Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 04/2009)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 79030227 has been amended as follows:
Argument(s)
In response to the substantive refusal(s), please note the following:

Applicant seeks to register BIOGAIA for specific pharmaceutical preparations and dairy products. Non-alcoholic drinks, all of the class 32 goods, have been cancelled from the application.

 

Registration has been refused in view of registrations of GAIA and GAIA HERBS for dietary supplements in the form of herbal extracts. A potential refusal in view of a pending application to register GAIA for various beverages, including non-alcoholic drinks, has also been made. Reconsideration of the refusal over the GAIA HERBS and GAIA marks is respectfully requested.

 

The name GAIA is not a coined term, but, according to the online Encyclopedia Mythica, originates in mythology and means "earth" or "mother earth" and is the name of "an early earth goddess". A search of the records of the Patent and Trademark Office discloses that the name GAIA is included in at lest 52 live trademark registrations and applications. The following issued registrations relate to food and/or drink products or services (copies of Patent and Trademark Office TESS records attached)..

 

Mark:                                  GAIA ORGANIC BLEND

Status:                                 Registration Issued

Serial No.:                           76072468

Reg. No.:                             2608691

Filing Date:                          2000-06-19

Reg. Date:                           2002-08-20

Owner:                                Peet's Trademark Company

                                           1400 Park Avenue

                                           Emeryville, CA 946083520          

Goods/Services:                   coffees

 

Mark:                                  MATEUS WHITE WINE 10% VOL. VINHO REGINAL BEIRAS 750 ML E PRODUCT OF PORTUGAL ENGARRAFADO POR SOGRAPE VINHOS DE PORTUGAL, S.A. VILA NOVA DE GAIA PORTUGAL

Status:                                 Registration Issued

Serial No.:                           75747520

Reg. No.:                             2535330

Filing Date:                          1999-07-12

Reg. Date:                           2002-02-05

Owner:                                Sogrape-Vinhos De Portugal, S.A.

                                           Aldeia Nova, Avintes

                                           4400 Vila Nova De Gaia

                                           Portugal

Goods/Services:                   wines

 

Mark:                                  GAIA

Status:                                 Registration Issued

Serial No.:                           78301932

Reg. No.:                             2866928

Filing Date:                          2003-09-18

Reg. Date:                           2004-07-27

Owner:                                Marlon Abela Restaurant Corporation

                                           5590 Spring Valley, Unit C101

                                           Dallas, TX 75240 

Goods/Services:                   restaurant, bar, and catering services

 

Mark:                                  GAIA PAPAYA

Status:                                 Registration Issued

Serial No.:                           76601274

Reg. No.:                             3115690

Filing Date:                          2004-07-09

Reg. Date:                           2006-07-18

Owner:                                Gaia Importacao E Exportacao Ltda

                                           C/O 501 Brickell Key Drive Suite 400

                                           Miami, FL 33131 

Goods/Services:                   commercial activities, namely, import and export agencies featuring fruits, juices, agricultural products, raw materials, equipment

 

Applicant's mark is BIOGAIA. As such, it is different from the cited marks in spelling, sound, appearance and connotation. The cited registered marks are GAIA HERBS and GAIA. One includes the term GAIA followed by another term. Each of the above co-existing marks, but for one, includes GAIA in combination with other terms, the other terms being sufficiently different as to prevent confusion. Similarly, Applicant's mark begins with BIO and, like those above, is sufficiently different from the cited marks to prevent confusion.

 

As to the cited registration of GAIA alone, the above marks show that GAIA can coexist with other marks that include GAIA with other terms, provided there is a substantial enough difference in the goods or services with which they are used. The goods with which Applicant's mark is used differ substantially from those of the cited registrations and application.

 

The goods listed in the cited registrations are all herbal dietary supplements in class 5. Applicant's identification of goods, as amended, includes no herbal dietary supplements. Applicant's class 5 goods are pharmaceuticals and dietetic substances most of which are based on bacteria, and other preparations specifically for medical and dental use. Applicant's identification now specifically excludes herbal preparations.

 

Applicant's class 29 goods are dairy products having no relation to herbal preparations.

 

Applicant has cancelled the class 32 goods from the application. Hence, there is no likelihood of confusion with the mark of the cited application for trademark registration.

 

In view of the above, withdrawal of the Section 2(d) refusal is believed appropriate.

 

Objection has been made to the identification of goods for indefiniteness. The identifications of the class 5 and 29 products have, accordingly, been amended as suggested by the Examining Attorney. The class 32 goods have been cancelled from the application.

 

Finally, the Examining Attorney has inquired as to the significance of BIOGAIA. Other than as set forth above, the mark for which registration is sought is not known to have any significance in the business trade or industry, geographically, or in a foreign language.

 

In view of the foregoing, it is submitted that the application is now in condition for passage to publication. Early and favorable action is respectfully requested.

Evidence
Evidence in the nature of copies of TESS records of third party trademark/service mark registrations has been attached.
Original PDF file:
evi_7124722376-141103527_._Third_Party_GAIA_Registrations.pdf
Converted PDF file(s) (7 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4
Evidence-5
Evidence-6
Evidence-7

Classification and Listing of Goods/Services
Applicant hereby deletes the following class of goods/services from the application.
Class 032 for Non-alcoholic drinks

Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 005 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

Proposed: Class 005 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.
Filing Basis: Section 66(a).
Applicant hereby amends the following class of goods/services in the application as follows:
Current: Class 029 for Milk, milk based drinks, yoghurt, milk products, dietary supplements in the form of lactic acid bacteria

Proposed: Class 029 for 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.
Filing Basis: Section 66(a).
Additional Statements

"BIOGAIA appearing in the mark has no significance in the relevant trade or industry or as applied to the goods/services listed in the application, no geographical significance, nor any meaning in a foreign language."

Response Signature
Signature: /Howard F Mandelbaum/     Date: 07/10/2007
Signatory's Name: Howard F Mandelbaum
Signatory's Position: Attorney

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
        
Serial Number: 79030227
Internet Transmission Date: Tue Jul 10 14:21:01 EDT 2007
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XX-2007071014210140
3842-79030227-370111abb272d4ba965ec83dfe
a9e1e7b-N/A-N/A-20070710141103527496