To: | LifeSeasons, Inc. (docket@kunzlerlaw.com) |
Subject: | U.S. Trademark Application Serial No. 87405849 - CLARI-T - 0429.LSEA.TM |
Sent: | April 24, 2020 08:15:04 PM |
Sent As: | ecom125@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 87405849
Mark: CLARI-T
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Correspondence Address:
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Applicant: LifeSeasons, Inc.
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Reference/Docket No. 0429.LSEA.TM
Correspondence Email Address: |
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FINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: April 24, 2020
On February 12, 2018, action on this application was suspended pending the disposition of U.S. Application Serial Nos. 87113978 and 86406483. Pending application Serial No. 87113978 (CLARITY NH) has abandoned and is no longer a potential bar to the registration of applicant’s mark.
Further, the trademark examining attorney notes that pending application Serial No. 86406483 (COGNITIVE CLARITY) has since registered. On further review, the potential Section 2(d) refusal based on this application has been withdrawn. See TMEP §§713.02, 714.04.
In the Suspension Notice, applicant was notified that the existing Section 2(d) refusal, based on Reg. No. 4593987, was continued and maintained.
Therefore, for the reasons set forth below, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04. All Arguments and Evidence from the July 22, 2017 Office Action (the “previous Office Action”) are incorporated herein by reference.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
Section 2(d) Refusal – Likelihood of Confusion
Registration of the applied-for mark was refused, and the refusal is herein maintained and made FINAL, because of a likelihood of confusion with the mark in U.S. Registration No. 4593987. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See registration attached to the previous Office Action.
Applicant’s applied-for mark is CLARI-T in standard characters for “Dietary and nutritional supplements.”
Registrant’s mark is CLAR8TY in standard characters for “Nutritional supplements in the form of powder.”
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Comparison 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 Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In this case, the only wording, CLARI-T, in applicant’s applied-for mark is substantially similar to the only wording, CLAR8TY, in registrant’s mark. This similarity in wording creates a similar overall commercial impression in the compared marks.
The trademark examining attorney notes that applicant’s mark uses the wording “CLARI-T” while registrant’s mark uses the wording “CLAR8TY”. However, this slight difference in spelling is insufficient to distinguish the marks, because CLARI-T and CLAR8TY look and sound alike, and are essentially phonetic equivalents. There is no correct pronunciation of a mark because it is impossible to predict how the public will pronounce a particular mark. See Embarcadero Techs., Inc. v. RStudio, Inc., 105 USPQ2d 1825, 1835 (TTAB 2013) (quoting In re Viterra Inc., 671 F.3d 1358, 1367, 101 USPQ2d 1905, 1912 (Fed. Cir. 2012); In re The Belgrade Shoe Co., 411 F.2d 1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969)); TMEP §1207.01(b)(iv). Here, CLARI-T and CLAR8TY could clearly be pronounced the same; such similarity in sound alone may be sufficient to support a finding that the marks are 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)(iv).
Moreover, even if potential purchasers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in appearance, sound, meaning, connotation and commercial impression in the respective marks, that applicant's goods provided under the CLARI-T mark constitute a new or additional line of products from the same source as the goods provided under the previous CLAR8TY mark with which they are acquainted or familiar, and that applicant’s mark is merely a variation of the registrant’s mark. See, e.g., SMS, Inc. v. Byn-Mar Inc. 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer's preexisting mark [ANDREA SIMONE] for its established line of clothing.”).
Applicant argues that when viewed in their entireties, applicant’s applied-for mark is not confusingly similar to registrant’s mark. However, the above analysis shows that the applied-for mark is confusingly similar to the cited mark because the compared marks are essentially phonetic equivalents and thus sound like. Also, neither mark contains additional wording that helps to distinguish it from the other.
Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . 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.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b). Here, the compared marks are sufficiently similar in terms of their overall commercial impression that consumers who encounter the marks, especially those discovering the parties’ goods via word of mouth, are likely to assume a connection between the parties.
Based on the foregoing, the applicant’s applied-for mark and registrant’s mark are sufficiently similar to find a likelihood of confusion.
Comparison of the Goods
Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the application uses broad wording to describe “Dietary and nutritional supplements,” which presumably encompasses all goods of the type described, including registrant’s more narrow “Nutritional supplements in the form of powder.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
The attached Internet evidence consists of web pages from the websites of DaVinci Laboratories, Food Science of Vermont, Nature’s Truth, and Swanson, showing that these entities all produce dietary and nutritional supplements, including nutritional supplements in the form of powder. This evidence establishes that the same entity commonly produces the relevant goods and markets the goods under the same mark, that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and that the goods are similar or complementary in terms of purpose or function. Thus, applicant’s and registrant’s goods 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).
Based on the attached evidence and the analysis above, applicant’s and the registrant’s goods are highly related. Therefore, consumers encountering similar marks, as applicant’s applied-for mark and registrant’s mark, used in connection with the respective goods are likely to believe that the goods emanate from the same source.
The trademark examining attorney notes that applicant does not dispute the fact that applicant’s and registrant’s goods are related.
Applicant should note that where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b). Here, the compared marks are substantially similar and the compared goods are highly related.
Applicant has submitted a list of registrations and applications. However, the mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03. Accordingly, these registrations will not be considered.
In conclusion, applicant should also note that the overriding concern is not only to prevent buyer confusion as to the source of the goods, 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).
Because applicant’s and registrant’s marks are similar and the goods are related, there is a likelihood of confusion as to the source of the parties’ goods. Therefore, the refusal under Section 2(d) of the Trademark Act is hereby maintained and made Final. 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
Response Options for Final Office Action
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Leslie Ann Thomas-Riggs/
Leslie Ann Thomas-Riggs
Trademark Examining Attorney
USPTO, Law Office 125
(571) 272-5469
leslie.thomas-riggs@uspto.gov
RESPONSE GUIDANCE