UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88316368
MARK: CHEF'S CHOICE
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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: HC Foods Co., 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: 5/8/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES PRESENTED IN THIS OFFICE ACTION:
· Section 2(d) Refusal—Likelihood of Confusion
· Prior-filed Applications—Advisory
· Section 1 Refusal—Ownership Refusal
· Information Required Regarding Ownership of Mark
· Persons Who May Sign Responses—Advisory
· Domestic Pro se Applicant—Advisory
SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4014921, 4894395, 3748763, 5382532, 4751650, 5334439, 5320705, 3811318, 4013502, 3708443, and 5514198. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s mark is “CHEF’S CHOICE” for use with:
Class 29: Fruit peel; Fruit pulp; Fruit purees; Fruits, canned; Fruits, tinned; Mushrooms, preserved; Canned fruits; Canned fruits and vegetables; Coconut milk; Coconut milk powder; Coconut milk-based beverages; Condensed milk; Dried edible mushrooms; Evaporated milk; Peanut paste; Pickled fruits; Preserved fruits and vegetables; Processed mushrooms; Processed vegetables and fruits; Soup pastes; Soybean milk; Tinned fruits
Class 30: Curry pastes; Curry powder; Curry sauce; Curry spice mixture; Noodles; Asian noodles; Bean paste; Bean-starch noodles (harusame, uncooked); Chili paste for use as a seasoning; Chili sauce; Chinese noodles; Chinese rice noodles (bifun, uncooked); Chow mein noodles; Condiment, namely, oyster sauce; Condiment, namely, pepper sauce; Cooking sauces; Dipping sauces; Fish sauce; Garlic paste for use as a seasoning; Garlic-based sauces; Ginger paste for use as a seasoning; Grilling sauces; Hot sauce; Hot chili pepper sauce; Instant noodles; Instant chinese noodles; Organic curry sauces; Pad thai (Thai stir-fried noodles); Pepper paste for use as a seasoning; Ready-made sauces; Rice noodles; Salad sauces; Savory sauces used as condiments; Seasoned bean paste; Seasoning pastes; Soy sauce; Soy bean paste; Soya bean paste; Sriracha hot chili sauce; Teriyaki sauce
The registered marks are as follows:
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REG. NO. |
MARK |
GOODS |
1. |
4014921 |
CHEF’S CHOICE, and design |
Class 30: Ethnic Sauces, Glazes, Sweet and Sour Sauce, Salad Dressings, Mustard Dressing, Ginger Dressing, Vinegar, Red Wine Vinegar, Apple Cider Vinegar, Soy Sauce, Worcestershire Sauce, Marinades, Mustards |
2. |
4894395 |
CHEF'S CHOICE, and design |
Class 29: coconut cream; processed coconut; coconut jelly; canned fruits; canned vegetables; aloe vera prepared for human consumption; frozen fruits; frozen vegetables; fruit juice for cooking purposes
Class 30: Chinese noodles; rice noodles; rice vermicelli; spring roll wrappers Class 32: coconut milk; coconut juice; aloe vera drinks; fruit juices; coconut-based beverages not being milk substitutes |
3. |
3748763 |
CHEF'S CHOICE, and design |
Class 29: Cooking oils
Class 30: Pancake syrup, salad dressings, mayonnaise, mustard, sauces, vinegar, marinades |
4. |
5382532 |
CHEF'S CHOICE |
Class 30: Pasta |
5. |
4751650 |
CHEF'S CHOICE, and design |
Class 32: Coconut juice; Coconut milk; Coconut water; Coconut-based beverages not being milk substitutes |
6. |
5334439 |
CHEF'S CHOICE ORGANIC BLUE AGAVE SYRUP, and design |
Class 30: Organic agave syrup for use as a natural sweetener |
7. |
5320705 |
CHEF'S CHOICE PACIFIC OCEAN SEA SALT, and design |
Class 30: Sea salt for cooking |
8. |
3811318 |
CHEFS CHOICE SPICES |
Class 30: Spices |
9. |
4013502 |
EXECUTIVE CHEFS CHOICE |
Class 30: Dipping sauces; Ready-made sauces; Sauces |
10. |
3708443 |
CHEF'S CHOICE, and design |
Class 33: Cooking wine |
11. |
5514198 |
CHEF'S CHOICE PURE GRANULATED CANE SUGAR, and design |
Class 30: Granulated sugar |
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.
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); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); 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) (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).
Applicant's mark is “CHEF’S CHOICE” and the registrants’ marks are “CHEF’S CHOICE”, “CHEF’S CHOICE” and design, “CHEF'S CHOICE ORGANIC BLUE AGAVE SYRUP” and design, “CHEF'S CHOICE PACIFIC OCEAN SEA SALT, and design, “CHEFS CHOICE SPICES”, “EXECUTIVE CHEFS CHOICE”, “CHEF'S CHOICE PURE GRANULATED CANE SUGAR,” and design. Here, applicant has merely deleted matter from the registrants' marks to create its own mark. Although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of the registrants’ marks. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from these marks.
Therefore, the marks are confusingly similar.
Comparison of Goods
As Compared to Goods under 4894395 “CHEF'S CHOICE” and design, and 4751650 “CHEF'S CHOICE”, and design
When analyzing an applicant’s and registrants’ goods for similarity and relatedness, that determination is based on the description of the goods s 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) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
In this case, the goods in the application and registrations are identical. Specifically, both applicant and the registrants claim coconut milk, canned vegetables, and canned vegetables. Therefore, it is presumed that the channels of trade and class of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods are related.
As Compared to Goods under 4014921 “CHEF’S CHOICE” and design, 3748763 “CHEF'S CHOICE” and design, 3811318 “CHEFS CHOICE SPICES”, and 4013502 “EXECUTIVE CHEFS CHOICE”
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 registrations use broad wording to describe sauces, ethnic sauces, spices, which presumably encompass all goods of the type described, including applicant’s more narrow curry powder, curry sauce, curry spice mixture, chili paste for use as a seasoning, chili sauce, oyster sauce, pepper sauce, cooking sauces, dipping sauces, fish sauce, garlic-based sauces, ginger paste for use as a seasoning, grilling sauces, hot sauce, hot chili pepper sauce, organic curry sauces, ready-made sauces, salad sauces, savory sauces used as condiments, soy sauce, sriracha hot chili sauce, and teriyaki sauce. 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 the registrants’ 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)).
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 registrants’ goods are related.
As Compared to the Goods under 5382532 “CHEF'S CHOICE”, 5334439 “CHEF'S CHOICE ORGANIC BLUE AGAVE SYRUP” and design, 5320705 “CHEF'S CHOICE PACIFIC OCEAN SEA SALT” and design, 3708443 “CHEF'S CHOICE” and design, and 5514198 “CHEF'S CHOICE PURE GRANULATED CANE SUGAR” and design
Applicant's goods include processed vegetables and fruits, and noodles, and the registrants’ goods include pasta, cooking sea salt, cooking wine, organic agave syrup for use as a natural sweetener, and granulated sugar. Applicant's and the registrants' goods are related because the goods of the respective parties are of a type that are commonly provided by a single source under the same mark. See attached evidence from OJIO, Eden Foods, and Trader Joe’s showing goods such as processed vegetables and fruits, noodles, pasta, cooking sea salt, cooking wine, and organic agave syrup for use as a natural sweetener, and granulated sugar provided by a single source under the same mark. Therefore, consumers familiar with the registrants’ goods will also expect applicant's goods to be provided by the registrants.
Conclusion
The relatedness of the goods here, coupled with the highly similar marks at issue, requires registration of the applied-for mark to be refused under Section 2(d) of the Trademark Act.
Applicant should note the following additional ground for refusal which follows the advisory below.
PRIOR-FILED APPLICATIONS—ADVISORY
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.
SECTION 1 REFUSAL—OWNERSHIP REFUSAL
Registration is refused because applicant does not appear to have been the owner of the mark or entitled to use the mark as of the filing date of the application. Trademark Act Section 1, 15 U.S.C. §1051; see 37 C.F.R. §2.71(d); TMEP §1201.02(b). The application identifies the owner of the mark as “HC Foods Co., Ltd.”; however, the attached evidence from http://www.chefschoicefoods.com/index.html shows that the owner of the mark appears to be “Chef's Choice Foods Manufacturer Co., Ltd” located in Thailand. Notably, it appears that the applicant has submitted pictures identical to those featured on Chef's Choice Foods Manufacturer’s website as its own specimens of use.
The attached evidence from applicant's own website makes clear that applicant is “a local distributor… [that] has developed into one of the largest Asian foodstuff Importer/Distributor in California.” Note that a distributor, importer, or other distributing agent of the goods of a manufacturer or producer does not acquire a right of ownership in the manufacturer’s or producer’s mark merely because it moves the goods in trade. See In re Bee Pollen from Eng. Ltd., 219 USPQ 163 (TTAB 1983); Audioson Vertriebs - GmbH v. Kirksaeter Audiosonics, Inc., 196 USPQ 453 (TTAB 1977); Jean D’Albret v. Henkel-Khasana G.m.b.H., 185 USPQ 317 (TTAB 1975); In re Lettmann,183 USPQ 369 (TTAB 1974); Bakker v. Steel Nurse of America Inc., 176 USPQ 447 (TTAB 1972). A party that merely distributes goods bearing the mark of a manufacturer or producer is neither the owner nor a related-company user of the mark. See TMEP §1201.06(a).
An application must be filed by the party who owns or is entitled to use the mark as of the application filing date; otherwise, the application is void. 37 C.F.R. §2.71(d); see 15 U.S.C. §1051; Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 859 F.3d 1023, 1027, 123 USPQ2d 1024, 1027 (Fed. Cir. 2017) (citing Aycock Eng’g, Inc. v. Airflite, Inc., 560 F.3d 1350, 1357, 90 USPQ2d 1301, 1305 (Fed. Cir. 2009); Holiday Inn v. Holiday Inns, Inc., 534 F.2d 312, 319 n.6, 189 USPQ 630, 635 n.6 (C.C.P.A. 1976)). TMEP §§1201, 1201.02(b).
Applications filed in the name of the wrong party cannot be cured by amendment or assignment. See 37 C.F.R. §2.71(d); TMEP §803.06. Instead, the owner must file a new application.
Because applicant does not appear to have been the owner of the mark or entitled to use the mark as of the filing date of the application, the applied-for mark must be refused under Trademark Act Section 1.
INFORMATION REQUIRED REGARDING OWNERSHIP OF MARK
(1) Provide a statement that a parent and wholly owned subsidiary relationship exists between the distributor and manufacturer.
(2) Provide one of the following documents if applicant is a United States distributor, importer, or other distributing agent for a foreign manufacturer or producer:
(a) A copy of an assignment from the foreign owner to applicant of all rights in the mark in the United States together with the business and goodwill appurtenant thereto
(b) A written consent from the foreign owner to applicant’s registration of the mark in the United States
(c) A written agreement or acknowledgment between the parties that applicant owns the mark in the United States
TMEP §1201.06(a); see 37 C.F.R. §2.61(b); In re Pharmacia Inc., 2 USPQ2d 1883, 1883-84 (TTAB 1987); In re Geo. J. Ball, Inc., 153 USPQ 426, 427-28 (TTAB 1967); TMEP §1201.04.
Pending an adequate response to the above, registration is refused because applicant does not own the mark for which registration is sought. Trademark Act Section 1, 15 U.S.C. §1051; see TMEP §§1201, 1201.06(a).
Applicant should additionally note the advisory below.
PERSONS WHO MAY SIGN RESPONSES—ADVISORY
If an applicant is represented by an attorney authorized to practice before the USPTO, the attorney must sign the response. 37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01. The only attorneys who may sign responses and otherwise practice before the USPTO in trademark matters are (1) attorneys in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and U.S. commonwealths/territories; and (2) certain Canadian agents and/or attorneys. See 37 C.F.R. §§2.17(e), 11.14(a), (c); TMEP §602. If an applicant changes attorneys, the newly retained attorney may not sign responses until the applicant files a new power and/or revocation of attorney. See 37 C.F.R. §2.18(a)(7); TMEP §604.03.
NOTE: For entities set forth as CORPORATIONS, a corporate officer must sign. An officer is a person who holds an office established in the articles of incorporation or corporate bylaws. The usual titles for officers are President, Vice-President, Secretary, Treasurer, Chief Executive Officer, Chief Operating Officer, and Chief Financial Officer. In some organizations, the Treasurer is called a Comptroller or Controller, and these terms are acceptable. In Maine and Massachusetts the term "Clerk" identifies an officer of a corporation. See TMEP §611.06(d).
Applicant should additionally note the advisory below.
DOMESTIC PRO SE APPLICANT—ADVISORY
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
RESPONSE GUIDELINES. For this application to proceed, applicant must explicitly address each refusal and/or requirement 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. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
/Justine N. Burke/
Justine N. Burke
Trademark Examining Attorney
Law Office 121
571-270-1631
Justine.Burke@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.