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:

 

THIS IS A FINAL ACTION.

 

This letter responds to the applicant’s communication filed on July 10, 2007.

 

In the applicant’s communication filed on July 10, 2007, the applicant (1) submitted arguments in favor of registration, contesting the refusal to register under Section 2(d) of the Trademark Act; (2) amended the identification of goods for Classes 005 and 029 and deleted Class 032; and (3) submitted the significance of the mark.

 

The following refusal/requirements have been satisfied and are now withdrawn:

 

(1)   Potential 2(d) Refusal for Prior Pending App. No. 79029615

(2)   Identification of Goods

(3)   Significance of the Mark

 

TMEP §714.04.

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d), is now made FINAL with respect to the specified goods contained in U.S. Registration Nos. 2397913 and 2410679.  37 C.F.R. §2.64(a).

 

Trademark Act Section 2(d) Final Refusal – Likelihood of Confusion

 

THIS REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN

 

If applicant should fail to respond to this Office action within the six month time limit, then the following goods and/or services will be deleted from the application:  dietetic foods adapted for medical use; nutritional supplements containing lactic acid bacteria and lactobacillus. 

 

The application will then proceed with the following goods and/or services only: 

 

International Class 005

Pharmaceutical preparations for use in treating gastric disease and disturbances; baby food; media bacteriological cultures, bacteria and preparations of bacteria in the nature of probiotics for medical use and healthcare; medical dental care preparations, namely chewing gum, lozenges, pastilles and mouthwash for medical purposes; all of the foregoing excluding liquid herbal extracts, liquid herbal extracts in vegetable-based capsules, and solid herbal extracts.

      

International Class 029

Milk, milk based drinks, namely drinking yoghurt, milk products, namely eating yoghurt and dairy products containing lactic acid bacteria, excluding ice cream, ice milk, and frozen yoghurt.

 

37 C.F.R. §2.65(a).

 

Trademark Act Section 2(d) Refusal – Likelihood of Confusion – Final Action

 

Registration was refused under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the mark for which registration is sought so resembles the mark shown in U.S. Registration No. 2397913 and 2410679 as to be likely, when used on the identified goods, to cause confusion, or to cause mistake, or to deceive.  The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d), is now made FINAL with respect to specified goods contained in U.S. Registration Nos. 2397913 and 2410679.  37 C.F.R. §2.64(a).

 

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.

 

Applicant’s mark is BIOGAIA for “Pharmaceutical preparations for use in treating gastric disease and disturbances, dietetic foods adapted for medical use; baby food; media bacteriological cultures, bacteria and preparations of bacteria in the nature of probiotics for medical use and healthcare; nutritional supplements containing lactic acid bacteria and lactobacillus; medical dental care preparations, namely chewing gum, lozenges, pastilles and mouthwash for medical purposes; all of the foregoing excluding liquid herbal extracts, liquid herbal extracts in vegetable-based capsules, and solid herbal extracts” in International Class 005 and “Milk, milk based drinks, namely drinking yoghurt, milk products, namely eating yoghurt and dairy products containing lactic acid bacteria, excluding ice cream, ice milk, and frozen yoghurt” in International Class 029.

 

The relevant goods at issue are “dietetic foods adapted for medical use; nutritional supplements containing lactic acid bacteria and lactobacillus; all of the foregoing excluding liquid herbal extracts, liquid herbal extracts in vegetable-based capsules, and solid herbal extracts” in International Class 005.

 

Registrant’s marks are GAIA and GAIA HERBS for “Dietary supplements, namely, liquid herbal extracts, liquid herbal extracts in vegetable-based capsules, and solid herbal extracts” in International Class 005.

 

Comparison of the Marks

 

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).

 

In the initial Office Action, the examining attorney argued that the applicant and registrant’s marks were similar in sound, appearance, meaning, and connotation because all three marks shared the wording GAIA, which is distinct and arbitrary in relation to the goods at issue.  Further, the examining attorney noted that neither the applicant’s addition of the prefix BIO- to its mark nor the registrant’s inclusion of the descriptive term HERBS in the second mark obviated the similarities between the marks.

 

In response, the applicant argues that the word GAIA is not coined, but rather means “earth” or “mother earth” and is the name of “an early earth goddess” thereby affording the registrant’s marks less protection under the Trademark Act.  Applicant also attached four third-party registrations relating to food and/or drink products or services that use the wording GAIA in their respective marks.  However, the existence of several third-party registered marks containing the wording GAIA is negligible and does not prove that the wording is particularly weak with respect to the goods at issue.  Even if applicant has shown that the cited mark is “weak,” such marks are still entitled to protection against registration by a subsequent user of the same or similar mark for the same or closely related goods or services.  See Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB 1976) and cases cited therein.  In the present case, the wording GAIA is arbitrary in relation to the goods at issue.   Arbitrary marks are afforded wide protection under the Trademark Act.  Any doubt regarding a likelihood of confusion is resolved in favor of the prior registrant.  Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988); TMEP §§1207.01(d)(i).

 

Finally, the applicant argues that the addition of the prefix BIO- distinguishes the applicant’s mark from the registrant’s marks.  The prefix BIO- indicates a living thing (see attached dictionary definition).  Thus, in the present case, the addition of the prefix BIO- does not change the meaning of the mark (earth vs. living earth) nor does it significantly change the mark’s overall commercial impression.

 

Where the marks of the respective parties are identical or highly similar, then the commercial relationship between the goods or services of the respective parties must be analyzed carefully to determine whether there is a likelihood of confusion.  In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); In re Concordia Int’l Forwarding Corp., 222 USPQ 355 (TTAB 1983); TMEP §1207.01(a).

 

Comparison of the Goods and/or Services

 

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).

 

Applicant’s goods at issue are “dietetic foods adapted for medical use; nutritional supplements containing lactic acid bacteria and lactobacillus; all of the foregoing excluding liquid herbal extracts, liquid herbal extracts in vegetable-based capsules, and solid herbal extracts” in International Class 005.

 

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.

 

In the initial Office Action, the examining attorney argued that the goods were similar because both applicant and registrant’s goods comprised forms of dietary supplements.  The examining attorney also noted that it would be reasonable for the registrant to expand its business and manufacture goods similar or identical to the applicant’s stated goods.

 

In response, the applicant amended the identification of goods to specifically exclude the registrant’s goods, namely “liquid herbal extracts, liquid herbal extracts in vegetable-based capsules, and solid herbal extracts” in International Class 005.  Applicant also deleted International Class 032 from the application.

 

In light of these changes, the examining attorney lifted the potential Section 2(d) refusal for the mark GAIA (Serial No. 79029615) for “beers; mineral and aerated waters and other non-alcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages” in International Class 032.  The examining attorney also limited the Section 2(d) refusal to the goods at issue.  However, the examining attorney still believes that the goods at issue, namely “dietetic foods adapted for medical use; nutritional supplements containing lactic acid bacteria and lactobacillus; all of the foregoing excluding liquid herbal extracts, liquid herbal extracts in vegetable-based capsules, and solid herbal extracts” in International Class 005 are similar to the registrant’s goods in order to support a finding of a likelihood of confusion.

 

Attached are copies of twenty live printouts from the USPTO X-Search database, which show third-party registrations of marks used in connection with the same or similar goods and/or services 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 and/or services listed therein, namely dietetic foods adapted for medical use, nutritional supplements, and herbal extracts, 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).

 

Moreover, several printouts also indicate that herbal extracts may serve as an ingredient in certain dietetic foods adapted for medical use and nutritional supplements (Reg. Nos. 2777967, 2898234, and 2766128).  Finally, as evidenced by the attached Internet web pages, applicant and registrant’s goods share the same channels of trade (see attached).

 

For the reasons described above, the refusal to register under Section 2(d) of the Trademark Act for the goods at issue is maintained and made FINAL.

 

Response to Final Action

 

If applicant does not respond within six months of the mailing date of this final action, then the following goods to which the final refusal(s) and/or requirement(s) apply will be deleted from the application:  dietetic foods adapted for medical use; nutritional supplements containing lactic acid bacteria and lactobacillus.  The application will proceed forward for the remaining goods.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).

 

Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

 

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matters.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

/Laurie R. Kaufman/

Trademark Examining Attorney

Law Office 103

Ph: 571.272.8913

Fx: 571.273.9103

 

 

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.