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. 88284885
MARK: WILD HARVEST
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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: SUPERVALU LICENSING LLC
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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: 4/15/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Registration Refused – Section 2(d) Likelihood of Confusion
This refusal applies to the following goods only: “Cotton balls and rounds for cosmetic purposes, Body Wash, hair conditioner, shampoo, hand wash, body lotion, hand lotion, body scrub, bath bomb, body butter, bar soap, bath salt” in International Class 3 and “Processed seafood, Frozen seafood, Seafood, not live” in International Class 5.
The applied-for mark is “WILD HARVEST” in standard characters for “Cotton balls and rounds for cosmetic purposes, Body Wash, hair conditioner, shampoo, hand wash, body lotion, hand lotion, body scrub, bath bomb, body butter, bar soap, bath salt” in International Class 3 and “Processed seafood, Frozen seafood, Seafood, not live” in International Class 5.
The registered mark in U.S. Registration No. 2896651 is “NATURE’S WILD HARVEST” in typed characters for “Prepared seafood” in International Class 29.
The registered mark in U.S. Registration No. 3128439 is “WILD HARVEST” with design for “Frozen seafood” in International Class 29.
The registered mark in U.S. Registration No. 4704956 is “WILD HARVESTED NATIVE NECTARS” in standard characters for “Body and beauty care cosmetics; cosmetic nourishing creams; cosmetics; cosmetics in the form of milks, lotions and emulsions; non-medicated preparations all for the care of skin, hair and scalp; soaps” in International Class 3.
The registered marks in U.S. Registration Nos. 5131938 and 5131939 are “OREGON’S WILD HARVEST” in standard characters and “OREGON'S WILD HARVEST HERBAL SUPPLEMENTS SINCE 1994” with design for “Herbal supplements” in International Class 5.
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 goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); TMEP §§1207.01 et seq.
Comparison 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); 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); TMEP §1207.01(b).
U.S. Registration No. 2896651, 5131938, and 5131939
In this instance, the registered marks encompass the entirety of the wording in the applied-for mark “WILD HARVEST”. 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 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); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
The inclusion of the terms “NATURE’S”, “OREGON’S”, and “HERBAL SUPPLEMENTS SINCE 1994” in the registered marks does not obviate the likelihood of confusion. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010).
Based on the foregoing, the applied-for mark and registered marks are sufficiently similar to find a likelihood of confusion.
U.S. Registration No. 3128439
In this instance, the wording in the applicant’s mark is “WILD HARVEST” and the wording in the registrant’s mark is “WILD HARVEST”. This wording is identical in appearance, sound, and meaning, “and ha[s] 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 the wording is 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.
The inclusion of a design element in the applied-for mark does not diminish the similarities between the marks. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911.
Therefore, based on the foregoing, the applied-for and registered marks are sufficiently similar to find a likelihood of confusion.
U.S. Registration No. 4704956
In the instance, the applied-for mark “WILD HARVEST” and the registered mark “WILD HARVESTED NATIVE NECTARS” begin with the similar phrases “WILD HARVEST” and “WILD HARVESTED”. Marks may be confusingly similar in appearance where the same or 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); TMEP §1207.01(b)(ii)-(iii). Here, the wording “WILD HARVEST” and “WILD HARVESTED” in the marks creates the impression of crops that have been gathered from a natural environment (“Exhibit B”).
The inclusion of “NATIVE NECTARS” in the registered mark does not obviate the likelihood of confusion between the marks. Consumers are generally more inclined to focus on the first portion of wording in any trademark. 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”). The first portion of the registered mark is the wording “WILD HARVESTED”, which is highly similar in sound, appearance, and commercial impression as the applied-for mark.
Based on the foregoing, the applied-for mark and registered mark are sufficiently similar to find a likelihood of confusion.
Comparison of Goods
The determination of likelihood of confusion is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014). Broad and unrestricted identifications are presumed to encompass all goods of the type described. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018).
Here, the registrant in U.S. Registration No. 4704956 uses broad wording to describe its goods, such as “cosmetics” and “soaps”. This wording is presumed to encompass all goods of the type described, including those in the applicant’s more narrow identification, such as body wash, hand lotion, and bar soap. Similarly, the applicant and U.S. Registration No. 3128439 has identical entries for “frozen seafood”. Moreover, the applicants “seafood, not live” would encompass the prepared seafood in U.S. Registration No. 2896651. In addition, 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).
Furthermore, the applicant’s cosmetic and body care products and the registrant’s supplements in U.S. Registration Nos. 5131938 and 5131939 are related because the goods commonly emanate from the same commercial entity. In support thereof, the examining attorney has attached Internet evidence from producers and retailers of cosmetics (“Exhibit C”). This evidence establishes that the same entity commonly manufactures a variety of cosmetics, such as body soaps, lotions and shampoos, as well as supplements under the same mark, which are marketed and sold through the same trade channels, to the same classes of consumers, and for similar purposes. For example, Perricone MD® produces skin creams, cleansers, and moisturizers as well as supplements for promoting healthy skin under its mark and markets and sells these goods on its website to consumers seeking to improve the quality and clarity of their skin.
Therefore, the goods of the applicant and registrants are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009).
Conclusion
Because the applicant’s applied-for mark and the registered marks are similar and the goods are related, registration is refused for a likelihood of confusion under Section 2(d).
Advisory: Applicant’s Response Options
(1) Deleting the goods to which the refusal pertains; or
(2) Filing a request to divide out the goods that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
If applicant responds to the refusal, applicant must also respond to the requirements set forth below.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues. However, the applicant must address the other issues raised in this Office action.
Identification and Classification of Goods
This feature or characteristic is considered desirable for applicant’s seafood because wild seafood is more expensive as it is considered as having fewer antibiotics and contaminants (“Exhibit D”). However, if some or all of the goods do not (or will not) in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods. See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).
To avoid such refusal, applicant may amend the identification to specify that the goods possess this relevant feature or characteristic. See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq. However, merely amending the identification to exclude goods with the named feature or characteristic will not avoid a deceptiveness refusal. TMEP §1203.02(f)(i).
Applicant may adopt the following identification of goods, if accurate. The examining attorney has bolded and underlined additions to the applicant’s original identification of goods.
Class 003: Cotton balls and rounds for cosmetic purposes, body wash, hair conditioner, shampoo, hand wash in the nature of non-medicated liquid hand soap, body lotion, hand lotion, body scrub, bath bomb, body butter, bar soap, and non-medicated bath salts
Class 004: Lump charcoal; Charcoal briquettes
Class 005: Medicated hand wash; Bath salts for medical purposes
Class 008: Table cutlery
Class 029: Processed wild-caught seafood; Frozen wild-caught seafood; Wild-caught seafood, not live; Turkey, ham, Roast beef, salami, Preserved peas; Hash brown potatoes
Class 030: Packaged meals consisting primarily of quinoa; Soy sauce
Class 032: Coconut water
Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods may not later be reinserted. See TMEP §1402.07(e).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Multi-Class Application Requirements
(1) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fees already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least seven (7) classes; however, applicant submitted fees sufficient for only six (6) classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
Request for Additional Information
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant website information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Applicant is advised that, if applicant’s response to the request for information indicates that the seafood identified in the application do not or will not contain or be comprised of wild-caught seafood, registration may be refused on the ground that the applied-for mark is deceptive. Trademark Act Section 2(a), 15 U.S.C. §1052(a); see In re Budge Mfg. Co., 857 F.2d 773, 775-77, 8 USPQ2d 1259, 1260-62 (Fed. Cir. 1988); TMEP §1203.02-02(e).
Disclaimer Required
This requirement applies to International Class 29 only.
In this case, applicant must disclaim the term “WILD” as to International Class 29 because it is not inherently distinctive. This unregistrable term is, at best, merely descriptive of a feature and characteristic of the applicant’s goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The Oxford University Press® defines “WILD” as describing an animal or plant that is living or growing in the natural environment, not domesticated or cultivated (“Exhibit B”). In the context of the applicant’s goods, this describes a feature or characteristic thereof, namely, its seafood, meat products, and vegetables consist of or are comprised of animals and plants living or growing in the natural environment. The descriptive nature of this term is further demonstrated by the attached evidence regarding seafood and producers of food products, which use the term “WILD” to identify food products that have not been domesticated or cultivated, but instead obtained from their natural environment (“Exhibit E” & “Exhibit F”).
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “WILD” for International Class 29 apart from the mark as shown.
TMEP §1213.08(a)(i); see In re Owatonna Tool Co., 231 USPQ 493, 494 (Comm’r Pats. 1983).
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Response Guidelines
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 and requirements 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.
If the applicant has any questions or requires assistance in responding to this Office action, please telephone the assigned examining attorney.
/Thomas Young/
Examining Attorney
Law Office 120
thomas.young@uspto.gov
(571) 272-5152
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.
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.
