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We have received your Request for Reconsideration after Final Action below.
ARGUMENT(S)
In response to the substantive refusal(s), please note the following:
EVIDENCE
Evidence in the nature of Applicant's substantive arguments and exhibits has been attached. 1
[evi_2161532230-20170307165052505426_._2017-03-
07_CREPES_BONAPARTE_rfr_FINAL_comb.pdf ]
The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of
the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other
federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate
thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a
Canadian attorney/agent not currently associated with his/her company/firm previously represented the
owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation
of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior
representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in
this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a
power of attorney appointing him/her as an associate attorney in this matter.
The applicant is filing a Notice of Appeal in conjunction with this Request for Reconsideration.
Thank you,
March 7, 2017
Samuel R. Paquin
Trademark Examining Attorney
Law Office
United States Patent and Trademark Office
The following is a request for reconsideration from Applicant, Brats Berlin, Inc., by
Counsel, in response to the Final Office Action sent via email on November 1, 2016, by
Examining Attorney Samuel R. Paquin.
confusingly similar to Reg. No. 4,670,082, . Applicant respectfully disagrees with the
Examining Attorneys refusal. Applicant incorporates its prior arguments and submits the
following additional evidence for consideration.
Third Party Registrations Show That Restaurant Services Routinely Coexist With Similar
Names
The Examining Attorney argues that Applicants mark is confusingly similar the cited
mark because both contain the surname BONAPARTE. Applicant has already argued that the
surname BONAPARTE has limited source-identifying significance and that the marks convey
page 2 Response to November 1, 2016 Office Action SN 87055289
Ex. Atty.: Samuel R. Paquin
Law Office
different consumer impressions based on different meanings and similarities to familiar naming
conventions. Applicant now submits evidence of third party registrations demonstrating that, in
the crowded field of restaurants and the food service industry, trademarks from different owners
sharing similar elements routinely coexist, even when the only distinguishing elements of the
marks are descriptive or generic.
The table below contains more than 25 pairings or groupings of trademarks registered by
different owners in connection with restaurant, caf, and other similar food services. See Table 1,
below (registration certificates attached as Exhibit A).1
TABLE 1: Coexisting Restaurant and Food Service Marks
4413779 4296766
4795086 4585143
4375228 3258492
4194818 3603082
4711731
1
Applicant notes that acquiring this type of evidence is inherently difficult due to the nature of
the searches necessary and the difficulties of using the TESS system. Applicant reasonably
believes there are many other such coexisting trademarks.
page 3 Response to November 1, 2016 Office Action SN 87055289
Ex. Atty.: Samuel R. Paquin
Law Office
0870229
4286172
MICHAELS
GENUINE FOOD & DRINK
3725094 MICHAELS DAIRY 5052354
5015968
3258450 3054192
4541373 4859514
3272467
4474314 4387627
page 4 Response to November 1, 2016 Office Action SN 87055289
Ex. Atty.: Samuel R. Paquin
Law Office
4864018 3522086
3543380 3522278
3921572 3904917
5107889 5138679
5136528
3087204
2111429 4754841
2790579
page 5 Response to November 1, 2016 Office Action SN 87055289
Ex. Atty.: Samuel R. Paquin
Law Office
SALS MEXICAN
SALS 2740963
RESTAURANT
5021144
4035146 3258646
4352447 5019512
3015553 2892598
4043547 3413943
4291722 3266540
These registrations show the coexistence of marks that are highly similar, sharing
identical dominant elements in connection with descriptive or generic terms. Some of these
coexisting marks closely resemble the comparison between Applicants mark and the cited mark.
For example, ANTIQUE CAF and ANTIQUE TACO both share the dominant element
ANTIQUE, but are differentiated by the term CAF and the name of a food item (TACO).
When the crowded field of restaurant marks and the coexistence of so many similar
marks are considered alongside the substantial differences in the meanings Applicants mark and
the cited mark, it is clear that there is no likelihood of confusion between the marks. The marks
convey very different consumer impressions in a field in which even miniscule distinctions
inform consumers about the source of goods and services. Accordingly, there is no likelihood of
confusion and the Examining Attorney should withdraw the Section 2(d) refusal.
Applicant has responded to all issues raised in the Office Action. If any further
information or response is required, please contact Applicants attorney. The attorney may be
reached by telephone at 703-525-8009.
Respectfully submitted,
March 7, 2017
Samuel R. Paquin
Trademark Examining Attorney
Law Office
United States Patent and Trademark Office
No claim is made to the exclusive right to use the following apart from the mark as shown:
"DAIRY"
The name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular
living individual.
No claim is made to the exclusive right to use the following apart from the mark as shown:
"TEX MEX CAFE"
The name(s), portrait(s), and/or signature(s) shown in the mark does not identify a particular
living individual.
CLASS 43: Restaurant; restaurant and bar services; restaurant and bar services, including
Int. Cl.: 43 restaurant carryout services
Service Mark FIRST USE 2-5-2016; IN COMMERCE 2-5-2016
Principal Register The mark consists of the word "MESA "in script above the word "URBANA".
The English translation of the wording "MESA URBANA" in the mark is "URBAN MESA".
CLASS 25: Clothing items, namely, shirts, t-shirts, sweatshirts, and hats
CLASS 43: Restaurant and bar services, take-out restaurant services, and catering
No claim is made to the exclusive right to use the following apart from the mark as shown:
"TAQUERIA"
CLASS 43: Restaurant services, including sit-down service of food and take-out restaurant
Int. Cl.: 43 services, featuring Mexican food
Principal Register THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO ANY
PARTICULAR FONT STYLE, SIZE OR COLOR
No claim is made to the exclusive right to use the following apart from the mark as shown:
"MEXICAN RESTAURANT"
No claim is made to the exclusive right to use the following apart from the mark as shown:
"GRILLE"
CLASS 41: Entertainment services in the nature of presenting live musical performances
Int. Cl.: 41, 43
FIRST USE 4-30-1997; IN COMMERCE 4-30-1997
Service Mark
CLASS 43: Restaurant and bar services
Principal Register
FIRST USE 4-30-1997; IN COMMERCE 4-30-1997
No claim is made to the exclusive right to use the following apart from the mark as shown:
"GRILL" FOR INTERNATIONAL CLASS 043