Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

MAILING/E-MAILING DATE INFORMATION:  If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.

 

Serial Number  76/629622

 

The assigned examining attorney has reviewed the applicant’s correspondence received on March 1, 2006, in the referenced application and determined the following.  The standard character claim is acceptable.  The following issues, however, remain outstanding.

 

REFUSAL TO REGISTER THE MARK UNDER SECTION 2(D) IS MAINTAINED

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d), is maintained with respect to U.S. Registration No(s). 2231985 and 2527272.  37 C.F.R. §2.64(a).

 

Furthermore, the examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on the identified goods, is likely to be confused with the registered marks in U.S. Registration Nos. 3017041 and 3017042.  TMEP section 1207.  See the enclosed registrations. 

 

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).  Similarity in any one of these elements is sufficient to find a likelihood of confusion.  In re Mack, 197 USPQ 755 (TTAB 1977).  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 section 1207.01(b).

 

The examining attorney must look at the marks in their entireties under Section 2(d).  Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression.  Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion.  In re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985);  Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1988).

 

The applicant’s mark in this case is HOLLYWOOD COFFEE DIET.  The same registrant owns the marks in U.S. Registration Nos. 2231985, 2527272, 3017041, and 3017042.  The marks in these registrations are HOLLYWOOD’S 48 HOUR MIRACLE DIET, HOLLYWOOD DAILY MIRACLE DIET, and HOLLYWOOD 24-HOUR MIRACLE DIET.  The parties’ marks are similar in appearance, sound, connotation, and overall common commercial impression in that they each contain the wording “Hollywood” and “Diet”.  The registrant has exhibited a continuous use of the term “Hollywood” to identify the source of its goods. 

 

If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion.  In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).

 

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).

 

The applicant intends to use its mark on a “dietary food supplement, namely a liquid preparation containing coffee.”  The registrant is using its marks on a “dietary food supplement, namely, a liquid preparation to replace meal time food intake,” on a “dietary drink mix for use as a meal replacement, meal replacement powders, and nutritional drink mix for use as a meal,” and on “non-alcoholic drinks, namely, fruit-based drinks, fruit drinks, fruit juice concentrates and diet fruit juices.”  The parties’ goods are related in that that they are liquid preparations, or powders therefore, for use as a dietary food supplement.  The purpose of the parties’ goods is to help the user lose weight.  Given the strong similarity of the marks and the relatedness of the parties’ goods, the examining attorney finds that the same purchasers could mistakenly believe that the goods come from a common source.  

 

The examining attorney must resolve any doubt regarding a likelihood of confusion in favor of the prior registrant.  In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir., 1988).

 

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.

 

Consent Agreement

 

The consent agreement submitted is considered a “naked consent” and thus is not acceptable to obviate a likelihood of confusion refusal because it does not set forth reasons why the parties believe there is no likelihood of confusion, nor does it set forth the arrangements undertaken by the parties to avoid confusing the public.  In re Permagrain Products, Inc., 223 USPQ 147 (TTAB 1984) (consent agreement found to be “naked” because the agreement did not restrict the markets in such a way as to avoid confusion). 

 

If applicant wishes to submit a proper consent agreement from the registrant consenting to the registration of the mark, this refusal will be reconsidered.  Please note that consent agreements are but one factor to be taken into account with all of the other relevant circumstances bearing on the likelihood of confusion referred to in §2(d).  In re N.A.D. Inc., 754 F.2d 996, 224 USPQ 969, 971 (Fed. Cir. 1985); TMEP §1207.01(d)(viii).

 

Factors to be considered in weighing a consent agreement include: whether the agreement is unilateral or bilateral; whether the parties agree that no confusion exists; whether the trade channels of the respective goods are related and a statement indicating a clear indication of the respective, separate trade channels; whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and whether the marks have been used for a period of time without evidence of actual confusion.  See In re Mastic, 829 F.2d 1114, 1115, 4 USPQ2d 1292, 1294 (Fed. Cir. 1987) (relying on the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563 (C.C.P.A. 1973)).

 

Furthermore, corporations are not "related companies" within the meaning of §5 of the Trademark Act, 15 U.S.C. §1055, merely because they have the same stockholders, directors or officers, or because they occupy the same premises. In re Raven Marine, Inc., 217 USPQ 68, 69 (TTAB 1983) (statement that both the applicant corporation and the corporate user of the mark have the same principal stockholder and officer held insufficient to show that the user is a related company).  TMEP Section 1201.03(d).  The question of whether a corporation is a "related company" depends on whether the applicant maintains control over the nature and quality of the goods or services such that use of the mark inures to the applicant's benefit.  The critical question is whether the applicant sufficiently controls the nature and quality of the goods or services with which the mark is used. See Pneutek, Inc. v. Scherr, 211 USPQ 824 (TTAB 1981) (detailed written agreement and substantial evidence in the record indicating that the applicant, an individual, exercised control over the nature and quality of the goods sold under the mark by the user corporation held sufficient to show that the corporation was a related company).  TMEP Section 1201.03(d). 

 

Applicant should note the following additional ground for refusal.

 

REFUSAL TO REGISTER THE MARK UNDER SECTION 2(E)(2) IS MAINTAINED

 

The refusal under Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2), is maintained for the reasons set forth below.  37 C.F.R. §2.64(a).

 

The applicant asserts that there is no known geographical association between the relevant goods and the term “Hollywood”.  However, in all four of the prior registrations by the applicant’s related company, Sunset Health Products, Inc., the geographic term “Hollywood” was disclaimed along with the other descriptive wording in the marks.  Although the parties’ goods differ, they are related in that they are dietary products as indicated by the wording in the marks.  If the applicant and registrant share the same address, then presumably the term “Hollywood” is descriptive in each and every instance.  An Internet search conducted on April 5, 2006 yielded several addresses which indicate that 9200 Sunset Boulevard is located in West Hollywood.  Printouts of the relevant addresses are attached for the applicant’s review.  Based upon this evidence and the prior registrations, the examining attorney maintains that the mark is primarily merely geographically descriptive of the identified goods.

 

The addition of the merely descriptive wording “coffee diet” to the geographic term does not obviate a determination of geographic descriptiveness.  See In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); In re Chalk’s International Airlines Inc., 21 USPQ2d 1637 (TTAB 1991); In re Wine Society of America Inc., 12 USPQ2d 1139 (TTAB 1989); In re California Pizza Kitchen Inc., 10 USPQ2d 1704 (TTAB 1988); In re Cambridge Digital Systems, 1 USPQ2d 1659 (TTAB 1986); In re BankAmerica Corp., 231 USPQ 873 (TTAB 1986); In re Application of Handler Fenton Westerns, Inc. 214 USPQ 848 (TTAB 1982); TMEP §1210.02(c)(ii).  The wording “coffee diet” is descriptive of the relevant goods because they consist of a dietary liquid preparation containing coffee.

 

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.

 

RESPONSE

 

Applicant may respond to this Office action using the Office’s Trademark Electronic Application System (TEAS) at <http://www.gov.uspto.report/teas/index.html>.  When using TEAS the data the applicant submits is directly uploaded into the Office’s database, which reduces processing time and eliminates the possibility of data entry errors by the Office.  Applicants are strongly encouraged to use TEAS to respond to Office actions.  Applicants using TEAS should not submit a duplicate paper copy of the response.

 

STATUS OF APPLICATION

 

The Trademark Applications and Registrations Retrieval (TARR) database on the USPTO website at http://tarr.uspto.gov provides detailed, up to the minute information about the status and prosecution history of trademark applications and registrations.  The TARR database is available 24 hours a day, 7 days a week.  Status and status date information is also available via push-button telephone at (703) 305‑8747 from 6:30 a.m. until midnight, Eastern Time, Monday through Friday. 

 

Tina L. Snapp

 

/Tina L. Snapp/

Examining Attorney

Law Office 116

(571) 272-9224

Rightfax (571) 273-9116

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond using the Office’s Trademark Electronic Application System (TEAS) Response to Office action form available on our website at http://www.gov.uspto.report/teas/index.html.  If the Office action issued via e-mail, you must wait 72 hours after receipt of the Office action to respond via TEAS.  NOTE:  Do not respond by e-mail.  THE USPTO WILL NOT ACCEPT AN E-MAILED RESPONSE.
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above, and include the serial number, law office number, and examining attorney’s name.  NOTE:  The filing date of the response will be the date of receipt in the Office, not the postmarked date.  To ensure your response is timely, use a certificate of mailing.  37 C.F.R. §2.197.

 

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

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.