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: 4/12/2010

 

This letter is further to the Notice of Suspension mailed February 27, 2008.  Upon further review, the examiner must now issue the following refusal.  The examiner apologizes for any inconvenience.

 

Refusal-Likelihood of Confusion

 

The following refusal applies only to the identified goods in Class 29.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2173534.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

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 goods 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.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods, and similarity of trade channels of the goods.  See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.

 

Applicant’s mark, GUSTO, is similar to the registered mark GRANDE GUSTO in sound, appearance and commercial impression. 

 

The marks are compared in their entireties under a Trademark Act Section 2(d) analysis.  See TMEP §1207.01(b).  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 Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); see TMEP §1207.01(b)(viii), (c)(ii).

 

In the present case, the word “GUSTO” is the dominant portion of the cited reference as the word “GRANDE” merely predicates the word “GUSTO” and is laudatorily descriptive as applied to the goods associated with the mark.  As such, the respective marks create similar overall commercial impressions.

 

With regard to the common term “GUSTO” in the marks, marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).

 

Similarity in sound alone may be sufficient to support a finding of likelihood of confusion.  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); see TMEP §1207.01(b)(iv).

 

In addition, with regard to the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 201, 175 USPQ 558, 558-59 (C.C.P.A. 1972); TMEP §1207.01(b).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  See Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); Visual Info. Inst., Inc. v. Vicon Indus. Inc., 209 USPQ 179, 189 (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, 540-41 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975); TMEP §1207.01(b).  In this case, consumers will undoubtedly retain a similar general recollection of the marks; namely, GUSTO and GRANDE GUSTO milk-related products.

 

Finally, with regard to the marks, 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.  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).

 

Turning to the goods of the parties, they 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, the goods need only be related in some manner, 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 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).

 

Applicant’s “dairy-based food beverages”, “soy-based food beverage used as a milk substitute”, “milk beverages, namely, milk, milk beverages containing fruits, milk beverages with high milk content, milk based beverages containing fruit juice and milk beverages containing coffee”, “milk powder”, “milk powder for nutritional purposes” and “powdered milk for food purposes” are closely related, if not identical, to the registrant’s “filtered milk solids in dry or liquid form, used as ingredients of foods” because they are milk products for food purposes and beverage/dairy-related products likely to travel through the same channels of trade to the same class of purchasers.  For example, the goods are likely to be sold together in retail health and nutrition supply stores and supermarkets and advertised together in health and nutritional supply and beverage catalogs, directories and trade publications.

 

Furthermore, neither the application nor the registration contain any limitations regarding trade channels for the goods and therefore it is assumed that registrant’s and applicant’s goods are sold and marketed everywhere that is normal for such items, i.e., retail health and nutrition supply stores and supermarkets and health and nutritional supply and beverage catalogs, directories and trade publications.  Thus, it can also be assumed that the same classes of purchasers shop for these items and that consumers are accustomed to seeing them sold and promoted under the same or similar marks.  See Kangol Ltd. v. KangaROOS U.S.A., Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992); In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994); TMEP §1207.01(a)(iii).

 

Finally, the overriding concern is not only to prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).

 

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

 

Applicant must also respond to the requirement set forth below.

Identification of Goods

The words “botanical extracts for nutritional use”, “botanical extracts for nutritional use in foods or beverages” and “botanical extracts used in . . .” in Class 1 in the amended identification of goods are indefinite and must be clarified.  See TMEP §1402.01.  Applicant must specify the common commercial or generic name for the goods.  If there is no common commercial or generic name for the goods, applicant must describe the product and intended consumer as well as its main purpose and intended uses.  In addition, applicant must correct the misspelled word “power” in the amended identification in Class 21.

The applicant may adopt any or all of the following descriptions, if accurate:  

“Botanical extracts for use in the manufacture of nutritional supplements, nutraceuticals and pharmaceuticals; botanical extracts for use in the manufacture of pharmaceutical preparations in the form of lotions, creams, topical analgesics and anesthetics, tablets, capsules, pills, tinctures, suppositories and ampules for injection”, in International Class 1;

“Nutritional supplements; herbal products, namely, medicated skin and lip balms; herbal products, namely, ointments, oils, drinks, infusions, syrups, poisons and 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 in aroma therapy; nutritional dietary supplements; oral preparations, namely, medicated cough lozenges, medicated lozenges and throat lozenges; 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;

“Food beverages, namely, dairy-based food beverages, fruit-based food beverages, vegetable-based food beverages, dairy-based chocolate food beverages, soy-based food beverage used as a milk substitute, vegetable-based chocolate food beverages and peanut-based food beverages; milk beverages, namely, milk, milk beverages containing fruits, milk beverages with high milk content, milk-based beverages containing fruit juice 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, chocolate food beverages not being dairy-based or vegetable based, herbal food beverages 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; and/or

“Organic beverages, namely, fruit drinks, soft drinks, drinking water and fruit and vegetable juices”, in International Class 32.

TMEP §1402.11.

For consistency, applicant is advised that the suggested descriptions in Classes 1 and 5 are identical to the identifications associated with applicant’s approved applications to register the marks THINKFAST, FLEX and CALM in U.S. Application Serial Nos. 77162117,  77163827 and 77163895.

For assistance with identifying and classifying 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.  See TMEP §1402.04.

Identifications of goods and/or services can be amended only to clarify or limit the goods and/or services; adding to or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); see TMEP §§1402.06 et seq., 1402.07.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

In addition, the application identifies goods and/or services that are classified in at least five classes; however, the fees submitted are sufficient for only one class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1403.01.

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fee(s) already paid, or (2) submit the fees for the additional class(es). 

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; or

         (2)     $375 per class, when the fees are submitted with a paper response. 

37 C.F.R. §2.6(a)(1)(i)-(a)(1)(ii); TMEP §810.

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods based on an intent to use the mark in commerce under Trademark Act Section 1(b):

(1)        Applicant must list the goods by international class; and

(2)        Applicant must submit a filing fee for each international class of goods not covered by the fee already paid (current fee information should be confirmed at http://www.uspto.gov).

See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).

Refusal and Potential Refusal -Likelihood of Confusion

The stated refusal and potential refusal under Trademark Act Section 2(d) based on a likelihood of confusion with the marks in U.S. Registration No. 2940039 and Application Serial Nos. 78877472 are maintained and continued.

Miscellaneous

 

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: 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.

 

 

 

 

 

                                                                

IMPORTANT NOTICE REGARDING YOUR TRADEMARK APPLICATION

 

Your trademark application (Serial No. 77163890) has been reviewed.   The examining attorney assigned by the United States Patent and Trademark Office (“USPTO”) has written a letter (an “Office action”) on 4/12/2010 to which you must respond (unless the Office letter specifically states that no response is required).  Please follow these steps:

 

1. Read the Office letter by clicking on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=77163890&doc_type=OOA&mail_date=20100412 OR go to  http://tmportal.gov.uspto.report/external/portal/tow and enter your serial number to access the Office letter.  If you have difficulty accessing the Office letter, contact TDR@uspto.gov.  

                                         

PLEASE NOTE: The Office letter may not be immediately available but will be viewable within 24 hours of this e-mail notification.

 

2. Contact the examining attorney who reviewed your application if you have any questions about the content of the Office letter (contact information appears at the end thereof).

 

3. Respond within 6 months, calculated from 4/12/2010 (or sooner if specified in the Office letter), using the Trademark Electronic Application System (TEAS) Response to Office Action form. If you have difficulty using TEAS, contact TEAS@uspto.gov. 

 

ALERT:

 

Failure to file any required response by the applicable deadline will result in the ABANDONMENT (loss) of your application.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.