| To: | HerbalScience Singapore Pte Ltd (usptomail@whitelawfirm.com) |
| Subject: | TRADEMARK APPLICATION NO. 77163890 - GUSTO - N/A |
| Sent: | 6/26/2007 11:31:05 PM |
| Sent As: | ECOM105@USPTO.GOV |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 |
UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 77/163890
MARK: GUSTO
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CORRESPONDENT ADDRESS: |
RESPOND TO THIS ACTION: http://www.gov.uspto.report/teas/eTEASpageD.htm
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/main/trademarks.htm
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APPLICANT: HerbalScience Singapore Pte Ltd
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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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: 6/26/2007
The assigned trademark examining attorney has reviewed the referenced application and has 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. 2,940,039 as to be likely to cause confusion, to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed 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. Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).
Second, the examining attorney must compare the goods to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. Such activities include the marketing channels, the identity of the prospective purchasers and the degree of similarity between the marks and between the goods. Even if the goods of the parties differ, it is only necessary to show that they are related in some manner. In re Mack, 197 USPQ 755 (TTAB 1977). TMEP §§1207.01 et seq.
In this case, the proposed mark GUSTO is identical to the registered mark GUSTO in sound, appearance 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). TMEP §1207.01(a)(i).
The applicant’s fruit and vegetable food and beverage products are related to the registrant’s “fresh fruits and fresh vegetables” because they are fruit and vegetable-related food and beverage products likely to travel through the same channels of trade to the same class of purchasers. For example, the goods would likely be sold at retail grocery stores and supermarkets and advertised together in food and beverage supply catalogs, directories and trade publications.
Attached are copies of printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods as those of applicant and registrant in this case. These printouts have probative value to the extent that they serve to suggest that the goods listed therein, namely, “fresh fruits” and/or “fresh vegetables” and “fruit drinks” and “fruit juices”, are of a kind that may emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-1218 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).
Finally, with regard to the goods associated with the respective marks, if the marks of the respective parties are highly similar or virtually the same, the relationship between the goods of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70 (TTAB 1981). TMEP §1207.01(a).
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). TMEP §§1207.01(d)(i).
Based on the foregoing remarks, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.
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.
Prior Pending Applications
Information regarding pending Application Serial Nos. 78/176,219, 78/877,472 and 76/389,105 are enclosed. The filing dates of the referenced applications precede applicant’s filing date. There may be a likelihood of confusion between the marks under Trademark Act Section 2(d), 15 U.S.C. §1052(d). If the referenced applications register, registration may be refused in this case under Section 2(d). 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon entry of a response to this Office action, action on this case may be suspended pending final disposition of the earlier-filed applications.
If applicant believes there is no potential conflict between this application and the earlier-filed applications, then applicant may present arguments relevant to the issue in a response to this Office action. The election not to submit arguments at this time in no way limits applicant’s right to address this issue at a later point.
If applicant chooses to respond to the refusal and potential refusal to register, then applicant must also respond to the following requirement.
The words “herbal powders for nutritional purposes”, “aroma therapy packs filled with herbs for use in aroma therapy”, “oral preparations”, “botanical extracts for nutritional use”, “botanical extracts for use in nutraceuticals and pharmaceuticals”, “food beverages”, “milk beverages”, “scientific services”, “research and development services”, “services pertaining to neutraceutical, pharmaceutical, herbal and vitamin supplements”, “services pertaining to the processing of chemicals”, “equipment and goods for determining chemical content of matter”, “diagnosis and analysis services”, “treatment of materials” and “scientific services” in the identification of goods and services are unacceptable as indefinite.
The applicant must amend the description by indicating the common commercial names of the products and services intended to be associated with the mark. If there are no common commercial names for the products, the applicant must describe the products and their intended uses. With regard to the services, if there is no common commercial or generic name for the services, then applicant must describe the nature of the services as well as their main purpose, channels of trade, and the intended consumer(s). TMEP §1402.01.
In addition, applicant must correct the classification of the goods and services in the application as set forth below. 37 C.F.R. §§2.32(a)(7) and 2.85; TMEP §§1401.02(a) and 1401.03(b).
The applicant may adopt any or all of the following descriptions, if accurate:
“Botanical extracts for use in making nutritional supplements, nutraceuticals and pharmaceuticals; chemicals, namely, [indicate specific Class 1 goods, e.g., reagent for chemical analyses] for determining chemical content of matter”, in International Class 1;
“Oral preparations, namely, [indicate specific Class 3 goods, e.g., mouthwashes and non-medicated mouth rinse]”, in International Class 3;
“Nutritional supplements; herbal products, namely medicated skin and lip balms; herbal products, namely, ointments, oils, drinks, infusions, syrups, poisons, tinctures for medical use in the treatment of strokes, infarcts and other cardiovascular and cerebrum diseases; herbal products for medicinal purposes, namely, herbal extracts for use as nutritional and dietary supplements; herbal products for medicinal purposes, namely, herbal extracts and syrups; herbal products, namely, herbal powders sold as an integral ingredient of nutritional supplement drink mix for nutritional purposes; herbal products, namely, herbal meal replacement powders for dietary and nutritional purposes; herbal products, namely, aroma therapy packs filled with herbs for relief from headaches, insomnia and sinus discomfort used use in aroma therapy; nutritional dietary supplements; oral preparations, namely, [indicate specific Class 5 goods, e.g., medicated mouth care and treatment preparations and medicated mouthwash]; vitamin and mineral preparations intended for use as dietary supplements; vitamins; food supplements; pharmaceuticals and nutraceuticals, namely, vitamins and food supplements; pharmaceutical preparations, namely, appetite suppressants and lipid lowering agents; food for medically restricted diets; food supplements, namely, anti-oxidants; food for diabetics, infants and enteral feeding; botanical extracts sold as an integral ingredient of nutritional supplements, nutraceuticals and pharmaceuticals”, in International Class 5;
“Equipment and goods for determining chemical content of matter, namely, [indicate specific Class 9 goods, e.g., microscopes, plates, glass slides or chips having multi-well arrays that can be used in chemical analysis, biological analysis or patterning for scientific, laboratory or medical research use and laboratory test tubes]”, in International Class 9;
“Food beverages, namely, [indicate specific Class 29 goods, e.g., dairy-based food beverages, fruit-based food beverages and peanut-based food beverages]; milk beverages, namely, [indicate specific goods, e.g., milk, milk beverages containing fruits and milk beverages containing coffee]; milk powder; milk powder for nutritional purposes; powdered milk for food purposes”, in International Class 29;
“Herbal food beverages; food beverages, namely, [indicate specific Class 30 goods, e.g., chocolate food beverages not being dairy-based or vegetable based and grain-based food beverages]; processed herbs; organic foods, namely, chocolate, dairy-free chocolate, reduced fat chocolate, reduced calorie chocolate, cocoa, chocolate chips, chocolate fondue, chocolate toppings, reduced fat candy, bakery products, namely cookies, cakes, pies and muffins, crackers, biscuits, ready-to-eat cereal-derived food bars, pretzels, chewing gum, frozen yogurt, frozen custard, fruit ices, pancake, waffle and bread mixes, salad dressing, pasta and pasta mixes, rice, cornmeal and wheat based snack foods”, in International Class 30;
“Organic beverages, namely, fruit drinks, soft drinks, drinking water and fruit and vegetable juices”, in International Class 32;
“Retail stores services featuring neutraceuticals, pharmaceuticals, herbal and vitamin supplements; online retail stores featuring neutraceuticals, pharmaceuticals, herbal and vitamin supplements; mail order services featuring neutraceuticals, pharmaceuticals, herbal and vitamin supplements; distributorships in the field of neutraceuticals, pharmaceuticals, herbal and vitamin supplements”, in International Class 35;
“Treatment of materials, namely, [indicate specific services, e.g., treatment of materials by laser beam, treatment of materials for the manufacture of neutraceuticals, pharmaceuticals, herbal and vitamin supplements and treatment of metal]; chemicals processing services, namely, [indicate specific services, e.g., custom manufacturing of chemicals]”, in International Class 40;
“Scientific services, namely, [indicate specific Class 41 services, e.g., providing science educational mentoring services and programs, educational services in the nature of conducting (indicate specific mode of instructions, e.g. classes, seminars, conferences and workshops) in the field of Science and distributing course materials in connection therewith and training for handling scientific instruments and apparatus for research in laboratories]”, in International Class 41;
“Scientific services, namely, [indicate specific Class 42 services, e.g., scientific research and development and scientific investigations for medical purposes]; research and development services, namely, [indicate specific services, e.g., research and development of vaccines and medicines, pharmaceutical research and development and product research and development]; diagnostic services in the field of [indicate type of equipment, e.g., chemical analysis laboratory equipment]; chemical analysis”, in International Class 42;
“Performing diagnosis of diseases; medical services”, in International Class 44; and/or
“Scientific services, namely, [indicate specific Class 45 services, e.g., examination of fingerprints and handwriting for the purpose of forensic scientific intelligence]”, in International Class 45.
TMEP §1402.11.
For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at <http://tess2.gov.uspto.report/netahtml/tidm.html>.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the applicant may not amend to include any goods and/or services that are not within the scope of goods and services set forth in the present identification.
Applicant must clarify the number of classes for which registration is sought. The submitted filing fees are insufficient to cover all the classes in the application. Specifically, the application identifies goods and/or services that are classified in at least thirteen international classes, however applicant paid the fee for only one class.
Applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es). 37 C.F.R. §2.86(a)(2); TMEP §§810.0l, 1401.04, 1401.04(b) and 1403.01.
The filing fee for adding classes to an application is as follows:
(1) $325 per class, when the fees are submitted with a response filed online via the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html; and
(2) $375 per class, when the fees are submitted with a paper response.
37 C.F.R. §§2.6(a)(i) and (ii); TMEP §810.
If applicant prosecutes this application as a combined, or multiple-class application, applicant must comply with each of the following for those goods and/or services based on an intent to use the mark in commerce under Trademark Act Section 1(b):
(1) Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order; and
(2) Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).
37 C.F.R. §2.86(a)(2); TMEP §§810 and 1403.01.
If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.
/David Yontef/
Trademark Attorney Advisor
Law Office 105
(571) 272-8274
RESPOND TO THIS ACTION: If there are any questions about the Office action, please contact the assigned examining attorney. A response to this Office Action should be filed using the Office’s Response to Office action form available at http://www.gov.uspto.report/teas/eTEASpageD.htm. If notification of this Office action was received via e-mail, no response using this form may be filed for 72 hours after receipt of the notification. Do not attempt to respond by e-mail as 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.
