Response to Office Action

Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

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Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011)

OMB No. 0651-0050 (Exp 09/20/2020)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88327917 UNFORBIDDEN FRUIT(Standard Characters, see http://uspto.report/TM/88327917/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Trademark Applicant, The Giving Tree of Denver (hereinafter “Applicant”), respectfully requests reconsideration of its trademark application for the UNFORBIDDEN FRUIT word mark in response to the Examining Attorney’s Office Action dated May 20, 2019.

The Examining Attorney refused publication of Applicant’s UNFORBIDDEN FRUIT trademark in connection with “dried fruit mixes; dried fruit-based snacks; dried fruits” in International Class 29 pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the grounds that Applicant’s mark is similar to prior registrations,  namely the FORBIDDEN FRUIT NYC trademark, Reg. No. 4439500 owned by Fazle Abbas Devjiyani,  in connection with “retail store services featuring fruit dipped in chocolate, food products and other confectionary products” in International Class 35, and the FORBIDDEN FRUIT ORCHARDS trademark, Reg. No. 4758294 owned by Sandy Newman,  in connection with “online, retail, and wholesale store services featuring fresh produce, fruit jam, fruit syrup, honey, sorbet, apple sauce, tea and wine” in International Class 35, to the extent  consumers are likely to be confused, mistaken or deceived as to the commercial source of the goods and/or services of the parties (collectively, hereinafter “the Registrants” or “the Registered Marks”).  Specifically, the Examining Attorney refused registration because: (1) “the [A]pplicant’s mark is substantially similar in appearance, sound, and commercial impression to the registered mark[s]” due to its incorporation of the FORBIDDEN FRUIT phrase which is the dominant feature of respective trademarks, and (2) Applicant’s and Registrants’ goods and services are related due to the fact that it is common in Applicant’s industry for the Applicant’s goods and the Registrants’ services to be offered together by the same entity or in the same trade channels. 

Applicant submits that, for the reasons stated below, Applicant’s UNFORBIDDEN FRUIT trademark is not likely to cause confusion as to the origin of Applicant’s goods with the services associated with either of the Registered Marks.  Therefore, Applicant’s mark should proceed to publication.

FACTS

I.                FORBIDDEN FRUIT has a Widely-known and Commonly Understood Meaning That Suggests a Quality or Characteristic of the Associated Goods and Services

The phrase “forbidden fruit” which is incorporated in the Applicant’s trademark and the Registered Marks has a long-understood meaning.  Originating from the biblical story in the Book of Genesis which involved a tempting and dangerous, but delicious apple in the Garden of Eden, the phrase “forbidden fruit” is commonly understood to mean “something very nice that you want very much but are not allowed to have” or “an immoral or illegal pleasure (e.g., For dieters, dessert becomes a forbidden fruit)”.  Attached hereto as Exhibits “A,” “B” and “C” are printouts from the dictionary definitions for the phrase from the Vocabulary.com website, and the Macmillan Dictionary.com and Merriam-Webster.com webpages.  Applicant submits that the “forbidden fruit” phrase is often used as a metaphor to suggest or describe the subject to which it refers.  Indeed, Applicant submits that there are eight registered trademarks that incorporate the “forbidden fruit” phrase and the owners of those trademarks appear to have selected and used the phrase for its suggestive meaning.  Attached hereto as Exhibit “D” are copies of the Certificates of Registration for each of these “forbidden fruit” trademarks excluding the Registered Marks.  In addition, there are numerous businesses incorporating the “forbidden fruit” phrase in their names in connection with selling goods similar to those sold by the owners of the Registered Marks, including fruit, wine, jam, cider, and other fruit-derived products.  Examples of products or retail outlets incorporating the phrase FORBIDDEN FRUIT include St. Julian Winery & Distillery’s “Forbidden Fruit” Cider (http://www.stjulian.com/store/cider) and “Forbidden Fruit” Sangria (http://www.meijer.com/shop/en/beer-wine-spirits/wine/red-wine/st-julian-forbidden-fruit-sangria-750-ml/p/8858708750); Friend in Cheeses Jam Co.’s “Forbidden Fruit” Marmalade (http://www.friendincheeses.com/jams/forbidden-fruit-marmalade); “Forbidden Fruit” Orchard’s “sinfully delicious” peaches, nectarines, cherries, and apricots in Paradise, Montana (http://www.forbiddenfruitorchard.com/); Pazdar Winery’s Forbidden Fruit Spiced Apple Wine (http://www.pazdarwinerycom/index.php?main_page=product_info&products_id=20); The Natural Confectionery Co.’s “Forbidden Fruit” gummies (http://www.amazon.com/Natural-Confectionery-Forbidden-Fruits-240g/dp/B07J2583WW).  All of these trademarks appear to use or incorporate the “forbidden fruit” phrase to connote or suggest a good or service that is “dangerously tempting” and “sinfully good.” 

 Unlike these trademark owners, Applicant’s addition of the “Un” prefix to create its UNFORBIDDEN FRUIT trademark not only visually distinguishes its trademark from the others but also changes the meaning of the phrase, thus, creating a distinct commercial impression.   The addition of the “Un” prefix meaning “not,” adds a “negative or opposite force in adjectives and their derivative adverbs and nouns.” Attached hereto as Exhibit “E” is a printout from Dictionary.com 2002 defining the “Un” prefix and its effect on the meaning of its adjacent terms.  Applicant’s “Unforbidden Fruit” term suggests that its goods are not off-limits, fall within the bounds of propriety, and can be consumed without hesitation or restraint.  The different, and opposite meaning created by the prefix alone, distinguishes Applicant’s trademark from the Registered Mark and other uses of the term.

 II.             UNFORBIDDEN is an Uncommon Mark, as There Are No Other Registrations or Pending Applications for Trademarks Incorporating the Word “UNFORBIDDEN”

 Although the “forbidden fruit” phrase is widely used and incorporated in trademarks, Applicant’s UNFORBIDDEN FRUIT trademark appears to be distinctive due to its unique sound, appearance, and relatively rare use as a trademark. According to the USPTO’s trademark database, there are no other marks that incorporate the term UNFORBIDDEN FRUIT.  In fact, there do not appear to be any other trademarks (pending or registered) that incorporate the term “unforbidden.”  Applicant submits that few, if any, parties have used or incorporated the term due to its specific meaning and uncommon usage.    

 III.           The Registered Marks Co-exist Even Though They Share the Sommon Element “Forbidden Fruit” and are Used in Connection With Related Goods and Services

 The USPTO registered the FORBIDDEN FRUIT NYC trademark on November 26, 2013 for use in connection with “retail store services featuring fruit dipped in chocolate, food products and other confectionary products” in International Class 35, and the FORBIDDEN FRUIT ORCHARDS trademark for “online, retail, and wholesale store services featuring fresh produce, fruit jam, fruit syrup, honey, sorbet, apple sauce, tea and wine” in International Class 35 on June 23, 2015.  The elements “NYC” and “ORCHARDS”, respectively, were disclaimed allowing both marks to register for similar retails services featuring similar products.  By removing the “disclaimed” and “descriptive” portions of their respective trademarks, the Registered Marks are essentially identical, and are used and registered in connection with highly similar services.  Since these two trademarks can co-exist, it follows that minor differences between the trademarks are sufficiently understood by consumers to eliminate any likelihood of confusion as to the source of the retail services associated with the respective trademarks.  If “NYC” and “ORCHARDS” are sufficient to distinguish two otherwise identical trademarks used in connection with similar services, then the “Un” used by Applicant would be more than sufficient to diminish any likelihood of confusion between and among Applicant’s trademark and the Registered Marks, especially since Applicant’s trademark is not used in connection with the  services associated with the Registered Marks.  

 Applicant hereby submits that: (1) its UNFORBIDDEN FRUIT trademark has a distinct appearance, sound, connotation and commercial impression from the cited FORBIDDEN FRUIT trademark registrations; (2) UNFORBIDDEN FRUIT is a unique and uncommon mark; (3) FORBIDDEN FRUIT has a widely-known meaning rendering it “highly suggestive” and subject to a narrow scope of protection; and (4) the level of care and sophistication exercised by today’s consumers with respect to the food they consume collectively diminishes any likelihood of consumer confusion or harm to the Registrants. 

 ARGUMENT

 Applicant respectfully disagrees with the Examining Attorney’s finding of a likelihood of confusion between Applicant’s UNFORBIDDEN FRUIT mark (hereinafter, “Applicant’s Mark”) and the FORBIDDEN FRUIT NYC mark or the FORBIDDEN FRUIT ORCHARDS mark (hereinafter, the “Registered Marks”).  In evaluating whether a mark is barred from registration by Section 2(d) of the Trademark Act, multiple factors are examined, including, but not limited to: “the similarity of the marks in their entireties as to appearance, sound, connotation and commercial impression; the similarity and nature of the goods related to the mark; and the conditions under which, and buyers to whom, sales are made.”  In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (C.C.P.A. 1973).  Even if the marks contain “common features” and the goods and channels of trade are similar, an analysis of “likelihood of confusion depends on the overall impression of the marks.” In re Electrolyte Laboratories Inc., 929 F.2d 645, 647, 16 U.S.P.Q. 2d (BNA) 1239 (Fed. Cir. 1990).  While the marks in the instant case contain a common feature, namely the incorporation of a common phrase the Applicant’s trademark is distinguishable from the other FORBIDDEN FRUIT marks in sight, sound, and meaning and, as a result of those differences, creates a different commercial impression in the minds of consumers.  Furthermore, as established below, trademarks incorporating the widely known “forbidden fruit” phrase deserve only a narrow scope of protection because the phrase is“highly suggestive” of a quality or characteristic of the services provided by and associated with the Registered Marks.  Finally, the relative sophistication of the potential consumers involved in the selection of the goods and services also ensures that there will be no confusion among consumers as to the respective sources of Applicant’s goods and the Registrants’ services. Since consumer confusion is not likely, Applicant’s Mark should proceed to publication.

 I.                UNFORBIDDEN FRUIT is Visually Distinct from FORBIDDEN FRUIT NYC and FORBIDDEN FRUIT ORCHARDS, and Conveys a Different Meaning and Commercial Impression

When comparing marks to ascertain whether there is a likelihood of confusion, each mark should be examined in its entirety, and not in a fragmented manner.

[M]arks must be considered in the way they are perceived by the relevant public, in determining likelihood of confusion.  Although it is helpful to the decision maker to analyze marks by separating them into their component words or design elements in order to ascertain which aspects are more or less dominant, such analysis must not contravene law and reason.  When it is the entirety of the marks that is perceived by the public, it is the entirety of the marks that must be compared.  Opryland USA Inc. v. The Great American Music Show, Inc., 970 F.2d 847, 851 (C.A.F.C. 1992).

            Viewed in their entirety, Applicant’s UNFORBIDDEN FRUIT mark and the Registered Marks, namely FORBIDDEN FRUIT NYC and FORBIDDEN FRUIT ORCHARDS, are distinct in sight, sound, meaning, and commercial impression.

A.    Distinct Sight & Sound of UNFORBIDDEN FRUIT

Although Applicant’s mark and the Registered marks share the common phrase “forbidden fruit”, Applicant’s UNFORBIDDEN FRUIT mark includes the distinguishing UN- prefix which significantly alters the appearance, beginning sound, and meaning of the mark.  The UN- prefix in Applicant’s mark is significant because consumers are generally more inclined to focus on the first word, prefix or syllable in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F. 3d 1369, 1373 (Fed. Cir. 2005); see also Mattel Inc. v. Funline Merch. Co., 81 USPQ2d 1372, 1374-75 (TTAB 2006); Presto Prods., Inc. v. NicePak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions). Moreover, the fact that there are no registered marks incorporating the term UNFORBIDDEN renders Applicant’s Mark unique and distinctive such that consumers are likely to take pause to consider it and interpret its intended meaning upon encountering it in the marketplace.

B.    Distinct Meaning of UNFORBIDDEN FRUIT

As set forth above, the phrase “forbidden fruit” is not merely a shared element of the Registered Marks and Applicant’s Mark, but a commonly used phrase with a well-known meaning.  It is this well-known meaning that is conjured up in the minds of consumers when they encounter it in association with goods and services in the marketplace.  Although Applicant’s UNFORBIDDEN FRUIT mark incorporates the “forbidden fruit” phrase, the Un- prefix in Applicant’s Mark immediately and completely transforms its meaning to the exact opposite of the commonly understood meaning of “forbidden fruit”Whereas the “forbidden fruit” phrase in the Registered Marks (FORBIDDEN FRUIT NYC and FORBIDDEN FRUIT ORCHARDS) suggest that the associated retail services feature goods that are dangerously delicious, sinfully good, an immoral indulgence, Applicant’s UNFORBIDDEN FRUIT mark suggests the exact opposite – that its goods are not off-limits, can be consumed without hesitation or restraint, are lawful and within the bounds of propriety.  Consumers, being otherwise familiar with the meaning of “forbidden fruit”, will take pause to consider the meaning of UNFORBIDDEN FRUIT and why a product would bear such a name when encountering it in the marketplace.  Not only do Applicant’s Mark and the Registered Mark sound and look different, they have completely opposite meanings that are unlikely to be overlooked by consumers due to the fact that the distinguishing feature appears at the beginning of Applicant’s word mark.

C.    Distinct Commercial Impression of UNFORBIDDEN FRUIT

Applicant’s UNFORBIDDEN FRUIT mark makes a unique and distinct commercial impression on consumers by utilizing the well-known “forbidden fruit” phrase for its opposite and less commnly-used meaning.  By adding the Un- prefix to this otherwise common phrase, Applicant’s mark alerts consumers that its product is something different from all other FORBIDDEN FRUIT products.  A consumer who encounters a product or service containing the “forbidden fruit” phrase is likely to associate the commonly known meaning of that phrase with the product they are buying or the service they are receiving.  In this case, the commercial impression of Registrants’ Marks is that the Registrants’ FORBIDDEN FRUIT retail services for fruits and fruit-derived products are so delicious that consuming them rises to the level of an immoral indulgence because they are dangerously good, and one cannot resist the temptation to consume them.  In light of the consumer association with the commonly known meaning of “forbidden fruit”, it would be unlikely and illogical for the Registrants to utilize or associate their businesses with the term “unforbidden fruit” because such a name would necessarily imply that this other good or service was something less tempting, less delicious, less indulgent.  For the same reason, a consumer is unlikely to believe that the source of a good bearing the mark UNFORBIDDEN FRUIT is a retail store or website bearing the mark FORBIDDEN FRUIT.  The distinct appearance and meaning of Applicant’s Mark sets it apart from the Registered Marks both visually and in terms of the commercial impression it conveys thus eliminating any possible likelihood of confusion.

Applicant acknowledges the Examining Attorney’s finding that Applicant’s goods and Registrants’ services are related because it is common in the industry for these goods and services to be offered together by the same entity or in the same trade channels, but respectfully disagrees with the impact of this finding.  Applicant respectfully submits that regardless of whether the goods associated with Applicant’s mark and the services associated with the Registrants’ marks are found to be related, the fact that the marks evoke very different meanings in the minds of the relevant consumers should outweigh this DuPont factor. See Champagne Louis Roederer, S.A. v. Delicato Vineyards, 148 F.3d 1373, 1375 (Fed. Cir., 1998) (holding that there was no likelihood of confusion between the marks CRISTAL and CRYSTAL CREEK even though they were associated with the same goods and traveled in the same channels of trade, because the two marks created a different commercial impression in the minds of consumers).

Because Applicant’s unique UNFORBIDDEN FRUIT trademark is visually distinct from the Registered Marks, conveys the opposite meaning of “forbidden fruit”; and creates a different commercial impression in the minds of consumers, Applicant submits that consumers will be able to distinguish Applicant’s goods from the services associated with the Registered Marks, and, therefore, unlikely to be confused.

II.              The Registered Marks and Dictionary Definitions Establish the Widely-Known Meaning of “Forbidden Fruit” and Support a Finding That FORBIDDEN FRUIT is a “Highly Suggestive” Mark Deserving a Narrow Scope of Protection

Where the FORBIDDEN FRUIT phrase is an element of a trademark, it appears to be suggestive of a quality or characteristic of the goods or services with which it is associated.  With respect to suggestive marks such as FORBIDDEN FRUIT, courts have held that the scope of protection is necessarily narrow, and that confusion is not likely to result from the mere use of two marks carrying the same suggestion as to the use of closely similar goods.  See Drackett Co. v. H. Kohnstamm & Co., 404 F.2d 1399, 1400 (CCPA 1969); see also Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, (Fed. Cir., 2015) (remanded to the TTAB for failure to adequately assess the strength or weakness of the PEACE & LOVE mark used in association with restaurant services before refusing registration of applied-for PEACE LOVE AND JUICE mark for use in association with juice bar services).  Moreover, “Third party registrations are relevant to prove that some segment of the composite marks which both contesting parties use has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.” 2 McCarthy on Trademarks and Unfair Competition § 11:90 (4th ed., 2015); see Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917 (CCPA 1976).

The USPTO appears to have recognized the well-known meaning of the “forbidden fruit” phrase by registering multiple marks containing the common element – FORBIDDEN FRUIT – for related goods and services.  In cases such as this, courts have held that the inclusion of the common element in each mark, for the same or closely related goods, may be an insufficient basis upon which to predicate a holding of confusing similarity. American Hospital Supply Corp. v. Air Products and Chemicals, Inc., 194 USPQ 340, 343 (TTAB 1977); In re Edward Roth, S.N. 75/374,375 (February 23, 2001) (holding that third party registrations established that the term “Big Daddy” was a widely recognized nickname, and served as an important factor in the Board’s determination that Applicant’s mark ED BIG DADDY ROTH & design for certain clothing items was not confusingly similar to the registered mark BIG DADDY’s & design for similar clothing items). 

The Registered Marks cited in the Office Action are a case-in-point example of the Trademark Office’s recognition of the well-known meaning of the “forbidden fruit” phrase, and its ultimate determination that this common element should not bar registration on grounds of confusing similarity.  Specifically, the Trademark Office granted registration to FORBIDDEN FRUIT NYC and FORBIDDEN FRUIT ORCHARDS, both containing the common feature “forbidden fruit” for use in connection with related services (i.e., International Class 35 retail services featuring fruit and fruit-derived products) based, presumably, upon the fact that the remaining portions of the marks “NYC” and “ORCHARDS” were sufficient to distinguish the marks as a whole. Both “NYC” and “ORCHARDS” are disclaimed portions of the Registered Marks, yet they suffice to distinguish the marks and avoid a likelihood of confusion finding.  In assessing the similarity of marks, the disclaimed parts of a mark are relevant to the assessment because confusion is evaluated from the perspective of the purchasing public, which is not aware that certain words or phrases have been disclaimed.  See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1340 (Fed. Cir., 2015) citing to Shen Mfg. Co. v. Ritz Hotel, Ltd., 393 F.3d 1238, 1243 (Fed. Cir., 2004) and In re Nat’l Data Corp., 753 F.2d 1056, 1059 (Fed.Cir.1985).  It, therefore, follows that adding “UN” – a prefix that immediately and completely modifies a word to hold its opposite meaning – to the beginning of the phrase “forbidden fruit” should also suffice to distinguish UNFORBIDDEN FRUIT from the Registered Marks and avoid being found confusingly similar to those marks.  Thus, although the “forbidden fruit” phrase is a common element in Applicant’s Mark and the Registered Marks, it is a suggestive and weak element of the marks deserving only narrow protection. 

Distinguishable from the instant case involving the suggestive “forbidden fruit” mark is each of the cases cited in the Office Action in support of the proposition that the addition of a significant element to a mark does not obviate similarity or overcome a likelihood of confusion where all of a registered mark is incorporated into the applied-for mark.  Each of those cases is distinguishable from the instant case because they all involved strong marks that are deserving of a broad scope of protection.  See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022 (Fed. Cir., 1977) (finding CONCEPT to be an arbitrary mark for hair care products, and refusing registration of CALIFORNIA CONCEPT for overlapping goods); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 557 (CCPA 1975) (finding BENGAL to be an arbitrary mark for gin, and refusing registration of BENGAL LANCER for related goods, nonalcoholic mixers); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding the term BARR has no meaning or connotation other than that of a surname; finding no evidence to suggest it is deserving of a narrow scope of protection; and refusing registration of BARR GROUP.); and, In re Mr. Recipe, LLC, 118 USPQ2d 1084 (TTAB 2016)(finding the famous JAWS trademark entitled to a broad scope of protection under section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b), and refusing registration of JAWS DEVOUR YOUR HUNGER). Thus, unlike the cases cited in the Office Action, the addition of the UN- prefix to the suggestive “forbidden fruit” mark is sufficient to obviate similarity and overcome a likelihood of confusion.  

The Registrants should only receive protection from marks which directly threaten to diminish Registrants’ rights.  Applicant submits that in light of the narrow scope of protection owed to the highly suggestive FORBIDDEN FRUIT mark, Applicant’s Mark can incorporate FORBIDDEN FRUIT without violating the Registrants’ rights or creating a likelihood of confusion for consumers.

III.           Co-Existence of FORBIDDEN FRUIT NYC and FORBIDDEN FRUIT ORCHARDS Indicates Consumers Recognize Small Differences in Marks Containing the Phrase “Forbidden Fruit”

The Registered Marks, namely FORBIDDEN FRUIT NYC and FORBIDDEN FRUIT ORCHARDS, and other similar trademarks have co-existed on the trademark registry since at least as early as January 2015 when the USPTO granted registration to FORBIDDEN FRUIT ORCHARDS based, presumably, on a finding that there was no likelihood of confusion between the two “FORBIDDEN FRUIT” trademarks.   It follows that the co-existence of the Registered Marks would compel a determination that other “FORBIDDEN FRUIT” trademarks can also co-exist. “Evidence of third-party use of similar marks can ‘show that customers ... ‘have been educated to distinguish between different ... marks on the basis of minute distinctions.’” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1339 (Fed. Cir., 2015) quoting 2 McCarthy on Trademarks and Unfair Competition § 11:88 (4th ed. 2015) (citations omitted).  If the inclusion of the disclaimed “NYC” and “ORCHARDS” are adequate to dispel a likelihood of confusion determination among the Registered Marks, then the “Un” prefix in Applicant’s trademark is more than a “minute distinction” and should also be found to obviate any likelihood of confusion.  Applicant therefore submits that since both Registered Marks use the term “forbidden fruit” and, presumably, the USPTO and the respective owners of the Registered Marks found no likelihood of confusion between them, consumers are able to distinguish between two or more trademarks that contain the identical phrase “forbidden fruit” for related goods and services.  This common element shared by the three trademarks at issue should not stand in the way of Applicant’s registration.

IV.           Consumers of Food Products and Services are Careful in Their Selection of Food Products Thereby Rendering Confusion with the Registered Marks Unlikely

The level of sophistication of the “buyers” or consumers of the goods or services offered is another factor to consider in determining likelihood of confusion under Section 2(d). DuPont, 476 F.2d at 1361.  The courts have consistently distinguished between those goods and services to which an average, “unsophisticated” consumer does not devote any significant care and consideration in purchasing, and those goods and services to which more care and consideration is invested.  In making such a distinction, the courts have held that where the goods and services require more care and consideration to be invested prior to the purchasing decision or where the goods and services are of the type that attract more “sophisticated” consumers (those who invest more care and consideration in their purchasing decisions) there is less likelihood of confusion.  In the case of food products, Applicant submits that the transaction to be analyzed is the selection of the products, and that in our newly emerging food culture consumers are becoming more selective and aware of the food products they consume.  See Exhibits “F” and “G”, Hans Taparia and Pamela Koch, “A Seismic Shift in How People Eat”, New York Times, 11/06/2015, and Scott Mowbray, “The Rise of the New Food Culture”, HuffPost.com, 12/10/2012 9:50 a.m. ET.  Applicant submits that the selection of a food product should not be considered an impulse decision because any item a consumer ingests could impact the health and well-being of the consumer.  In today’s evolving food culture, consumers are more keenly aware of the impact food has on their health whether they seek to avoid gluten, sugar, red meat, or dairy, or to consume more vegetables and whole grains.  Since consumers are selective and scrutinizing about the foods they consume out of concern for their own health and well-being, as well as the health and well-being of the environment, it is unlikely that such consumers would overlook the distinctly different names and commercial impression of Applicant’s products and mistakenly believe that the Registrants’ retail services featuring locally-grown fruits and fruit-derived products, and chocolate-dipped fruits, respectively, are associated with one another.

CONCLUSION

As detailed above, the distinction between the sight, sound, meaning, and commercial impression of the Applicant’s and Registrants’ Marks, taken together with the sophistication of the consumers of food products, demonstrate that the Applicant’s use of its trademark does not, and will not, directly impact the owners of the Registered Marks.  As such, the Registered Marks should not preclude Applicant’s trademark from proceeding to registration.  For the foregoing reasons, Applicant submits that its application appears to be in condition for acceptance, and early notice of publication is requested.

EVIDENCE
Evidence in the nature of Exhibit A - printout of Internet website; Exhibit B - printout of Internet website, Exhibit C - printout of Internet website, Exhibit D - Certificates of Registration; Exhibit E - printout of Internet website, Exhibit F - printout of Internet website, Exhibit G - printout of Internet website has been attached.
Original PDF file:
evi_9916784145-20191120151924663289_._Exhibit_A_-_Forbidden_Fruit_definition_-_Vocabulary.pdf
Converted PDF file(s) ( 2 pages)
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Original PDF file:
evi_9916784145-20191120151924663289_._Exhibit_B_-_Forbidden_Fruit__phrase__Macmillan_Dictionary.pdf
Converted PDF file(s) ( 2 pages)
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Original PDF file:
evi_9916784145-20191120151924663289_._Exhibit_C_-_Forbidden_Fruit_definition_-_Merriam-Webster.pdf
Converted PDF file(s) ( 9 pages)
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Original PDF file:
evi_9916784145-20191120151924663289_._Exhibit_D_-_FORBIDDEN_FRUIT_-_Trademark_Registrations.pdf
Converted PDF file(s) ( 11 pages)
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Original PDF file:
evi_9916784145-20191120151924663289_._Exhibit_E_-_Un_Dictionary.com_definition.pdf
Converted PDF file(s) ( 6 pages)
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Original PDF file:
evi_9916784145-20191120151924663289_._New_York_Times_-_Opinion_-_A_Seismic_Shift_in_How_People_Eat.pdf
Converted PDF file(s) ( 5 pages)
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Original PDF file:
evi_9916784145-20191120151924663289_._Exhbit_G_-_HuffPost_-_The_Rise_of_the_New_Food_Culture.pdf
Converted PDF file(s) ( 7 pages)
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The applicant's current attorney information: Jason Zedeck. Jason Zedeck of LAW OFFICE OF JASON ZEDECK, is located at

      PO BOX 35210
      LOS ANGELES, California 90035-0210
      US

The phone number is 310-849-0336.

The email address is jason@zedecklaw.com

The applicants proposed attorney information: Jason Zedeck. Jason Zedeck of LAW OFFICE OF JASON ZEDECK, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      PO BOX 35210
      LOS ANGELES, California 90035-0210
      United States

The phone number is 310-849-0336.

The email address is jason@zedecklaw.com

Jason Zedeck submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: JASON ZEDECK. JASON ZEDECK of LAW OFFICE OF JASON ZEDECK, is located at

      PO BOX 35210
      LOS ANGELES, California 90035-0210
      US

The phone number is 310-849-0336.

The email address is jason@zedecklaw.com

The applicants proposed correspondence information: Jason Zedeck. Jason Zedeck of LAW OFFICE OF JASON ZEDECK, is located at

      PO BOX 35210
      LOS ANGELES, California 90035-0210
      United States

The phone number is 310-849-0336.

The email address is jason@zedecklaw.com

SIGNATURE(S)
Response Signature
Signature: /jasonpzedeck/     Date: 11/20/2019
Signatory's Name: Jason Zedeck
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 3108490336

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    JASON ZEDECK
   LAW OFFICE OF JASON ZEDECK
   
   PO BOX 35210
   LOS ANGELES, California 90035-0210
Mailing Address:    Jason Zedeck
   LAW OFFICE OF JASON ZEDECK
   PO BOX 35210
   LOS ANGELES, California 90035-0210
        
Serial Number: 88327917
Internet Transmission Date: Wed Nov 20 18:21:17 EST 2019
TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201911201821176
66400-88327917-7007fa4526c4ef1998281fff4
67e11757f5c83f5efd4cb76628ff8d1e1f5e4b4f
2-N/A-N/A-20191120180309443111