To: | BETTER3FRUIT N.V. (Cliff@freship.com) |
Subject: | U.S. Trademark Application Serial No. 79286484 - GIGA - HBRAN-T295-U |
Sent: | April 07, 2021 05:05:29 AM |
Sent As: | ecom108@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 79286484
Mark: GIGA
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Correspondence Address: 11710 Plaza America Drive Suite 2000
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Applicant: BETTER3FRUIT N.V.
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Reference/Docket No. HBRAN-T295-U
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: April 07, 2021
International Registration No. 1533146
This Office action is supplemental to and supersedes the previous Office action issued on September 1, 2020 in connection with this application. Applicant was previously advised of a prior pending application which has now registered. As a result, the refusal under Trademark Act Section 2(d) has been amended in light of this occurrence. See TMEP §§706, 711.02.
In a previous Office action dated September 1, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirement: engage U.S. Counsel.
Based on applicant’s response, the trademark examining attorney notes that the following requirement has been satisfied: Applicant has engaged U.S. Counsel. See TMEP §713.02.
In addition, Applicant has reached a consent agreement with the registered mark for which registration was refused for a likelihood of confusion under Trademark Act Section 2(d) and the refusal as to this registration has been withdrawn. See id.
However, as noted above, the prior pending Application for which Applicant was previously advised has now registered and, as a result, registration must be refused under Trademark Act Section 2(d) for a likelihood of confusion with the newly registered mark.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Section 2(d) Refusal—Likelihood of Confusion
SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION
Applicant’s mark is GIGA in standard characters for “fresh fruits”. Registrant’s mark is GIGA in standard characters for “Healthy vegetarian snacks and food products, namely, vegetable- and nut-based food bars, vegetable-based snack foods and nut-based snack foods”.
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In the present case, applicant’s mark is GIGA and registrant’s mark is GIGA. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Relatedness of the Goods
The attached evidence from Harry and David, the Fruit Company, Hickory Farms, Liberty Orchards, and Hadley Fruit Orchards establishes that a single source often provides both goods of the type identified in the Application alongside the vegetable and nut based snack food and bars identified in the registration under a common source indicator and that such goods may travel in the same channels of trade to the same class of purchasers. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). For example:
http://www.harryanddavid.com/searchterm/nut
http://www.thefruitcompany.com/catalogsearch/result/?q=nut+snack
http://www.hickoryfarms.com/search?q=nut&lang=default
http://www.libertyorchards.com/category/Orchard_Bars
http://hadleyfruitorchards.com/?s=apple
Conclusion
Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines. See In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
As Applicant’s and Registrant’s marks are identical and their goods related, registration of the applied-for mark must be refused under Trademark Act Section 2(d).
APPLICANT’S ARGUMENT IN RESPONSE
In anticipation of a likelihood of confusion with the above referenced mark, Applicant has argued that as the newly registered mark coexists with the previously cited mark for which Applicant has obtained a consent agreement, there is no likelihood of confusion between Applicant’s and the registrant’s marks. However, there is a substantial difference between the goods identified in the previously cited mark and the currently cited mark such that the analysis between a likelihood of confusion with the applied-for and the same for the previously cited mark would be a comparison of apples, or more accurately clover, and oranges and thus inapplicable.
RESPONSE GUIDELINES
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
Riso, Mark
/Mark Riso/
Trademark Examining Attorney
Law Office 108
(571)272-0167
Mark.Riso@uspto.gov
RESPONSE GUIDANCE