Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE:

 

THIS IS A FINAL ACTION.

 

This Office action is in response to applicant’s communication filed on September 18, 2009.

 

In its response, applicant provided arguments in opposition to the examining attorney’s refusal pursuant to Section 2(d) of the Trademark Act.

 

The examining attorney has considered applicant’s arguments but finds them unpersuasive.  Therefore, for the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No(s). 3409675.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).

 

Refusal:  Likelihood of Confusion

Registration of the applied-for mark was refused because of a likelihood of confusion with the mark in U.S. Registration No. 3409675.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

Similarity of Marks

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression.  In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b).  Similarity in any one of these elements may be sufficient to find a likelihood of confusion.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).

 

Applicant’s mark is PREMO for infant formula.

 

The registered mark is PRIMO for Vitamins for use by children; vitamin tablets for use by children; vitamin supplements for use by children; vitamin preparations for use by children; vitamin and mineral supplements for use by children; multi-vitamin preparations for use by children; mixed vitamin preparations for use by children.

 

Applicant asserts that the “optical vocalization” of the respective marks “are sufficiently different to preclude a likelihood of confusion.”  See Response and Amendment.  However, there is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark.  In re Great Lakes Canning, Inc., 227 USPQ 483, 484 (TTAB 1985); TMEP §1207.01(b)(iv); see In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983).  The marks in question could clearly be pronounced the same; such similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  See RE/MAX of Am., Inc. v. Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469, 471 (TTAB 1975); TMEP §1207.01(b)(iv).

 

Indeed, slight differences in the sound of similar marks will not avoid a likelihood of confusion.  In re Energy Telecomm. & Elec. Ass’n, 222 USPQ 350, 351 (TTAB 1983).

 

Finally, if the goods of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods and/or services.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Here, given that the respective marks are identical but for a single letter (“e” versus “i”), the respective commercial impressions of the marks are nearly the same.

 

Thus, the marks are similar.

 

Similarity of Goods

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient that the goods and/or services are related in some manner and/or the conditions surrounding their marketing are such that they would be encountered by the same purchasers under circumstances that would give rise to the mistaken belief that the goods and/or services come from a common source.  In re Total Quality Group, Inc., 51 USPQ2d 1474, 1476 (TTAB 1999); TMEP §1207.01(a)(i); see, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086-87, 56 USPQ2d 1471, 1475-76 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).

 

From the attached evidence, it is apparent that infant formula and vitamins are goods commonly found in similar trade channels.  Indeed, infant formulas are expected to include certain vitamins.  See attached.  Consumers seeking infant formulas would be likely to encounter related vitamins and vitamin supplements, particularly to the extent such vitamins would be expected to complement the nutritional content of the formula.  Thus, the respective goods are related.

 

Applicant argues that “Registrant’s products are only sold through its website” and that, therefore, “the stream of commerce is entirely different from Applicant’s goods.”  See Response and Amendment at 2.

 

However, likelihood of confusion is determined on the basis of the goods and/or services as they are identified in the application and registration.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 1207 n.4, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); TMEP §1207.01(a)(iii).

 

In this case, the applicant’s and registrant’s goods are identified broadly, and neither party has limited the particular trade channels for their respective goods.  Therefore, it is presumed that the registration encompasses all goods of the type described, including those in applicant’s more specific identification, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(a)(iii).

 

Since the marks are so highly similar and the goods are so closely related, there is a likelihood that purchasers would confuse the sources of the goods and services or believe they stemmed from a single source.  Accordingly, registration is properly refused under Section 2(d) of the Trademark Act due to a likelihood of confusion.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

Responding to Final Action

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by:

 

(1)  Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or

 

(2)  Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

/Marc J. Leipzig/

Law Office 115

Trademark Examining Attorney

Phone:  (571) 272-2104

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.