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:  October 21, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on September 24, 2019.

 

In a previous Office action dated March 25, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. 

 

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

 

All arguments and evidence included in the March 25, 2019 Office Action are incorporated herein by reference.

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 5285038.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b); TMEP §§1207.01 et seq.  See the attached registration.

 

Applicant’s mark is HEXAGEN (in standard characters) for “Dietary and nutritional supplements” in International Class 5. 

 

Registrant’s mark is HEXAGEN (in standard characters) for, in relevant part, “Allergy medications; Allergy relief medication; Antibacterial pharmaceuticals; Topical first aid gel” in International Class 5.

 

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 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.

 

Similarity of the Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); 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)-(b)(v). 

 

In the present case, applicant’s mark is HEXAGEN (in standard characters) and registrant’s mark is HEXAGEN (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.

 

In its September 24, 2019 response, applicant contends that the marks have different connotations and commercial impressions when viewing the marks in commerce. However, as shown in the attached and previously attached evidence, and as detailed below, the goods are considered related. Thus, even when viewing the marks in connection with the goods as used in commerce, the marks create the same commercial impression because they are identical in appearance, sound, and meaning and used on related goods. Accordingly, applicant’s argument is unpersuasive, and the marks are confusingly similar.

 

Relatedness of the Goods

 

Applicant’s goods are for “Dietary and nutritional supplements” in International Class 5. 

 

Registrant’s goods are for, in relevant part, “Allergy medications; Allergy relief medication; Antibacterial pharmaceuticals; Topical first aid gel” in International Class 5.

 

The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Indeed, the attached Internet evidence establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark.  See attached evidence from Allerfin, Argentyn 23, and Nutritional Frontiers showing the same parties offering dietary and nutritional supplements, allergy relief medications, antibacterial preparations, and topical first aid gel. See also previously attached Internet evidence from Buried Treasure, Ortho Molecular Products, Super Smart, and Sovereign Silver. Therefore, 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 has also 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 as those of both applicant and registrant in this case.  This evidence shows that the goods listed therein, namely dietary and nutritional supplements, allergy relief medications, antibacterial pharmaceuticals, and topical first aid gel, 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).

 

 

In addition, where the marks of the respective parties are identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

In its September 24, 2019 response, applicant argues that the evidence previously provided does not meet the applicable standard of relatedness because it lacks evidence of the applied-for goods, namely, dietary and nutritional supplements. The attached evidence from the US Food & Drug Administration shows that “The law defines dietary supplements in part as products taken by mouth that contain a ‘dietary ingredient.’” Moreover, it notes that “people use dietary supplements for a wide assortment of reasons,” including “medical conditions”. Applicant has conceded in its response that the previously attached evidence included entities that provide allergy medication, antibacterial pharmaceuticals, and topical first aid gels. The trademark examining attorney now makes explicit how these entities also provide dietary and nutritional supplements and refutes each of the applicant’s points in turn (see previously attached Internet evidence from the March 25, 2019 Office Action for reference):

 

• Buried Treasure: As described, this product is for “fast relief from common allergens”. The wording “supplements” is at the top left and bottom right of the page. The trademark examining attorney attached this evidence to show the brand Buried Treasure, not the online retailer Vitacost, markets allergy relief medications and dietary and nutritional supplements under the same mark.
• Ortho Molecular Products: As described, this product is for “lasting relief from allergy symptoms”. The wording “supplement facts” is on the bottom left of the page. The trademark examining attorney attached this evidence to show the brand Ortho Molecular Products, not the online retailer Dr. Vitamin Solutions, markets allergy relief medications and dietary and nutritional supplements under the same mark.
• Super Smart: As described, this product is for “anti-bacterial and anti-fungal effects”. Though there is no explicit wording stating this is a supplement, it is a “product taken by mouth that contains a dietary ingredient” as defined by the US Food & Drug Administration in the previously referenced and attached evidence. The trademark examining attorney attached this evidence to show the brand Super Smart markets anti-bacterial preparations and dietary and nutritional supplements under the same mark.
• Sovereign Silver: The trademark examining attorney attached two pieces of evidence from this entity. Applicant contends that the Bio-Active Silver Hydrosol Liquid shown in the first piece of evidence has no relation to the goods on hand, however the wording “dietary supplement” is featured on the bottle of the product. The second piece of evidence shows that this entity also provides topical first aid gel. The trademark examining attorney attached this evidence to show the brand Sovereign Silver, not the online retailer The Vitamin Shoppe, markets topical first aid gel and dietary and nutritional supplements under the same mark.

 

Applicant proceeds to state that third party registrations that contain “laundry lists” of goods are of little value, referencing the retailers Vitacost and The Vitamin Shoppe. However, as noted above, the previous Office Action and previously attached evidence made reference to the entities Buried Treasure and Sovereign Silver, not the online retailers suggested by applicant.

 

In addition, for purposes of evaluating a trademark, material obtained from the Internet is generally accepted as competent evidence.  See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b).

 

For these reasons, the applicant’s assertion that the trademark examining attorney has not met the applicable standard of relatedness is unfounded.

 

Applicant further contends that the consumers of the cited goods would be medical professionals, whereas the consumer of applicant’s goods would be ordinary consumers. Even if consumers of the cited goods could be considered sophisticated and discriminating, it is settled that “even sophisticated purchasers are not immune from source confusion, especially in cases such as the present one involving identical marks and related goods [and/or services].”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015) (citing In re Research & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); see also In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  The identity of the marks and the relatedness of the goods “outweigh any presumed sophisticated purchasing decision.”  In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014). 

 

Moreover, the Trademark Trial and Appeal Board and its primary reviewing court have used a stricter standard to determine likelihood of confusion for pharmaceuticals or medicinal products due to the potential harm or serious consequences that could be caused if the public confused one drug or medicinal product for another.  See Glenwood Labs., Inc. v. Am. Home Prods. Corp., 455 F.2d 1384, 1386-87, 173 USPQ 19, 21-22 (C.C.P.A. 1972); Schering Corp. v. Alza Corp., 207 USPQ 504, 509 (TTAB 1980); Ethicon, Inc. v. Am. Cyanamid Co., 192 USPQ 647, 651-52 (TTAB 1976); TMEP §1207.01(d)(xii).  Although physicians and pharmacists are no doubt carefully trained to recognize differences in the characteristics of pharmaceuticals or medicinal products, they are not immune from mistaking similar trademarks used on these goods.  See Alfacell Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1305-06 (TTAB 2004); Blansett Pharmacal Co. v. Carmrick Labs., Inc., 25 USPQ2d 1473, 1477 (TTAB 1992); Schering Corp., 207 USPQ at 509.  Thus, in this case where confusion could result in harm or other serious consequences to consumers, this potential harm is considered an additional relevant factor and a lesser degree of proof may be sufficient to establish a likelihood of confusion.  See Glenwood Labs., Inc., 455 F.2d at 1386-87, 173 USPQ at 21-22; Schering Corp., 207 USPQ at 509; Ethicon, Inc., 192 USPQ at 651-52; TMEP §1207.01(d)(xii).

 

Last, applicant argues that the extent of potential confusion is de minimis because of the limited number of overlapping potential purchasers. However, 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)). Further, 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). For these reasons, applicant’s arguments are not persuasive.

 

Conclusion

 

The marks are similar in overall commercial impression, and the goods are highly related.  It is likely that a consumer would mistakenly believe applicant’s goods are offered by registrant or vice versa.  For these reasons, registration is refused pursuant to Section 2(d) of the Trademark Act.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

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. 

 

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.  

 

 

How to respond.  Click to file a response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Melissa Sturman/

Melissa Sturman

Trademark Examining Attorney

Law Office 125

(571) 272-2781

melissa.sturman@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 October 21, 2019 for

U.S. Trademark Application Serial No. 88238897

 

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. 

 

 

/Melissa Sturman/

Melissa Sturman

Trademark Examining Attorney

Law Office 125

(571) 272-2781

melissa.sturman@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 October 21, 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.”