To: | Nectar, Inc. (sjb@reinhardtllp.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86273355 - NECTAR - N/A |
Sent: | 1/11/2016 6:46:47 PM |
Sent As: | ECOM113@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86273355
MARK: NECTAR
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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: Nectar, Inc.
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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: 1/11/2016
On November 24, 2014, action on this application was suspended pending the disposition of U.S. Application Serial Nos. 85301271 and 85301309. The referenced prior-pending applications have 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 marks in U.S. Registration Nos. 4832052 and 4832053. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
In the instant case, applicant has applied to register the mark NECTAR for “Sensors combined with micro controllers and wireless chipsets used to track food, beverage and household and personal care products consumption and expiration dates, and to reorder same; computer software in the nature of a mobile application for use in conjunction with the sensors to track expiration dates and quantity, to order food, beverages and household and personal care products, and to generate analytics related to consumption habits and patterns, and user health data” in Class 09 and “Providing a website featuring non-downloadable software used to track consumption data, expiration dates, user health data and analytics or information generated by consumption tracking sensors and mobile application software, and to order food, beverages and household and personal care products” in Class 42.
The mark in Registration No. 4832052 is NECTAR for “Encoded or magnetic coded cards for storing consumer purchasing information; magnetically encoded credit cards; magnetically encoded cards for use in connection with sales and promotional incentive schemes” in Class 09.
The mark in Registration No. 4832053 is NECTAR (AND DESIGN) for “Encoded or magnetic coded cards for storing consumer purchasing information; magnetically encoded credit cards; magnetically encoded cards for use in connection with sales and promotional incentive schemes” in Class 09.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods and services, and similarity of the trade channels of the goods and 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.
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
First, the applicant’s mark is NECTAR and the mark in Registration No. 4832052 is NECTAR. Thus, the marks are identical in terms of appearance and sound. In addition, the connotation and commercial impression of the marks do not differ when considered in connection with applicant’s and registrant’s respective goods and services. Therefore, the marks are confusingly similar.
Second, the applicant’s mark NECTAR is confusingly similar to the mark NECTAR in Registration No. 4832053. Specifically, the word NECTAR in the registrant’s mark is identical in sound and appearance to the entirety of the applicant’s mark. Further, this shared wording conveys the same meaning in both marks. The addition of a design to the registrant’s mark does not obviate the similarities between the marks. For a composite mark containing both words and a design, the word portion may be more likely to be impressed upon a purchaser’s memory and to be used when requesting the goods and services. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); TMEP §1207.01(c)(ii); see In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)). Thus, although such marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366, 101 USPQ2d at 1911 (Fed. Cir. 2012) (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). Accordingly, in this case, purchasers will call for the registrant’s goods and services using the literal element NECTAR, thus rendering it the dominant portion of applicant’s mark. Because the dominant portion is identical to applicant’s mark, purchasers are likely to believe—mistakenly—that the marks identify the same source of goods and services. Thus, the marks are confusingly similar.
Where the marks of the respective parties are identical or virtually identical, the relationship between the relevant goods and services need not be as close to support a finding of likelihood of confusion. See In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re House Beer, LLC, 114 USPQ2d 1073, 1077 (TTAB 2015); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); TMEP §1207.01(a).
Relatedness of the Goods and Services
The goods and services of the parties need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods and 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 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)); TMEP §1207.01(a)(i).
In this case, applicant has identified “Sensors combined with micro controllers and wireless chipsets used to track food, beverage and household and personal care products consumption and expiration dates, and to reorder same; computer software in the nature of a mobile application for use in conjunction with the sensors to track expiration dates and quantity, to order food, beverages and household and personal care products, and to generate analytics related to consumption habits and patterns, and user health data” in Class 09 and “Providing a website featuring non-downloadable software used to track consumption data, expiration dates, user health data and analytics or information generated by consumption tracking sensors and mobile application software, and to order food, beverages and household and personal care products” in Class 42. The registrant has identified “Encoded or magnetic coded cards for storing consumer purchasing information” in Class 09.
First, the applicant’s and registrant’s goods perform the same function. The applicant’s sensors and software track a particular user’s consumption of food, beverages and household and personal care products, while the registrant’s cards store consumer purchasing information. Accordingly, the applicant and registrant both track and record what a consumer has purchased.
Furthermore, many companies that provide magnetic cards for tracking consumer purchasing information also provide software and sensors to perform the same. See, e.g. http://www.loyaltygator.com/; http://bluvision.com/loyalty-id-cards/. This evidence establishes that the same entity commonly provides the relevant goods and services and markets the goods and services under the same mark. Therefore, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009). Thus, the goods and services are related.
Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods and services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007). The Internet has become integral to daily life in the United States, with Census Bureau data showing approximately three-quarters of American households used the Internet in 2013 to engage in personal communications, to obtain news, information, and entertainment, and to do banking and shopping. See In re Nieves & Nieves LLC, 113 USPQ2d 1639, 1642 (TTAB 2015) (taking judicial notice of the following two official government publications: (1) Thom File & Camille Ryan, U.S. Census Bureau, Am. Cmty. Survey Reports ACS-28, Computer & Internet Use in the United States: 2013 (2014), available at http://www.census.gov/content/dam/Census/library/publications/2014/acs/acs-28.pdf, and (2) The Nat’l Telecomms. & Info. Admin. & Econ. & Statistics Admin., Exploring the Digital Nation: America’s Emerging Online Experience (2013), available at http://www.ntia.doc.gov/files/ntia/publications/exploring_the_digital_nation_-_americas_emerging_online_experience.pdf). Thus, the widespread use of the Internet in the United States suggests that Internet evidence may be probative of public perception in trademark examination.
In summary, the marks are confusingly similar and the goods and services are related. Therefore, purchasers are likely to be confused as to the source of the goods and services. Thus, registration is refused pursuant to Section 2(d) of the Trademark Act.
RESPONSE GUIDELINES
/Elizabeth F. Jackson/
Elizabeth F. Jackson
Trademark Examining Attorney
Law Office 113
(571) 272-6396
Elizabeth.Jackson@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.