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:  November 04, 2019

 

The Office has reassigned this application to the undersigned trademark examining attorney.

 

This Office Action is in response to applicant’s Response to Office Action, dated September 17, 2019.

 

In the previous Office Action, dated April 1, 2019, the examining attorney:

 

• Refused registration pursuant to Section 2(d) of the Trademark Act due to a Likelihood of Confusion with the marks in U.S. Registration Nos. 3067847 and 3095219.

 

In the Response, applicant:

 

• Requested that the Section 2(d) Refusal be withdrawn.

 

The examining attorney has reviewed the Response and has determined the following:

 

• The Section 2(d) Refusal is maintained and made FINAL. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration Nos. 3067847 and 3095219.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

Applicant’s mark is SPARTAN (design plus words) for “Drinking water; Energy drinks; Sports drinks” in Class 30.

 

The registered marks (which are owned by the same registrant) are:

 

• U.S. Registration No. 3067847 SPARTAN for the relevant goods “Fruit juices, fruit flavored beverages, drinking water, spring water, soft drinks, pop, vegetable juices” in Class 32.
• U.S. Registration No. 3095219 SPARTAN EST. 1953 (design plus words) for the relevant goods “ Fruit juices, fruit flavored beverages, drinking water, spring water, soft drinks, pop, vegetable juices” in Class 32.

 

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 of 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.  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

 

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).

 

In this case, the applicant’s mark is SPARTAN (design plus words).

The registered marks are SPARTAN and SPARTAN EST. 1953 (design plus words).

 

These marks are similar.

 

Specifically, the marks share the identical wording SPARTAN which means “of or relating to Sparta in ancient Greece”. See http://www.merriam-webster.com/dictionary/Spartan.  The meaning of this term does not differ in relation to the respective coffee goods in the marks.  Therefore, the marks all share wording that is identical in sound, appearance, and meaning.

 

Moreover, SPARTAN is the dominant term in the respective marks. U.S. Registration No. 3095219 contains the additional wording “EST. 1953”, which has been disclaimed.

 

Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

Here, “EST.” is a common abbreviation for “established”. See http://www.merriam-webster.com/dictionary/est.  Therefore, EST. 1953 merely indicates that the registrant has been operating since this year.  Therefore, consumers are less likely to focus on this wording, rendering SPARTAN the dominant portion of this mark.

 

For the other marks, SPARTAN is the only wording in the mark and so is the dominant portion of those marks.

 

The applicant’s mark and the mark in U.S. Registration No. 3095219 have design elements.

 

However, 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) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); 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, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).

 

First, the design in applicant’s mark is of a helmet.  However, this helmet is of an ancient Spartan design, and so merely reinforces the shared word SPARTAN.  See http://en.wikipedia.org/wiki/Leonidas_I (images of an ancient Spartan king wearing a similar helmet); http://en.wikipedia.org/wiki/Spartan_army (showing images of Spartan helmets).  Therefore, this design element does not alter the overall similarity of the shared wording.

 

Second, the design in U.S. Registration No.  3095219 is of a banner.  This design merely frames the wording and does not alter the meaning or commercial impression of the shared term.  Therefore, this design element does not alter the overall similarity based on the shared wording.

 

Therefore, these marks are confusingly similar.

 

Relatedness of the Goods

 

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).

 

Here, applicant’s goods are “Drinking water; Energy drinks; Sports drinks” in Class 32.

 

The registrant’s relevant goods (which are the same in the two registrations) are “Fruit juices, fruit flavored beverages, drinking water, spring water, soft drinks, pop, vegetable juices” in Class 32.

 

These goods are related.

 

First, the goods overlap in part.

 

Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

 

In this case, the registrant’s “drinking water” and the registrant’s “drinking water” are indistinguishable.  Furthermore, applicant’s energy drinks and sports drinks overlap the registrant’s soft drinks and fruit flavored beverages. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).

 

Specifically “soft drinks” means “nonalcoholic beverage (usually carbonated)”. See http://www.vocabulary.com/dictionary/soft%20drink.  Moreover sports beverages and energy drinks are often fruit flavored.  See http://www.drinkbodyarmor.com/product/fruit-punch/; http://kplusorganics.com/products/; http://xyience.com/products/fruit-punch?variant=3823204099; http://www.walmart.com/ip/V8-Energy-Sparkling-Healthy-Energy-Drink-Natural-Energy-from-Tea-White-Grape-Raspberry-8-4-Oz-Can-4-Count/365151740?athcpid=365151740&athpgid=athenaItemPage&athcgid=null&athznid=tic&athieid=v0&athstid=CS020&athguid=6c45f441-286-16e2ea28dc3c0b&athancid=null&athena=true (offering fruit flavored energy drinks and sports drinks).

 

Additionally, 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)).  Thus, applicant’s and registrant’s goods are related.

 

Moreover, companies that offer fruit juices and drinking water commonly also offer sports drinks and energy drinks.  See http://www.drinkbodyarmor.com/sportwater/; http://www.drinkbodyarmor.com/lyte-sports-drink/ (offering sports drinks and water under the same mark); http://www.campbells.com/v8/energy/; http://www.campbells.com/v8/v8-hydrate/; http://www.campbells.com/v8/v8-fruit-and-vegetable-blends/ (offering fruit juices, energy drinks, and water drinks under the same mark); http://www.propelwater.com/products#vitaminboost (offering sports drinks and water under the same mark); http://www.oceanspray.com/Products/Product-Filter?category=juices&subcategory=classic+juice+drinks; http://www.oceanspray.com/Products/Product-Filter?category=Other+Beverages&subcategory=Sparkling; http://www.oceanspray.com/Products/Product-Filter?category=Other+Beverages&subcategory=Energy (offering fruit juice, carbonated drinks, and energy drinks under the same marks); http://www.amazon.com/Welchs-Energy-Sparkling-Drink-Grape/dp/B07MHPL1XX; http://www.amazon.com/Welchs-Juice-Concord-Grape-Bottle/dp/B000OUYNC2?ref_=ast_sto_dp (offering juice and energy drinks); http://www.acutefruitenergy.com/ (offering a fruit juice energy drink); http://teariot.com/?gclid=EAIaIQobChMI1qmI_-PM5QIVQtyGCh1xLw7ZEAMYAiAAEgKpQPD_BwE (offering fruit juice energy drinks); http://smartfruit.com/product/superfruit-allstars/; http://smartfruit.com/product/ (offering a fruit juice sports drink and other juices);  http://www.vitaminwater.com/vitaminwater-active/; http://www.vitaminwater.com/vitaminwater-products/ (offering water beverages and sports beverages).

 

The attached Internet evidence establishes that the goods are overlapping and originate from the same sources. 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).

 

Furthermore, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a representative sample 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, fruit juices, water, energy drinks, and sports 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).

 

See attached U.S. Registration Nos. 5471662, 5661454, 5697058, 5702367, 5730314, 5777292, 5780397, 5792016, 5795906, 5811097, 5845335, 5869635, 5885178, 5893165, and 5899083.

 

In the Response, applicant requested that the Section 2(d) Refusal be withdrawn.  However, as the marks are confusingly similar and the goods are related, there is a likelihood of confusion between the marks.

 

Consequently, the Section 2(d) Refusal is maintained and made FINAL.

 

RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or

 

(2)       An appeal to the Trademark Trial and Appeal Board with the required filing fees.

 

TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).

 

If applicant has any questions, please call or email the assigned examining attorney.

 

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)

 

 

/Alison Keeley/

Examining Attorney

Law Office 113

(571) 272-4514

Alison.Keeley@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 November 04, 2019 for

U.S. Trademark Application Serial No. 88309352

 

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. 

 

 

/Alison Keeley/

Examining Attorney

Law Office 113

(571) 272-4514

Alison.Keeley@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 November 04, 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.”