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: 8/19/2013

 

This Office action is issued in response to applicant’s correspondence of July 18, 2013, in which applicant submitted a copy of a foreign registration certificate, and deleted its Section 1(b) filing basis.

 

Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

• SUMMARY OF ISSUES

 

-          New Issue: The identification of goods in the application exceeds the scope of goods covered in the foreign registration.

 

-          The refusal under Trademark Act Section 2(d) is maintained and continued.

 

• NEW ISSUE – GOODS IDENTIFIED IN THE APPLICATION EXCEED SCOPE OF GOODS COVERED IN THE

 

This requirement is limited to the goods specified herein.

 

The following wording in the identification of goods and/or services in the U.S. application is unacceptable because it exceeds the scope of the goods and/or services in the foreign application or registration:  “edible oils and fats, in International Class 29.”  See 37 C.F.R. §2.32(a)(6); TMEP §1012.

 

Therefore, applicant must satisfy one of the following:

 

(1)     Amend the identification of goods and/or services in the U.S. application to correspond to the goods and/or services identified in the foreign application or registration, ensuring that all goods and/or services beyond the scope of the foreign application or registration are deleted from the U.S. application; or

 

(2)     Delete the Trademark Act Section 44 basis for the goods and/or services beyond the scope of the foreign application or registration and substitute a basis under Section 1(a) or 1(b) for those goods and/or services.

 

See 15 U.S.C. §§1051(a)-(b), 1126(d)-(e); 37 C.F.R. §§2.32(a)(6), 2.34(b); Marmark Ltd. v. Nutrexpa S.A., 12 USPQ2d 1843, 1845 (TTAB 1989); TMEP §§806.02, 1012, 1402.01(b); see also 37 C.F.R. §2.35(b); TMEP §806.03 (regarding amendment of the basis).

 

An applicant may assert more than one basis in an application provided that the applicant satisfies all requirements for each basis claimed.  37 C.F.R. §2.34(b); TMEP §806.02.  If applicant asserts different bases in the same application, applicant must clearly state that more than one basis is being claimed, and must separately list each basis, followed by the goods and/or services to which that basis applies.  37 C.F.R. §§2.34(b)(2), 2.35(b)(6); TMEP §806.02(a).  If some or all of the goods and/or services are covered by more than one basis, this must also be expressly stated.  37 C.F.R. §§2.34(b)(2), 2.35(b)(6); TMEP §806.02(a).

 

Although multiple-basis applications are permitted, applicant may not assert both use in commerce under Section 1(a) and intent to use the mark in commerce under Section 1(b) for the same goods and/or services.  37 C.F.R. §2.34(b)(1); TMEP §806.02(b).

 

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(a), 2.65(a); TMEP §§711, 718.03.

 

·         SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

This refusal is limited to International Class 5.

 

Application Serial No. 85206992, which was previously cited as a potential bar to registration of the applied-for mark, has since registered.  Registration of the applied-for mark is now refused because of a likelihood of confusion with the mark(s) in U.S. Registration No. 4344951.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the enclosed registration.

 

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 or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) 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 factor may be dominant in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., ___ F.3d ___, 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, 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 of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.

 

For the reasons discussed below, the examining attorney concludes that confusion as to the source of goods and/or services is likely between the applicant’s mark NUGEN for goods that include Food for babies; baby and infant formula; infant formula mixes; milk powder for babies and infants; milk powder for foodstuffs for babies and infants; milk powder for nutritional purposes for babies and infants; dietary supplements; vitamin preparations, and the registrant’s mark NUGEN PHARMACY for Retail pharmacy services.

 

Comparison of the Marks

 

In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation, and commercial impression.  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).

 

In this case, the marks share the same dominant term, NUGEN. 

 

Relative to the mark in the cited registration, the applicant has merely deleted the term PHARMACY.  The mere deletion of wording from a registered mark may 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.

 

Moreover, the deleted matter in this case is generic, and has been disclaimed by the registrant.  Disclaimed matter is typically less significant or less dominant when comparing marks.  See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).

 

In sum, the parties’ marks share the same dominant source-indicating term NUGEN, and they create the same connotation and overall commercial impression.  There is a likelihood of confusion as to the marks in this case.

 

Comparison of the Goods and/or Services

 

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  See Safety-Kleen Corp. v. Dresser Indus., Inc., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975); TMEP §1207.01(a)(i).  Rather, it is sufficient to show that because of the conditions surrounding their marketing, or because they are otherwise related in some manner, the goods and/or services would be encountered by the same consumers under circumstances such that offering the goods and/or services under confusingly similar marks would lead to the mistaken belief that they come from, or are in some way associated with, the same source.  In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); see In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1566-68, 223 USPQ 1289, 1290 (Fed. Cir. 1984); TMEP §1207.01(a)(i).

 

In this case, applicant’s Class 5 goods, namely, baby food and formula products, and dietary supplement products, are goods that commonly emanate from the same commercial source as pharmacy services.  That is, the goods themselves are produced and/or distributed and sold by the same entity that provides retail pharmacy services.  Moreover, the goods and services commonly bear the same house mark.  See the following attached evidence:

 

-          http://www.walgreens.com/store/c/walgreens-calcium-600%2bd-plus-minerals-dietary-supplement-tablets/ID=prod3946935-product

-          http://www.walgreens.com/store/c/walgreens-vitamin-c-1000-mg-dietary-supplement-tablets/ID=prod3847812-product

-          http://www.storebrandsdecisions.com/news/2013/05/07/walgreens-happy-and-healthy-magazine-puts-spotlight-on-new-store-brands

-          http://www.walgreens.com/store/c/walgreens-well-beginnings-gentle-infant-formula-powder-with-iron/ID=prod6105463-product

-          http://www.cvs.com/shop/product-detail/CVS-Gentle-Infant-Formula-Powder-0-12-Months?skuId=691971

-          http://www.cvs.com/shop/CVSpharmacy/Baby-&-Child/Food-&-Formula/_/N-3tZ1gr078Ze844Z2k?pt=CATEGORY

-          http://www.cvs.com/shop/CVSpharmacy/Vitamins/Supplements/_/N-3tZ1gr078Z13hguiZ2k?pt=CATEGORY

-          http://www.cvs.com/shop/CVSpharmacy/Vitamins/Vitamins-A-Z/_/N-3tZ1gr078Ze7y8Z2k?pt=CATEGORY

-          http://shop.riteaid.com/Rite-Aid-Tugaboos-Formula-Milk-Based/dp/B006563UPA?field_availability=-1&field_browse=3177119011&field_product_site_launch_date_utc=-1y&id=Rite+Aid+Tugaboos+Formula+Milk-Based&ie=UTF8&refinementHistory=brandtextbin%2Csubjectbin%2Ccolor_map%2Cprice%2Csize_name&searchNodeID=3177119011&searchPage=1&searchRank=salesrank&searchSize=12

-          http://shop.riteaid.com/Rite-Aid-Vitamins-Supplements-Rite-Aid-Brand-Store/b/3176957011

-          http://shop.riteaid.com/Rite-Aid-One-Daily-Multi-Vitamin-Tablets/dp/B0062P9YH2?field_availability=-1&field_browse=3176957011&field_product_site_launch_date_utc=-1y&id=Rite+Aid+One-Daily+Multi-Vitamin+Tablets&ie=UTF8&refinementHistory=brandtextbin%2Csubjectbin%2Ccolor_map%2Cprice%2Csize_name&searchNodeID=3176957011&searchPage=1&searchRank=salesrank&searchSize=12

-          http://shop.riteaid.com/Rite-Aid-Baby-Rite-Aid-Brand-Store/b/3177119011?searchSize=72&field_product_site_launch_date_utc=-1y&field_availability=-1&field_browse=3177119011&searchNodeID=3177119011&refinementHistory=brandtextbin%2Csubjectbin%2Ccolor_map%2Cprice%2Csize_name&searchRank=salesrank&searchPage=1

 

In addition, and as a general matter, consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  TMEP §1207.01(a)(ii); see In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S for retail grocery and general merchandise store services likely to be confused with BIGGS for furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding design for distributorship services in the field of health and beauty aids likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (holding 21 CLUB for various items of men’s, boys’, girls’ and women’s clothing likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE (stylized) for retail women’s clothing store services and clothing likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (holding STEELCARE INC. for refinishing of furniture, office furniture, and machinery likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (holding similar marks for trucking services and on motor trucks and buses likely to cause confusion).

 

In this case, the registrant’s retail pharmacy services covers services that commonly feature applicant’s Class 5 products.  See attached evidence from walgreens.com, cvs.com, and riteaid.com.

 

Finally, 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 and/or services as those of both applicant and registrant in this case. 

 

Specifically, U.S. Reg. Nos. 3191093, 3864281, 3177734, and 3358605, demonstrate the relatedness of retail pharmacy services, vitamin or dietary supplements, and/or nutritive infant products. 

 

This evidence shows that the goods and/or services listed therein 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).

 

For the reasons discussed above, registration must be refused under Trademark Act Section 2(d).  Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.

 

• PARTIAL ABANDONMENT ADVISORY

 

If applicant does not respond to this Office action within the six-month period for response, the following goods will be deleted from the application: 

 

Class 5: Food for babies; baby and infant formula; infant formula mixes; milk powder for babies and infants; milk powder for foodstuffs for babies and infants; milk powder for nutritional purposes for babies and infants; dietary supplements; vitamin preparations

 

Class 29: edible oils and fats

 

The application will then proceed with the following only: 

 

Class 29: Dairy products excluding ice cream, ice milk and frozen yogurt; milk and milk products including powdered milk products and excluding ice cream, ice milk and frozen yogurt

 

See 37 C.F.R. §2.65(a); TMEP §718.02(a).

 

• CONTACT INFORMATION

 

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.

 

 

/Lief Martin/

Law Office 112

Examining Attorney

Office: 571-272-3434

Email: lief.martin@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 the Trademark Electronic Application System (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 the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or 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/trademarks/teas/correspondence.jsp.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 8/19/2013 FOR U.S. APPLICATION SERIAL NO. 85775576

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 8/19/2013 (or sooner if specified in the Office action).  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System (TEAS) response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.