UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

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: 5/23/2019

 

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.

 

I.         SEARCH OF THE OFFICE RECORDS

 

Application Refused--Section 2(d) Refusal—Likelihood of Confusion as to International Classes 003, 030 and 034

The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d) because the applicant’s applied-for mark when used on or in connection with the goods identified in International Classes 003, 030 and 034 so resembles the marks in U.S. Registration Nos. 3475793, 5551679 and 4329326 as to be likely to cause confusion, to cause mistake, or deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  Please see the enclosed registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s).  See 15 U.S.C. §1052(d).  Determining likelihood of confusion is made 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).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  Furthermore, the relevant du Pont factors are not necessarily “of equal weight in a given case, and any one of the factors may control a particular case.” Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011) (quoting In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003).

 

The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].”  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)); see TMEP §1207.01.  In this case, the examining attorney finds the following du Pont factors are most relevant: the similarity of the marks, the similarity and nature of the goods and/or services, and the similarity of the trade channels for these goods and/or services.  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.

 

The applicant’s proposed mark is TASTE; the registered marks are TASTE, ITASTE (and design) and A TASTE.

 

Comparison of the Proposed Mark to the Cited TASTE and A TASTE Registrations as to International Class 030

Comparison of the Respective Marks

In a likelihood of confusion determination, the examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973); TMEP §1207.01(b).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB (1988); In re Mack, 197 USPQ 755 (TTAB 1977); see TMEP §§1207.01(b).

 

The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The issue is whether the marks create the same overall impression. See Racot, Inc. v. M.C. Becton, 214 F.2d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed Cir. 2000); Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

The examining attorney refuses registration of the proposed mark TASTE on the grounds that it will cause a likelihood of confusion with the registered marks TASTE and A TASTE.  In this case, the applicant’s proposed mark so resembles the registered marks so as to render confusion as to source likely.  Indeed, the respective TASTE marks are identical and the only difference between the proposed mark and the cited A TASTE registration.  Not only have the courts consistently and repeatedly found that similarity in sound alone is sufficient to support a finding of likelihood of confusion, but also, that slight differences in the sound of similar marks will not avoid a finding of likelihood of confusion. See e.g., RE/MAX of Am., Inc., v. Realty Mart, Inc. 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); In re Energy Telecommunications & Electrical Association, 222 USPQ 350 (TTAB 1983). TMEP §1207.01(b)(iv).  In sum, the examining attorney finds that applicant’s proposed mark so resembles the registered marks in relation to sound, appearance, and meaning that confusion as to source is likely.

 

Comparison of the Respective Goods

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).  It is well settled that the compared products and/or services 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).

 

If the marks of the respective parties are identical or highly similar, the relationship between the goods of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks. In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).  In addition, the Office must also consider any goods in the registrant’s normal fields of expansion in order to determine whether the registrant’s goods are related to the applicant’s identified goods or services for purposes of analysis under Section 2(d).  In re General Motors Corp., 196 USPQ 574 (TTAB 1977).  The test is whether purchasers would believe the product is within the registrant’s logical zone of expansion.  CPG Prods. Corp. v. Perceptual Play, Inc., 221 USPQ 88 (TTAB 1983); TMEP §1207.01(a)(v).

 

The examining attorney refuses registration of the mark TASTE because the channels of trade in which the applicant’s goods travel are similar to those used by the registrants.  The applicant’s relevant goods are identified as “baked goods infused with herbs, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act”.  The goods named in Registration No. 3475793 (TASTE) comprise “baked goods, namely, bread, cakes, biscuits, cookies, pastries, chocolate covered nuts, corn chips, crackers, pasta salad, deli sandwiches, coffee, tea, spices, salad dressing and sauces excluding applesauce and cranberry sauce”.  The goods named in Registration No. 5551679 (A TASTE) comprise “Cake pops; Cakes; Cakes filled with filling or frosting of any kind; Cakes of sugar-bounded millet or popped rice (okoshi); Biscuits, tarts, cakes made with cereals; Chocolate cakes; Cup cakes; Eccles cakes; Fruit cakes; Funnel cakes; Iced cakes; Moon cakes; Petits fours; Pounded rice cakes (mochi); Rice cakes; Snack cakes; Sponge cakes; Vegan cakes”. 

 

When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods stated 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)). 

 

Absent restrictions in an application or registration, the identified goods are presumed “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)).  In this case, the identifications set forth in the application and registration have no restrictions as to their nature, type, channel of trade or class of purchasers.  Therefore, it is presumed that these goods travel in the same channels of trade to the same class of purchasers.

 

In addition, it is noted that unrestricted and broad identifications are presumed to encompass all goods of the type described.  See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)).  In this case, the applicant uses broad wording (baked goods infused with herbs) in its identification of goods.  Therefore, the case law requires that the Office presume this broad wording encompasses all kinds of baked goods infused with herbs—including the bread, cakes, biscuits, cookies, pastries, cake pops, cupcakes and tarts specifically identified in the more narrow identifications contained in the cited registrations. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).  Accordingly, the examining attorney must find the respective bakery products are highly related, if not identical, found in the same channels of trade and marketed to the same consumers.  As such, they are considered related for purposes of likelihood of confusion analysis.

 

In sum, given the similarity between the respective marks when viewed in light of the noted relatedness between the respective goods and the similarity between the channels of trade for these goods, it is likely that consumers will be confused as to the ultimate source of these products and associate the applicant’s proposed mark with the registered marks.  Accordingly, the examining attorney refuses registration of the applicant’s proposed mark pursuant to Section 2(d) of the Trademark Act as to International Class 030 ONLY.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Comparison of the Proposed Mark to the Cited ITASTE Registration as to International Classes 003 and 034

Comparison of the Respective Marks

When making a similarity comparison for purposes of Section 2(d) analysis, the marks must be viewed in their entireties.  See TMEP §1207.01(b).  Nevertheless, marks may be confusingly similar in appearance where there are similar terms or phrases or similar parts of terms or phrases appearing in both applicant’s and registrant’s mark.  See e.g., Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689 (TTAB 1986), aff’d 1 USPQ2d 1813 (Fed. Cir. 1987) (COMMCASH and COMMUNICASH); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (21 CLUB and “21” CLUB (stylized)); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM and CONFIRMCELLS); In re Collegian Sportswear Inc., 224 USPQ 174 (TTAB 1984) (COLLEGIAN OF CALIFORNIA and COLLEGIENNE); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983) (MILTRON and MILLTRONICS); In re BASF A.G., 189 USPQ 424 (TTAB 1975) (LUTEXAL and LUTEX); TMEP §1207.01(b)(ii)-(iii).  In this case, the applicant’s proposed mark is similar to ITASTE portion of the cited registration.

 

The examining attorney refuses registration of the mark TASTE on the grounds that it will cause a likelihood of confusion with the registered mark ITASTE because a significant portion of the applicant’s proposed mark has a highly similar sound, appearance, and meaning as that of the registered mark.  Similarity in sound alone has been found sufficient to support a finding of likelihood of confusion.  RE/MAX of Am., Inc., v. Realty Mart, Inc. 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963). TMEP §1207.01(b)(iv). 

 

The letter I and the design element appearing in the cited ITASTE registration does not alter this determination.  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, the 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.  Furthermore, 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 and/or services.  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)).  In this case the word portions of the respective marks are nearly identical in appearance, sound, connotation, and commercial impression; therefore, the inclusion of a design element does not obviate the similarity between these marks.  See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).

 

This is especially true considering, (as more fully explained below) that the respective goods are deemed to be highly related, if not identical, found in the same channels of trade, and marketed to the same consumers.  The courts have consistently and repeatedly found that where the goods of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods.  See, In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b). Accordingly, the examining attorney finds that the applicant’s proposed mark so resembles the registered mark that confusion as to source is likely.

 

Comparison of the Respective Goods

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).  It is well settled that the compared products and/or services 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).

 

The examining attorney refuses registration of the mark TASTE because the channels of trade in which the applicant’s goods travel are similar to those used by the registrant.  The applicant’s relevant goods are identified as:

Electronic cigarette liquid (e-liquid) comprised of essential oils, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; and

 

Smokers' articles, namely, cigarette rolling papers, matches, and lighters, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Cigarettes filled with smokable substances, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Rolling paper filled with smokable substances, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Hollowed-out cigars filled with smokable substances, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Herbs for smoking, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Electronic cigarette refill cartridges sold empty, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Cartridges sold filled with vegetable glycerin for electronic cigarettes, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Electronic cigarettes, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Vape pens, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Smoking vaporizers for use with herbal and oil concentrates, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act.

 

The goods named in the registration comprise “Ashtrays for smokers; Cigarette cases; Cigarette filters; Cigarettes; Electronic cigarettes; Filter tips; Lighters for smokers; Matches; Tobacco; Tobacco pipes”.  The respective goods are likely to be purchased by consumers at tobacco and cigarette stores.

 

When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods stated 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)). 

 

Absent restrictions in an application or registration, the identified goods are presumed “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)).  In this case, the identifications set forth in the application and registration have no restrictions as to their nature, type, channel of trade or class of purchasers.  Therefore, it is presumed that these goods travel in the same channels of trade to the same class of purchasers.

 

In addition, it is noted that unrestricted and broad identifications are presumed to encompass all goods of the type described.  See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)).  In this case, the registrant uses broad wording (cigarettes, electronic cigarettes) in its identification of goods.  Therefore, the case law requires that the Office presume this broad wording encompasses all kinds of cigarettes, electronic cigarettes—including the cigarettes filled with smokable substances, the rolling paper filled with smokable substances, the hollowed-out cigars filled with smokable substances, the electronic cigarettes, the vape pens, and the smoking vaporizers for use with herbal and oil concentrates specifically listed in the applicant’s more narrow identification. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).  Likewise, the applicant also uses broad wording (matches and lighters) in its identification of goods.  Therefore, the case law requires that this broad wording encompasses all kinds of matches and lighters—including the lighters for smokers and matches specifically identified in the registrant’s more narrow identification. Id.  Accordingly, the examining attorney must find the respective electronic cigarettes, matches, cigarettes and lighters are highly related, if not identical, found in the same channels of trade and marketed to the same consumers.  As such, they are considered related for purposes of likelihood of confusion analysis.

 

In addition, the applicant’s electronic cigarette liquid (e-liquid) comprised of essential oils as well as the electronic cigarette refill cartridges sold empty, the cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes, and the cartridges sold filled with vegetable glycerin for electronic cigarettes are related to, and designed to be used with, the electronic cigarettes listed in the cited registration. Where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks.  See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease). 

 

As evidence that consumers are accustomed to a single source identifier in relation to these products, the examining attorney encloses eight (8) separate trademark registrations in which the same mark is used in relation to electronic cigarettes, filled and unfilled cartridges used with electronic cigarettes and electronic cigarette liquid flavorings.  These printouts have probative value to the extent that they serve to suggest that the identified products are of a kind that may emanate from a single source.  In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001), citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 at n.6 (TTAB 1988).  As additional evidence establishing that these goods are found in the same channels of trade, marketed to the same consumers, and commonly produced by the same entity under the same mark, the examining attorney refers to the attached webpages of JUUL[1] showing such use.  Evidence obtained from the Internet may be used to support a determination under Section 2(d) that 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); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009). 

 

In light of this evidence and the required presumptions under the relevant case law, the examining attorney must find that the respective smoking goods are related in that they are consistently found in the same channels of trade and marketed to, or encountered by, the same consumers under a single mark—a situation that would necessarily give rise to a mistaken belief by consumers that these goods come from a common source, when in fact, they do not.  As such, the respective goods are considered related for purposes of likelihood of confusion analysis.

 

In sum, given the similarity between the respective marks when viewed in light of the relatedness between the respective smoking goods as well as the similarity between the channels of trade for such goods, it is likely that consumers will be confused as to the ultimate source of these products and associate the registered mark with the applicant’s proposed mark.  Accordingly, the examining attorney refuses registration of the applicant’s proposed mark pursuant to Section 2(d) of the Trademark Act as to International Classes 003 and 034 ONLY.

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.

 

Prior Pending Application as to International Classes 003 and 034

During the search of the Office’s records, the examining attorney also discovered a potentially conflicting mark in a prior-flied pending application that may present a bar to registration of the applicant’s proposed mark.

 

Information regarding U.S. Application Serial No. 88140630 is enclosed. The actual or effective filing date of referenced application precedes the applicant’s filing date. (See attached referenced application.) If the mark in the referenced application registers, the applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the respective marks. See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of the applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, the applicant may present arguments in support of registration by addressing the issue of the potential conflict between the applicant’s mark and the mark in the referenced application. The applicant’s election not to submit arguments at this time in no way limits the applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

II.        STATUTORY REFUSAL

 

Application Refused--Sections 1 and 45—Illegal Goods in Application

Registration is refused because applicant does not have a bona fide intent to lawfully use the applied-for mark in commerce.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; see TMEP §907.  This refusal issues when “(1) a violation of federal law is indicated by the application [record] or other evidence, such as when a court or a federal agency responsible for overseeing activity in which the applicant is involved, and which activity is relevant to its application, has issued a finding of noncompliance under the relevant statute or regulation, or (2) when the applicant’s application-[related] activities involve a per se violation of a federal law.”  In re PharmaCann LLC, 123 USPQ2d 1122, 1123 (TTAB 2017) (quoting In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016)); TMEP §907.

 

To qualify for a federal registration, the use of a mark must be lawful.  Gray v. Daffy Dan’s Bargaintown, 823 F.2d 522, 526, 3 USPQ2d 1306, 1308 (Fed. Cir. 1987); In re PharmaCann LLC, 123 USPQ2d at 1123-24.  If the goods or services with which a mark is intended to be used are prohibited by law, the applicant can neither use its mark in lawful commerce nor have the requisite bona fide intent to use the mark in lawful commerce.  In re PharmaCann LLC, 123 USPQ2d at 1124.

 

In this case, the items or activities with which the mark will be used will involve a per se violation of federal law.  Specifically, federal law prohibits the use of cannabis and cannabis-derived products, including cannabidiol (CBD) in foods or dietary supplements.  Under the Federal Food Drug and Cosmetic Act, 21 U.S.C. §§301 et seq., the use in foods or dietary supplements of a drug or substance undergoing clinical investigations without approval of the U.S. Food and Drug Administration (FDA) violates the FDCA. 21 U.S.C. §331(ll); see also 21 U.S.C. §321(ff) (indicating that a dietary supplement is deemed to be a food within the meaning of the FDCA).  The Office notes that the Agriculture Improvement Act of 2018, Pub. L. 115-334 (the 2018 Farm Bill), explicitly preserved the FDA’s authority to regulate products containing cannabis or cannabis-derived compounds under the FDCA.  Cannabidiol is an active ingredient in FDA-approved drugs and is a substance undergoing clinical investigations. See FDA Regulation of Cannabis and Cannabis-Derived Products: Questions and Answers, available at http://www.fda.gov/newsevents/publichealthfocus/ucm421168.htm#whatare, last accessed April 23, 2019.  Therefore applications for foods, beverages, dietary supplements, or pet treats containing cannabis and cannabis-derived products, including cannabidiol are unlawful under the FDCA, even if derived from hemp, as such goods may not be introduced lawfully into interstate commerce. 21 U.S.C. §331(ll).

 

In this case, the application identifies the following goods herbs, herb extracts, herbal concentrates, medicinal oils, baked goods, and essential oils.  In view of the law cited above, these goods are not in lawful use because even if they were made from goods having a delta-9 tetrahydrocannabinol (THC) concentration of not more than 0.3 percent on a dry weight basis, and thus legal under the 2018 Farm Bill, such foods and dietary supplements are still illegal under the FDCA because it prohibits all foods and/or dietary supplements from containing cannabis or cannabis-derived compounds, including cannabidiol in any amount. Accordingly, because applicant’s goods consist of or include items or activities that are a per se violation of federal law, applicant cannot have a bona fide intent to lawfully use the applied-for mark in commerce in connection with such goods.

 

III.      INFORMALITIES

 

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issue(s):

 

Application Refused—Applicant Improperly Identified the Goods and/or Services

The applicant has provided this Office with the following identification:

 

Essential oils, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Electronic cigarette liquid (e-liquid) comprised of essential oils, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act, in International Class 003;

 

Medicinal herbs in dried or preserved form, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Medicinal herb extracts, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Herbs for medicinal purposes, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Medicinal oils, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Medicinal herbal concentrates, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act, in International Class 005;

 

Dried herbs, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Raw herbs, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Processed herbs, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Baked goods infused with herbs, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act, in International Class 030; and

 

Smokers' articles, namely, cigarette rolling papers, matches, and lighters, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Cigarettes filled with smokable substances, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Rolling paper filled with smokable substances, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Hollowed-out cigars filled with smokable substances, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Herbs for smoking, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Electronic cigarette refill cartridges sold empty, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Cartridges sold filled with vegetable glycerin for electronic cigarettes, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Electronic cigarettes, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Vape pens, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act; Smoking vaporizers for use with herbal and oil concentrates, all the foregoing not including any goods which are noncompliant with the federal Controlled Substances Act, in International Class 034.

 

The current identification needs clarification because it could include goods classified in other international classes. See TMEP §§1402.01, 1402.03.  Specifically, the proper classification of the applicant’s herbs, depends on their nature.  For example, dried herbs for decorative wreaths and sachets as well as raw herbs are both properly classified in International Class 031, not International Class 030.

 

Accordingly, as more fully detailed below, the applicant must (1) add one or more International Class(es) to the application, and reclassify the goods therein, or (2) delete the goods from the application.  See 37 C.F.R. §§2.86, 6.1; TMEP §§1403 et seq.  If the applicant adds one or more International Classes to the application, the applicant must comply with the multiple-class requirements specified in this Office action.

 

In addition, the wording in the recitation of goods is unacceptable as indefinite and must be clarified. TMEP §1402.01.  Based on the applicant’s description, the examining attorney cannot determine the kind, type or nature of the essential oils, the kind, type or nature of the medicinal herb concentrates, the kind, type or nature of the smoking products and smoking articles.  The language the applicant used fails to adequately describe these products such that the average person would readily understand what the goods are.

 

The applicant must amend the recitation to specify the common, ordinary commercial name of the goods.  If there is no common commercial name for the products, the applicant must adequately describe the nature of the goods, using wording that would be generally understood by the average person.  See Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954); Schenley Indus., Inc. v. Battistoni, 112 USPQ 485, 486 (Comm’r Pats. 1957); TMEP §1402.01.  In such a case, the applicant should describe the nature of the goods and their main purpose, as well as indicate the channel of trade, intended consumer and intended use(s). 

 

The applicant may amend the identification to substitute the following wording, if accurate:

 

Proposed identification for International Class 003:

 

Essential oils for ______________ [applicant must indicate the specific use, e.g., for personal use, for use in the manufacture of scented products, for flavoring beverages, for food flavorings, for flavoring tobacco] all the foregoing not containing any delta-9 tetrahydrocannabinol (THC) concentration; Electronic cigarette liquid (e-liquid) comprised of essential oils none of which contain any delta-9 tetrahydrocannabinol (THC) concentration.

 

Proposed identification for International Class 005:

 

Medicinal herbs in dried or preserved form not having any delta-9 tetrahydrocannabinol (THC) concentration; Medicinal herbal extracts not having any delta-9 tetrahydrocannabinol (THC) concentration; Herbs for medicinal purposes not having any delta-9 tetrahydrocannabinol (THC) concentration; Medicinal oils, not having any delta-9 tetrahydrocannabinol (THC) concentration; Medicinal herbal concentrates, namely, ____________ [applicant must identify the good using its common commercial name e.g. Medicinal herbal extracts for medical purposes, Medicinal herb extracts, none of the forgoing having any delta-9 tetrahydrocannabinol (THC) concentration].

 

Proposed identification for International Class 030:

 

Dried herbs and Processed herbs not having any delta-9 tetrahydrocannabinol (THC) concentration; Baked goods infused with herbs, namely, ____________ [applicant must identify the good using its common commercial name e.g. Bakery desserts, Muffins, Banana Bread, Cupcakes] none of foregoing having any delta-9 tetrahydrocannabinol (THC) concentration or being made from ingredients having  any delta-9 tetrahydrocannabinol (THC) concentration.

 

Proposed identification for International Class 031:

 

Raw herbs not having any delta-9 tetrahydrocannabinol (THC) concentration; Dried herbs for decorative wreaths and sachets not having any delta-9 tetrahydrocannabinol (THC) concentration.

 

Proposed identification for International Class 034:

 

Smokers' articles, namely, cigarette rolling papers, matches, and lighters for smokers none of foregoing having any delta-9 tetrahydrocannabinol (THC) concentration or being made from ingredients having  any delta-9 tetrahydrocannabinol (THC) concentration; Cigarettes filled with smokable substances not having any delta-9 tetrahydrocannabinol (THC) concentration or being made from ingredients having any delta-9 tetrahydrocannabinol (THC) concentration; Rolling paper filled with smokable substances, not having any delta-9 tetrahydrocannabinol (THC) concentration or being made from ingredients having any delta-9 tetrahydrocannabinol (THC) concentration; Hollowed-out cigars filled with smokable substances, not having any delta-9 tetrahydrocannabinol (THC) concentration or being made from ingredients having any delta-9 tetrahydrocannabinol (THC) concentration; Herbs for smoking, not having any delta-9 tetrahydrocannabinol (THC) concentration or being made from ingredients having any delta-9 tetrahydrocannabinol (THC) concentration; Electronic cigarette refill cartridges sold empty; Cartridges sold filled with chemical flavorings in liquid form for electronic cigarettes not having any delta-9 tetrahydrocannabinol (THC) concentration or being made from ingredients having any delta-9 tetrahydrocannabinol (THC) concentration; Cartridges sold filled with vegetable glycerin for electronic cigarettes not having any delta-9 tetrahydrocannabinol (THC) concentration or being made from ingredients having any delta-9 tetrahydrocannabinol (THC) concentration; Electronic cigarettes; Vape pens, namely, ____________ [applicant must identify the good using its common commercial name e.g. Smokeless cigarette vaporizer pipe, Oral vaporizers for smoking purposes] not having any delta-9 tetrahydrocannabinol (THC) concentration or being made from ingredients having any delta-9 tetrahydrocannabinol (THC) concentration; Smoking vaporizers for use with herbal and oil concentrates, namely, ____________ [applicant must identify the good using its common commercial name e.g. Smokeless cigarette vaporizer pipe, Oral vaporizers for smoking purposes] not having any delta-9 tetrahydrocannabinol (THC) concentration or being made from ingredients having any delta-9 tetrahydrocannabinol (THC) concentration.

 

PLEASE NOTE:  General Guidelines Regarding the Scope of Acceptable Identification Amendments

The applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  The applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).

 

The applicant may not substitute different goods and/or services or add goods and/or services not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods and/or services establishes the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods and/or services will further limit scope, and once goods and/or services are deleted, they are not permitted to be reinserted.  TMEP §1402.07(e).  Therefore, the applicant may not subsequently amend the identification to include any product or service that is not within the scope of the goods and/or services originally set forth in the application or a previously accepted identification amendment thereto.

 

Online Identification Reference Provided by the USPTO

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.

 

Requirements for a Multiple-Class Application

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)       List the goods and/or services 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 fee(s) already paid (view the USPTO’s current fee schedule).  The application identifies goods and/or services that are classified in at least five (5) international classes; however, applicant submitted a fee(s) sufficient for only four (4) international 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.

 

Applicant’s Response

There is no required format or form for responding to an Office action.  For this application to proceed further, the applicant must explicitly address each refusal and/or requirement raised in this Office action.  If the action includes a refusal, the applicant may provide arguments and/or evidence as to why the refusal should be withdrawn and the mark should register.  The applicant may also have other options specified in this Office action for responding to a refusal and should consider those options carefully.  To respond to requirements and certain refusal response options, the applicant should set forth in writing the required changes or statements.  For more information and general tips on responding to USPTO Office actions, response options, and how to file a response online, Please see “Responding to Office Actions” and the informational video “Response to Office Action” on the USPTO’s website.

 

If the applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register.  See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02.  Additionally, the USPTO will not refund the application filing fee, which is a required processing fee.  See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.

 

When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status.  See 37 C.F.R. §2.66; TMEP §1714.  The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee.  See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1)

 

Responses to Office actions must be properly signed.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01.  If an applicant is not represented by an attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a). 

 

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.

 

If an applicant is initially represented by an attorney, and then later retains another attorney from a different firm, 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.

 

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.  If the applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.

 

If the applicant or its appointed attorney has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.

 

/Michael Tanner/

Michael Tanner

Trademark Attorney

Law Office 119

Telephone: 571-272-9706

Email: Michael.Tanner@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.