To: | BIOPURE HEALING PRODUCTS, LLC (adm@admesq.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85195710 - BIOPURE - 0021.00002.0 |
Sent: | 3/14/2011 6:14:37 PM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85195710
MARK: BIOPURE
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/teas/eTEASpageD.htm
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APPLICANT: BIOPURE HEALING PRODUCTS, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 3/14/2011
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62, 2.65(a); TMEP §§711, 718.03.
Section 2(d) Refusal – Likelihood of Confusion
The applicant has applied to register BIOPURE with design element for “Bath oils; Personal deodorants; Toothpastes” and “Air freshener sprays; Food supplements; Herbal supplements; Insect repellents; Mineral supplements; Nutritionally fortified water”
The registered marks are:
BIOPUREDHA for “Fish oil used as a nutritional supplement, either alone or in combination with other ingredients”.
BIOPURE PROTEIN for “dietary supplement containing bioactive pure whey protein concentrate”.
BIOPUR for “purifying, cleansing and hydrating skin creams, lotions and gels”.
Test for Likelihood of Confusion
Factors Used in Determining a Likelihood of Confusion
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 Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq.
I. COMPARISON OF THE MARKS
General Test for Comparison of the Marks
Factors Applied to Applicant’s Mark
In the present case, applicant’s mark is very similar to the registered marks in sound, appearance, and connotation.
The marks BIOPUREDHA and BIOPURE PROTEIN wording not found in applicant’s mark. However, the mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Optical Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(b)(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark.
Furthermore, the terms DHA and PROTEIN are descriptive or generic wording and therefore are less dominant in a comparison of the marks. The marks are compared in their entireties under a Trademark Act Section 2(d) analysis. See TMEP §1207.01(b). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); see TMEP §1207.01(b)(viii), (c)(ii). In this case, the attached website from www.omega-3-fish-oil-guide.com explains how DHA is a category or type of fish oil. The term PROTEIN likewise identifies a category of supplement.
Accordingly, the term BIOPURE and BIOPUR is the dominant feature of all the marks. Overall, applicant’s mark and the cited mark impart confusingly similar commercial impressions.
II. COMPARISON OF THE GOODS/SERVICES
General Test for Comparison of Goods/Services
Factors Applied to Applicant’s Mark
Applicant’s goods are related to registrant’s because both involve supplements and personal care goods. Applicant’s food, mineral, and herbal supplements are broad enough to encompass the goods of the goods in the registered mark BIOPURE PROTEIN, as well as the fish oil supplements in BIOPUREDHA.
The cosmetic goods of applicant, namely, bath oils, personal deodorants, and toothpastes are related to the skin creams, lotions, and gels found in the goods of the BIOPUR mark in that these items are often sold or offered by the same parties. Please see the attached evidence from online shopping pages demonstrate how parties such as Neutrogena and Bath and Body Works offer both goods of registrant and those of applicant.
Accordingly, both applicant’s goods and the goods in the registered mark would be encountered together by consumers seeking nutritional supplements and personal care products.
Since the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark must be refused registration under Section 2(d) of the Trademark Act.
Applicant May Respond to Refusal
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
If applicant chooses to respond to the refusal, applicant must also respond to the requirements set forth below.
Substitute Specimen Required – Class 003 ONLY
In this case, the specimen adequately shows use of the mark on nutritional supplements, but the specimens do not provide an example of use of the mark with the personal care goods listed in Class 003.
Therefore, applicant must submit the following:
(1) A substitute specimen showing the mark in use in commerce for each class of goods and/or services specified in the application; and
(2) The following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “The substitute specimen was in use in commerce at least as early as the filing date of the application.” 37 C.F.R. §2.59(a); TMEP §904.05; see 37 C.F.R. §2.193(e)(1). If submitting a substitute specimen requires an amendment to the dates of use, applicant must also verify the amended dates. 37 C.F.R. §2.71(c); TMEP §904.05.
Examples of specimens for goods are tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, or displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Examples of specimens for services are signs, photographs, brochures, website printouts or advertisements that show the mark used in the actual sale or advertising of the services. See TMEP §§1301.04 et seq.
If applicant cannot satisfy the above requirements, applicant may amend the application from a use in commerce basis under Section 1(a) to an intent to use basis under Section 1(b), for which no specimen is required. See TMEP §806.03(c). However, if applicant amends the basis to Section 1(b), registration will not be granted until applicant later amends the application back to use in commerce by filing an acceptable allegation of use with a proper specimen. See 15 U.S.C. §1051(c), (d); 37 C.F.R. §§2.76, 2.88; TMEP §1103.
To amend to Section 1(b), applicant must submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant has had a bona fide intention to use the mark in commerce on or in connection with the goods and/or services listed in the application as of the filing date of the application.” 37 C.F.R. §2.34(a)(2); TMEP §806.01(b); see 15 U.S.C. §1051(b); 37 C.F.R. §§2.35(b)(1), 2.193(e)(1).
Pending receipt of a proper response, registration is refused because the specimen does not show the applied-for mark in use in commerce as a trademark and/or service mark for the identified goods and/or services. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
The following is a properly worded sample declaration under 37 C.F.R. §2.20. Applicant should add this declaration to the end of its response, properly signed and dated by a person authorized under 37 C.F.R. §2.33(a). TMEP §804.01(b). The declaration can also be submitted and signed electronically through the TEAS response system.
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(Signature)
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(Print or Type Name and Position)
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(Date)
If applicant has questions about the application or this Office action, please contact the assigned trademark examining attorney at the telephone number below.
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions. See 37 C.F.R. §2.23(a)(1). For a complete list of these documents, see TMEP §819.02(b). In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address. 37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.
/Helene Liwinski/
Hélène Liwinski
Trademark Examining Attorney
Law Office 104
571.272.1874 phone
571.273.9104 fax
helene.liwinski@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/teas/eTEASpageD.htm. Please wait 48-72 hours from the issue/mailing date before using TEAS, to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/teas/eTEASpageE.htm.