To: | Gordon Food Service, Inc. (trademarks@wnj.com) |
Subject: | U.S. Trademark Application Serial No. 88044325 - CLEAR CHOICE - N/A |
Sent: | April 20, 2021 05:08:18 PM |
Sent As: | ecom108@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 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 Attachment - 45 Attachment - 46 Attachment - 47 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88044325
Mark: CLEAR CHOICE
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Correspondence Address: |
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Applicant: Gordon Food Service, Inc.
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Reference/Docket No. N/A
Correspondence Email Address: |
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: April 20, 2021
Therefore, registration is refused as follows.
SUMMARY OF ISSUES
- Section 2(d) Refusal – Likelihood of Confusion
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
The applicant’s mark is “CLEAR CHOICE”, in standard character form, for “Providing consumer product information on food products that are clean label, sustainably sourced, or ecologically conscious; providing consumer product information on food products that are produced in a manner that is ecological, socially responsible or sustainable” in International Class 35.
The registrants’ marks are:
“CLEAR CHOICE” U.S. Registration No. 1911592, in standard character form, for “edible oils and shortenings” in International Class 29.
“CLEAR CHOICE” U.S. Registration No. 1959704, in standard character form, for “carbonated soft drinks” in International Class 32.
“CLEAR CHOICE” U.S. Registration No. 2264493, in standard character form, for “liquid additives” in International Class 5.
“CLEAR CHOICE” U.S. Registration No. 2483055, in standard character form, for “nutritional supplements, namely beverages” in International Class 5.
“CLEAR CHOICE” U.S. Registration No. 4042309, in standard character form, for “rice” in International Class 30.
“CLEAR CHOICE” U.S. Registration No. 4506321, in standard character form, for “edible collagen casings, namely, uniform sanitary tubular casings made of reconstituted collagen and other food grade ingredients” in International Class 18.
“CLEAR CHOICE” U.S. Registration No. 5642141, in standard character form, for “peanut butter” in International Class 29.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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. In this case, the following factors are the most relevant: similarity of the marks and similarity of the goods and services.
Similarity of the Marks
In the present case, applicant’s mark is “CLEAR CHOICE” and registrants’ marks are “CLEAR CHOICE”. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
Similarity of the Goods and Services
Where the marks of the respective parties are identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines. See In re Country Oven, Inc., 2019 USPQ2d 443903, at *5 (TTAB 2019) (citing In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017)); TMEP §1207.01(a); see also In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
In this case, the application uses broad wording to describe “providing consumer product information on food products that are clean label, sustainably sourced, or ecologically conscious” and “providing consumer product information on food products that are produced in a manner that is ecological, socially responsible or sustainable.” These “food products” presumably encompass all goods of the type described, including registrants’ edible oils and shortenings, soft drinks, liquid additives, nutritional supplements in the nature of beverages, rice, edible collagen casings, and peanut butter.
The attached Internet evidence, consisting of the websites of Davis Foods (www.davisfood.coop.com), Thrive Market (www.thrivemarket.com), Simplot (www.simplotfoods.com), and Wild Planet (www.wildplanetfoods.com), establishes that the same entity commonly both manufactures and provides various types of food products and also provides consumer product information on food products that are or are produced in a manner which is clean label, sustainably sources, or ecologically conscious. Thus, 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).
In the June 24, 2019 Petition to Revive, the applicant argued that due to the many marks which employ the identical wording “CLEAR CHOICE” in relation to various foods and beverages, a likelihood of confusion with the applied-for mark is not likely. The examining attorney acknowledges the applicant’s argument; however, remains unconvinced. The applicant has applied for the services of “providing consumer product information on food products which are clean label, sustainably sourced, ecologically conscious, or produced in a manner that is ecological, socially responsible or sustainable.” The cited 2(d) registrations are for various types of food products. As each of the cited registrations use broad wording to identify their food product goods, the cited food product goods have the potential to be food products “which are clean label, sustainably sourced, ecologically conscious, or produced in a manner that is ecological, socially responsible or sustainable.” Thus, the information being provided by the applicant could actually, specifically include the goods of the cited registrations. Thus, consumer confusion is likely.
Because applicant’s and registrants’ marks are similar and the goods and services are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Lanham Act.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
/Anna C. Burdecki/
Anna C. Burdecki
Examining Attorney
Law Office 108
(571) 270-1941
anna.burdecki@uspto.gov
RESPONSE GUIDANCE