UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/314354
APPLICANT: Sunfield Foods Inc.
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: SOYFIT
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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RESPONSE TIME LIMIT: THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE.
QUESTIONS: For inquiries or questions about this Office action, please contact the assigned trademark examining attorney.
Serial Number 76/314354
Applicant must indicate the status of the relevant foreign application(s). Action on this application was suspended pending receipt of a true copy, a photocopy, a certification, or a certified copy of the certificate of registration(s) in the country of origin of applicant. 15 U.S.C. §1126(e); TMEP §§716.02(b) and 1004 et seq.
If applicant also has a Section 1 basis for registration, please note that applicant has the option to delete the Section 44(e) basis and proceed solely under the Section 1 basis. 15 U.S.C. §1051. If applicant chooses to delete the Section 44(e) basis, this Office will then approve the mark for publication without waiting for applicant to submit a copy of the foreign registration, after all other outstanding issues are resolved. TMEP §§806.02(f) and 806.04(b).
Please also note the previously filed application has now matured into a registration, therefore registration of the present application is refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, SOYFIT, when used on or in connection with the identified goods, so resembles the mark, SOYFIT, in U.S. Registration No. 2838989 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP section 1207. See the enclosed registration.
The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977). When the applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the points of difference." Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956). The respective marks are identical in sight, sound and commercial impression.
The goods of the parties need not be identical or directly competitive to find a likelihood of confusion. They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
In the instant case, the goods identified are highly related nutritional products. The applicant’s goods would be found in the same trade channels and utilized by the same class of purchasers as the registrant’s goods. Upon viewing identical marks on the related goods, these purchasers would mistakenly believe the goods emanated from a common source. Thus there is a likelihood of confusion as to the source of the goods and registration must be refused pursuant to Section 2(d) of the Trademark Act.
Effective January 31, 2005 and pursuant to the Consolidated Appropriations Act, 2005, Pub. L. 108-447, the following are the fees that will be charged for filing a trademark application:
(1) $325 per international class if filed electronically using the Trademark Electronic Application System (TEAS); or
(2) $375 per international class if filed on paper
These fees will be charged not only when a new application is filed, but also when payments are made to add classes to an existing application. If such payments are submitted with a TEAS response, the fee will be $325 per class, and if such payments are made with a paper response, the fee will be $375 per class.
The new fee requirements will apply to any fees filed on or after January 31, 2005.
NOTICE: TRADEMARK OPERATION RELOCATION
The Trademark Operation has relocated to Alexandria, Virginia. Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:
Commissioner for Trademarks
P.O. Box 1451
Alexandria, VA 22313-1451
Applicants, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at http://www.gov.uspto.report/teas/index.html.
/Karen K. Bush/
Trademark Examining Attorney
Law Office 105
571-272-9136
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm