To: | ISHIHARA SANGYO KAISHA, LTD. (nixonptomail@nixonvan.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88251756 - ALFATROL - 1035-1386 |
Sent: | 2/28/2019 1:13:35 PM |
Sent As: | ECOM120@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 Attachment - 33 Attachment - 34 Attachment - 35 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88251756
MARK: ALFATROL
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: ISHIHARA SANGYO KAISHA, LTD.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 2/28/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Section 2(d) Refusal – Likelihood of Confusion
This partial refusal applies only to the goods specified therein.
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 [or services] and differences in the marks.”); TMEP §1207.01.
Applicant has applied to register the mark “ALFATROL” for “Pharmaceutical preparations for the treatment of Anti-inflammatory, anti-shock, inflammation of digestive system, inflammation of respiratory system, anti-pancreatitis, pulmonary insufficiency, kidney disease, disseminated intravascular coagulation, chronic obstructive pulmonary disease, pyometra, spondylosis deformans, systemic inflammatory response syndrome, pneumonia, infectious peritonitis, sepsis, inhibiting thrombogenesis, allergy, tumor metastasis control, infectious disease, encephalitis and surgical stress; veterinary preparations for Companion animals, farm animals, dogs, cats, horses, chickens, cattle and pigs for the treatment of Anti-inflammatory, anti-shock, inflammation of digestive system, inflammation of respiratory system, anti-pancreatitis, pulmonary insufficiency, kidney disease, disseminated intravascular coagulation, chronic obstructive pulmonary disease, pyometra, spondylosis deformans, systemic inflammatory response syndrome, pneumonia, infectious peritonitis, sepsis, inhibiting thrombogenesis, allergy, tumor metastasis control, infectious disease, encephalitis and surgical stress; pharmaceutical agents affecting digestive organs; pharmaceutical preparations for skin care for animals; medicines for veterinary purposes for Companion animals, farm animals, dogs, cats, horses, chickens, cattle and pigs for the treatment of Anti-inflammatory, anti-shock, inflammation of digestive system, inflammation of respiratory system, anti-pancreatitis, pulmonary insufficiency, kidney disease, disseminated intravascular coagulation, chronic obstructive pulmonary disease, pyometra, spondylosis deformans, systemic inflammatory response syndrome, pneumonia, infectious peritonitis, sepsis, inhibiting thrombogenesis, allergy, tumor metastasis control, infectious disease, encephalitis and surgical stress” in International Class 005.
Registrant’s mark is “ALPHATROL” for “Dietary and nutritional supplements containing L-alpha-Glyceryl Phosphoryl Choline and Trans-Resveratrol; Dietary supplements for human consumption” in International Class 005.
Similarity of 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)); 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).
In the present case, the applied-for mark “ALFATROL” and the registered mark “ALPHATROL” are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Because the marks look and sound similar and create a similar commercial impression, the marks are considered similar for likelihood of confusion purposes.
Relatedness of Goods
Accordingly, the goods are considered related for purposes of the likelihood of confusion analysis.
Conclusion
Because 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.
Response Guidelines
For this application to proceed, applicant must explicitly address each refusal in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
If applicant does not timely respond to this Office action, the following goods will be deleted from the application: “Pharmaceutical preparations for the treatment of Anti-inflammatory, anti-shock, inflammation of digestive system, inflammation of respiratory system, anti-pancreatitis, pulmonary insufficiency, kidney disease, disseminated intravascular coagulation, chronic obstructive pulmonary disease, pyometra, spondylosis deformans, systemic inflammatory response syndrome, pneumonia, infectious peritonitis, sepsis, inhibiting thrombogenesis, allergy, tumor metastasis control, infectious disease, encephalitis and surgical stress” and “pharmaceutical agents affecting digestive organs”. See 37 C.F.R. §2.65(a); TMEP §718.02(a).
In such case, the application will then proceed with the following goods only: “veterinary preparations for Companion animals, farm animals, dogs, cats, horses, chickens, cattle and pigs for the treatment of Anti-inflammatory, anti-shock, inflammation of digestive system, inflammation of respiratory system, anti-pancreatitis, pulmonary insufficiency, kidney disease, disseminated intravascular coagulation, chronic obstructive pulmonary disease, pyometra, spondylosis deformans, systemic inflammatory response syndrome, pneumonia, infectious peritonitis, sepsis, inhibiting thrombogenesis, allergy, tumor metastasis control, infectious disease, encephalitis and surgical stress; pharmaceutical preparations for skin care for animals; medicines for veterinary purposes for Companion animals, farm animals, dogs, cats, horses, chickens, cattle and pigs for the treatment of Anti-inflammatory, anti-shock, inflammation of digestive system, inflammation of respiratory system, anti-pancreatitis, pulmonary insufficiency, kidney disease, disseminated intravascular coagulation, chronic obstructive pulmonary disease, pyometra, spondylosis deformans, systemic inflammatory response syndrome, pneumonia, infectious peritonitis, sepsis, inhibiting thrombogenesis, allergy, tumor metastasis control, infectious disease, encephalitis and surgical stress”. See TMEP §718.02(a).
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.
/Sandra Snabb/
Examining Attorney
Law Office 120
571-272-4633
Sandra.Snabb@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.