UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

 

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: 2/22/2019

 

OPEN APPLICATION ISSUES THAT MUST BE ADDRESSED IN RESPONSE TO OFFICE ACTION:

 

The following are the open application issues that the applicant must address in order to have a complete response to this Office action:

 

-Refusal to Register Under Trademark Act Section 2(d) –Likelihood of Confusion Exists

 

-Requirement for Clarification and Proper Classification of Identification Language

 

-Requirement Submission of Additional Filing Fees or Restriction of Identification Language

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

 

SEARCH & ADVISORY

 

The filing date of pending U.S. Application Serial No. 87240462 precedes applicant’s filing date.  See attached referenced application.  If the mark in the referenced application registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

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. The applicant should note the following grounds for refusal.

 

 

REFUSAL to Register Under Trademark Act Section 2(d) –Likelihood of Confusion Exists

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4536943, 5033229, 5046976, 5467003 & 5545888.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

The mark for cited Registration Number 4536943 is the stylized wording CRUX FERMENTATION PROJECT for “Beer.”

 

The mark for cited Registration Number 5033229 is the wording CRUX PILZ in standard characters for: “Beer.”

 

The mark for cited Registration Number 5046976 is the wording CRUX FARMHOUSE in standard characters for: “Beer.”

 

The mark for cited Registration Number 5467003 is the wording CRUX STOUT in standard characters for: “Beer.”

 

The mark for cited Registration Number 5545888 is the wording CRUX FERMENTATION PROJECT in standard characters for: “Beer.”

 

All of the cited Registrations are owned by “856 Brewing Company”.

 

 

The mark sought in this application is the wording CRUX in standard characters for:

 

“Dissolving tablets used to make nutritional and dietary beverages; Nutritional Supplements for general health and well-being in powder, tablet, spray, or liquid form; Dietary Supplements for general health and well-being in powder, tablet, spray, or liquid form; Nutritional and dietary supplements for use as ingredients in foods and beverages in powder, tablet, or liquid form; Functional foods and beverages; Nutraceutical foods and beverages; Nutritional and dietary supplement products in gel cap, capsule, tablet, powder and oral spray form; Nutritional and dietary supplement products, namely, food bars, snacks, chips and cookies; Probiotic compositions for use as ingredients for food and beverages, namely, probiotic bacteria and probiotic bacteria cultures; Probiotic products in capsule, tablet, powder and liquid form; Nutritional and dietary supplements containing ginger, echinacea, turmeric, zinc, magnesium, ashwagandha, citicholine, theanine, gingko, carnitine, or blueberry; Nutritional and dietary food and beverage products containing ginger, echinacea, turmeric, zinc, magnesium, ashwagandha, citicholine, theanine, gingko, carnitine, or blueberry; probiotic compositions for use as ingredients for food and beverages, namely, probiotic bacteria and probiotic bacteria cultures; probiotic products in capsule, powder and liquid form.”

 

 

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 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.  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 and differences in the marks.”); TMEP §1207.01.

 

 

COMPARISON OF THE MARKS

 

The marks all use the identical wording CRUX- and the term is the dominant feature of all of the cited regisrations. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).  Greater weight is often given to this dominant feature when determining whether marks are confusingly similar.  See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

The shared wording CRUX comprises the entirety of the mark sought in this application. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)).  Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion.  See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). 

 

In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark. The highly similar sound, appearance and commercial meaning are all factors that combine to create a confusingly similar commercial impression that is shared by the marks at issue.

 

 

COMPARISON OF THE GOODS

 

Determining likelihood of confusion is based on the description of the goods 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 lists its goods broadly “Functional foods and beverages; Nutraceutical foods and beverages;” identification language which presumably encompasses all goods of the type described, including registrant’s more narrowly listed relevant narrower “Beer” goods.  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 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 are related.

A likelihood of confusion results when the confusingly similar marks are used in the market for the related goods. Accordingly, registration of the mark sought in this application is hereby refused under Section 2(d) of the Trademark Act in this case.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration. If applicant responds to the refusals, applicant must also respond to the requirements set forth below.

 

 

REQUIREMENT for Clarification and Classification of Identification Language

 

The following bolded wording in the identification of goods for International Class 005 must be clarified because it is too broad and could include goods in other international classes: 

 

“Functional foods and beverages; Nutraceutical foods and beverages; Nutritional and dietary supplement products, namely, food bars, snacks, chips and cookies; Probiotic compositions for use as ingredients for food and beverages, namely, probiotic bacteria and probiotic bacteria cultures; Probiotic products in capsule, tablet, powder and liquid form; Nutritional and dietary food and beverage products containing ginger, echinacea, turmeric, zinc, magnesium, ashwagandha, citicholine, theanine, gingko, carnitine, or blueberry; Probiotic compositions for use as ingredients for food and beverages, namely, probiotic bacteria and probiotic bacteria cultures; Probiotic products in capsule, powder and liquid form.”   See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03. 

 

In particular, this wording could encompass food and beverage products in Classes 032, 029 & 030.

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).

 

The applicant may clarify by amending to some or all of the following suggested amended identification wording, if accurate:

 

 

INTERNATIONAL CLASS 005

 

Dissolving tablets used to make nutritional and dietary beverages; Nutritional Supplements for general health and well-being in powder, tablet, spray, or liquid form; Dietary Supplements for general health and well-being in powder, tablet, spray, or liquid form; Nutritional and dietary supplements for use as ingredients in foods and beverages in powder, tablet, or liquid form; Dietetic functional foods and beverages adapted for medical use; Dietetic nutraceutical foods and beverages adapted for medical use;  Nutritional and dietary supplement products in gel cap, capsule, tablet, powder and oral spray form; Nutritional and dietary supplement products, namely, meal replacement food bars and  dietetic snacks, chips and cookies all adapted for medical use;

Probiotic enzyme food supplement compositions for use as ingredients for food and beverages, namely, probiotic bacteria and probiotic bacteria cultures; Probiotic enzyme food supplement products in capsule, tablet, powder and liquid form; Nutritional and dietary supplements containing ginger, echinacea, turmeric, zinc, magnesium, ashwagandha, citicholine, theanine, gingko, carnitine, or blueberry; Nutritional and dietary food and beverage products containing ginger, echinacea, turmeric, zinc, magnesium, ashwagandha, citicholine, theanine, gingko, carnitine, or blueberry; Probiotic enzyme food supplement compositions for use as ingredients for food and beverages, namely, probiotic bacteria and probiotic bacteria cultures; Probiotic enzyme food supplement products in capsule, powder and liquid form.

 

 

 

INTERNATIONAL CLASS 029

 

 

Functional foods and beverages, namely, {specify, e.g., vegetable-based food beverages, fruit-based food beverages, fruit-based snack foods, dairy-based food beverages}; Nutraceutical foods and beverages namely, {specify, e.g., vegetable-based food beverages, fruit-based food beverages, fruit-based snack foods, dairy-based food beverages}; Nutritional and dietary food products in the nature of {specify form, e.g., nut-based snack foods, potato-based snack foods, seed-based snack bars}.

 

 

INTERNATIONAL CLASS 030

 

 

Functional and nutraceutical foods and beverages, namely, {specify, e.g., Quinoa-based food bars, cereal-based snack food, rice-based snack food, tea, coffee, royal jelly for food purposes}; Nutritional and dietary food products in the nature of {specify form, e.g., cookies, corn chips, rice chips, cereal-based snack food} containing ginger, echinacea, turmeric, zinc, magnesium, ashwagandha, citicholine, theanine, gingko, carnitine, or blueberry.

 

 

 

INTERNATIONAL CLASS 032

 

Functional and nutraceutical beverages, namely, {specify, e.g., beer, vegetable juices, water beverages, whey beverages}; Nutritional and dietary beverage products in the nature of {specify form, e.g., beer, juices, waters, isotonic, non-alcoholic carbonated} beverages containing ginger, echinacea, turmeric, zinc, magnesium, ashwagandha, citicholine, theanine, gingko, carnitine, or blueberry; Probiotic products in liquid form, namely, Kvass.  

 

 

Please note that parentheses are not acceptable in the identification. See TMEP Section 1402.12. Where the wording “{specify …}” appears in this Office Action, the examining attorney has merely suggested ways to cure the indefiniteness of the identification. The applicant must list the goods and/or services without parentheses.

 

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.

 

 

 

REQUIREMENT -Submission of Additional Filing Fees or Restriction of Identification Language

 

The application identifies goods that are classified in at least four (4) classes; however, applicant submitted a fee sufficient for only one (1) class.  In a multiple-class application, a fee for each class is required.  37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01.

 

Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.

 

The application identifies goods in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(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 already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least four (4) classes; however, applicant submitted a fees sufficient for only one (1) class.  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.

 

 

 

ADVISORY –Response Guidelines for TEAS-Plus Applications

 

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.  

 

 

If applicant has any questions about its application or needs assistance in responding to this Office Action please telephone the assigned trademark examining attorney directly at the number listed below.

 

 

/Amy Kean/

Trademark Attorney, Law Office 112

Phone: 571-272-8854

Amy.Kean@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.

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO OFFICE ACTION (OFFICIAL LETTER) HAS ISSUED

ON 2/22/2019 FOR U.S. APPLICATION SERIAL NO. 88198195

 

Please follow the instructions below:

 

(1)  TO READ THE LETTER:  Click on this link or go to http://tsdr.uspto.gov,enter the U.S. application serial number, and click on “Documents.”

 

The Office action may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  TIMELY RESPONSE IS REQUIRED:  Please carefully review the Office action to determine (1) how to respond, and (2) the applicable response time period.  Your response deadline will be calculated from 2/22/2019 (or sooner if specified in the Office action).  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.  For information regarding response time periods, see http://www.gov.uspto.report/trademarks/process/status/responsetime.jsp.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail your response because the USPTO does NOT accept e-mails as responses to Office actions.  Instead, the USPTO recommends that you respond online using the TEAS response form located at http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.

 

(3)  QUESTIONS:  For questions about the contents of the Office action itself, please contact the assigned trademark examining attorney.  For technical assistance in accessing or viewing the Office action in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.

 

WARNING

 

Failure to file the required response by the applicable response deadline will result in the ABANDONMENT of your application.  For more information regarding abandonment, see http://www.gov.uspto.report/trademarks/basics/abandon.jsp.

 

PRIVATE COMPANY SOLICITATIONS REGARDING YOUR APPLICATION:  Private companies not associated with the USPTO are using information provided in trademark applications to mail or e-mail trademark-related solicitations.  These companies often use names that closely resemble the USPTO and their solicitations may look like an official government document.  Many solicitations require that you pay “fees.” 

 

Please carefully review all correspondence you receive regarding this application to make sure that you are responding to an official document from the USPTO rather than a private company solicitation.  All official USPTO correspondence will be mailed only from the “United States Patent and Trademark Office” in Alexandria, VA; or sent by e-mail from the domain “@uspto.gov.”  For more information on how to handle private company solicitations, see http://www.gov.uspto.report/trademarks/solicitation_warnings.jsp.