To: | Costa Limited (nfriedma@hodgsonruss.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88114859 - COSTA - N/A |
Sent: | 1/4/2019 6:10:07 AM |
Sent As: | ECOM116@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88114859
MARK: COSTA
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Costa Limited
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 1/4/2019
SECTION 2(d) REFUSALS – LIKELIHOOD OF CONFUSION
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. The following discussion addresses the two key considerations of similarity of the marks, and relatedness of the goods.
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)); TMEP §1207.01(b).
In this case, the applicant’s mark is “COSTA” for “Milk based beverages; yoghurt based beverages; almond based milk beverages; cocoa flavoured milk beverages; yoghurt drinks; milk based drinks containing fruit juice; milkshakes; none of the aforesaid goods including pastes made of dry fruits, dairy cream, cream for cooking, sour cream or bechamel sauce” in Class 029; and “Non-alcoholic beverages; ice based drinks; mineral water, carbonated waters; flavoured and unflavoured aqueous drinks; fruit drinks and fruit juices; beverages based on fruit and/or fruit juices; liquid and powdered drinks mixes; syrups; ingredients for preparing drinks; none of the aforesaid goods including vegetable juices or tiger nut beverages, namely, horchata” in Class 032.
The registrants’ marks are:
US Reg. No. 4642872 “COSTA” (with design) for “Milk and milk products, namely, condensed milk and evaporated milk; Milk beverages, namely, beverages having a milk base; Milk predominating beverages, namely, milk beverages containing fruit; * bouillons, * soups and preparations for making soups; jams; jellies, namely, vegetable jellies; marmalade; compotes; edible oils and fats; * all these goods not containing seafood or fish, * [ almond paste, ] Peanut butter confectionery chips, Spread containing nuts, namely, hazelnut paste and walnut paste; Confectionery made of sugar, namely, confectionery creams, namely, almond cream, walnut creams, hazelnut creams; Cocoa butter, namely, cocoa spreads” in Class 029; and “Non-alcoholic beverages, namely, carbonated beverages, soft drinks with honey; fruit drinks and fruit juices; Soy-based beverages not being milk substitutes; Non-alcoholic rice-based beverages not being milk substitutes; Tiger nut beverages not being milk substitutes, namely, horchata; Oat-based beverages with fruit juice not for food purposes and not being milk substitutes; Oat-based beverages with milk and not being milk substitutes; Malt cereal beverages not being milk substitutes; vegetable juices; syrups and other preparations for making beverages, namely, fruit beverages” in Class 032.
5573711 “COAST” for “Ginger ale; Ginger beer; Seltzer water; Soda water; Soft drinks; Tonic water; Carbonated non-alcoholic drinks; Non-alcoholic cocktail bases; Non-alcoholic cocktail mixes; Non-alcoholic cocktails” in Class 032
With regard to ‘872, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). As such, the design element in ‘872, obviate likelihood of confusion with the marks at issue.
Applicant’s mark (in part – COSTA) is in Spanish, which is a common, modern language in the United States. See In re Aquamar, Inc., 115 USPQ2d 1122 (Spanish)
The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent. Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A). The ordinary American purchaser includes those proficient in the foreign language. In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.
In this case, the ordinary American purchaser would likely stop and translate the mark because the Spanish language is a common, modern language spoken by an appreciable number of consumers in the United States. Therefore, the dominant feature of the applicant’s mark is the foreign equivalent of the cited registrants’ marks.
Thus, the marks are so similar in their appearance, sound, connotation and commercial impression, that there is a likelihood of confusion. Therefore, the similarity prong of the test to determine likelihood of confusion is satisfied.
Comparison of the Goods
Based on the aforementioned standard, the applicant’s goods are closely related to the registrant’s goods because they could be marketed and sold together and/or in the same channels of trade. Specifically, applicant and registrant in ‘872 both provide milk, dairy and fruit beverages; and the applicant and registrant in ‘711 both provide non-alcoholic beverages, carbonated water and other drink mixes/bases.
Accordingly, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
Applicant should note the following search results.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
If applicant responds to the refusals, applicant must also respond to the requirements set forth below.
Identification of Goods Requirement – CLASS 032 ONLY
Applicant submitted the following identification of goods:
Class 032: Non-alcoholic beverages; ice based drinks; mineral water, carbonated waters; flavoured and unflavoured aqueous drinks; fruit drinks and fruit juices; beverages based on fruit and/or fruit juices; liquid and powdered drinks mixes; syrups; ingredients for preparing drinks; none of the aforesaid goods including vegetable juices or tiger nut beverages, namely, horchata
Some of the wording in the identification of goods is indefinite and must be clarified. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Specifically, applicant must further specify the nature of its non-alcoholic beverages, ice based drink and liquid/powder mixes as set forth below. Additionally, applicant must further specify the nature of “syrups” and note that syrups in class 032 are limited to those used to make beverages that are in Class 32, e.g., soft drinks, fruit juices. Syrups to make beverages in other classes are in the class of those beverages, e.g., syrups for making teas in Class 30 and syrups for making meal replacement drinks in Class 5, unless the syrup itself is in another class, e.g., chocolate syrup for making chocolate milk is in 30 because chocolate syrup is in 30 even though chocolate milk is in 29.
Applicant may substitute the following wording (suggestions in bold italics), if accurate:
Class 032: Non-alcoholic {specify type, e.g., malt, fruit juice, beer flavored, honey-based, water-based, carbonated} beverages; ice based fruit drinks; mineral water, carbonated waters; flavoured and unflavoured aqueous water drinks; fruit drinks and fruit juices; beverages based on fruit and/or fruit juices; liquid and powdered drinks mixes used in the preparation of soft drinks, coconut water beverages and fruit-based beverages; syrups for beverages; none of the aforesaid goods including vegetable juices or tiger nut beverages, namely, horchata; and/or
Class 030: Ice cream drinks; coffee-based iced beverages; Mixes in the nature of concentrates, syrups or powders used in the preparation of tea based beverages; syrups for making tea; and/or
Class 005: Liquid and powdered nutritional supplement drink mix; cough syrups
**Please note: Class 029 is acceptable as-is**
Scope Advisory
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Multiple Class Advisory
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least four classes; however, applicant submitted a fee(s) sufficient for only two class(es). Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
Fee Advisory
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
Conclusion
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.
/tfrazier/
Tamara Frazier
Trademark Attorney
Law Office 116
(571) 272-8256
tamara.frazier@uspto.gov
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.