Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  January 07, 2020

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on December 2, 2019.

 

In a previous Office action dated May 30, 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.

 

Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the refusal in the issue below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

ISSUE MADE FINAL that applicant must address:

• Section 2(d) Refusal – Likelihood of Confusion

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

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. 2665752 (MS).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

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.

 

Comparison of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

In this case, applicant’s mark features the stylized wording “MS.” Registrant’s mark is the composite mark featuring the stylized wording “MS” with design elements. Applicant’s mark is highly similar to registrant’s mark in appearance, sound, and connotation.

 

The literal elements in applicant’s and registrant’s marks are identical, i.e., they both feature the wording “MS.” Because the literal elements in the marks 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.

 

The only differences are with regard to the marks’ varying stylization and use of design elements, or lack thereof. However, these slight differences in appearance do not obviate the likelihood of confusion.

 

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.  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 identical wording “MS” is the dominant feature in both marks, and thus, accorded greater weight in determining the likelihood of confusion.

 

In addition, and as fully discussed below, 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.  In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).

 

Because the marks are highly similar, purchasers are likely to believe that the goods emanate from the same source. Therefore, the marks are confusingly similar, and the first prong of the likelihood of confusion test is met.

 

Comparison of the Goods

 

The second prong of the likelihood of confusion test is a comparison of applicant’s and registrant’s goods.

 

Applicant’s goods are:

• Class 1: Biotechnologically-formed genes for use in the manufacture of agricultural seeds.
• Class 31: Genetically-modified agricultural seeds for planting; genetically-modified agricultural seeds; genetically-modified agricultural seeds, namely, soybean seeds; genetically-modified crop seeds.

 

Registrant’s goods are:

• Class 31: Agricultural seed, namely, hybrid corn seed, alfalfa seed, forage seed, and turf seed.

 

The compared goods 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).

 

In this case, applicant’s biotechnologically-formed genes for use in manufacturing agricultural seeds and genetically-modified agricultural seeds are closely related to registrant’s agricultural seeds.

 

Evidence attached in the previous Office action, as well as additional attached evidence, consisting of webpages from seed manufacturers, establishes that the same entity commonly produces biotechnologically-formed genes for use in manufacturing agricultural seeds and various agricultural seeds, including genetically-modified agricultural seeds and hybrid seeds, and markets these goods under the same mark. The evidence also shows that these goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  Thus, applicant’s and registrant’s 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).

 

See:

 

-       Bayer: http://www.cropscience.bayer.com/innovations/seeds-traits, http://www.cropscience.bayer.com/innovations/seeds-traits/plant-breeding, and http://www.cropscience.bayer.com/innovations/seeds-traits/gmo-biotechnology (showing that Bayer produces biotechnologically-formed genes for use in manufacturing agricultural seeds and various agricultural seeds, including genetically-modified agricultural seeds).

-       KWS: http://www.kws.com/corp/en/products/, http://www.kws.com/corp/en/innovation/breeding-methods/genetic-engineering/, and http://www.kws.com/corp/en/innovation/breeding-methods/genetic-engineering/ (showing that KWS produces biotechnologically-formed genes for use in manufacturing agricultural seeds and various agricultural seeds, including genetically-modified agricultural seeds and hybrid seeds).

-       Limagrain: http://www.limagrain.com/en/seeds-seeds, http://www.limagrain.com/en/proposing-innovative-and-responsible-agri-food-solutions-proposing-innovative-and-responsible-agri-food-solutions, and http://www.limagrain.com/en/proposing-innovative-and-responsible-agri-food-solutions-proposing-innovative-and-responsible-agri-food-solutions (showing that Limagrain produces biotechnologically-formed genes for use in manufacturing agricultural seeds and various agricultural seeds, including genetically-modified agricultural seeds and hybrid seeds).

-       Pioneer: http://www.pioneer.com/us/about-us.html, http://www.pioneer.com/us, http://www.pioneer.com/us/products/corn.html, http://www.pioneer.com/us/products/soybeans.html, http://www.pioneer.com/us/products/corn/corn-seed-finder.html, and http://www.pioneer.com/us/products/soybeans/soybean-seed-finder.html (showing that Pioneer produces biotechnologically-formed genes for use in manufacturing agricultural seeds and various agricultural seeds, including genetically-modified agricultural seeds and hybrid seeds).

 

-       DuPont: http://duponttools.force.com/ppf?lang=en_US&country=USA&level0=Categories&level1=Seeds (showing that DuPont produces biotechnologically-formed genes for use in manufacturing agricultural seeds and various agricultural seeds, including genetically-modified agricultural seeds).

-       Monsanto: http://monsanto.com/products/seeds/, http://monsanto.com/company/, and http://monsanto.com/innovations/biotech-gmos/ (showing that Monsanto produces biotechnologically-formed genes for use in manufacturing agricultural seeds and various agricultural seeds, including genetically-modified agricultural seeds).

-       Syngenta: http://www.syngenta-us.com/seed, http://www.syngenta-us.com/about-us/default.aspx, and http://www.syngenta-us.com/biotechnology (showing that Syngenta produces biotechnologically-formed genes for use in manufacturing agricultural seeds and various agricultural seeds, including genetically-modified agricultural seeds).

 

Applicant has amended its identification of goods to specify that the goods are biotechnologically-formed genes and genetically-modified seeds, and applicant contends that consumers of the recited goods are sophisticated and would make researched, deliberate purchases. In addition, applicant argues that there is no evidence of actual confusion, thus registration of its applied-for mark should proceed. However, applicant’s amended identification of goods does not obviate the likelihood of confusion, and the examining attorney does not find applicant’s arguments to be persuasive.

 

With regard to applicant’s argument regarding sophisticated purchasers, the aforementioned evidence shows that purchasers are accustomed to encountering the goods of the applicant and registrant offered under the same mark. Therefore, purchasers are likely to believe the goods emanate from the same source. Furthermore, even if consumers of the compared goods could be considered sophisticated and discriminating, it is settled that “even sophisticated purchasers are not immune from source confusion, especially in cases such as the present one involving identical marks and related goods [and/or services].”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015) (citing In re Research & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); see also In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  The identity of the marks and the relatedness of the goods “outweigh any presumed sophisticated purchasing decision.”  In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014). 

 

In addition, applicant’s argument that there is no evidence of actual confusion does not obviate the likelihood of confusion. “‘[A] showing of actual confusion is not necessary to establish a likelihood of confusion.’”  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); TMEP §1207.01(d)(ii).  “[T]he relevant test is likelihood of confusion, not actual confusion.”  In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original).

 

Accordingly, the goods of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis, and the second prong of the test is met.

 

Conclusion

 

Because the marks are highly similar and the goods are closely related, there is a likelihood of purchaser confusion as to the source of the goods. Therefore, registration is refused under Section 2(d) of the Trademark Act and made FINAL. 15 U.S.C. §1052(d).

 

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).

 

 

/Matthew D. McClellan/

Trademark Examining Attorney, Law Office 121

Phone: (571) 272-5148

Matthew.McClellan@uspto.gov

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on January 07, 2020 for

U.S. Trademark Application Serial No. 88345516

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Matthew D. McClellan

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from January 07, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”