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:  January 22, 2021

 

 On September 16, 2019, action on this application was suspended pending the disposition of Cancellation No. 92071311.  On September 3, 2020 the Petition for Cancellation was withdrawn and on September 9, 2020, the proceeding was terminated.  Therefore, the Section 2(d) refusal is now made final.

 

In a previous Office action dated March 13, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Section 2(d) Refusal- Likelihood of Confusion.

 

Based on the disposition of Cancellation No. 92071311, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

 

• Section 2(d) Refusal- Likelihood of Confusion

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Registration of the applied-for mark is refused because of a likelihood of confusion with the marks at U.S. Registration Nos. 4647505 and 5052192.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously attached registration.

 

Applicant has applied to register:

 

“DEFY LIMITATIONS” (Standard Characters) for, “Sports drinks; water beverages; powders used in the preparation of isotonic sports drinks and sports beverages” in International Class 32.

The registered marks are:

“DEFY” (U.S. Reg. No. 4647505) (Standard Characters) for, “Non-alcoholic beverages, namely, recovery sports drinks, energy drinks, sports drinks and fruit juice drinks, all the foregoing enhanced with vitamins, minerals, and nutrients” in International Class 32.

And

“DEFY” (U.S. Reg. No. 5052192) (Standard Characters) for, “Vitamin, mineral and nutrient enhanced liquid vitamin drinks for purposes of enhancing mental alertness in adults desiring to maintain health, mental alertness and enhance personal well-being, excluding nutritional food bars for use as meal replacements and supplements in tablet or capsule form” in International Class 5.

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s).  See 15 U.S.C. §1052(d).  Determining likelihood of confusion is made 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).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].”  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)); see TMEP §1207.01.

 

In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

SIMILARITY 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

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).

 

Here, the marks are nearly identical in appearance, sound, commercial impression and connotation. Specifically, they share the similar, fundamental element of “DEFY” for related goods. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).

 

Any comparative differences between applicant’s mark and registered marks remains relatively minor and does not substantially mitigate the confusing similarity between them, particularly when the registered marks make up half of the applied-for mark. It is well settled that incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).  In the present case, the marks are identical in part and consumers are likely to believe that the parties’ goods emanate from the same “Defy” source.

 

In this instance, the applicant’s mark and the registered marks are extremely similar as they share the common DEFY term.  The overriding concern is not only to prevent buyer confusion as to the source of the goods, 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).

 

Generally, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods/services of the parties is required to support a finding of likelihood of confusion.  In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). 

 

SIMILARITY OF THE GOODS

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, as was previously explained, the application uses broad wording to describe sports drinks and water beverages used in the preparation of isotonic sports drinks and sports beverages”, which presumably encompasses all goods of the type described, including registrant’s more narrow “Non-alcoholic beverages, namely, recovery sports drinks, energy drinks, sports drinks and fruit juice drinks, all the foregoing enhanced with vitamins, minerals, and nutrients” and “Vitamin, mineral and nutrient enhanced liquid vitamin drinks for purposes of enhancing mental alertness in adults desiring to maintain health, mental alertness and enhance personal well-being, excluding nutritional food bars for use as meal replacements and supplements in tablet or capsule form”.  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).  Both applicant and registrant provide sports drinks and while applicant hasn’t specified whether its water beverages contain vitamins, the entry is broad enough that it would refer to water drinks with vitamins. 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 and/or services are related.

As for the other goods in the application, the evidence below shows how the same entity commonly provides the relevant goods and markets the goods under the same mark, that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use and finally that the goods are similar or complementary in terms of purpose or function:

 

Nooma

• Powder mix: http://www.amazon.com/stores/page/7E27F621-DF89-416E-B7B6-128BCEF2B167?ingress=2&visitId=bd9b76aa-db0f-4eb4-83a6-7b956e5dd90d&ref_=ast_bln
• Sports drinks: http://www.amazon.com/stores/page/81E00858-B5A7-4172-9B57-26E71B53651E?ingress=2&visitId=bd9b76aa-db0f-4eb4-83a6-7b956e5dd90d&ref_=ast_bln
• Energy drinks: http://www.amazon.com/stores/page/D898E73F-A27E-404B-A320-FAA4E4AE24BB?ingress=2&visitId=bd9b76aa-db0f-4eb4-83a6-7b956e5dd90d&ref_=ast_bln

 

Body Armor

• Water beverage: http://www.amazon.com/stores/page/0D9F4E1A-B0AB-4BCE-9297-9626BC7929BA?ingress=2&visitId=06419458-bd53-4559-9cdf-f62bd6d7c20d&ref_=ast_bln
• Sports drinks: http://www.amazon.com/stores/page/DE224591-0242-49F7-8DC0-1F9912EA3A93?ingress=2&visitId=06419458-bd53-4559-9cdf-f62bd6d7c20d&ref_=ast_bln
• Energy drinks: http://www.amazon.com/stores/page/83210A02-9118-4B35-99CF-7D3302C6AB85?ingress=2&visitId=06419458-bd53-4559-9cdf-f62bd6d7c20d&ref_=ast_bln

 

Roar

• Powder mix: http://www.amazon.com/stores/page/AD9E41ED-3088-4E53-86B3-4A8CE587AC8E?ingress=2&visitId=20646f92-e5e3-4271-880a-ea56fb5d3e11&ref_=ast_bln
• Sports drinks: http://www.bestproducts.com/fitness/health/g734/electrolyte-sports-drinks/?slide=8

 

Consequently, the goods of the present parties move in the same normal channels of trade, are available to all potential customers and may be utilized for the same or similar purpose (i.e. related) purposes by the same classes of purchasers.

 

As such, for the reasons described above and in the previous Office action, along with the evidence attached in the actions, there is a likelihood of confusion between applicant’s mark and the registered marks. Thus, the refusal to register applicant’s mark is continued and made FINAL.

 

 

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

/Claudia Garcia/

Trademark Examining Attorney

Law Office 111

United States Patent and Trademark Office

Office: (571) 272-6939

CLAUDIA.GARCIA@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 January 22, 2021 for

U.S. Trademark Application Serial No. 88205108

 

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. 

 

 

/Claudia Garcia/

Trademark Examining Attorney

Law Office 111

United States Patent and Trademark Office

Office: (571) 272-6939

 

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 January 22, 2021, 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.”