UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85293452
MARK: 24
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Herbalife International, Inc.
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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.
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on 1/23/12 and follows a telephone discussion with applicant. The examining attorney acknowledges and has entered into the record the substitute specimens. After due consideration of the applicant’s arguments, the refusal to register the mark pursuant to Section 2(d) of the Trademark Act must be repeated and made final.
Registration of the applied-for mark was refused because of a likelihood of confusion with the mark, 24, in U.S. Registration No. 3841881. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. The applicant states they intend to file a Petition to Cancel the cited registration. However as of the current date, the applicant has not filed any papers with the Trademark Trial and Appeal Board. Please note that the examining attorney can only suspend the application after the appropriate papers have been filed. Until such time, the examining attorney has no alternative but to repeat and make final the refusal.
SECTION 2(D) REFUSAL
As previously stated, the applied-for mark is 24 [stylized]; the registrant’s mark is 24. The respective marks are highly similar in sight; the stylization by the applicant does not alter the overall commercial impression. The marks are phonetically identical and create the same commercial impression. Thus the first prong of the likelihood of confusion test is readily met.
In the instant case the respective goods are highly related products for sports and fitness. The applicant’s dietary and nutritional supplements as well as the sports and fitness beverages would be found in the same trade channels and encountered by the same purchasers as the registrant’s energy drinks.
The trademark examining attorney had previously attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely dietary and nutritional supplements, sports and fitness beverages and energy drinks, are of a kind that may emanate from a single source under a single mark. See In re Davey Prods. Pty Ltd.,92 USPQ2d 1198, 1203 (TTAB 2009); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii). The examining attorney also attaches a sampling of websites which demonstrates that purchasers would encounter the supplements, sports beverages and energy drinks in the same trade channels.
Upon viewing highly similar marks on the highly related goods, these purchasers would mistakenly believe that the goods emanated from a common source. Thus there is a likelihood of confusion as to the source of the goods and the refusal to register the mark pursuant to Section 2(d) of the Trademark Act must be repeated and made final.
RESPONSE GUIDELINES
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; 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), 2.64(a); TBMP ch. 1200; TMEP §714.04.
In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
ASSISTANCE
/Karen K. Bush/
Trademark Examining Attorney
Law Office 108
571-272-9136
Karen.Bush@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. 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 trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
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.