United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88330340
Mark: STEAM
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Correspondence Address: 1749 S NAPERVILLE RD SUITE 202
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Applicant: Nutrivo, LLC
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Reference/Docket No. 7356T0250US
Correspondence Email Address: |
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FINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: December 10, 2019
This Office action is in response to applicant’s communication filed on November 18, 2019.
In a previous Office action(s) dated May 16, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.
The trademark examining attorney maintains and now makes FINAL the refusal below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SECTION 2(d) REFUSAL—LIKELIHOOD OF CONFUSION
Applicant’s mark is “STEAM”, for use with, as amended:
Class 5: Dietary and nutritional supplements for sports nutrition and physical training
The registered mark is “STEAM”, for use with:
Class 3: Hair care preparations, hair styling products, hair conditioners and cosmetics
As discussed in the May 16, 2019 Office action, 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 the Marks
In the present case, applicant’s mark is “STEAM” and registrant’s mark is “STEAM”. 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.
Therefore, the marks are confusingly similar.
Comparison of the Goods
Applicant's goods are “dietary and nutritional supplements for sports nutrition and physical training,” as amended, and the registrant's goods are “hair care preparations, hair styling products, hair conditioners and cosmetics.”
In its November 18, 2019 response, applicant argues that the parties’ goods are dissimilar because applicant's goods are directed to those interested in sports and fitness, while the registrant's goods are not. The applicant supports its contentions by providing website screenshots of both its website and the registrant's website to indicate the parties’ goods are marketed towards different consumers. See applicant's response at Pages 9-10. The trademark examining attorney respectfully disagrees.
It is well-settled that determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, while applicant has amended its identification to indicate that its goods are for sports nutrition and physical training purposes, the registrant's identification of goods contains no such limitation. That is, the registrant's goods have no restrictions as to nature, type, channels of trade, or classes of purchasers and are presumed to travel in the same channels of trade to the same class of purchasers as the applicant's goods. Therefore, it is foreseeable that both applicant's and the registrant's goods will reach the same class of consumers.
Applicant's goods are, as amended, dietary and nutritional supplements for sports nutrition and physical training, and the registrant's goods are hair care preparations, hair styling products, hair conditioners and cosmetics. Applicant's and the registrant's 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 LifeExtension, NOW, Swanson, Piping Rock, Perricone MD, GNC, and Puritan’s Pride showing dietary and nutritional supplements for sports nutrition and physical training, hair care preparations, hair styling products, hair conditioners, and cosmetics provided by a single source under the same mark. Therefore, consumers familiar with the registrant's goods will also expect applicant's goods to be provided by the registrant.
Additional Considerations
Applicant additionally argues that its consumers exercise care in evaluating and selecting sports nutrition products and that the registrant's consumers are also likely to exercise great care in selecting hair care and cosmetic products. As such, applicant argues, the parties’ consumers are likely to exercise sufficient care so that confusion will not arise between applicant's and the registrant's goods. See applicant's response at Page 12. The trademark examining attorney respectfully disagrees.
The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163).
Conclusion
The relatedness of the goods here, coupled with the identical marks at issue, requires registration of the applied-for mark to be refused and made FINAL under Section 2(d) of the Trademark Act.
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Justine N. Burke/
Justine N. Burke
Trademark Examining Attorney
Law Office 121
571-270-1631
Justine.Burke@uspto.gov
RESPONSE GUIDANCE
