UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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:

 

On 12/28/2011, action on this application was suspended pending the disposition of U.S. Application Serial No. 85005531.  The referenced prior-pending application has since registered.  Therefore, registration is refused as follows.

 

SECTION 2(d) REFUSAL: LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4173666.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration, attached at Exhibit A.

 

Applicant has applied to register the mark F3 (in standard characters) for “dietary and nutritional supplements” in International Class 5.  The cited registered mark is RF3 (in standard characters) for “Dietary and nutritional supplements for non-medical purposes, namely, fish oil, fish oil supplement, deep sea fish oil, cod liver oil; fish-free dietary supplement; Vitamin preparations; Nutritional supplement, Vitamin and mineral supplement; Vitamin preparation; Vitamin supplement; Vitamins and dietary food supplements; dietary supplements for human consumption derived from edible fish oils and fats; Blended liquid nutritional supplements; Food supplement in tablet or capsular shape for people with special dietetic needs; food supplement in tablet or capsular shape mainly consisting of vitamins; food supplement in tablet or capsular shape consisting of vitamins and minerals, food supplement in tablet or capsular shape consisting of vitamins and minerals, polyunsaturated fatty acids, minerals, antioxidants and carbonic hydrates; Dietary supplements for human consumption; Nutritional supplements; Dietary fiber as an additive for food products; food supplements, namely, anti-oxidants; ground flaxseed fiber for use as a dietary supplement; Herbal supplements; Mineral food supplements; Mineral nutritional supplements; Mineral supplements; Protein supplements” in International Class 5.

 

ANALYSIS

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant.  See 15 U.S.C. §1052(d).  In the seminal decision In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973), the court listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all the factors are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

COMPARISON OF THE MARKS

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v).  Similarity in any one of these elements may be sufficient to find the marks confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).

 

Applicant’s mark, F3, is similar to the cited registered mark, RF3, because both marks contain the identical letter and number combination, “F3.”  Marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).

 

What is more, applicant’s mark, F3, merely deletes the letter “R” from the cited registered mark, RF3.  The mere deletion of the letter “R” from the cited registered mark is not be sufficient to overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(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.

 

COMPARISON OF THE GOODS

 

Applicant’s goods are “dietary and nutritional supplements” in International Class 5.  Registrant’s goods are “Dietary and nutritional supplements for non-medical purposes, namely, fish oil, fish oil supplement, deep sea fish oil, cod liver oil; fish-free dietary supplement; Vitamin preparations; Nutritional supplement, Vitamin and mineral supplement; Vitamin preparation; Vitamin supplement; Vitamins and dietary food supplements; dietary supplements for human consumption derived from edible fish oils and fats; Blended liquid nutritional supplements; Food supplement in tablet or capsular shape for people with special dietetic needs; food supplement in tablet or capsular shape mainly consisting of vitamins; food supplement in tablet or capsular shape consisting of vitamins and minerals, food supplement in tablet or capsular shape consisting of vitamins and minerals, polyunsaturated fatty acids, minerals, antioxidants and carbonic hydrates; Dietary supplements for human consumption; Nutritional supplements; Dietary fiber as an additive for food products; food supplements, namely, anti-oxidants; ground flaxseed fiber for use as a dietary supplement; Herbal supplements; Mineral food supplements; Mineral nutritional supplements; Mineral supplements; Protein supplements” in International Class 5.

 

First, in a likelihood of confusion analysis, the comparison of the parties’ goods is based on the goods as they are identified in the application and registration, without limitations or restrictions that are not reflected therein.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); see Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267-68, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638-39 (TTAB 2009); TMEP §1207.01(a)(iii). 

 

In the present case, applicant’s goods are nutritional supplements and registrant’s goods are nutritional supplements.  Thus, the goods and/or services are identical, and it is presumed that they move in all normal channels of trade and are available to all potential customers.  See Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re La Peregrina Ltd., 86 USPQ2d 1645, 1646 (TTAB 2008); TMEP §1207.01(a)(iii).

 

Accordingly, the goods are considered related for purposes of the likelihood of confusion analysis.  

 

Second, applicant’s “dietary and nutritional supplements” are broadly identified and encompass registrant’s more narrowly identified types of dietary and nutritional supplements, namely, “Dietary and nutritional supplements for non-medical purposes, namely, fish oil, fish oil supplement, deep sea fish oil, cod liver oil; fish-free dietary supplement; dietary food supplements; dietary supplements for human consumption derived from edible fish oils and fats; Blended liquid nutritional supplements; Dietary supplements for human consumption; ground flaxseed fiber for use as a dietary supplement.”

 

Analyzing the applicant’s and registrant’s goods for similarity and relatedness is based on the description of the goods set forth in the application and registration at issue, not on extrinsic evidence of actual use.  See Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 1267, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp. Inc., 648 F.2d 1335, 1337, 209 USPQ 986, 988 (C.C.P.A. 1981). 

 

Absent restrictions in an application and registration, the identified goods are presumed to travel in the same channels of trade to the same class of purchasers.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1356, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d at 1268, 62 USPQ2d at 1005.  Additionally, unrestricted and broad identifications are presumed to encompass all goods and/or services of the type described.  See In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). 

 

In this case, the identification set forth in the application and registration has no restrictions as to nature, type, channels of trade, or classes of purchasers.  Therefore, it is presumed that these goods travel in all normal channels of trade, and are available to the same class of purchasers.  Further, the application uses broad wording to describe the goods and this wording is presumed to encompass all goods of the type described, including those in registrant’s more narrow identification.

 

Third, applicant’s goods, “dietary and nutritional supplements,” are closely related to registrant’s goods, “Vitamin preparations; Vitamin and mineral supplement; Vitamin preparation; Vitamin supplement; Vitamins; Blended liquid nutritional supplements; Food supplement in tablet or capsular shape for people with special dietetic needs; food supplement in tablet or capsular shape mainly consisting of vitamins; food supplement in tablet or capsular shape consisting of vitamins and minerals, food supplement in tablet or capsular shape consisting of vitamins and minerals, polyunsaturated fatty acids, minerals, antioxidants and carbonic hydrates; Dietary fiber as an additive for food products; food supplements, namely, anti-oxidants; Herbal supplements; Mineral food supplements; Mineral nutritional supplements; Mineral supplements; Protein supplements,” because each are type of supplements. 

 

These types of goods are often sold together at the same health and nutrition stores and are often offered by a single entity under the same mark.  Attached at Exhibit B, is Internet evidence from health and nutrition store websites showing the same store offering various types of supplements similar to those offered by the applicant and registrant in this case.

 

Material obtained from the Internet is generally accepted as competent evidence.  See In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-03 (TTAB 2009) (accepting Internet evidence to show relatedness of goods in a likelihood of confusion determination); In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB 2006) (accepting Internet evidence to show genericness); In re White, 80 USPQ2d 1654, 1662 (TTAB 2006) (accepting Internet evidence to show false suggestion of a connection); In re Joint-Stock Co. “Baik”, 80 USPQ2d 1305, 1308-09 (TTAB 2006) (accepting Internet evidence to show geographic significance); In re Consol. Specialty Rests. Inc., 71 USPQ2d 1921, 1927-29 (TTAB 2004) (accepting Internet evidence to show geographic location is well-known for particular goods); In re Gregory, 70 USPQ2d 1792, 1793, 1795 (TTAB 2004) (accepting Internet evidence to show surname significance); In re Fitch IBCA Inc., 64 USPQ2d 1058, 1060-61 (TTAB 2002) (accepting Internet evidence to show descriptiveness); TBMP §1208.03; TMEP §710.01(b).

 

The trademark examining attorney has 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 supplements, nutritional supplements, food supplements, mineral supplements and vitamins, 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).

 

Moreover, where the goods of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

CONCLUSION

 

Since, the marks are similar and the goods are related, there is a likelihood of confusion as to the source of the applicant’s goods.  Therefore, registration is refused under Trademark Act Section 2(d) because of a likelihood of confusion.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

ADVISORY: RESPONDING TO THIS OFFICE ACTION

 

To expedite prosecution of the application, applicant is encouraged to file its response to this Office action online via the Trademark Electronic Application System (TEAS), which is available at http://www.gov.uspto.report/trademarks/teas/index.jsp.  If applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/trademarks/teas/e_filing_tips.jsp and email technical questions to TEAS@uspto.gov.

 

ASSISTANCE:  If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/Tina Brown/

Examining Attorney, Law Office 105

U.S. Patent & Trademark Office

Phone: (571) 272-8864

Email: tina.brown@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.