.S. TRADEMARK APPLICATION NO. 86481412 - EAZY BBQ - 877430 - Request for
`Reconsideration Denied - Return to TTAB
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`*************************************************
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`Attachment Information:
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`Count: 1
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`Files: 86481412.doc
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`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. 86481412
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`MARK: EAZY BBQ
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`CORRESPONDENT ADDRESS:
` FRANK TERRANELLA
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` ABELMAN FRAYNE & SCHWAB
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` 666 THIRD AVENUE10TH FLOOR
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` NEW YORK, NY 10017
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`APPLICANT: Midy, Olivier Joel
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`CORRESPONDENT’S REFERENCE/DOCKET NO:
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` 877430
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`CORRESPONDENT E-MAIL ADDRESS:
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` fterranella@lawabel.com
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`*86481412*
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`GENERAL TRADEMARK INFORMATION:
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`http://www.uspto.gov/trademarks/index.jsp
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`VIEW YOUR APPLICATION FILE
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`REQUEST FOR RECONSIDERATION DENIED
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`ISSUE/MAILING DATE: 5/18/2016
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`The trademark examining attorney has carefully reviewed applicant’s request for reconsideration and is
`denying the request for the reasons stated below. See 37 C.F.R. §2.63(b)(3); TMEP §§715.03(a)(ii)(B),
`715.04(a). The following refusals made final in the Office action dated October 23, 2016 are maintained
`and continue to be final: Registration of the applied-for mark is refused because of a likelihood of
`confusion with the mark in U.S. Registration No. 3295871 . Trademark Act Section 2(d), 15 U.S.C.
`§1052(d); see TMEP §§1207.01 et seq. See TMEP §§715.03(a)(ii)(B), 715.04(a). Registration of the
`applied-for mark The following refusal of descriptiveness made final in the Office action is satisfied by
`the amendment to the Supplemental Register. See TMEP §§715.03(a)(ii)(B), 715.04(a).
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`SECTION 2(d) REFUSAL
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`The FINAL refusal based on U.S. Registration No. 3295871 . Trademark Act Section 2(d), 15 U.S.C.
`§1052(d); see TMEP §§1207.01 et seq. See TMEP §§715.03(a)(ii)(B), 715.04(a) is repeated and
`continued.
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`Registration No. 3295871 is for the mark EZBBQ and applicant’s proposed mark is EAZYBBQ and design.
`There is no argument that the goods are confusingly similar. Applicant’s argument is that because the
`marks are on the Supplemental Register there is a narrow scope of protection.
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`The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized
`that marks deemed “weak” or merely descriptive are still entitled to protection against the registration
`by a subsequent user of a similar mark for closely related goods and/or services. TMEP §1207.01(b)(ix);
`see King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974)
`(likelihood of confusion is “to be avoided, as much between ‘weak’ marks as between ‘strong’ marks, or
`as between a ‘weak’ and ‘strong mark’)); In re Colonial Stores, Inc., 216 USPQ 793, 795 (TTAB 1982)
`(“even weak marks are entitled to protection against registration of similar marks”). This protection
`extends to marks registered on the Supplemental Register. TMEP §1207.01(b)(ix); see, e.g., In re Clorox
`Co., 578 F.2d 305, 307-08, 198 USPQ 337, 340 (C.C.P.A. 1978); In re Hunke & Jochheim, 185 USPQ 188,
`189 (TTAB 1975).
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`The marks are essentially phonetic equivalents and thus sound similar. 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).
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`Applicant argues that EZ/EASY marks are quite diluted. However there is only the one registration for
`EZBBQ for use on the goods on the register. So the analysis is whether EZBBQ and EAZYBBQ are
`confusingly similar. Applicant’s design element is not dispositive. The word portions of the marks are
`nearly identical in appearance, sound, connotation, and commercial impression; therefore, the addition
`of a design element does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992
`F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
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`Where the goods and/or services of an applicant and registrant are identical or virtually identical, 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. See In re Bay State Brewing Co., 117 USPQ2d 1958,
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`1960 (TTAB 2016) (citing Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d
`1713, 1721 (Fed. Cir. 2012)); United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB
`2014) (quoting Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 USPQ2d 1698,
`1701 (Fed. Cir. 1992)); TMEP §1207.01(b).
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`When comparing marks, the test is not whether the marks can be distinguished in a side-by-side
`comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial
`impression that confusion as to the source of the goods and/or services offered under the respective
`marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046,
`1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Bay State Brewing Co., 117 USPQ2d 1958, 1960
`(TTAB 2016) (quoting Coach Servs., Inc. v. Truimph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713,
`1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average
`purchaser, who retains a general rather than specific impression of trademarks. In re Bay State Brewing
`Co., 117 USPQ2d at 1960 ( (citing Spoons Rests., Inc., v. Morrison, Inc., 23 USPQ2d 1735, 1741 (TTAB
`1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)); In re C.H. Hanson Co., 116 USPQ2d 1351, 1353
`(TTAB 2015) (citing Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107 USPQ2d 1424, 1430 (TTAB
`2013));TMEP §1207.01(b).
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`The FINAL refusal under Trademark Act Section 2(e)(1) is repeated and continued for the reasons set
`forth below. See 15 U.S.C. §1052(e)(1); 37 C.F.R. §2.63(b).
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`Applicant states that it will be amending to the Supplemental Register in order to obviate the
`descriptiveness refusal. Therefore, all the reasons and issues that were stated in the prior Office action
`are again repeated and FINAL refusal is continued.
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`Registration is refused because the applied-for mark merely describes the purpose and function of
`applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b),
`1209.03 et seq. The purpose and function of the goods is to make the EASY BBQ—make BBQ an easy
`thing.
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` A
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` mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature,
`purpose or use of the specified goods and/or services. TMEP §1209.01(b); see 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). Moreover, a mark that identifies a group of users to whom an
`applicant directs its goods and/or services is also merely descriptive. TMEP §1209.03(i); see In re
`Planalytics, Inc., 70 USPQ2d 1453, 1454 (TTAB 2004).
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`Two major reasons for not protecting descriptive marks are (1) to prevent the owner of a descriptive
`mark from inhibiting competition in the marketplace and (2) to avoid the possibility of costly
`infringement suits brought by the trademark or service mark owner. In re Abcor Dev. Corp., 588 F.2d
`811, 813, 200 USPQ 215, 217 (C.C.P.A. 1978); TMEP §1209. Businesses and competitors should be free
`to use descriptive language when describing their own goods and/or services to the public in advertising
`and marketing materials. See In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001).
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`In re Franklin Cnty. Historical Soc’y, 104 USPQ2d 1085, 1086 (TTAB 2012) (holding CENTER OF SCIENCE
`AND INDUSTRY merely descriptive of operating a museum and conducting workshops, programs, and
`demonstrations in the field of science); In re Phoseon Tech., Inc., 103 USPQ2d 1822, 1823 (TTAB 2012)
`(holding SEMICONDUCTOR LIGHT MATRIX merely descriptive of light and UV curing systems composed
`primarily of light-emitting diodes (LEDs) for industrial and commercial applications); In re Putman Publ’g
`Co., 39 USPQ2d 2021, 2021-22 (TTAB 1996) (holding FOOD & BEVERAGE ON-LINE merely descriptive of
`news and information service for the food processing industry); In re Copytele, Inc., 31 USPQ2d 1540,
`1541-42 (TTAB 1994) (holding SCREEN FAX PHONE merely descriptive of facsimile terminals employing
`electrophoretic displays).
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`In the present case, applicant’s request has not resolved all the outstanding issue, nor does it raise a
`new issue or provide any new or compelling evidence with regard to the outstanding issue in the final
`Office action. In addition, applicant’s analysis and arguments are not persuasive nor do they shed new
`light on the issues. Accordingly, the request is denied.
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`As applicant has already filed a timely notice of appeal with the Trademark Trial and Appeal Board, the
`Board will be notified to resume the appeal. See TMEP §715.04(a).
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`/Jacqueline W. Abrams/
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`Examining Attorney, Law Office 101
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`571-272-9185
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`jacky.abrams@uspto.gov INFORMAL ONLY