| To: | Alkaline 88, LLC (ptodocket@bgdlegal.com) |
| Subject: | U.S. Trademark Application Serial No. 88229942 - SOOTHE - 130502000012 |
| Sent: | March 28, 2020 05:08:38 PM |
| Sent As: | ecom109@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88229942
Mark: SOOTHE
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Correspondence Address: |
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Applicant: Alkaline 88, LLC
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Reference/Docket No. 130502000012
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 28, 2020
INTRODUCTION
Applicant’s response of February 14, 2020 to the office action of August 16, 2019, has been reviewed and the following determinations have been made.
The prior pending application has abandoned and is withdrawn as a bar to the present application. Additionally, the CSA refusal is withdrawn. The filing date of the application has been amended in accordance with applicant’s request. The requirement to amend the identification and for additional information are satisfied.
However, applicant should note the new Section 2(d) refusal made upon further review of the application. The examining attorney apologizes for any inconvenience to applicant. Additionally, based on applicant’s responses to the request for information, registration is refused for unlawful use based on the Food Drug and Cosmetic Act (FDCA).
Summary of Issues:
* Section 2(d) Refusal (new)
* FDCA Refusal (new)
SECTION 2(D) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4832104. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
The applicant has applied to register SOOTHE 88 (stylized) for (CLASS 32) bottled water containing hemp; fruit flavored water containing hemp; fruit flavored bottled water containing hemp.
The registered mark is SOOTHING SODA for (CLASS 32) Beauty beverages, namely, fruit juices and energy drinks containing nutritional supplements; bottled drinking water; cola drinks; colas; concentrates and powders used in the preparation of energy drinks and fruit-flavored beverages; concentrates for making fruit drinks; concentrates, syrups or powders for making soft drinks or tea-flavored beverages; concentrates, syrups or powders used in the preparation of soft drinks; concentrates, syrups or powders used in the preparation of sports and energy drinks; drinking water; drinking water with vitamins; energy drinks; fruit drinks; fruit drinks and fruit juices; fruit drinks and juices; fruit flavored drinks; fruit flavored soft drinks; fruit flavoured carbonated drinks; fruit flavoured drinks; fruit juices and fruit drinks; fruit-based soft drinks flavored with tea; guarana drinks; isotonic drinks; isotonic non-alcoholic drinks; non-alcoholic drinks, namely, energy shots; pop; powders used in the preparation of isotonic sports drinks and sports beverages; purified bottled drinking water; soft drinks; soft drinks flavored with tea; soft drinks, namely, sodas; sports drinks; sports drinks, namely, energy drinks; sports drinks, namely, performance drinks; sports drinks, namely, recovery drinks; syrups for making fruit-flavored drinks; syrups for making soft drinks; vegetable drinks.
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.
In the present case, applicant’s mark is similar to the registered mark in appearance, sound, connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
Specifically, the dominant element of the registered mark, i.e., SOOTHING, is similar in appearance to, and conveys the same connotation as the dominant portion of applicant’s mark, i.e., the term SOOTHE, such that the two marks create and convey the same overall commercial impression.
In registrant’s mark, the term SOOTHING is considered dominant because it appears as the first term in the mark. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
Likewise in applicant’s mark, the term SOOTHE is considered dominant because the only other portion of the mark, i.e., the 88, is integrated into the word SOOTHE and does not create a separate commercial impression.
The fact that registrant’s mark also has the term SODA does not diminish the similarities in the marks because the term SODA is a descriptive term that has been disclaimed and as such is accorded less weight in the likelihood of confusion analysis. Disclaimed matter is typically less significant or less dominant when comparing marks. See In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Nat’l Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).
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., 901 F.3d 1367, 1373, 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 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
When considered in their entireties, applicant’s mark conveys the same overall commercial impression as the registered mark such that consumers are likely to regard the mark of the applicant and that of the registrant as confusingly similar.
B. COMPARISON OF THE GOODS/SERVICES
In the present case, the goods of the applicant and registrant are related in that both parties are providing similar types of non-alcoholic beverages that often originate from a single source or are sold in the same channels of trade. More specifically, applicant’s and registrant’s goods overlap with respect to bottled water and fruit flavored beverages.
Since the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, applicant’s mark is not entitled to registration.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
FDCA REFUSAL – NO BONA FIDE INTENT TO LAWFULLY USE IN COMMERCE AS OF FILING DATE
Registration is refused because applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907.
To qualify for federal trademark/service mark registration, the use of a mark in commerce must be lawful. Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987) (stating that “[a] valid application cannot be filed at all for registration of a mark without ‘lawful use in commerce’”); TMEP §907; see In re Stellar Int’l, Inc., 159 USPQ 48, 50-51 (TTAB 1968); Coahoma Chemical Co., Inc. v. Smith, 113 USPQ 413 (Com’r Pat. & Trademarks 1957) (concluding that “use of a mark in connection with unlawful shipments in interstate commerce is not use of a mark in commerce which the [Office] may recognize.”). Thus, the goods/services to which the mark is to be applied must comply with all applicable federal laws. See In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016) (citing In re Midwest Tennis & Track Co., 29 USPQ2d 1386, 1386 n.2 (TTAB 1993) (noting that “[i]t is settled that the Trademark Act’s requirement of ‘use in commerce,’ means a ‘lawful use in commerce’”)); In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976); TMEP §907.
The Federal Food, Drug, and Cosmetic Act (FDCA) prohibits the introduction or delivery for introduction into interstate commerce of a food to which has been added a drug approved under Section 355 of the Act or a biological product licensed under 42 U.S.C. §262. 21 U.S.C. §331(ll); see also 21 U.S.C. §321(ff) (indicating that a dietary supplement is deemed to be a food within the meaning of the FDCA and does not include an article that is approved as a new drug under 21 U.S.C. §355, certified as an antibiotic under 21 U.S.C. §357, or licensed as a biologic under 42 U.S.C. §262).
Cannabidiol (CBD), a chemical constituent of the cannabis plant, was the subject of substantial clinical investigations before it was marketed in foods or as dietary supplements. On June 25, 2018, the U.S. Food and Drug Administration (FDA) approved the first prescription pharmaceutical formulation of plant-derived CBD, Epidiolex®, for the treatment of two rare forms of epilepsy, Lennox-Gastaut syndrome and Dravet syndrome. The Drug Enforcement Administration (DEA) placed Epidiolex® on schedule V of the CSA on September 27, 2018. Nevertheless, marijuana and CBD derived from marijuana remain unlawful. No other cannabis-derived drug products have been approved by the FDA. Under the FDCA, any product intended to have a therapeutic or medical use, and any product (other than a food) that is intended to affect the structure or function of the body of humans or animals, is a drug. 21 U.S.C. § 321(g)(1) An unapproved new drug cannot be distributed or sold in interstate commerce unless it is the subject of an FDA-approved new drug application (NDA) or abbreviated new drug application (ANDA). 21 U.S.C. §§ 331(d) and 355(a), (b), & (j); see also FDA Regulation of Cannabis and Cannabis-Derived Products: Questions and Answers http://www.fda.gov/news-events/public-health-focus/fda-regulation-cannabis-and-cannabis-derived-products-questions-and-answers (content current as of March 11, 2020) copy attached.
Applicant’s goods and/or services are broad enough to encompass products that consist of, or include, items or activities that are or were prohibited by the FDCA, namely, bottled water containing hemp; fruit flavored water containing hemp; fruit flavored bottled water containing hemp.
The attachments from applicant’s website http://thealkalinewaterco.com/ plainly indicate that applicant’s identified goods/services include beverages containing CBD. Specifically, the attachments show that applicant is advertising/marketing products containing CBD. Moreover, applicant has stated in its February 14, 2020 response to office action that at least some of the goods will contain CBD.
It is unlawful to introduce food to which CBD, an “article that is approved as a new drug,” has been added into interstate commerce or to market CBD as, or in, dietary supplements, regardless of whether the substances are hemp-derived. 21 U.S.C. §§321(ff)(3)(B)(ii), 331(d), 355(a); see also 21 U.S.C. §352(f)(1) regarding mislabeled drugs. See also Statement from FDA Commissioner Scott Gottlieb, M.D., on signing of the Agriculture Improvement Act and the agency’s regulation of products containing cannabis and cannabis-derived compounds. http://www.fda.gov/NewsEvents/Newsroom/PressAnnouncements/ucm628988.htm copy attached.
In order for an application to have a valid basis that could properly result in a registration, the use of the mark has to be lawful. See In re Pepcom Indus., Inc., 192 USPQ 400, 401 (TTAB 1976) Because introduction of such goods into commerce was not lawful as of the filing date, applicant did not have a bona fide intent to use the applied-for mark in lawful commerce in connection with such goods and/or the identified services. See e.g. In re JJ206, LLC, 120 USPQ2d 1568, 1569 (TTAB 2016) (“where the identified goods are illegal under the federal Controlled Substances Act (CSA), the applicant cannot use its mark in lawful commerce, and ‘it is a legal impossibility’ for the applicant to have the requisite bona fide intent to use the mark.”); see also In re Brown, 119 USPQ2d, 1351-1352; TMEP §907.
How to respond. Click to file a response to this nonfinal Office action.
/Deborah Lobo/
Trademark Examining Attorney
Law Office 109
571-272-3263
deborah.lobo@uspto.gov
RESPONSE GUIDANCE
