Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  August 05, 2019

 

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.  

 

 

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on July 9, 2019.

 

In a previous Office action dated February 4, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION.  The examining attorney has considered applicant’s arguments in support of registration and has found them unpersuasive. 

 

In addition, applicant was required to satisfy the following requirement(s):  CLASSIFICATION AND IDENTIFICATION OF GOODS/MULTIPLE-CLASS APPLICATION REQUIREMENTS, DESCRIPTION OF THE MARK.  Applicant was also given and advisory that the translation statement set forth in the application would not be printed.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied:  CLASSIFICATION AND IDENTIFICATION OF GOODS/MULTIPLE-CLASS APPLICATION REQUIREMENTS and DESCRIPTION OF THE MARK.  See TMEP §§713.02, 714.04. 

 

Thus, the trademark examining attorney continues and maintains the refusal in the summary of issues below.  In addition, applicant must be represented by a U.S.-licensed attorney as noted below.  This represents a new issue with the application that requires a non-final action.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• APPLICANT MUST BE REPRESENTED BY A U.S.-LICENSED ATTORNEY
• SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

APPLICANT MUST BE REPRESENTED BY A U.S. LICENSED ATTORNEY

 

Applicant must be represented by a U.S.-licensed attorney.  The application record indicates that applicant’s domicile is outside of the United States in Mexico, but no attorney who is an active member in good standing of the bar of the highest court of a U.S. State or territory has been appointed to represent the applicant in this matter.  All applicants whose permanent legal residence or principal place of business is not within the United States or its territories must be represented by a U.S.-licensed attorney at the USPTO.  37 C.F.R. §§2.2(o), 2.11(a).  Thus, applicant is required to be represented by a U.S.-licensed attorney and must appoint one.  37 C.F.R. §2.11(a).  This application will not proceed to registration without such appointment and representation.  See id.  See Hiring a U.S.-licensed trademark attorney for more information.

 

To appoint or designate a U.S.-licensed attorney.  To appoint an attorney, applicant should (1) submit a completed Trademark Electronic Application System (TEAS) Revocation, Appointment, and/or Change of Address of Attorney/Domestic Representative form and (2) promptly notify the trademark examining attorney that this TEAS form was submitted.  Alternatively, if applicant has already retained an attorney, the attorney can respond to this Office action by using the appropriate TEAS response form and provide his or her attorney information in the form and sign it as applicant’s attorney.  See 37 C.F.R. §2.17(b)(1)(ii).

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is continued and maintained with respect to U.S. Registration No(s). 4952425. 

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4952425.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

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.

 

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).

 

Applicant’s mark is “MAYA” stylized in the color black with three colorized expanding half circle patterns above.

 

The standard character mark in U.S. Registration No. 4952425 is “MAYA”.

 

Applicant’s mark and registrant’s mark are similar in sound, connotation, and commercial impression because both marks use the identical word “MAYA”.

 

As to appearance, applicant should note that a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition.  See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii).  Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display.  See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).  Thus, in the present case, registrant’s mark in its entirety, namely, “MAYA”, may be presented in the same manner of display as the “MAYA” literal element in applicant’s mark.

 

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)).  Although applicant’s mark contains a design element, it is the word portion of applicant’s mark, namely, “MAYA”, which 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 which is the only and identical word in registrant’s mark. 

 

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., __ F.3d __, 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 (CCPA 1971)); TMEP §1207.01(b).  Thus, although the marks can be differentiate in a side-by-side comparison, the marks are sufficiently similar in terms of their commercial impression related to the identical use of the word “MAYA” that consumers encountering the marks would be likely to assume a connection between the parties.

 

Therefore, the marks are confusingly similar.

 

COMPARISON OF THE GOODS

 

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).

 

Applicant’s goods as amended on July 9, 2019 are fruits, namely, unprocessed avocados. 

 

As previously noted, an avocado is a pulpy green- to purple-skinned nutty-flavored fruit.  See the attached definition from Merriam-Webster provided in the Office action dated February 4, 2019 and incorporated into this Office action by reference.

 

The goods in U.S. Registration No. 4952425 include the following, namely, fresh fruit, excluding mango, watermelon and tomato, and organic fresh fruit, excluding, mango, watermelon, and tomato in International Class 31.

 

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 the goods, namely, fresh fruit, excluding mango, watermelon and tomato, and organic fresh fruit, excluding, mango, watermelon, and tomato, which presumably encompasses all goods of the type described, including applicant’s more narrow goods, namely, fruits, namely, unprocessed avocados which is a type of fruit.  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 and/or services 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 and/or services are related.

 

APPLICANT’S ARGUMENTS

 

Applicant argues that the elements of the marks as a whole must be taken into consideration which has not been done in the present case because applicant contends that only the similarities of the marks have been taken into consideration by the examining attorney.  Applicant also contends that the similarities of the marks must be assessed by the consumer in terms of what is first seen as well as the sound by looking at the marks in their entirety and not comparing them un a side-by-side analysis.  Applicant notes to do otherwise would be wrong and seemingly fraudulent.  Consequently, applicant notes that granting exclusivity through the right of industrial property in such similar elements does not permit fair competition to be guaranteed, and that applicant’s use of a the design is a significant aspect of applicant’s mark which identifies its product given the mark its distinctiveness in comparison to the registered mark.  Thus, when compared phonetically, visually, and ideologically, the marks are sufficiently different that there is no likelihood of confusion in this case.

 

With respect to the phonetical pronunciation of the marks, applicant notes that in this case the literal elements of the marks are the same, namely, “MAYA”.  Applicant acknowledges that the pronunciation is in the same for both trademarks.  Thus, applicant agrees that this portion of the marks is identical in sound, connotation and commercial impression.

 

Nevertheless, applicant notes that a wide variety of trademarks using the same distinctive element for International Class 31 which is pronounced the same, namely, “MAYA”.  Applicant notes five trademarks may be found within the USPTO’s TSDR system and submits with applicant’s response printouts of the five registered marks, namely, U.S. Registration No. 2704207 for the mark “MAYACROPS S.A.” stylized and design for goods which are not fruit, U.S. Registration No. 4952426 for the standard character mark “MAYA PINEAPPLE” for fruit, U.S. Registration No. 5393555 for the mark “MAYA LUXURIOUS” stylized and design for fruit, U.S. Registration No. 2498827 for the typed drawing mark “MAYA HAWAIIAN PLANTAIN” for fresh plantains, and U.S. Registration No. 3298503 for the stylized word mark "MAYA TROPICAL" for fresh fruit.  Applicant also notes applicant’s own mark and application among the list of “MAYA” marks.

 

Applicant contends that these registrations with similar product are all similar and also use the distinctiveness which resides in the element “MAYA” with the association to the Mesoamerican Mayan civilization form the pre-Columbian Americas which is unlike use of the word “MAYA” alone in the cited registration.

 

The examining attorney notes that unlike applicant’s referenced registrations which all contain additional wording sufficient to distinguish the cited registration from those that applicant has provided, applicant’s mark only contains a design element.  Moreover, the examining attorney notes that these referenced registrations most likely all coexist because they have wording in each of the marks which sufficiently differentiates them.  In the present case, because the word portion of applicant’s mark is identical to the word portion in the cited registration, the marks are similar in sound, connotation, and commercial impression related to this identical word.  This is different from applicant’s mark and applicant’s referenced registrations which are not identical with respect to the entire word portions.  This is true even when applicant’s design element which references the Mayan civilization is considered.  While the cited registration does not have any explicit references to the Mayan civilization, given that the mark comprises only of the word “MAYA” it would be hard to reach the conclusion that the cited registration in this case is devoid of any meaning related thereto given it indeed uses the word “MAYA”.  Thus, even when applicant’s design element is considered in the context of the marks as a whole, it is the word portion which will be used in calling for the goods and there is nothing in the word element of applicant’s mark to differentiate it from that in registrant’s mark. 

 

Applicant contends also that the third party use of "MAYA" in the registrations applicant has provided of record in connection with unprocessed fruit is evidence of the weakness and dilution of the term "MAYA" in relation unprocessed fruits and weighs in favor of narrowing the scope of its protection against subsequent applications. See Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983); Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005).  However, only three of the five registrations relate to fresh fruit and are on point with respect to the goods at issue.

 

Thus, in essence, applicant has submitted printed or electronic copies of third-party registrations for marks containing the wording “MAYA” to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection.  These three registrations appear to be for goods that are similar and two registrations that are predominantly different from or unrelated to those identified in applicant’s application. 

 

The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services.  See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field.  Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003). 

 

However, evidence comprising only a small number of third-party registrations, namely, three, for similar marks with similar goods and/or services, as in the present case, is generally entitled to little weight in determining the strength of a mark.  See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973).  These few registrations are “not evidence of what happens in the market place or that customers are familiar with them.”  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018).  Thus, the few similar third-party registrations submitted by applicant are insufficient to establish that the word “MAYA” is weak or diluted. 

 

Further, evidence comprising third-party registrations for similar marks with different or unrelated goods and/or services, as in the present case, has “no bearing on the strength of the term in the context relevant to this case.”  See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751).  Thus, these two third-party registrations submitted by applicant are insufficient to establish that the wording is weak or diluted.

 

Moreover, applicant should note that third-party registrations are entitled to little weight on the issue of confusing similarity because the registrations are “not evidence that the registered marks are actually in use or that the public is familiar with them.”  In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1167 n.5 (TTAB 2013) (citing In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)); see TMEP §1207.01(d)(iii).  Moreover, the existence on the register of other seemingly similar marks does not provide a basis for registrability for the applied-for mark.  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Total Quality Grp., Inc., 51 USPQ2d 1474, 1477 (TTAB 1999).

 

Thus, the examining attorney is unpersuaded by applicant’s arguments and evidence related to these third-party registrations.

Applicant also notes that applicant has already successfully registered the applied-for mark in Mexico.  Applicant also provides a copy of this registration with applicant’s response.  However, Registration in a foreign country does not automatically ensure eligibility for registration in the United States.   In re Rath, 402 F.3d 1207, 1214, 74 USPQ2d 1174, 1179 (Fed. Cir. 2005) ("[I]t is impossible to read section 44(e) to require the registration of foreign marks that fail to meet United States requirements for eligibility.  Section 44 applications are subject to the section 2 bars to registration . . . ."); In re Mastic Inc., 829 F.2d 1114, 4 USPQ2d 1292 (Fed. Cir. 1987); In re Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652 (Fed. Cir. 1985); Order Sons of Italy in Am. v. Marofa S.A., 38 USPQ2d 1602 (TTAB 1996).  The U.S. application will be reviewed according to the standard for registrability in the United States. 

 

With respect to the visual differences, the only issue is the visual differences between applicant’s mark and the cited registrations.  The differences related to the marks in the third-party registrations applicant has made of record are not relevant because the likelihood of confusion is between applicant’s mark and the mark in the cited registration.  While applicant’s mark does contain a design element related to the Mayan cultural headwear used by religious and political chieftains, this alone is insufficient to distinguish applicant’s mark from the registrant’s mark given the identical word elements for the marks.  Applicant’s mark essentially incorporates all of registrant’s mark which is the distinguishing factor between the applicant’s mark and those in the third-party registrations submitted.  Applicant’s use of the design element is insufficient alone to distinguish it from registrant’s mark which uses the identical literal element.

 

Applicant’s arguments related to the ideological issues and themes in the marks at issue are unpersuasive given the identical word portions of the marks and the fact that registrant’s identification of goods is broad enough to encompass registrant’s goods.  Applicant’s opinion that it is clear that the registrant does not make avocadoes is not based in fact as the wording is set forth in the cited registration.  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)).  Based on the identifications of record, as an avocado is a fruit, applicant’s goods are encompassed by registrant’s goods, namely, fresh fruit, excluding mango, watermelon and tomato.  Registrant’s identification does not exclude applicant’s fruit, namely, avocados.  Thus, contrary to applicant’s contentions, the goods are indeed related.

 

CONCLUSION

  

Couple the similarity in commercial impression related to the identical use of the word “MAYA” along with the legally identical nature of the goods and a consumer encountering the marks may wrongly assume that the goods are derived from a common commercial source.

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, 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).

Thus, the refusal under Trademark Act Section 2(d) is continued and maintained with respect to U.S. Registration No(s). 4952425. 

 

RESPONSE GUIDELINES

 

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.

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

 

 

/Brendan McCauley/

Brendan McCauley

Trademark Examining Attorney

Law Office 114

571-272-9459

Brendan.McCauley@USPTO.GOV

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on August 05, 2019 for

U.S. Trademark Application Serial No. 88169289

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Brendan McCauley/

Brendan McCauley

Trademark Examining Attorney

Law Office 114

571-272-9459

Brendan.McCauley@USPTO.GOV

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from August 05, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”