To: | GSW Creative Corporation (info@fleneriplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88359314 - CALM - 3T10427 |
Sent: | June 22, 2020 02:31:58 PM |
Sent As: | ecom104@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88359314
Mark: CALM
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Correspondence Address: 77 W WASHINGTON STREET, SUITE 800
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Applicant: GSW Creative Corporation
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Reference/Docket No. 3T10427
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: June 22, 2020
This application has been withdrawn from suspension following the abandonment of the potentially conflicting prior pending application. Applicant’s amendment to the identification of goods is accepted and has been made of record. Applicant’s arguments against the refusal have been carefully considered but were not found to be persuasive as to certain of applicant’s goods. Applicant must now respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Likelihood of Confusion Refusal - Specific Goods
Registration of the applied-for mark is refused as to the following goods because of a likelihood of confusion with the mark in U.S. Registration Nos. 5607289. “Nutraceuticals for use as a dietary supplement, not including beverages containing vitamin and mineral supplements; nutritional supplements in the form of
capsules, caplets, powder, chew, gummies, and gels; gummy vitamins”
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) aid in this determination. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56 USPQ2d 1471, 1474 (Fed. Cir. 2000)).
Comparison of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting 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). Similarity in any one of these elements may be sufficient to find the marks confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b).
Applicant’s mark is CALM. The mark in the cited registration is CALM. The marks are identical.
Comparison of the Goods
The goods of the parties 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) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).
The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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)); Gen. Mills Inc. v. Fage Dairy Processing Indus. SA, 100 USPQ2d 1584, 1597 (TTAB 2011); TMEP §1207.01(a)(i).
Applicant’s refused goods are “Nutraceuticals for use as a dietary supplement not including beverages containing vitamin and mineral supplements; nutritional supplements in the form of capsules, caplets, powder, chew, gummies, and gels; gummy vitamins” in Class 5.
Registrant’s goods are “Nutraceuticals, namely, vitamin and mineral supplement enhanced drinks; nutritional beverages, namely, vitamin and mineral supplement enhanced drinks; dietary supplemental drinks in the nature of vitamin and mineral beverages” in Class 5.
Applicant’s nutraceuticals and nutritional supplements and registrant’s nutraceuticals and vitamin and mineral supplements are overlapping and legally identical for purposes of determining likelihood of confusion. The fact that applicant’s nutraceuticals and nutritional supplements do not take the form of beverages does not obviate the relatedness of the goods, since all applicant’s refused goods are still nutraceuticals and dietary supplements in various forms. Applicant’s refused goods are used for the same purposes and sold to the same consumers through the same channels of trade as registrant’s goods, so the goods are closely related.
Attached are copies of Registration Nos. 5908470, 5823075, 5787853, 5957289, 6063509 and 6017213 from the USPTO’s X-Search database consisting of third-party marks registered for the same or similar goods as those of both applicant and registrant in this case. This evidence shows that nutritional supplements in the forms of beverages, capsules, caplets and gels, as well as gummy vitamins, may all emanate from a single source under a single mark. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).
Since the respective marks are identical and applicant’s goods and the goods in the cited registration are overlapping and otherwise closely related, purchasers of applicant’s goods may mistakenly assume that the goods come from registrant, or that registrant and applicant are somehow related. Accordingly, there is a likelihood of confusion and registration must be refused under Section 2(d) of the Trademark Act as to the following goods: “Nutraceuticals for use as a dietary supplement not including beverages containing vitamin and mineral supplements; nutritional supplements in the form of capsules, caplets, powder, chew, gummies, and gels; gummy vitamins”
(1) Deleting the goods and/or services to which the refusal pertains;
(2) Filing a Request to Divide Application form (form #3) to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward publication for opposition for those goods or services to which the refusal does not pertain. See 37 C.F.R. §2.87. See generally TMEP §§1110 et seq. (regarding the requirements for filing a request to divide). If applicant files a request to divide, then to avoid abandonment, applicant must also file a timely response to all outstanding issues in this Office action, including the refusal. 37 C.F.R. §2.87(e).
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. If applicant responds to the refusal, applicant must also respond to the requirements set forth below.
Identification of Goods
The wording in the identification of goods is indefinite and must be clarified because it identifies goods in more than one international class. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may substitute the following wording, if accurate:
“Essential oils, essential oils for food flavorings” in Class 3, and/or
“Nutraceuticals for use as a dietary supplement not including beverages containing vitamin and mineral supplements; nutritional supplements in the form of capsules, caplets, powder, chew, gummies, and gels; gummy vitamins; Prescription and non-prescription medicines, namely, pills, tablets, capsules, caplets, liquid drops, sachets and pharmaceutical preparations for the treatment of cancers, pain disorders, psychiatric disorders, nutritional deficiencies, and diseases of the skin, ear, nose, throat, cardiovascular, respiratory, metabolic, immune, central nervous, endocrine, glandular, musculoskeletal, digestive, excretory, and reproductive systems, all of the foregoing goods being lawful under state and federal law” in Class 5, and/or
“Candy; chocolate, chocolate confections, chocolate candies, chocolate bars, chocolate-based beverages; snack foods, namely, chocolate-based snack foods, chocolate-based meal replacement bars; gummy candies; food and beverage flavorings being non-essential oils” in Class 30
Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods may not later be reinserted. See TMEP §1402.07(e).
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.
Insufficient Fees
The application identifies goods and/or services that are classified in at least three classes; however, applicant submitted a fee(s) sufficient for only one class. In a multiple-class application, a fee for each class is required. 37 C.F.R. §2.86(a)(2), (b)(2); TMEP §§810.01, 1403.01. For more information about adding classes to an application, see the Multiple-class Application webpage.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
The fee for adding classes to a TEAS Standard application is $275 per class. See 37 C.F.R. §2.6(a)(1)(iii). For more information about adding classes to an application, see the Multiple-class Application webpage.
Questions
If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney. All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response. See 37 C.F.R. §2.191; TMEP §§304.01-.02, 709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal and requirements in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights. See TMEP §§705.02, 709.06.
How to respond. Click to file a response to this nonfinal Office action.
/John M. Wilke/
Attorney Examiner
Law Office 104
571-272-5871
john.wilke@uspto.gov
RESPONSE GUIDANCE