UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 79/030227
APPLICANT: BioGaia AB
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CORRESPONDENT ADDRESS: |
RETURN ADDRESS: Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451
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MARK: BIOGAIA
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: |
Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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MAILING/E-MAILING DATE INFORMATION: If the mailing or e-mailing date of this Office action does not appear above, this information can be obtained by visiting the USPTO website at http://tarr.gov.uspto.report/, inserting the application serial number, and viewing the prosecution history for the mailing date of the most recently issued Office communication.
Serial Number 79/030227
INTERNATIONAL REGISTRATION NO. 0901864 .
This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application. 15 U.S.C. §1141h(c).
WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:
Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. However, the only attorneys who can practice before the USPTO in trademark matters are as follows:
(1) Attorneys in good standing with a bar of the highest court of any U.S. state, and
(2) Canadian attorneys who have applied for and received reciprocal recognition by the USPTO under 37 C.F.R. §10.14(c). Canadian attorneys can only represent Canadian applicants.
37 C.F.R. §10.14; TMEP §602.
Foreign attorneys are not permitted to practice before the USPTO, other than properly authorized Canadian attorneys. Preparing a paper, authorizing an amendment to an application, or submitting legal arguments in response to a requirement or refusal constitutes representation of a party in a trademark matter. A response signed by an unauthorized foreign attorney is considered an incomplete response. TMEP §§602, 602.03, 603.05.
THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:
The assigned trademark examining attorney has reviewed the referenced application and has determined the following:
Registration of the proposed mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2397913 and 2410679. Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq. See the enclosed registrations. Please note that one registrant owns both of the conflicting marks.
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 in determining whether there is a likelihood of confusion under Section 2(d). Any one of the factors listed may be dominant in any given case, depending upon the evidence of record. In re Dixie Restaurants, Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997); In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. 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 Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999); In re L.C. Licensing Inc., 49 USPQ2d 1379 (TTAB 1998); TMEP §§1207.01 et seq.
Taking into account the relevant Du Pont factors, a likelihood of confusion determination in this case involves a two-part analysis. First, the marks are compared for similarities in appearance, sound, connotation and commercial impression. In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely. In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.
The marks are compared for similarities in sound, appearance, meaning or connotation. In re E .I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1536 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); In re Mack, 197 USPQ 755 (TTAB 1977); TMEP §1207.01(b).
The applicant’s mark, BIOGAIA, is similar to the registrant’s marks, GAIA and GAIA HERBS, in sound, appearance, meaning, and connotation. All of the marks share the term GAIA, meaning “earth,” which is distinctive and arbitrary in relation to the goods at issue. Although the applicant has added the prefix BIO- to its mark, this does not obviate the similarities between the marks. The mere addition of a term to a registered mark does not obviate the similarity between the marks nor does it overcome a likelihood of confusion under Section 2(d). In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (“GASPAR’S ALE and “JOSE GASPAR GOLD”); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (C.C.P.A. 1975) (“BENGAL” and “BENGAL LANCER”); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (C.C.P.A. 1967) (“THE LILLY” and “LILLI ANN”); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988) (“MACHO” and “MACHO COMBOS”); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) (“CAREER IMAGE” and “CREST CAREER IMAGES”); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (“CONFIRM” and “CONFIRMCELLS”); In re Riddle, 225 USPQ 630 (TTAB 1985) (“ACCUTUNE” and “RICHARD PETTY’S ACCU TUNE”); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) (“HEAD START” and “HEAD START COSVETIC”); TMEP §1207.01(b)(iii).
The term HERBS in the second mark is descriptive and, as such, the Office considers it to be less significant when comparing the marks under Section 2(d) of the Trademark Act. Disclaimed matter is typically less significant or less dominant when comparing marks. Although a disclaimed portion of a mark certainly cannot be ignored, and the marks must be compared in their entireties, one feature of a mark may be more significant in creating a commercial impression. In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); In re National Data Corporation, 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); and In re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ 2d 1001 (Fed. Cir. 2002); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re El Torito Rests. Inc., 9 USPQ2d 2002 (TTAB 1988); In re Equitable Bancorporation, 229 USPQ 709 (TTAB 1986). In this case, GAIA remains the dominant portion of the registrant’s mark and, accordingly, is given greater weight in the analysis.
The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion. Instead, they 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 and/or services come from a common source. On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).
The applicant has applied to register the mark BIOGAIA for “Pharmaceutical preparations, dietetic substances for medical use; food for babies; bacteriological cultures, bacteria and preparations of bacteria as well as biological and biochemical preparations for medical use and healthcare; lactic acid bacteria, lactobacillus; medical dental care preparations; chewing gum, lozenges, pastilles and mouthwash for medical purposes” in International Class 005, “Milk, milk based drinks, yoghurt, milk products, dietary supplements in the form of lactic acid bacteria” in International Class 029, and “Non-alcoholic drinks” in International Class 032.
The registrant’s goods are “Dietary supplements, namely, liquid herbal extracts, liquid herbal extracts in vegetable-based capsules, and solid herbal extracts” in International Class 005.
Both the applicant and registrant’s goods include forms of dietary supplements. Likelihood of confusion is determined on the basis of the goods or services as they are identified in the application and the registration. Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993); J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991); Octocom Systems Inc. v. Houston Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990). Since the identification of the applicant’s goods and/or services is very broad, it is presumed that the application encompasses all goods and/or services of the type described, including those in the registrant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers. TMEP §1207.01(a)(iii).
Moreover, any goods or services in the registrant’s normal fields of expansion must also be considered in order to determine whether the registrant’s goods or services are related to the applicant’s identified goods or services for purposes of analysis under Section 2(d). In re General Motors Corp., 196 USPQ 574 (TTAB 1977). The test is whether purchasers would believe the product or service is within the registrant’s logical zone of expansion. CPG Prods. Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983); TMEP §1207.01(a)(v). In this case, it is reasonable that the registrant might expand its business to include pharmaceutical preparations and related goods and non-alcoholic, enriched, products. Because the marks are similar and the goods travel through the same channels of trade, it is likely that consumers would believe that the goods emanate from a common source.
Any doubt regarding a likelihood of confusion is resolved 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). 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 Application
Please be advised that a potentially conflicting mark in a prior-filed pending application may present a bar to registration. Information regarding pending Application Serial No. 79029615 is enclosed. The filing date of the referenced application precedes 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 application registers, 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 application. 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.
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If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
The applicant has applied to register the mark BIOGAIA for “Pharmaceutical preparations, dietetic substances for medical use; food for babies; bacteriological cultures, bacteria and preparations of bacteria as well as biological and biochemical preparations for medical use and healthcare; lactic acid bacteria, lactobacillus; medical dental care preparations; chewing gum, lozenges, pastilles and mouthwash for medical purposes” in International Class 005, “Milk, milk based drinks, yoghurt, milk products, dietary supplements in the form of lactic acid bacteria” in International Class 029, and “Non-alcoholic drinks” in International Class 032.
Some of the wording in the identification of goods is indefinite and may include goods in several international classes. In the identification of goods, applicant must use the common commercial or generic names for the goods, be as complete and specific as possible, and avoid the use of indefinite words and phrases. If applicant chooses to use indefinite terms such as “accessories,” “components,” “devices,” “equipment,” “materials,” “parts,” “systems” and “products,” then such terms must be followed by the word “namely” and a list of the specific goods identified by their common commercial or generic names. TMEP §§1402.01 and 1402.03(a).
Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted. 37 C.F.R. §2.71(a); TMEP §1402.06. 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.
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.
Therefore, the applicant must address the following issues and amend the identification of goods accordingly.
(1) The wording “pharmaceutical preparations” in the identification needs clarification because it is too indefinite and is not clear as to the type and/or use of the pharmaceutical preparations (e.g., for use in treating skin disorders, for use in dermatology, for use in treating wounds and burns). The applicant may substitute the following wording, if accurate: “Pharmaceutical preparations for use in {specify use, e.g., for use in treating skin disorders, for use in dermatology, for use in treating wounds and burns}.”
(2) The wording “dietetic substances adapted for medical use” in the identification needs clarification because it is too indefinite and is not clear as to what the “substances” are (e.g., foods, sugars). The applicant may substitute the following wording, if accurate: “dietetic foods adapted for medical use.”
(3) The wording “food for babies” in the identification of goods is indefinite and must be clarified because it does not adequately convey the nature of the goods. TMEP §1402.01. Applicant may substitute the following wording, if accurate: “baby food.”
(4) The wording “bacteriological cultures, bacteria and preparations of bacteria as well as biological and biochemical preparations for medical use and healthcare” in the identification of goods is indefinite and must be clarified because the nature of the goods is not clear. TMEP §1402.01. Applicant may substitute the following wording, if accurate: “media bacteriological cultures, bacteria and preparations of bacteria in the nature of {indicate the specific type of preparations, using common commercial names, in International Class 005 ONLY} for medical use and healthcare; biological and biochemical preparations, namely {indicate the specific type of preparations, using common commercial names, in International Class 005 ONLY} for medical use and healthcare.”
(5) The wording “lactic acid bacteria, lactobacillus” in the identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes. TMEP §§1402.01 and 1402.03. Applicant may substitute the following wording, if accurate: nutritional supplements containing lactic acid bacteria and lactobacillus.
(6) The wording “medical dental care preparations” in the identification of goods is indefinite and must be clarified because the nature of the preparations is not clear. TMEP §1402.01. Applicant may substitute the following wording, if accurate: “medical dental care preparations, namely {indicate the specific preparations, using common commercial names, in International Class 005 ONLY}.”
(1) The wording “milk based drinks” in the identification of goods is indefinite and must be clarified because the nature of the drinks is not clear. TMEP §1402.01. Applicant may substitute the following wording, if accurate: “Milk based drinks, namely {list specific types of drinks, using common commercial names, in International Class 029 ONLY, e.g., chocolate milk}.”
(2) The wording “milk products” in the identification of goods is indefinite and must be clarified because the nature of the products is not clear. TMEP §1402.01. Applicant may substitute the following wording, if accurate: “Milk products, namely {list specific types of milk products, using common commercial names, in International Class 029 ONLY, e.g., dairy products excluding ice cream, ice milk, and frozen yogurt}
(3) The wording “dietary supplements in the form of lactic acid bacteria” in the identification of goods is indefinite and must be clarified because it comprises goods in several international classes. TMEP §1402.01. Applicant may substitute the following wording, if accurate: “lactic acid bacteria drinks.”
The wording “non-alcoholic drinks” in the identification of goods is indefinite and must be clarified because it is too broad and could include goods in other international classes. TMEP §§1402.01 and 1402.03. Applicant may substitute the following wording, if accurate: non-alcoholic drinks, namely {list specific types of non-alcoholic drinks, using common commercial names, in International Class 032 ONLY, e.g., fruit juices}.
The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau of the World Intellectual Property Organization in the corresponding international registration. TMEP §§1401.03(d), 1401.04 and 1904.02(b).
Applicant must specify whether “BIOGAIA” has any significance in the business trade or industry, any geographical significance, or any meaning in a foreign language. 37 C.F.R. §2.61(b).
Response
Please note that there is no required format or form for responding to this Office action. However, applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number.
When responding to this Office action, applicant must make sure to respond in writing to each refusal and requirement raised. If there is a refusal to register the proposed mark, then applicant may wish to argue against the refusal, i.e., explain why it should be withdrawn and why the mark should register. If there are other requirements, then applicant should simply set forth in writing the required changes or statements and request that the Office enter them into the application record. Applicant must also sign and date its response.
If the 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.
/Laurie R. Kaufman/
Trademark Examining Attorney
Law Office 103
Ph: 571.272.8913
Fx: 571.273.9103
HOW TO RESPOND TO THIS OFFICE ACTION:
STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.
VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.
GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.