UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/570387
APPLICANT: Bioproducts, Inc.
|
|
CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
|
MARK: IMPROVING ANIMAL PERFORMANCE
|
|
CORRESPONDENT’S REFERENCE/DOCKET NO: 048-T-51
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.
|
Serial Number 76/570387
The assigned examining attorney has reviewed the referenced application and determined the following.
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant's mark, when used on or in connection with the identified goods, so resembles the mark in U.S. Registration No. 2,617,457 as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP §1207. See the attached registration.
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).
The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison. The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980). The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks. Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).
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 services 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).
The applicant's proposed mark is IMPROVING ANIMAL PERFORMANCE for “advertisement slogan for feed supplements for livestock.” The registrant's referenced mark is ENHANCING ANIMAL PERFORMANCE THROUGH NUTRITION for “animal feed supplements for livestock.” The respective marks share similar slogans. Although the registrant’s mark contains additional wording (THROUGH NUTRITION), the commercial impression of both slogans is likely to confuse purchasers of the source of the goods.
Because the respective marks are similar, the only issue before the examining attorney is whether the applicant's goods are so related to the registrant's goods that confusion as to source of origin or sponsorship is likely to occur. The examining attorney must conclude that they are so related, for it is foreseeable that customers of the applicant might encounter the registrant's respective goods and mark in the marketplace given the similar channel of trade within which the identified goods travel.
Confusion as to source of origin or sponsorship is extremely likely if the applicant's proposed mark is allowed to register. Therefore, registration is refused. Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
The applicant should also note the following additional ground for refusal.
The examining attorney refuses registration because a slogan is not a service or good under the Trademark Act. Trademark Act Sections 1, 2, 3 and 45, 15 U.S.C. Sections 1051, 1052, 1053 and 1127; TMEP section 1301.01 et seq. Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If the applicant responds to the above refusals, then the applicant must address the following issues.
The applicant must submit the following standard character claim: “The mark is presented in standard characters without claim to any particular font style, size, or color.” 37 C.F.R. §2.52(a).
The applicant must use common commercial terms to identify services and goods. TMEP §1402.11. Therefore, the applicant may adopt the following format, if accurate:
“animal feed supplements for livestock” in International Class 5.
Please note, while an application may be amended to clarify or limit the identification/recitation, additions to the identification/recitation are unpermitted. 37 C.F.R. §2.71(b). Therefore, the applicant may not add any goods/services that are not within the scope of the goods/services set forth in the original application.
The applicant’s specimen is unacceptable because it does not show the proposed mark on the goods or packaging for the goods. Materials such as invoices, announcements, order forms, bills of lading, instruction sheets, as well as other types of leaflets, brochures, and printed advertising material used as such, including catalogs, catalog sheets, circulars, publicity releases, and the like, do not constitute acceptable specimens for use on goods. See In re Bright of America, Inc., 205 USPQ 63 (TTAB 1979).
The applicant must submit a specimen showing the mark as it is used in commerce. 37 C.F.R. §2.56. Examples of acceptable specimens are tags, labels, instruction manuals, containers, and photographs that show the mark on the goods or packaging. TMEP §§904.04 et seq. The applicant must submit a specimen showing use of the mark for the goods specified. 37 C.F.R. §§2.56 and 2.58. The applicant must verify, with an affidavit or a declaration under 37 C.F.R. Section 2.20, that the substitute specimen was in use in commerce at least as early as the filing date of the application. 37 C.F.R. §2.59(a); TMEP §904.09. The statement supporting use of the substitute specimen must read as follows:
“The substitute specimen was in use in commerce at least as early as the filing date of the application.”
The undersigned, being hereby warned that willful false statements and the like so made are punishable by fine or imprisonment, or both, under 18 U.S.C. 1001, and that such willful false statements may jeopardize the validity of the application or any resulting registration, declares that the facts set forth in this application are true; 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)
_____________________________
(Date of Signature)
NOTICE: TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER 2004
The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004. 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, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.
/Christopher L. Buongiorno/
Law Office 102
(703) 308-9102 ext. 253
After October 11, 2004, please call (571) 272-9251.
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.