Response to Office Action

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 09/20/2020)

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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 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 87779862 LUPITA (Stylized and/or with Design, see http://uspto.report/TM/87779862/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The examining attorney is refusing registration of this mark based on a possible likelihood of confusion with U.S. Registration Numbers 5045439 and 5045443.  Applicant respectfully disagrees.

US Registration Number 5045439 is for LUPITA, in association with “Fruit beverages; Fruit drinks; Fruit flavored drinks; Fruit flavored soft drinks; Fruit flavoured carbonated drinks; Fruit juices; Non-alcoholic beverages containing fruit juices; Non-alcoholic fruit juice beverages; Vegetable juices; Vegetable-fruit juices” in International Class 032.

US Registration Number 5045443 is for LUPITA with design, in association with “Fruit beverages; Fruit drinks; Fruit flavored drinks; Fruit flavored soft drinks; Fruit flavoured carbonated drinks; Fruit juices; Non-alcoholic beverages containing fruit juices; Non-alcoholic fruit juice beverages; Vegetable juices; Vegetable-fruit juices” in International Class 032.

Applicant’s mark is for LUPITA with design, in association with “Dietary supplements; Dietary and nutritional supplements used for weight loss” in International Class 005.

The marks must be considered in the way in which they are perceived by the relevant public. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ 2d 1687-88 (Fed. Cir. 1993).  Similarity of the marks in one respect – sight, sound or meaning --- will not automatically result in a finding of likelihood of confusion even if the goods are closely related.  TMEP section 1207.01 (b)(i).  When considered in its entirety, applicant’s mark has a different connotation from the registered marks because the design element of a capsule clearly denotes the form in which the goods are delivered (and not as a beverage), as well as gives an  image of a health product marketed to heath minded consumers.  US  Registration Number  5045439 does not include anything that gives this impression, and US Registration Number 5045443 includes a design element  that clearly gives the impression of the goods associated with the mark being beverages marketed to the general public as refreshment.   The marks are different in appearance, connotation and commercial impression.

The goods associated with the marks are very different, as the goods associated with the registered marks are beverages for refreshment whereas the goods associated with applicant’s mark are capsules for individuals wishing to lose weight and/or seeking health benefits.

The customers for the goods associated with the marks are very different, as the customers for the goods associated with applicant’s mark are specifically looking for dietary and health benefits.

The channels of trade for the goods are very different as the goods associated with applicant’s mark are sold directly person to person, rather than through retail stores.

For these reasons, applicant requests this application be allowed to proceed to registration.

CLASSIFICATION AND LISTING OF GOODS/SERVICES
Applicant proposes to amend the following class of goods/services in the application:
Current: Class 005 for Dietary supplements; Dietary and nutritional supplements used for weight loss
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text Description: Dietary supplements; Dietary supplements in capsule form; Dietary and nutritional supplements used for weight loss; Dietary and nutritional supplements, in capsule form, used for weight lossClass 005 for Dietary supplements in capsule form; Dietary and nutritional supplements, in capsule form, used for weight loss
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

SIGNATURE(S)
Response Signature
Signature: /jmf/     Date: 05/22/2018
Signatory's Name: Jeffrey M. Furr
Signatory's Position: Attorney of record, Ohio bar member

Signatory's Phone Number: 740-817-2381

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the owner/holder in this matter: (1) the owner/holder has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 87779862
Internet Transmission Date: Tue May 22 11:11:49 EDT 2018
TEAS Stamp: USPTO/ROA-XXX.XXX.XXX.XXX-20180522111149
502066-87779862-61093a653fe49ce3c76652f8
a253e7277f214cd638777e841399a511efe9df57
-N/A-N/A-20180522110741576102