United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 88101832
Mark: SONOMA
|
|
|
Correspondence Address:
|
|
|
Applicant: Sonoma Creamery, LLC
|
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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: July 11, 2019
This Office action is supplemental to and supersedes the previous Office action issued on December 19, 2018 in connection with this application. Based on information in applicant’s response, the trademark examining attorney now issues a new requirement for information and an advisory regarding applicant’s claim of acquired distinctiveness. See TMEP §§706, 711.02.
In the previous Office action dated December 19, 2018, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with the mark in U.S. Registration No. 1640633 and based on Trademark Act Section 2(e)(2) for being primarily geographically descriptive.
The Trademark Act Sections 2(d) and 2(e)(2) refusals are continued and maintained.
Applicant must respond to all issues in this Office action within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
Section 2(d) Refusal: Likelihood of Confusion with the Mark in U.S. Registration No. 1640633
Registration of the applied-for mark remains refused because of a likelihood of confusion with the mark in U.S. Registration No. 1640633. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the registration attached to 12/19/18 Office action.
Summary of Section 2(d)
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. 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)); TMEP §1207.01.
Similarity of the Marks
The applicant does not dispute the similarity of the marks.
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); TMEP §1207.01(b)-(b)(v).
In the present case, applicant’s mark is SONOMA and registrant’s mark is SONOMA. 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. Id.
Therefore, the marks are confusingly similar.
Applicant seeks to register its mark for vegetable-, potato-, and seed- based snack foods. The registered mark is for dried fruits, nuts, and vegetables.
The applicant contends that there is no likelihood of confusion because the parties’ goods are “so different”. 6/19/19 response to Office action. The compared goods need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are 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).
Further, in actuality, the goods are not “so different”. In particular, the application uses the broad wording vegetable-based snacks to describe applicant’s goods, and this wording is presumed to encompass all goods of the type described, including the dried vegetables identified in the registration. See, e.g., attached evidence from www.kitchenstewardship.com, www.livestrong.com, and www.eatingwell.com, establishing that dried vegetables are a vegetable-based snack. Similarly, the broad wording dried vegetables in the registration is presumed to encompass potatoes, which are included in applicant’s identification. See, e.g., attached evidence from http://vric.ucdavis.edu, establishing that potatoes are vegetables. Thus, these goods of the parties 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).
Additionally, these goods of the parties have no restrictions as to channels of trade or classes of purchasers and are thus “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)). For these reasons, these goods of the parties are related.
Applicant’s seed-based snack foods are also related to registrant’s goods. The Internet evidence from www.goraw.com attached to the December 19, 2018 Office action and the Internet evidence from http://nuts.com, http://us.graze.com, and http://naturebox.com attached hereto, consisting of excerpts from websites of entities that produce seed-based snacks and dried fruits, nuts, and/or vegetables, establishes that the same entity commonly produces the relevant goods and markets them under the same mark and the relevant goods are sold through the same trade channels and used by the same classes of consumers in the same fields of use. Thus, these goods of the applicant and registrant are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009).
The applicant disputes the probative value of the evidence from www.goraw.com on the ground that it does not illustrate an entity marketing or selling goods like applicant’s and registrant’s. 6/19/19 response to Office action. In actuality, the evidence from www.goraw.com is an example of an entity marketing and selling goods like applicant’s in the nature of seed-based snack bars and goods like registrant’s in the nature of dried coconut, which is a fruit. See, 12/19/18 Office action at pages 14-15; see also, attached Merriam-Webster Dictionary definition of coconut.
Other Factor
The applicant further contends that the registered mark is not entitled to protection from registration of the applied-for mark because “there are a number of registered marks in Class 029 that contain the term SONOMA and which identify various non-dairy and non-cheese products”. 6/19/19 response to Office action. In support, applicant has submitted a list of registrations. However, the mere submission of a list of registrations 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); 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.
Further, each of the marks identified by the applicant contain some matter which distinguishes it from the registered mark. The applied-for mark in this case is identical to the registered mark.
Moreover, even assuming arguendo that the registered mark is weak, the Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that marks deemed “weak” are still entitled to protection under Section 2(d) against the registration by a subsequent user of a similar mark for closely related goods. TMEP §1207.01(b)(ix); see King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A. 1974). As set forth above, applicant’s and registrant’s goods are legally the same in part.
Conclusion
For the foregoing reasons, the Trademark Act Section 2(d) refusal for a likelihood of confusion with the mark in U.S. Registration No. 1640633 is continued and maintained at this time.
Section 2(e)(2) Refusal: Primarily Geographically Descriptive
Trademark Act Section 2(e)(2) bars registration of a mark that is primarily geographically descriptive of the origin of the applicant’s goods. Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); see TMEP §§1210, 1210.01(a).
A mark is primarily geographically descriptive when the following is demonstrated:
(1) The primary significance of the mark is a generally known geographic place or location;
(2) The goods for which applicant seeks registration originate in the geographic place identified in the mark; and
(3) Purchasers would be likely to make a goods-place association; that is, purchasers would be likely to believe that the goods originate in the geographic place identified in the mark.
TMEP §1210.01(a); see In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987).
The Primary Significance of the Applied-for Mark is the County in California.
Sonoma is a geographic term that refers to a county in the state of California. See, e.g., evidence from The Columbia Gazetteer of the World attached to 12/19/18 Office action.
The Applicant’s Goods Originate in Sonoma.
Applicant’s goods originate in Sonoma because, in part, the goods are made there. See, e.g., attached evidence from http://sonomacreamery.com. Goods are considered to originate from a geographic location when the record shows that the goods are sold there, manufactured or produced there, packaged and shipped from there, and/or contain a main ingredient or component derived from there. See In re JT Tobacconists, 59 USPQ2d 1080, 1083 (TTAB 2001) (holding applicant’s cigars, cigar cases, and humidors originated from MINNESOTA because they were packaged and shipped from MINNESOTA, and applicant’s business was located in MINNESOTA); In re Nantucket Allserve Inc., 28 USPQ2d 1144, 1145-46 (TTAB 1993) (holding applicant’s beverages originated from NANTUCKET because labels for applicant’s goods suggested a connection with NANTUCKET, additional evidence suggested that some ingredients came from NANTUCKET and that applicant’s goods were sold at applicant’s store located in NANTUCKET, and applicant’s corporate headquarters and research and development center were located in NANTUCKET); TMEP §1210.03.
Purchasers Would Be Likely to Believe that Applicant’s Goods Originate in Sonoma.
When there is no genuine issue that the geographical significance of a term is its primary significance, and the geographical place is neither obscure nor remote, a public association of the goods with the place is presumed if an applicant’s goods originate in the place named in the mark. TMEP §1210.04; see, e.g., In re Handler Fenton Ws., Inc., 214 USPQ 848, 849-50 (TTAB 1982) (holding DENVER WESTERNS primarily geographically descriptive of western-style shirts originating in Denver). This presumption applies in this case.
Despite this, the applicant disputes that consumers would make a goods-place association. 6/19/19 response to Office action. There are additional reasons why the public is likely to believe that the applied-for mark identifies the place from which applicant’s goods originate. See In re JT Tobacconists, 59 USPQ2d 1080, 1083-84 (TTAB 2001) (finding that nothing in the record suggested that it would be incongruous or unexpected for the purchasing public to believe that applicant’s cigars, cigar cases and humidors, “manufactured products which could have their origin practically anywhere,” came from the place named in the mark, as applicant was located in the place and the goods were packaged and shipped from the location, such that consumers would have a reasonable basis to believe the goods came from the place named in the mark). In particular, there is nothing in the record that suggests it would be unexpected for applicant’s goods to originate in Sonoma. To the contrary, the applicant advertises to consumers that its goods originate in Sonoma. See, e.g., attached evidence from http://sonomacreamery.com.
Conclusion
Because the applied-for mark is primarily geographically descriptive of applicant’s goods, the refusal to register based Section 2(e)(2) of the Trademark Act is continued and maintained.
Information Required
Advisory Regarding Claim of Acquired Distinctiveness
The applicant disputes that the applied-for mark is primarily geographically descriptive and, in the alternative, asserts a claim of acquired distinctiveness pursuant to Trademark Act Section 2(f). As set forth above, the examining attorney continues and maintains the refusal to register the applied-for mark on the ground that it is primarily geographically descriptive. The applicant is advised that its claim of acquired distinctiveness is acceptable.
Response to Office Action Required to Avoid Abandonment
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 $125 per 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 or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action
/Jeanine Gagliardi/
Examining Attorney
Law Office 120
571-272-3177
jeanine.gagliardi@uspto.gov
RESPONSE GUIDANCE
