To:
`
`Subject:
`
`Sent:
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`Sent As:
`
`Attachments:
`
`Evergreen USA LLC (trademark@psh.com)
`
`U.S. TRADEMARK APPLICATION NO. 87682304 - BUCCA - 11221-30
`
`9/4/2018 8:46:24 AM
`
`ECOM127@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`*87682304*
`
`GENERAL TRADEMARK
`INFORMATION:
`http://www.uspto.gov/trademarks/index.jsp
`
`VIEW YOUR APPLICATION FILE
`
`U.S. APPLICATION
`SERIAL NO.   87682304
`
`           
`
`MARK: BUCCA
`
`CORRESPONDENT
`ADDRESS:
`  
`     JOHN E.
`OTTAVIANI, ESQUIRE
`
`     PARTRIDGE SNOW
`  
`& HAHN LLP
`
`         40 WESTMINSTER
`ST STE 1100
`
`         PROVIDENCE, RI
`02903
`
`  
`
`    
`
`APPLICANT: Evergreen
`USA LLC
`
`    
`
`CORRESPONDENT’S
`REFERENCE/DOCKET
`
`NO:     
`
`    11221-30
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`   
`
`CORRESPONDENT
`
`E-MAIL ADDRESS:    
`
`    trademark@psh.com
`
`SUSPENSION NOTICE: NO RESPONSE NEEDED
`
`ISSUE/MAILING DATE: 9/4/2018
`
`The trademark examining attorney is suspending action on the application for the reason stated below.  See 37 C.F.R. §2.67; TMEP §§716 et
`
`seq.  
`
`MAINTENANCE DOCUMENTS DUE FOR CITED REGISTRATION(S):   Registration has been refused under Trademark Act Section
`2(d), 15 U.S.C. §1052(d), based on the cited registrations; however, registration maintenance documents are or were due to be filed for the
`registrations.  If registration maintenance documents are not or were not timely filed, the registrations will be cancelled under Section 8 or 71,
`and/or expire under Section 9 and will no longer present a bar to registration under Section 2(d). See 15 U.S.C. §§1058, 1059, 1141k; 37 C.F.R.
`§§2.160(a), 2.182, 7.36(b). Therefore, action on this application is suspended pending disposition of the cited registrations for six months, after
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`which time the trademark examining attorney will determine whether to withdraw the Section 2(d) refusal. See 37 C.F.R. §2.67; TMEP
`§716.02(e).
`
`PRELIMINARY RESPONSE TO APPLICANT’S ARGUMENTS
`
`Applicant argues that the registered marks are not similar in appearance, sound, connotation, and commercial impression to applicant’s mark,
`and that the number of similar “BUCA” and “BUCCA” marks in use on similar goods has caused the wording to be diluted in the minds of
`consumers. Applicant’s arguments do not obviate the likelihood of confusion and are unpersuasive.
`
`Similarity of Marks
`
`Visual Similarity
`
`Applicant first argues that the addition of “DI BEPPO” at the end of registrant’s mark and stylization of one registrant’s mark causes the marks
`to “look nothing like applicant’s mark.”   However, regarding the addition of “DI BEPPO,” 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) (“VEUVE . . . remains a ‘prominent feature’ as the first word in the mark
`and the first word to appear on the label”); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (“[T]he dominance of BARR in
`[a]pplicant’s mark BARR GROUP is reinforced by its location as the first word in the mark.”); 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). 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 1958, 1960 (TTAB 2016) (citing Spoons Rests.
`Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam , 972 F.2d 1353 (Fed. Cir. 1992)); TMEP §1207.01(b). Purchasers
`with a general recollection of the marks are likely to recall the first word of the marks.  Also, “BUCCA” and “BUCA” are nearly identical in
`appearance.  The only difference between the wording is applicant’s addition of a repeated “C” in the middle of the word.
`  Since “BUCA” is
`the first term of registrant’s mark, “BUCA” is the wording which is most likely to be impressed upon the mind of a purchaser and remembered.
`Thus, the addition of “DI BEPPO” does not obviate the likelihood of confusion between applicant and registrant’s mark because the wording
`“BUCA” and “BUCCA” visually nearly identical.
`
`The similarity between the marks are more problematic regarding Reg. No. 4173012 and its stylization.  Whilst “BUCA” is considered to be the
`most dominant wording in the registrations because it is the first word, “BUCA” is even more dominant in the stylized mark.   In Reg. No.
`4173012, “BUCA” appears to be more than twice the size of the other wording, further cementing “BUCA” as the part of the mark which is
`most likely to be impressed upon the mind of a purchaser and remembered.
`
`However, applicant contends that the mere inclusion of stylization of this mark distinguishes it from applicant’s mark.   Applicant has filed a
`standard character mark. 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 marks 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”).   Thus, applicant is free to
`stylize their mark in any manner, including registrant’s stylization.   Because applicant is free to stylize their mark in this manner, applicant’s
`mark is confusingly similar to registrant’s mark because of the similarities of “BUCA and “BUCCA.” Therefore applicant’s argument that
`
`registrant’s stylization looks nothing like registrant’s mark is unpersuasive.  
`
`Sound Similarity
`
`Applicant’s next argument is similar to their first; registrant’s addition of “DI BEPPO” causes their mark to sound differently than applicant’s
`mark.  However, the same principle about the dominance of the first word remains the same.  Furthermore, applicant concedes that “BUCA”
`and “BUCCA” are identical in sound.   Applicant mentions that the products are not the type to be ordered over the telephone or orally in
`person.  This argument is unpersuasive because how consumers purchase goods in generally not a consideration for a likelihood of confusion
`analysis.  Consumers are free to purchase goods however is most convenient for themselves.    Neither applicant nor registrant have restrictions
`as to nature, type, channels of trade, or classes of purchasers. Thus it can be presumed that applicant’s and registrant’s goods could travel in the
`same trade channels or be marketed to the same class of purchasers, including ordered telephonically or in person.  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)). 
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`Applicant mentions that no evidence was given of Buca Inc. shorting the mark “BUCA DI BEPPO” to “BUCA” on goods in class 029 and 030
`even though evidence was given that Buca Inc. often shortens the wording for their restaurant services.  Although it is unclear if Buca Inc.
`shortens the mark of the goods, it would not be a far cry if Buca Inc. were to shorten the mark.  Considering that the previous evidence submitted
`demonstrates that shortening to “BUCA” is a common practice for Buca Inc, and that using the dominate term of a mark as short hand for goods
`or services, it is not unlikely that Buca Inc. would shorten mark for their goods, i.e., Buca Olives.
`
`Thus applicant’s argument concerning the sound of the marks are unpersuasive
`
`Connotation
`
`Applicant states that, as far as applicant is aware, “BUCCA” has no meaning in any language.   The registrations state that BUCA DI BEPPO
`means “Joe’s Cave” in Italian.
`  Although the marks appear to not share a similar translation, an ordinary consumer would not immediately
`know the meanings of either mark.  Thus, purchasers are likely to rely on the nearly identical appearance and identical sounds of the dominant
`part of the marks.  Here, the connotation to purchaser would merely be that they are purchasing goods from marks that look nearly identical and
`sound identical. Such similarities 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).
`
`DILUTION
`
`Last, Applicant has submitted printed or electronic copies of third-party registrations for marks containing the wording “BUCA” to support the
`argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection.  These registrations
`
`appear to be for goods and/or services unrelated and predominantly different from the goods identified in applicant’s application.  
`
`The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the
`marketplace in connection with similar goods and/or services.  See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc.
`, 937 F.2d 1572,
`1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A.
`1973).  Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively
`weak and entitled to only a narrow scope of protection” in that particular industry or field.  Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
`Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345,
`
`68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003).  
`
`However, evidence comprising of third-party registrations for similar marks with different or unrelated goods and/or services, as in the present
`case, has “ no bearing on the strength of the term in the context relevant to this case.”   See Tao Licensing, LLC v. Bender Consulting Ltd.,
`125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751)).  Applicant has submitted
`evidence of other registrant’s using the wording “BUCA” for:
`
`“Buca Boot” Reg No. 4875427 - Bicycle accessories, namely, panniers adapted for bicycles, transporting bags adapted for bicycles, open
`carrying compartments adapted for bicycles, closable carrying compartments adapted for bicycles, and lockable carrying compartments
`adapted for bicycles
`“Buca Boot” Reg No. 4875427 - storage containers specially adapted for mounting on bicycles
`“Buca”    Reg No. 3920190 - Referral services in the field of child care; Referral services in the field of adult care; Business administration
`services in the field of child care; Business administration services in the field of adult care; Providing a web site featuring on-line
`reservation services for child care; Providing a web site featuring on-line reservation services for adult care; Child care services;
`Consultation services in the field of child care; Consultation services in the field of adult care; In-home adult care services, namely,
`providing senior persons assistance with personal affairs and personal care in the nature of activities of daily living such as bathing,
`grooming, and personal mobility
`“Bucas”    Reg No. 1972726 - saddle girths; halters; reins; horse rugs; leggings for horses; numnahs and saddle blankets
`“Buca”    Reg No. 2058534 - Clay
`
`   Thus, these third-party registrations submitted by applicant are insufficient to establish that the wording BUCA is weak or diluted.  Therefore,
`
`applicant’s argument of the wording BUCA is weak, diluted, or so widely used that it should not be afforded a broad scope of protection is
`unpersuasive.
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`SUSPENSION INCOMING
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`The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark
`examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based.  TMEP
`§§716.04, 716.05.  Applicant will be notified when suspension is no longer appropriate.  See TMEP §716.04.
`
`No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or
`Letter of Suspension” form online at http://teasroa.uspto.gov/rsi/rsi.
`
`   
`
`Dean, Jules
`
`/Jules Dean/
`
`Trademark Examining Attorney, Law Office 120
`
`Phone: (571) 272-5322
`
`Jules.Dean@uspto.gov
`
`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 Trademark Electronic Application System (TEAS) form at
`http://www.uspto.gov/trademarks/teas/correspondence.jsp.
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`To:
`
`Subject:
`
`Sent:
`
`Sent As:
`
`Attachments:
`
`Evergreen USA LLC (trademark@psh.com)
`
`U.S. TRADEMARK APPLICATION NO. 87682304 - BUCCA - 11221-30
`
`9/4/2018 8:46:25 AM
`
`ECOM127@USPTO.GOV
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`
`IMPORTANT NOTICE REGARDING YOUR
`U.S. TRADEMARK APPLICATION
`
`USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED
`ON 9/4/2018 FOR U.S. APPLICATION SERIAL NO.87682304
`
`Please follow the instructions below:
`
`(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov/, enter the U.S. application serial number, and click on
`“Documents.”
`
`The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24
`hours of this e-mail notification.
`
`(2)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For
`technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail
`TSDR@uspto.gov.
`
`WARNING
`
`PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are
`using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that
`closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay
`
`“fees.”   
`
`Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document
`from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States
`Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”   For more information on how to handle
`private company solicitations, see http://www.uspto.gov/trademarks/solicitation_warnings.jsp.
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