To: | HC Foods Co., Ltd. (tim@hcfoods.net) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88316683 - LUCKY - N/A |
Sent: | 5/9/2019 10:37:21 AM |
Sent As: | ECOM121@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 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88316683
MARK: LUCKY
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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: 5/9/2019
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 Application—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
Applicant’s mark is “LUCKY” for use with:
Class 30: Fish sauce
The registered marks are as follows:
|
REG. NO. |
MARK |
GOODS |
1. |
5400524 |
LUCKY |
Class 30: Spices; Curry powder; Masala powder and spices |
2. |
4434733 |
SO LUCKY BRAND |
Class 30: Rice and rice-based foods, namely, rice sticks, rice noodles, and rice cakes; Noodles |
3. |
4157266 |
L.A. LUCKY BRAND and design |
Class 29: Broth; Canned beans; Canned fish; Canned fruits; Canned vegetables; Fermented bamboo shoots boiled and preserved in salt (menma); Preserved vegetables; Processed mushrooms; Soup pastes |
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 as Compared to the LUCKY mark
In the present case, applicant’s mark is “LUCKY” and registrant’s mark is “LUCKY”. 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.
While the registrant's mark is presented in stylized form, note that a mark in typed or standard characters may be displayed in any lettering style; the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the word portion could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Therefore, the marks are confusingly similar.
Applicant's Mark as Compared to the SO LUCKY BRAND and L.A. LUCKY BRAND and design marks
Applicant's mark is “LUCKY” and the registrants' marks are “SO LUCKY BRAND” and “L.A. LUCKY BRAND” and design. Here, applicant has merely deleted wording and/or design elements from the registrants’ marks to create its own. 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. 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 mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Therefore, the marks are confusingly similar.
Comparison of Goods
Applicant's goods are fish sauce, and the registrants’ goods are, among others, spices, noodles, and soup pastes. 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 Thai Kitchen, Red Boat Fish Sauce, Blue Dragon, and BLiS showing fish sauce, spices, noodles, and soup pastes 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 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 APPLICATION
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 mark in the referenced application. 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 www.amazon.com shows that the owner of the mark appears to be “Thai O Charos Co. Ltd.” located in Thailand.
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.