To: | Augustine, Inc. (ckim@charleskimlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88213306 - CALM - ps_calm |
Sent: | March 18, 2020 09:41:58 AM |
Sent As: | ecom123@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88213306
Mark: CALM
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Correspondence Address:
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Applicant: Augustine, Inc.
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Reference/Docket No. ps_calm
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: March 18, 2020
This nonfinal Office action supersedes the previous final Office action. Applicant should not file an appeal at this time as it would be considered premature. See 15 U.S.C. §1070; 37 C.F.R. §2.141(a); TMEP §715.03(b).
The following refusal from the final Office action remains outstanding: Section 2(d) Refusal – Likelihood Of Confusion.
NEW ISSUE: AMENDMENT EXCEEDS SCOPE OF AMENDED IDENTIFICATION
In this case, the application, as amended, identifies the goods and/or services as follows: “Herbal teas for medicinal purposes in the form of dry teas in tea sachets.”
However, the proposed amendment identifies the following goods and/or services: “herbal tea bags, primarily for women in their pregnancy and lactation stages; specifically excluding beverages in liquid form” and has amended the goods to Class 30.
This proposed amendment is beyond the scope of the current identification because applicant has removed the language "for medicinal purposes" and the form of the goods as "tea sachets." While "tea" is regularly in Class 30, applicant had previously identified the goods as "medicinal" teas and therefore the goods were placed in Class 5. Applicant has broadened the scope of the identification by opening up its identification to non-medicated teas and to forms other than sachets.
MAINTAINED: SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant's mark is CALM in standard characters for "Herbal teas for medicinal purposes in the form of dry teas in tea sachets" in Class 5.
The registered mark is CALM in standard characters for "neutraceuticals, namely, vitamin and mineral supplement enhanced drinks; nutritional beverages, namely, vitamin and mineral supplement enhanced drinks; dietary supplemental drinks in the nature of vitamin and mineral beverages" in Class 5.
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
In the present case, applicant’s mark is CALM in standard characters and registrant’s mark is CALM in standard characters. 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.
For the foregoing reasons, the marks are considered similar for likelihood of confusion purposes.
Comparison of the Goods
Applicant's goods are: "Herbal teas for medicinal purposes in the form of dry teas in tea sachets" in Class 5.
Registrant's goods are: "neutraceuticals, namely, vitamin and mineral supplement enhanced drinks; nutritional beverages, namely, vitamin and mineral supplement enhanced drinks; dietary supplemental drinks in the nature of vitamin and mineral beverages" in Class 5.
The attached Internet evidence establishes that the same entity commonly produces the relevant goods and markets the goods under the same mark. See previously attached evidence from http://www.florahealth.com/; http://www.harney.com/; http://www.melaleuca.com/; http://numitea.com/; http://www.pipingrock.com/; http://remedies.net/. This evidence establishes that entities that produce herbal medicinal teas also produce vitamin, mineral, and dietary supplemental drinks under the same mark.
Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
The trademark examining attorney previously attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case. This evidence shows that the goods and/or services listed therein, namely herbal medicinal tea and dietary and supplemental drinks, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii). The previously attached Registration Nos. are: 4502520, 4960651, 5335981, 5528333, 5661930.
Therefore, as these goods originate from the same sources, these goods are related for likelihood of confusion purposes.
Thus, as the marks are identical and the goods services are related, there is a likelihood of confusion between the marks. Therefore, registration is refused pursuant to Section 2(d) of the Trademark Act.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Megan M. Hartnett/
Megan M. Hartnett
Trademark Examining Attorney
Law Office 123
571-270-1977
megan.hartnett@uspto.gov
RESPONSE GUIDANCE