To: | BR International (rose@brinutrition.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86958273 - CLOUD NINE - N/A |
Sent: | 8/4/2016 10:59:05 AM |
Sent As: | ECOM104@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86958273
MARK: CLOUD NINE
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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: BR International
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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FINAL 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: 8/4/2016
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on July 13, 2016 in which the applicant presented arguments against the Section 2(d) refusal based on a likelihood of confusion with the mark in U.S. Registration No. 4521469.
For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 4521469. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
Summary of Issues That Applicant Must Address
Likelihood of Confusion-Final Refusal
The applicant’s mark is “CLOUD NINE” for “natural supplements for promoting sleep” in International Class 5. The registrant’s mark is “CLOUD 9” for “nutritional and dietary supplements” in International Class 5.
General Principles in Determining Likelihood of Confusion
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.
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).
The applicant’s mark is “CLOUD NINE.” The registrant’s mark “CLOUD 9.” The marks are essentially identical because they are identical in sound and meaning. The only difference between the two marks is that the applicant has the wording “NINE” spelled out and the registrant has “9” written in numeric. The applicant’s mark and the registrant’s mark are read and understood as having identical sound and meaning. Moreover, as previously stated, the applicant markets and uses both “CLOUD NINE” and “CLOUD 9” for the same goods. See the previously submitted amazon.com page which the applicant uses the mark “CLOUD 9” in connection with sleep aid dietary supplements. This evidence supports that those familiar with the applicant’s goods would recognize the applicant has the source of both “CLOUD 9” and “CLOUD NINE”. Accordingly, those who encounter the mark “CLOUD NINE” are likely to be confused by “CLOUD 9” as being of the same mark or from the same source.
Relatedness of the Goods
The applicant’s goods are “Natural supplements for promoting sleep.” The registrant’s goods are “nutritional and dietary supplements.”
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)); TMEP §1207.01(a)(i).
As previously stated, the applicant’s goods and the registrant’s goods are essentially the same type of dietary supplements likely to come from a common source. Although the applicant identifies its goods as “natural supplements,” the specimen of record shows that the applicant uses the mark and markets the goods as “dietary supplements.” The registrant’s goods as identified in the registration are “nutritional and dietary supplements.” As such, the applicant’s goods and the registrant’s goods are similar dietary supplements.
More importantly, the Office action issued on June 2, 2016 includes evidence consisting of a photograph of the registrant’s goods bearing the mark “CLOUD 9.” This evidence shows the registrant using the mark “CLOUD 9” for sleep aiding dietary supplements. Therefore, the applicant’s argument that the registrant does not have similar products as the applicant is not supported. As the evidence of record clearly supports, the applicant and the registrant use nearly identical marks “CLOUD NINE” and “CLOUD 9” for the same type of sleep aiding dietary supplements.
Since the marks are identical in sound and meaning and the goods are nearly identical, the purchasers of applicant’s goods could mistakenly assume such goods were produced by registrant, or that applicant and registrant are related in some way. Because the marks are nearly identical and the goods are closely related, the similarities among the marks and the goods are so great as to create a likelihood of confusion among consumers as to the source of the goods.
In response to the initial refusal, the applicant argues that the applicant’s mark and the registrant’s mark should not cause confusion because the applicant’s goods are only sold through two specific mediums, namely, amazon and brinutrition.com whereas the registrant’s goods are distributed internationally. The applicant further argues that there are no online retail stores where the registrant’s goods are sold. However, the evidence submitted by the applicant supports that the registrant’s goods are available online. The evidence submitted by the applicant is a screenshot of the registrant’s website and it states that the registrant’s goods are best purchased through the official product websites listed therein. This contradicts the applicant’s argument that the registrant’s goods are not available online.
Moreover, the fact that the registrant’s goods are not available in the same online retail medium as the applicant does not address legal questions at hand. The fact that the registrant is not selling its goods are amazon.com at the moment does not prevent it from exercising its trademark rights or expanding its business to distribute its goods through additional retail mediums including amazon.com. The owner of a registration without specified limitations enjoys a presumption of exclusive right to nationwide use of the registered mark under Trademark Act Section 7(b), 15 U.S.C. §1057(b), regardless of its actual extent of use. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1568, 218 USPQ 390, 393 (Fed. Cir. 1983). Therefore, the geographical extent of applicant’s and registrant’s activities is not relevant to a likelihood of confusion determination.
Conclusion
Purchasers familiar with the registrant’s mark “CLOUD 9”, used on “nutritional and dietary supplement,” upon encountering the mark “CLOUD NINE”, used on “natural supplements for promoting sleep,” would be likely to mistakenly believe that the goods emanate from a common source.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
In view of the foregoing, the refusal to register under Section 2(d) of the Trademark Act is continued and made final.
(1) A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.63(b)(1)-(2); 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. 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).
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without incurring this additional fee.
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help, an attorney referral service of a state or local bar association, or a local telephone directory. The USPTO may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
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. §§2.62(c), 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.
/Jenny Park/
Examining Attorney
Law Office 104
571-272-8857
jenny.park@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.