| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 77468263 |
| LAW OFFICE ASSIGNED | LAW OFFICE 109 |
| MARK SECTION (no change) | |
| ARGUMENT(S) | |
|
This communication responds to the Office Action mailed August 21, 2008, concerning the above-referenced application.
AMENDMENTS
1. Identification of Goods/ServicesPlease delete the originally-filed identification of goods/services and substitute therefore the following:
International Class 02: Colorants for use in the manufacture of food. REMARKS
In this Office Action the Examiner has initially refused registration due to an alleged likelihood of confusion with an existing registration. Applicant also amends its identification of goods. The issues are addressed in turn below.
1. Identification of Goods
Applicant has amended its identification of goods as noted above. This amendment clarifies the goods without expanding or adding to those goods originally identified in the application. 37 C.F.R. § 2.71(a); TMEP § 1402.06. Additionally, the identification wording is drawn directly from the Acceptable Identification of Goods and Services Manual. Accordingly, Applicant respectfully submits that the amendment is acceptable.
2. Likelihood of Confusion
The Examiner has initially refused registration for FRUITMAX due to an alleged likelihood of confusion with U.S. Registration No. 3,412,638, for FRUTAMAX, which covers "drink mixes and fruit drinks, fruit flavored soft drinks, preparations and syrups for making fruit drinks and soft drinks" (collectively, "drink mixes"). In addition, the Examiner noted a potential likelihood of confusion with U.S. Serial No. 77/385,357, for FRUTIMAX, for beers, mineral and aerated water and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages (collectively, "beer and mineral water"). Applicant respectively submits that there is no likelihood of confusion between its FRUITMAX mark for colorants for use in the manufacture of food, as amended, and the cited FRUTAMAX and FRUTIMAX marks for drink mixes and beer and mineral water, and requests that this ground for refusal be withdrawn.
a. Applicable Law The Patent and Trademark Office bears "the burden of proving that a trademark falls within a prohibition of § 1052." In re Mavety Media, 33 F.3d 1371, 31 U.S.P.Q.2d 1925; see also In re Standard Electrik Lorenz Aktiengesellschaft, 371 F.2d 870, 152 U.S.P.Q. 563 (C.C.P.A. 1967). A number of factors must be considered in determining whether two trademarks are confusingly similar. First, the marks must be compared, in view of their relative strength, for similarities in appearance, sound, connotation, and commercial impression. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). Second, the goods and/or services identified in the application and registration must be compared to determine if they are related, or if the activities surrounding their marketing would cause likely confusion as to origin. Guardian Prods. Co. v. Scott Paper Co., 200 U.S.P.Q. 738 (T.T.A.B. 1978). Third, the care likely to be exercised by purchasers plays an important role in the likelihood of confusion determination. DuPont, 476 F.2d at 1360-61, 177 U.S.P.Q. at 566. Finally, any other factors relevant to the likelihood of confusion analysis must be considered. Id.
b. Comparison of the MarksA likelihood of confusion analysis must focus its comparison of the marks on the marks in their entireties. See In re Nat'l Data Corp., 753 F.2d 1056, 1058, 224 U.S.P.Q. 749, 750-51 (Fed. Cir. 1985). In this case, the Applicant's mark is FRUITMAX whereas the cited marks are FRUTAMAX and FRUTIMAX.
With regard to the Applicant's FRUITMAX mark and the cited FRUTAMAX and FRUTIMAX marks, there are noticeable differences between the marks. First, Applicant's mark is two syllables, whereas the cited marks are each three. Applicant submits that this results in a phonetical distinction between the marks. Further, Applicant submits that the use of the letter "A" in FRUTAMAX and "I" FRUTIMAX" serve to distinguish those marks from Applicant's mark, beyond adding an additional syllable. The use of those letters in the cited marks serves to create the impression that the beverage to which they apply are "fruity" in taste, whereas Applicant's mark FRUITMAX creates no such impression. Indeed, as Applicant's goods are food colorants and not food or beverage flavorings, Applicant would not want to create the impression that use of its product results in a "fruity" taste.
c. Comparison of the Goods
Second, the goods for which the marks are used must be analyzed to determine whether they are related or the marketing of them would cause likely confusion. Guardian Prods. Co. v. Scott Paper Co., 200 U.S.P.Q. 738 (T.T.A.B. 1978). Here, the only arguable similarity between Applicant's goods and the goods of the cited marks are that they are related to consumed products. Applicant's goods, as amended, are colorants for use in the manufacture of food. These goods are primarily sold and marketed for commercial and industrial food production uses and are not available through retail stores. In contrast, the FRUTAMAX drink mixes and FRUTIMAX beer and mineral waters appear to be primarily intended for general consumer use and appear to be available only through general retail stores. Not only are the goods themselves and their intended purposes different, but the targeted consumers are different, such that marketing for these products would be highly unlikely to cross paths and cause confusion. The FRUITMAX products are marketed to specialized manufacturers of food products. The FRUTAMAX and FRUTIMAX products are likely marketed to the general consumer of beverages. Therefore, Applicant respectfully submits that the products are not related and there is no likelihood of confusion between its FRUITMAX colorants and the cited FRUTAMAX drink mixes or FRUTIMAX beer and mineral waters.
d. Care in Purchasing
Finally, the Examiner must also consider the level of care purchasers put into a decision to buy the products at issue. Applicant submits that this factor also weighs against a likelihood of confusion. Purchasers of Applicant's colorants for use in the manufacture of food are likely to exercise a high degree of care in that purchase. Applicant's consumers are experienced, specialized food product manufacturers. The ingredients used in the production of their products are central to the quality of the end-product, and they therefore exercise a high degree of care in selecting them. Therefore, it is highly unlikely that a purchaser of Applicant's FRUITMAX would confuse that highly specialized product with a powdered drink mix or beer. As stated above, it is highly unlikely that the average purchaser of FRUTAMAX or FRUTIMAX products would ever even come in contact with Applicant's FRUITMAX products. Accordingly, Applicant respectfully submits that neither the consumers of its FRUITMAX colorants nor the consumers of the FRUTAMAX drink mixes or FRUTIMAX beer and mineral waters would be easily confused by these trademarks for these goods.
In light of the differences between the FRUITMAX mark and the cited FRUTAMAX and FRUTIMAX marks when viewed in their entireties, the differences in the relevant goods and their channels of trade, and the level of care exercised by the relevant purchasers, the Applicant submits that there exists no likelihood of confusion between its mark and the cited mark.
CONCLUSION
Applicant believes that it has responded to all issues raised in the Office Action and respectfully requests that the application be passed to publication. However, should any questions arise with respect to the application or the issues addressed herein, please contact the undersigned. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 002 |
| DESCRIPTION | |
| Food color made from naturally occurring colorants for use in food and beverages | |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 03/28/2007 |
| FIRST USE IN COMMERCE DATE | At least as early as 08/01/2007 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 002 |
| DESCRIPTION | Colorants for use in the manufacture of food. |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 03/28/2007 |
| FIRST USE IN COMMERCE DATE | At least as early as 08/01/2007 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /Megan Q. Raynor/ |
| SIGNATORY'S NAME | Megan Q. Raynor |
| SIGNATORY'S POSITION | Attorney of record, Wisconsin bar member |
| DATE SIGNED | 01/07/2009 |
| RESPONSE SIGNATURE | /Megan Q. Raynor/ |
| SIGNATORY'S NAME | Megan Q. Raynor |
| SIGNATORY'S POSITION | Attorney of record, Wisconsin bar member |
| DATE SIGNED | 01/07/2009 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Jan 07 17:42:48 EST 2009 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.X.X-200 90107174248257781-7746826 3-43049f4b2d7a8476bcb74eb b5cd4ccd4a3-N/A-N/A-20090 107173740705037 |
| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
This communication responds to the Office Action mailed August 21, 2008, concerning the above-referenced application.
AMENDMENTS
Please delete the originally-filed identification of goods/services and substitute therefore the following:
International Class 02: Colorants for use in the manufacture of food.
REMARKS
In this Office Action the Examiner has initially refused registration due to an alleged likelihood of confusion with an existing registration. Applicant also amends its identification of goods. The issues are addressed in turn below.
1. Identification of Goods
Applicant has amended its identification of goods as noted above. This amendment clarifies the goods without expanding or adding to those goods originally identified in the application. 37 C.F.R. § 2.71(a); TMEP § 1402.06. Additionally, the identification wording is drawn directly from the Acceptable Identification of Goods and Services Manual. Accordingly, Applicant respectfully submits that the amendment is acceptable.
2. Likelihood of Confusion
The Examiner has initially refused registration for FRUITMAX due to an alleged likelihood of confusion with U.S. Registration No. 3,412,638, for FRUTAMAX, which covers "drink mixes and fruit drinks, fruit flavored soft drinks, preparations and syrups for making fruit drinks and soft drinks" (collectively, "drink mixes"). In addition, the Examiner noted a potential likelihood of confusion with U.S. Serial No. 77/385,357, for FRUTIMAX, for beers, mineral and aerated water and other non-alcoholic drinks, fruit drinks and fruit juices, syrups and other preparations for making beverages (collectively, "beer and mineral water"). Applicant respectively submits that there is no likelihood of confusion between its FRUITMAX mark for colorants for use in the manufacture of food, as amended, and the cited FRUTAMAX and FRUTIMAX marks for drink mixes and beer and mineral water, and requests that this ground for refusal be withdrawn.
a. Applicable Law
The Patent and Trademark Office bears "the burden of proving that a trademark falls within a prohibition of § 1052." In re Mavety Media, 33 F.3d 1371, 31 U.S.P.Q.2d 1925; see also In re Standard Electrik Lorenz Aktiengesellschaft, 371 F.2d 870, 152 U.S.P.Q. 563 (C.C.P.A. 1967). A number of factors must be considered in determining whether two trademarks are confusingly similar. First, the marks must be compared, in view of their relative strength, for similarities in appearance, sound, connotation, and commercial impression. In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973). Second, the goods and/or services identified in the application and registration must be compared to determine if they are related, or if the activities surrounding their marketing would cause likely confusion as to origin. Guardian Prods. Co. v. Scott Paper Co., 200 U.S.P.Q. 738 (T.T.A.B. 1978). Third, the care likely to be exercised by purchasers plays an important role in the likelihood of confusion determination. DuPont, 476 F.2d at 1360-61, 177 U.S.P.Q. at 566. Finally, any other factors relevant to the likelihood of confusion analysis must be considered. Id.
A likelihood of confusion analysis must focus its comparison of the marks on the marks in their entireties. See In re Nat'l Data Corp., 753 F.2d 1056, 1058, 224 U.S.P.Q. 749, 750-51 (Fed. Cir. 1985). In this case, the Applicant's mark is FRUITMAX whereas the cited marks are FRUTAMAX and FRUTIMAX.
With regard to the Applicant's FRUITMAX mark and the cited FRUTAMAX and FRUTIMAX marks, there are noticeable differences between the marks. First, Applicant's mark is two syllables, whereas the cited marks are each three. Applicant submits that this results in a phonetical distinction between the marks. Further, Applicant submits that the use of the letter "A" in FRUTAMAX and "I" FRUTIMAX" serve to distinguish those marks from Applicant's mark, beyond adding an additional syllable. The use of those letters in the cited marks serves to create the impression that the beverage to which they apply are "fruity" in taste, whereas Applicant's mark FRUITMAX creates no such impression. Indeed, as Applicant's goods are food colorants and not food or beverage flavorings, Applicant would not want to create the impression that use of its product results in a "fruity" taste.
c. Comparison of the Goods
Second, the goods for which the marks are used must be analyzed to determine whether they are related or the marketing of them would cause likely confusion. Guardian Prods. Co. v. Scott Paper Co., 200 U.S.P.Q. 738 (T.T.A.B. 1978). Here, the only arguable similarity between Applicant's goods and the goods of the cited marks are that they are related to consumed products. Applicant's goods, as amended, are colorants for use in the manufacture of food. These goods are primarily sold and marketed for commercial and industrial food production uses and are not available through retail stores. In contrast, the FRUTAMAX drink mixes and FRUTIMAX beer and mineral waters appear to be primarily intended for general consumer use and appear to be available only through general retail stores. Not only are the goods themselves and their intended purposes different, but the targeted consumers are different, such that marketing for these products would be highly unlikely to cross paths and cause confusion. The FRUITMAX products are marketed to specialized manufacturers of food products. The FRUTAMAX and FRUTIMAX products are likely marketed to the general consumer of beverages. Therefore, Applicant respectfully submits that the products are not related and there is no likelihood of confusion between its FRUITMAX colorants and the cited FRUTAMAX drink mixes or FRUTIMAX beer and mineral waters.
d. Care in Purchasing
Finally, the Examiner must also consider the level of care purchasers put into a decision to buy the products at issue. Applicant submits that this factor also weighs against a likelihood of confusion. Purchasers of Applicant's colorants for use in the manufacture of food are likely to exercise a high degree of care in that purchase. Applicant's consumers are experienced, specialized food product manufacturers. The ingredients used in the production of their products are central to the quality of the end-product, and they therefore exercise a high degree of care in selecting them. Therefore, it is highly unlikely that a purchaser of Applicant's FRUITMAX would confuse that highly specialized product with a powdered drink mix or beer. As stated above, it is highly unlikely that the average purchaser of FRUTAMAX or FRUTIMAX products would ever even come in contact with Applicant's FRUITMAX products. Accordingly, Applicant respectfully submits that neither the consumers of its FRUITMAX colorants nor the consumers of the FRUTAMAX drink mixes or FRUTIMAX beer and mineral waters would be easily confused by these trademarks for these goods.
In light of the differences between the FRUITMAX mark and the cited FRUTAMAX and FRUTIMAX marks when viewed in their entireties, the differences in the relevant goods and their channels of trade, and the level of care exercised by the relevant purchasers, the Applicant submits that there exists no likelihood of confusion between its mark and the cited mark.
CONCLUSION
Applicant believes that it has responded to all issues raised in the Office Action and respectfully requests that the application be passed to publication. However, should any questions arise with respect to the application or the issues addressed herein, please contact the undersigned.