To: | Functional Foods Global Pty Ltd (patatty@ipmvs.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85775576 - NUGEN - T57068US00 |
Sent: | 3/10/2014 9:45:55 AM |
Sent As: | ECOM112@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 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 85775576
MARK: NUGEN
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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: Functional Foods Global Pty Ltd
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 3/10/2014
THIS IS A FINAL ACTION.
This FINAL Office action is issued in response to applicant’s correspondence of February 19, 2014.
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.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and/or services, and similarity of the trade channels of the goods and/or services. 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.
Applicant seeks registration of the mark NUGEN for goods that include the following: 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.
The cited registration is for the mark NUGEN PHARMACY, for Retail pharmacy services.
As previously noted, the marks share the same dominant term, NUGEN, from which applicant has merely deleted the descriptive or generic (and disclaimed) word, PHARMACY.
As discussed in the first Office action, 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); TMEP §1207.01(b)(viii), (c)(ii). In addition, 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.
Applicant argues that the marks are distinguishable from each other because of the additional term “PHARMACY” in the registered mark. However, the test in a Section 2(d) analysis is not whether the marks can be distinguished in a side-by-side comparison, but rather whether the marks are sufficiently similar in their entireties that confusion as to the source of the goods and/or services offered under applicant’s and registrant’s marks is likely to result. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); TMEP §1207.01(b).
In this case, the marks share the same distinctive and dominant term, NUGEN. The word PHARMACY lacks the source-indicating necessary to distinguish the marks, and applicant’s deletion of that term does not affect the mark’s overall commercial impression or avoid a likelihood of confusion.
There is a likelihood of confusion as to the marks in this case.
Comparison of the Goods and/or Services
The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).
Applicant argues that differences in the parties’ goods and services should preclude a likelihood of confusion finding in this case. Specifically, applicant contends that its goods, which are not pharmaceuticals, would not ordinarily be sold in a retail pharmacy of the type identified by the registrant.
However, evidence already made of record indicates that applicant’s Class 5 goods are commonly sold in retail pharmacies. Moreover, large pharmacies sell “store brand” versions of such goods, which bear the house marks of the retail pharmacies.
For instance, “CVS Pharmacy, Inc.” uses its house mark, “CVS”, along with the descriptive or generic word “pharmacy,” in service marks for its retail pharmacies. See, e.g., reg. nos. 4168916, 3211443, and 3076655. The “CVS” house mark is also used as a trademark on a wide variety of Class 5 products, including baby care products and dietary supplements. See reg. nos. 2774665, 1698636, and 1904058. See also, previously attached evidence from cvs.com.
The foregoing analysis applies to “RITE AID” house marks (See reg. nos. 4390903, 4427790, 0875773, and 0877669), “WALGREENS” house marks (See reg. nos. 4277137, 3073995, 3456190, 3850791 and 2096551). See also, previously attached evidence from walgreens.com and riteaid.com.
Finally, applicant notes that the cited registration was recently the subject of an inter partes proceeding opposing registration. However, the examining attorney cannot proper consider the outcome of an inter partes opposition in the context of the present ex parte prosecution. With respect to any alleged weakness or dilution of wording in the marks at issue, the goods and/or services listed in the registrations owned by the referenced litigants are different from those at issue and thus do not show that the relevant wording is commonly used in connection with the goods and/or services at issue.
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.
This refusal is made FINAL.
The application will then proceed for International Class 29.
Applicant may respond by providing one or both of the following:
(1) A response that fully satisfies all outstanding requirements;
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review 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).
/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.