To: | Dr. Schär AG (clarissa@richardlawgroup.com) |
Subject: | U.S. Trademark Application Serial No. 88334503 - CERES - TAYL-0031 |
Sent: | December 22, 2019 10:55:31 AM |
Sent As: | ecom115@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88334503
Mark: CERES
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Correspondence Address:
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Applicant: Dr. Schär AG
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Reference/Docket No. TAYL-0031
Correspondence Email Address: |
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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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: December 22, 2019
This Office action is in response to applicant’s communication filed on November 25, 2019.
In its response, applicant provided an amended identification of goods, which is accepted. Accordingly, that requirement is deemed satisfied.
Applicant also provided consent agreements in response to the examining attorney’s refusals pursuant to Section 2(d) of the Trademark Act.
Upon consideration of applicant’s response, the examining attorney withdraws his refusal with respect to Registration Nos. 5143223, 5367127, 4971345 and 4810495.
However, for the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 4611132. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
Refusal – Likelihood of Confusion
THIS PARTIAL REFUSAL APPLIES TO CLASS 5 ONLY
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4611132. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
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 and/or services. 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.
Similarity of Marks
Applicant has applied for CERES for Dietary foodstuffs adapted for medical use, namely, edible oils and fats; food for babies; nutritional supplements and food supplements for human beings, excluding herbal and homeopathic preparations.
The registered mark is CERESMART for Dietary supplements; Liquid vitamin supplements; Nutritional supplements in the form of Capsules, Tablets, Shots, Drinkable Ampoules and Powder.; Vitamin tablets.
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v).
Also, although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
In its response, applicant included a prior consent agreement between the parties. However, that agreement was with respect to Application Serial No. 86186079 not the current application. Indeed, the scope of the Agreement appears limited to the particular “CERES Application” (namely, Application Serial No. 86186079). Because the language of the consent agreement does not expressly contemplate/anticipate application to future marks or applications, the terms of the 2015 agreement included by applicant cannot be applied to the current application; accordingly, a separate, current agreement must be submitted which applies to the current applicaton.
Here, applicant has merely deleted the term “SMART” from the registered mark.
Otherwise, the marks feature the same dominant, initial term, namely, CERES.
Therefore, the marks are confusingly similar.
Similarity of Goods
Thus, applicant’s and registrant’s goods are related.
Because the marks are so highly similar and the goods are so closely related, there is a likelihood that purchasers would confuse the sources of the goods or believe they stemmed from a single source. Accordingly, registration is properly refused under Section 2(d) of the Trademark Act due to a likelihood of confusion.
Advisory – Partial Abandonment
In such case, the application will proceed for the following class: Class 29.
Marc J. Leipzig
/Marc J. Leipzig/
Law Office 115
Trademark Examining Attorney
Phone: (571) 272-2104
marc.leipzig2@uspto.gov
RESPONSE GUIDANCE