UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 76713244
MARK: SOLID GOLD
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Central States Enterprises, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
THIS IS A FINAL ACTION.
This application was assigned to a new examining attorney.
This Office action is in response to applicant’s communication filed on January 10, 2017.
In a previous Letter of Suspension action dated December 12, 2013, the trademark examining suspended the application of the applied-for mark based on the following:
- Prior-pending Application Serial No. 85715384
The prior-filed application has abandoned, therefore the examining attorney withdraws the potential cite of Application Serial No. 85715384.
In a previous Office action dated March 09, 2013, the trademark examining attorney refused registration of the applied-for mark based on the following:
The following refusals have been obviated:
The trademark examining attorney maintains and now makes FINAL the refusals in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 1115770, 2685755, 3654213, 2707020, and 1258777. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously enclosed registrations. All of the registrations belong to the same owner.
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, mistaken, or deceived as to the source of the goods of the applicant and registrant. See 15 U.S.C. §1052(d). In the seminal decision In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court 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 the factors are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); TMEP §1207.01; see also In re Dixie Rests. Inc., 105 F.3d 1405, 1406-07, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997). That is, the marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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)-(b)(v). Additionally, the goods are compared to determine whether they are similar or commercially related or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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)-(b)(v). Similarity in any one of these elements may be sufficient to find the marks 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).
U.S. Registration No. 1115770
Applicant’s mark is the wording “SOLID GOLD” plus a design. Registrant’s mark is the wording “SOLID GOLD”.
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Nat’l Data Corp., 753 F.2d at 1058, 224 USPQ at 751.
For a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)). Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
In this case, the word portions of the marks are identical in appearance, sound, connotation, and commercial impression; therefore, the addition of a design element to applicant’s mark does not obviate the similarity of the marks in this case. See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).
Accordingly, the marks are confusingly similar.
U.S. Registration No. 2685755
Applicant’s mark is the wording “SOLID GOLD” plus design. Registrant’s mark is the wording “SOLID GOLD” plus design.
As stated in the paragraphs above, when a mark consists of a both wording and a design, the wording is the dominant part of the mark and is more likely to make an impression on consumers. In the instant case, the dominant parts of both marks are the words “SOLID GOLD”. Thus, because the word portions of the marks are identical in appearance, sound, connotation, and commercial impression, the marks are confusingly similar for the purposes of a likelihood of confusion analysis.
U.S. Registration Nos. 3654213, 2707020, and 1258777
Applicant’s mark is the wording “SOLID GOLD” plus design. Registrant’s marks are: (1) “SOLID GOLD TINY TOTS”, (2) “SOLID GOLD SEAMEAL” and (3) “SOLID GOLD NATUR-BONE”.
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); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); 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).
Here, the dominant part of all of registrant’s marks is the wording “SOLID GOLD” because these are the first two words in all three marks. As was explained in the paragraphs above, the dominant part of applicant’s mark is the wording “SOLID GOLD” because the words are dominant over the design element in the mark. Accordingly, the dominant part of applicant’s mark, “SOLID GOLD”, is identical to the dominant part of registrant’s marks, “SOLID GOLD”.
Further, the mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, “SOLID GOLD”, and there is no other wording to distinguish it from registrant’s mark.
Accordingly, the parties’ marks are confusingly similar.
Relatedness of the Goods/Channels of Trade
U.S. Registration Nos. 1115770, 3654213, and 1258777
Applicant’s goods are “Animal feed, namely, cracked corn for livestock raised for meat, eggs and milk” in International Class 31. Registrant’s goods are “pet food,” “dog food, namely, natural dog treats and biscuits,” and “pet food-namely, biscuits,” all in International Class 31.
The goods of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods need only be related in some manner or the conditions surrounding their marketing be such that they will be encountered by the same consumers under circumstances that would lead to the mistaken belief that the goods originate from the same source. Gen. Mills Inc. v. Fage Dairy Processing Indus., 100 USPQ2d 1584, 1597 (TTAB 2012); TMEP §1207.01(a)(i); see On-line Careline Inc. v. Am. Online Inc., 229 F.3d at 1086, 56 USPQ2d at 1475; In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984).
The attached web evidence from Purina, Kent, Nutrena, Admani, AM, FRM, Golden Oak, HiPRO, Hubbard, IFA and Kalmbach establishes that the same entity commonly manufactures and provides the relevant goods and markets the goods under the same mark. Specifically, the evidence shows that producers of animal feed for livestock also frequently produce pet food under the same mark. Therefore, applicant’s goods and the registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
U.S. Registration Nos. 2685755 and 2707020
Applicant’s goods are “Animal feed, namely, cracked corn for livestock raised for meat, eggs and milk” in International Class 31. Registrant’s goods are “mineral and vitamin supplement for horses, dogs and cats” in International Class 5.
The previously attached Internet evidence demonstrates that animal feed and mineral and vitamin supplements for animals are often sold in the same types of specialty stores which feature animal and pet goods. Additionally, the attached internet evidence from Purina, Kent, and, Nutrena shows that producers of animal feed for livestock also produce mineral and/or vitamin supplements under the same mark. Thus, the parties’ goods are sold in the same channels of trade. Further, the trademark examining attorney has previously attached evidence from the USPTO’s X-Search database consisting of a representative sample of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely vitamins, supplements, and feed for animals, are of a kind that may emanate from a single source under a single mark. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii). Thus, as is evidenced by the aforementioned Internet websites and third-party registrations, applicant’s goods and registrant’s goods are closely related.
Accordingly, applicant’s mark is refused registration under Section 2(d) for likelihood of confusion because the parties’ marks are confusingly similar and the parties’ goods are closely related.
APPLICANT’S ARGUMENTS
Registration No. 1115770
Applicant argues that the applicant has been in use of the applied-for mark for over 25 years, had no knowledge of the registered mark, and that there is no known incident of actual confusion between the applied-for mark with the registered mark. However, the test under Trademark Act Section 2(d) is whether there is a likelihood of confusion. It is not necessary to show actual confusion to establish a likelihood of confusion. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1571, 218 USPQ 390, 396 (Fed. Cir. 1983)); TMEP §1207.01(d)(ii). The Trademark Trial and Appeal Board stated as follows:
[A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the contemporaneous use of the marks of applicant and registrant is of little probative value in an ex parte proceeding such as this where we have no evidence pertaining to the nature and extent of the use by applicant and registrant (and thus cannot ascertain whether there has been ample opportunity for confusion to arise, if it were going to); and the registrant has no chance to be heard from (at least in the absence of a consent agreement, which applicant has not submitted in this case).
In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
Applicant also argues that parties’ goods are not related. However, as stated above, the previously and currently attached web evidence establishes that the same entity commonly manufactures and provides the relevant goods and markets the goods under the same mark. Specifically, the evidence shows that producers of animal feed for livestock also frequently produce pet food under the same mark. Therefore, applicant’s goods and the registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Further, applicant has made the argument that the registrant should not be cited because applicant’s mark has acquired distinctiveness (“applicant has built up a significant amount of good will in the mark and associated product…”). This argument has no bearing on whether applicant’s mark is likely to cause confusion with the registered mark.
For the reasons stated, the examining attorney is not persuaded by this argument in regards to Registration No. 1115770.
Registration No. 2685755
Applicant also argues that the marks are dissimilar because both the applicant’s mark and registrant’s mark contain a design element. As stated above, although marks must be compared in their entireties, the word portion generally may be considered the dominant and most significant feature of a mark because consumers will request the goods and/or services using the wording. See Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). For this reason, greater weight is often given to the word portion of marks when determining whether marks are confusingly similar. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Here, the wording in both marks is more significant in creating a commercial impression because the term is displayed prominently in the center of both drawings in large font type. Additionally, because the design elements in the registrant’s mark are suggestive of the purpose of the identified goods, and the applicant’s design is descriptive of the composition of the identified goods, the consuming public will rely on the wording to identify the source of the goods, and will request the goods based on this wording. Thus, the dominant parts of both the applicant’s mark and the registrant’s mark is the wording “SOLID GOLD”.
As above, applicant argues that the applicant has been in use of the applied-for mark for over 25 years, had no knowledge of the registered mark, and that there is no known incident of actual confusion between the applied-for mark with the registered mark. However, the test under Trademark Act Section 2(d) is whether there is a likelihood of confusion. It is not necessary to show actual confusion to establish a likelihood of confusion. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1571, 218 USPQ 390, 396 (Fed. Cir. 1983)); TMEP §1207.01(d)(ii). The Trademark Trial and Appeal Board stated as follows:
[A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the contemporaneous use of the marks of applicant and registrant is of little probative value in an ex parte proceeding such as this where we have no evidence pertaining to the nature and extent of the use by applicant and registrant (and thus cannot ascertain whether there has been ample opportunity for confusion to arise, if it were going to); and the registrant has no chance to be heard from (at least in the absence of a consent agreement, which applicant has not submitted in this case).
In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
Also as above, applicant argues that parties’ goods are not related. However, the previously attached Internet evidence demonstrates that animal feed and mineral and vitamin supplements for animals are often sold in the same types of specialty stores which feature animal and pet goods. Additionally, the attached internet evidence from Purina, Kent, and, Nutrena shows that producers of animal feed for livestock also produce mineral and/or vitamin supplements under the same mark. Thus, the parties’ goods are sold in the same channels of trade. Further, the trademark examining attorney has previously attached evidence from the USPTO’s X-Search database consisting of a representative sample of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely vitamins, supplements, and feed for animals, are of a kind that may emanate from a single source under a single mark. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii). Thus, as is evidenced by the aforementioned Internet websites and third-party registrations, applicant’s goods and registrant’s goods are closely related.
For the reasons stated, the examining attorney is not persuaded by this argument in regards to Registration No. 2685755.
Registration No. 3654213
Applicant again argues that parties’ goods are not related. However, as stated above, the previously and currently attached web evidence establishes that the same entity commonly manufactures and provides the relevant goods and markets the goods under the same mark. Specifically, the evidence shows that producers of animal feed for livestock also frequently produce pet food under the same mark. Therefore, applicant’s goods and the registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Applicant argues that the marks are dissimilar because registrant’s mark includes the wording “TINY TOTS”. However, 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); 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). Additionally, the mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registered mark, and there is no other wording to distinguish it from the registered mark.
Applicant also argues that the marks are dissimilar because applicant’s mark contain a design element. As stated above, although marks must be compared in their entireties, the word portion generally may be considered the dominant and most significant feature of a mark because consumers will request the goods and/or services using the wording. See Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). For this reason, greater weight is often given to the word portion of marks when determining whether marks are confusingly similar. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Here, the wording in the applicant’s mark is more significant in creating a commercial impression because the term is displayed prominently in the center of the drawing in large font type. Additionally, because the design elements in the applicant’s design is descriptive of the composition of the identified goods, the consuming public will rely on the wording to identify the source of the goods, and will request the goods based on this wording. Thus, the dominant parts of both the applicant’s mark is the wording “SOLID GOLD”.
Additionally, applicant has made the argument that the registrant should not be cited because applicant’s mark has acquired distinctiveness (“applicant has built up a significant amount of good will in the mark and associated product…”). This argument has no bearing on whether applicant’s mark is likely to cause confusion with the registered mark.
Further, applicant argues that the cited registration has not been in use has not been in use as long as the applied-for mark. However, applicant’s claim of priority of use is not relevant to this ex parte proceeding. See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971). Trademark Act Section 7(b), 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register is prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce on or in connection with the goods and/or services specified in the certificate. During ex parte prosecution, the trademark examining attorney has no authority to review or to decide on matters that constitute a collateral attack on the cited registration. TMEP §1207.01(d)(iv).
As above, applicant argues that the applicant has been in use of the applied-for mark for over 25 years, had no knowledge of the registered mark, and that there is no known incident of actual confusion between the applied-for mark with the registered mark. However, the test under Trademark Act Section 2(d) is whether there is a likelihood of confusion. It is not necessary to show actual confusion to establish a likelihood of confusion. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1571, 218 USPQ 390, 396 (Fed. Cir. 1983)); TMEP §1207.01(d)(ii). The Trademark Trial and Appeal Board stated as follows:
[A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the contemporaneous use of the marks of applicant and registrant is of little probative value in an ex parte proceeding such as this where we have no evidence pertaining to the nature and extent of the use by applicant and registrant (and thus cannot ascertain whether there has been ample opportunity for confusion to arise, if it were going to); and the registrant has no chance to be heard from (at least in the absence of a consent agreement, which applicant has not submitted in this case).
In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
For the reasons stated, the examining attorney is not persuaded by this argument in regards to Registration No. 3654213.
Registration No. 3805194
As stated above, Registration No. 3805194 has abandoned, and thus the Section 2(d) cite as to this mark is withdrawn.
Registration No. 2707020
Applicant again argues that the marks are dissimilar because applicant’s mark contain a design element. As stated above, although marks must be compared in their entireties, the word portion generally may be considered the dominant and most significant feature of a mark because consumers will request the goods and/or services using the wording. See Bond v. Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). For this reason, greater weight is often given to the word portion of marks when determining whether marks are confusingly similar. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
Here, the wording in the applicant’s mark is more significant in creating a commercial impression because the term is displayed prominently in the center of the drawing in large font type. Additionally, because the design elements in the applicant’s design is descriptive of the composition of the identified goods, the consuming public will rely on the wording to identify the source of the goods, and will request the goods based on this wording. Thus, the dominant parts of both the applicant’s mark is the wording “SOLID GOLD”.
Applicant also argues that the marks are dissimilar because registrant’s mark includes the wording “SEAMEAL”. However, 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); 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). Additionally, the mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as the registered mark, and there is no other wording to distinguish it from the registered mark.
As above, applicant argues that the applicant has been in use of the applied-for mark for over 25 years, had no knowledge of the registered mark, and that there is no known incident of actual confusion between the applied-for mark with the registered mark. However, the test under Trademark Act Section 2(d) is whether there is a likelihood of confusion. It is not necessary to show actual confusion to establish a likelihood of confusion. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1571, 218 USPQ 390, 396 (Fed. Cir. 1983)); TMEP §1207.01(d)(ii). The Trademark Trial and Appeal Board stated as follows:
[A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the contemporaneous use of the marks of applicant and registrant is of little probative value in an ex parte proceeding such as this where we have no evidence pertaining to the nature and extent of the use by applicant and registrant (and thus cannot ascertain whether there has been ample opportunity for confusion to arise, if it were going to); and the registrant has no chance to be heard from (at least in the absence of a consent agreement, which applicant has not submitted in this case).
In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
Additionally, applicant has made the argument that the registrant should not be cited because applicant’s mark has acquired distinctiveness (“applicant has built up a significant amount of good will in the mark and associated product…”). Further, applicant asserts, with no evidence, that the owner of the registered mark is unlikely to expand in to animal feed industry. These arguments have no bearing on whether applicant’s mark is likely to cause confusion with the registered mark.
For the reasons stated, the examining attorney is not persuaded by this argument in regards to Registration No. 2707020.
Registration No. 1258777
Applicant again argues that parties’ goods are not related. However, as stated above, the previously and currently attached web evidence establishes that the same entity commonly manufactures and provides the relevant goods and markets the goods under the same mark. Specifically, the evidence shows that producers of animal feed for livestock also frequently produce pet food under the same mark. Therefore, applicant’s goods and the registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Additionally, applicant has made the argument that the registrant should not be cited because applicant’s mark has acquired distinctiveness (“applicant has built up a significant amount of good will in the mark and associated product…”). Further, applicant asserts, with no evidence, that the owner of the registered mark is unlikely to expand in to animal feed industry. These arguments have no bearing on whether applicant’s mark is likely to cause confusion with the registered mark.
As above, applicant argues that the applicant has been in use of the applied-for mark for over 25 years, had no knowledge of the registered mark, and that there is no known incident of actual confusion between the applied-for mark with the registered mark. However, the test under Trademark Act Section 2(d) is whether there is a likelihood of confusion. It is not necessary to show actual confusion to establish a likelihood of confusion. Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1571, 218 USPQ 390, 396 (Fed. Cir. 1983)); TMEP §1207.01(d)(ii). The Trademark Trial and Appeal Board stated as follows:
[A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the contemporaneous use of the marks of applicant and registrant is of little probative value in an ex parte proceeding such as this where we have no evidence pertaining to the nature and extent of the use by applicant and registrant (and thus cannot ascertain whether there has been ample opportunity for confusion to arise, if it were going to); and the registrant has no chance to be heard from (at least in the absence of a consent agreement, which applicant has not submitted in this case).
For the reasons stated, the examining attorney is not persuaded by this argument in regards to Registration No. 1258777.
In view of the foregoing, the refusal to register under Section 2(d) of the Trademark Act is continued and made final.
RESPONSE OPTIONS
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
Examining Attorney
Law Office 108
(571) 272-6774
Ryan.Lavoie@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
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.gov.uspto.report/. 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.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.