| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 87021123 |
| LAW OFFICE ASSIGNED | LAW OFFICE 114 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/87021123/mark.png |
| LITERAL ELEMENT | MARINELAND |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
Serial No. 87/021,123 Trademark Examining Attorney: Jason Malashevich, Law Office 114 Mailing Date of Office Action: August 18, 2016 Applicant’s Telephone Number: 970-492-1100
I. Section 2(d) Refusal – Likelihood of Confusion The Examining Attorney has refused registration under section 2(d) of the Trademark Act on the grounds that Applicant’s mark, MARINELAND, is allegedly likely to be confused with the marks in:
Application submits that the description of the goods for the applied for mark has been amended to as follows: “Non-aquatic, live ornamental plants.” Applicant respectfully submits that, taking into account the current amendment to the description of the goods and the relevant factors set forth by the court in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) (“DuPont”), there is no likelihood of confusion between Applicant’s mark and the marks in U.S. Registration Nos. 2,730,050 and 4,515,878.
Applicant respectfully submits there is no likelihood of confusion between Applicant’s mark and the mark in U.S. Registration No. 4,515,878, because their respective goods are different and travel in different streams of commerce. Applicant’s identification of its goods in the present application as amended covers “Non-aquatic, live ornamental plants” which is significantly different and distinct from the goods of U.S. Registration No. 4,515,878, which specifically relates to food for fish.
Applicant submits Applicant’s goods as amended to “Non-aquatic, live ornamental plants” traditionally travel and are found in greenhouses and similar garden centers. Conversely, fish food and specifically fish food related to the MARINELAND mark traditionally travel in the aquarium and aquarium accessories market, such as pet stores, see Registrant’s website http://www.marineland.com/.
As such, non-aquatic, live ornamental plants are purchased by a different class of purchasers from those purchasers purchasing fish food. The two goods travel in distinctly different channels of trade, that is greenhouses and garden centers versus aquarium and aquarium accessories market, such as pet stores. The goods of each mark are very specific to the streams of commerce that each mark will travel.
The Examiner points to evidence that the goods may be found in the same store. However the courts have held that there is no per se rule that all goods sold under the same roof are “related”. “Merely because goods are commonly sold within one store under the same roof does not automatically mean that buyers are likely to be confused by similar marks on disparate goods as to source, connection or sponsorship.” See Lever Bros. Co. v. Winzer Co. of Dallas, 51 C. C.P.A. 930, 326 F.2d 817, 140 U.S.P.Q. 247 (1964). “A wide variety of products, not only from different manufacturers within an industry but also from diverse industries, have been brought together in the modern supermarket for the convenience of the consumer. The mere existence of such an environment should not foreclose further inquiry into the likelihood of confusion.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 U.S.P.Q. 24, 29 (C.C.P.A. 1976). Recot, Inc. v. Becton, 214 F.3d 1322, 1330, 54 U.S.P.Q.2d 1894 (Fed. Cir. 2000) on remand 56 U.S.P.Q.2d 1859 (T.T.A.B. 2000) ("[T]he law is that products should not be deemed related simply because they are sold in the same kind of establishments." Citing Federated Foods. ).
As stated above, the goods of the applied for mark and the registered mark are not related and travel in distinctly different channels of trade, that is greenhouses and garden centers versus aquarium and aquarium accessories market, such as pet stores. The fact that there is the possibility of fish food and ornamental plants being sold in the same store, does not create a presumption the goods are related.
Therefore, Applicant respectfully submits that Applicant's goods and the goods of Registration No. 4,515,878 are not closely related, do not travel in the same stream of commerce and there is no likelihood of confusion between Applicant’s mark and the mark in U.S. Registration No. 4,515,878.
Applicant respectfully submits there is no likelihood of confusion between Applicant’s mark and the mark in U.S. Registration No. 2,730,050 because MARINELAND and MARINE are visually, aurally, and connotatively different.
Under DuPont, the first factor requires examination of “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison, but whether the marks are sufficiently similar that there is a likelihood of confusion as to the source of the goods or services. E.g., In re Iolo Techs., LLC, 95 U.S.P.Q.2d 1498, 1499 (TTAB 2010). When comparing the marks, “[a]ll relevant facts pertaining to appearance, sound, and connotation must be considered before similarity as to one or more of those factors may be sufficient to support a finding that the marks are similar or dissimilar.” Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 U.S.P.Q.2d 1894, 1899 (Fed. Cir. 2000).
The Court of Appeals for the Federal Circuit has provided the following guidance for evaluating the marks:
The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used. It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark. On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable. In re Nat’l Data Corp., 753 F.2d 1056.
As will be discussed below, the Applicant submits that there are obvious differences in the appearance, sound, and connotation of the mark in U.S. Registration No. 2,730,050 and Applicant's mark.
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|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_50253102101-20161123150008241921_._GREEN_FUSE_BOTANICALS_MARINELAND_DECLARATION_20160916.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\870\211\87021123\xml1\ROA0002.JPG |
| DESCRIPTION OF EVIDENCE FILE | 1. Declaration of Stephen Jones, President of Green Fuse Botanicals |
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 031 |
| DESCRIPTION | Live plants; Living plants |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 04/08/2016 |
| FIRST USE IN COMMERCE DATE | At least as early as 04/08/2016 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 031 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | Non-aquatic, live ornamental plants |
| FILING BASIS | Section 1(a) |
| FIRST USE ANYWHERE DATE | At least as early as 04/08/2016 |
| FIRST USE IN COMMERCE DATE | At least as early as 04/08/2016 |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /James M. Weatherly/ |
| SIGNATORY'S NAME | James M. Weatherly |
| SIGNATORY'S POSITION | Attorney of record, Colroado bar member |
| SIGNATORY'S PHONE NUMBER | 970-492-1100 |
| DATE SIGNED | 11/23/2016 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Nov 23 16:12:44 EST 2016 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20161123161244961045-8702 1123-5706f86d149d8468c174 9b63b25681ec3bc57f685faa3 f115aa07b9e9c884bb935-N/A -N/A-20161123150008241921 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 07/31/2017) |
Serial No. 87/021,123
Trademark Examining Attorney: Jason Malashevich, Law Office 114
Mailing Date of Office Action: August 18, 2016
Applicant’s Telephone Number: 970-492-1100
I. Section 2(d) Refusal – Likelihood of Confusion
The Examining Attorney has refused registration under section 2(d) of the Trademark Act on the grounds that Applicant’s mark, MARINELAND, is allegedly likely to be confused with the marks in:
Application submits that the description of the goods for the applied for mark has been amended to as follows: “Non-aquatic, live ornamental plants.”
Applicant respectfully submits that, taking into account the current amendment to the description of the goods and the relevant factors set forth by the court in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (C.C.P.A. 1973) (“DuPont”), there is no likelihood of confusion between Applicant’s mark and the marks in U.S. Registration Nos. 2,730,050 and 4,515,878.
Applicant respectfully submits there is no likelihood of confusion between Applicant’s mark and the mark in U.S. Registration No. 4,515,878, because their respective goods are different and travel in different streams of commerce. Applicant’s identification of its goods in the present application as amended covers “Non-aquatic, live ornamental plants” which is significantly different and distinct from the goods of U.S. Registration No. 4,515,878, which specifically relates to food for fish.
Applicant submits Applicant’s goods as amended to “Non-aquatic, live ornamental plants” traditionally travel and are found in greenhouses and similar garden centers. Conversely, fish food and specifically fish food related to the MARINELAND mark traditionally travel in the aquarium and aquarium accessories market, such as pet stores, see Registrant’s website http://www.marineland.com/.
As such, non-aquatic, live ornamental plants are purchased by a different class of purchasers from those purchasers purchasing fish food. The two goods travel in distinctly different channels of trade, that is greenhouses and garden centers versus aquarium and aquarium accessories market, such as pet stores. The goods of each mark are very specific to the streams of commerce that each mark will travel.
The Examiner points to evidence that the goods may be found in the same store. However the courts have held that there is no per se rule that all goods sold under the same roof are “related”. “Merely because goods are commonly sold within one store under the same roof does not automatically mean that buyers are likely to be confused by similar marks on disparate goods as to source, connection or sponsorship.” See Lever Bros. Co. v. Winzer Co. of Dallas, 51 C. C.P.A. 930, 326 F.2d 817, 140 U.S.P.Q. 247 (1964). “A wide variety of products, not only from different manufacturers within an industry but also from diverse industries, have been brought together in the modern supermarket for the convenience of the consumer. The mere existence of such an environment should not foreclose further inquiry into the likelihood of confusion.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 U.S.P.Q. 24, 29 (C.C.P.A. 1976). Recot, Inc. v. Becton, 214 F.3d 1322, 1330, 54 U.S.P.Q.2d 1894 (Fed. Cir. 2000) on remand 56 U.S.P.Q.2d 1859 (T.T.A.B. 2000) ("[T]he law is that products should not be deemed related simply because they are sold in the same kind of establishments." Citing Federated Foods. ).
As stated above, the goods of the applied for mark and the registered mark are not related and travel in distinctly different channels of trade, that is greenhouses and garden centers versus aquarium and aquarium accessories market, such as pet stores. The fact that there is the possibility of fish food and ornamental plants being sold in the same store, does not create a presumption the goods are related.
Therefore, Applicant respectfully submits that Applicant's goods and the goods of Registration No. 4,515,878 are not closely related, do not travel in the same stream of commerce and there is no likelihood of confusion between Applicant’s mark and the mark in U.S. Registration No. 4,515,878.
Applicant respectfully submits there is no likelihood of confusion between Applicant’s mark and the mark in U.S. Registration No. 2,730,050 because MARINELAND and MARINE are visually, aurally, and connotatively different.
Under DuPont, the first factor requires examination of “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison, but whether the marks are sufficiently similar that there is a likelihood of confusion as to the source of the goods or services. E.g., In re Iolo Techs., LLC, 95 U.S.P.Q.2d 1498, 1499 (TTAB 2010). When comparing the marks, “[a]ll relevant facts pertaining to appearance, sound, and connotation must be considered before similarity as to one or more of those factors may be sufficient to support a finding that the marks are similar or dissimilar.” Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 U.S.P.Q.2d 1894, 1899 (Fed. Cir. 2000).
The Court of Appeals for the Federal Circuit has provided the following guidance for evaluating the marks:
The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used. It follows from that principle that likelihood of confusion cannot be predicated on dissection of a mark, that is, on only part of a mark. On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable. In re Nat’l Data Corp., 753 F.2d 1056.
As will be discussed below, the Applicant submits that there are obvious differences in the appearance, sound, and connotation of the mark in U.S. Registration No. 2,730,050 and Applicant's mark.
The marks MARINELAND and MARINE are visually different.
The Examining Attorney argues that the marks are similar because both Applicant’s mark and the mark in U.S. Registration No. 2,730,050 include the word “MARINE.” Applicant respectfully points out, however, that Applicant’s mark and the mark in U.S. Registration No. 2,730,050 are visually very different and therefore not likely to be confused. The entirety of the applied for mark consists of the terms MARINE and LAND, while the U.S. Registration No. 2,730,050 only consists of MARINE, rendering the marks visually distinguishable.
In Midwestern Pet Foods Inc. v Societe des Produits Nestle S.A., 103 USPQ2d 1435 (Fed. Cir. 2012), the Court stated that each mark must be compared in their entirety. Therefore Applicant submits the term MARINE with the addition of the term LAND is very different visually from the mark of U.S. Registration No. 2,730,050.
The marks MARINELAND and MARINE are aurally different.
One way to determine whether marks are aurally distinct is through an auditory characteristics test where the question is whether the pronunciation of the sound MARINELAND generates an auditory response that calls to mind or may be confused with the sound MARINE. Bell Laboratories, Inc. v. Colonial Products, Inc., 644 F. Supp. 542, 546, 231 U.S.P.Q. 569 (S.D. Fla. 1986). The test determines whether the pronunciation of one mark generates an auditory response that may be confused with the sound of another mark. Id.
While both marks contain the wording “MARINE,” the marks are aurally distinguishable due to the addition of the term LAND in Applicant’s mark versus the single MARINE in U.S. Registration No. 2,730,050. Pronunciation of the term “LAND” results in an additional syllable that is absent for U.S. Registration No. 2,730,050. These differences show that the respective marks have completely different pronunciations and sounds and are consequently aurally distinguishable. See Schmid Laboratories v. Youngs Drug Products Corp., 482 F. Supp. 14, 206 U.S.P.Q. 468 (D.N.J. 1979) (“RIBBED” and “SENSIRIBBED” for condom packaging aurally distinct).
The United States Supreme Court has stated that “the commercial impression of a trademark is derived from it as a whole, not from its elements separated and considered in detail. For this reason it should be considered in its entirety.” Estate of P.D. Beckwith, Inc. v. Commissioner of Patents, 252 U.S. 538 (1920). The applied for mark is spelled and pronounced MARINELAND, while U.S. Registration No. 2,730,050 is spelled and pronounced MARINE. When both marks are spoken, the consumer is left with the last word to be spoken, either “LAND” or simply “MARINE”, which are aurally very different from each other and convey very different commercial impressions. The applied for mark in its entirety does not bear any resemblance in spelling or pronunciation to U.S. Registration No. 2,730,050 and would not cause confusion to the consumer.
iii. The marks MARINELAND and MARINE are connotatively different.
Applicant respectfully submits Applicant’s mark consists of the combination of two words MARINE and LAND, while the mark in U.S. Registration No. 2,730,050 consists of one word MARINE.
While both marks contain the term MARINE, the applied for mark also contains the additional term “land.” A definition by Merriam-Webster, shows “land” can mean “the solid part of the surface of the earth.” Therefore, the use of the term “land” creates a distinction between the two marks that, in fact, is distinctive and creates a very different commercial impression when used in the marks as a whole.
In sum, Applicant's mark and the mark in U.S. Registration No. 2,730,050, when taken as a whole, do not look alike, sound alike or convey the same meaning. The respective marks, when considered in their entireties, create an overall different commercial impression. Hence, likelihood of confusion is highly remote.
II. REQUEST FOR INFORMATION
The Examiner states that to permit proper examination of the applied-for mark, applicant must submit the following:
1. Whether MARINELAND has ever been used as a varietal or cultivar name.
Applicant submits with this response a declaration from Steve Jones, President of the Applicant, where Mr. Jones states:
“I submit that I am not aware of the mark being or ever having been used as a varietal or cultivar name for the identified goods and will not use the mark as a varietal or cultivar name.”
2. Whether MARINELAND has ever been used in connection with a plant patent, utility patent, or certificate for plant-variety protection.
Applicant submits with this response a declaration from Steve Jones, President of the Applicant, where Mr. Jones states:
“I submit that I am not aware of any plant patent, utility patent or certificate of plant variety protection which exists under such name for the identified goods and will not use the mark as a variety name in an application for a plant patent, utility patent or certificate of plant variety protection.”
In the event that the Examiner finds remaining impediments to a prompt allowance of this application that may be clarified through a telephone interview, or which may be overcome by an Examiner’s Amendment, the Examiner is requested to contact the undersigned attorney.
Applicant respectfully requests that the application be allowed for publication.
