To: | SUPERVALU LICENSING LLC (dockmpls@merchantgould.com) |
Subject: | U.S. Trademark Application Serial No. 88369419 - FOODLAND FRESH FRIENDLY EVERYDAY - 8442.751US01 |
Sent: | January 15, 2020 07:54:15 PM |
Sent As: | ecom106@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88369419
Mark: FOODLAND FRESH FRIENDLY EVERYDAY
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Correspondence Address:
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Applicant: SUPERVALU LICENSING LLC
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Reference/Docket No. 8442.751US01
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: January 15, 2020
SECTION 2(d) – FINAL REFUSAL
Unity of control is presumed in instances where, absent contradictory evidence, one party owns (1) all of another entity, or (2) substantially all of another entity and asserts control over the activities of that other entity. See TMEP §1201.07(b)(i)-(ii). Such ownership is established, for example, when one party owns all or substantially all of the stock of another or when one party is a wholly owned subsidiary of another. See In re Wella A.G., 5 USPQ2d at 1361; TMEP §1201.07(b)(i)-(ii). It is additionally presumed when, absent contradictory evidence, applicant is shown in USPTO records as a joint owner of the cited registration, or the owner of the registration is listed as a joint owner of the application, and applicant submits a written statement asserting control over the use of the mark by virtue of joint ownership. TMEP §1201.07(b)(ii).
However, in most other situations, additional evidence is required to show unity of control. For example, if the parties are sister corporations or if the parties share certain stockholders, directors or officers in common, as applicant has indicated in the present application, additional evidence must be provided to show how the parties constitute a single source. See In re Pharmacia, Inc., 2 USPQ2d 1883, 1884 (TTAB 1987); TMEP §1201.07(b)(iii).
Therefore, applicant must provide a written statement explaining the nature of the legal relationship between the parties. In addition, if neither party owns all or substantially all of the other party, and USPTO records do not show their joint ownership of the application or cited registration, applicant must provide a detailed written explanation and documentary evidence showing the parties’ “unity of control” over the nature and quality of the goods and/or services in connection with which the trademarks and/or service marks are used, and the parties’ “unity of control” over the use of the trademarks and/or service marks. See TMEP §1201.07(b)(i)-(iii). This statement and, if necessary, explanation must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20. TMEP §1201.07(b)(ii)-(iii); see 37 C.F.R. §2.193(e)(1). However, if one party owns all of the other entity, and there is no contradictory evidence of record, the written statement need not be verified. TMEP §1201.07(b)(i).
As applicant has provided no other arguments, the refusal to register under Trademark Act Section 2(d), as set forth below, is continued and made final.
Refusal of registration of the applied-for mark is made final because of a likelihood of confusion with the marks in U.S. Registration Nos. 0326832; 0614558; 1031616 and 2021557. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See registrations attached to previous Office action.
Applicant has applied to register the mark FOODLAND FRESH FRIENDLY EVERYDAY for “Retail grocery store services.”
The registrant owns the marks FOODLAND for “coffee, evaporated milk, tomato catsup, canned fruits and vegetables,” FOODLAND for “canned foods-namely, fruits, vegetables, deciduous and citrus fruit juices, vegetable juices, baked beans with pork, sauerkraut, mushrooms, mixed vegetables, fruit preserves, jams, jellies; cane and maple syrup; cranberry sauce; apple sauce; honey; mayonnaise; peanut butter; pickles; sweet pickle relish; spaghetti sauce; prepared mustard; meat sauces; olives; salad dressing; tomato catsup; tomato sauce; moist cocoanut; pancake flour; egg noodles; tea; tea bags; vinegar; oleomargarine; evaporated milk; table salt; coffee; eggs; beef,” FOODLAND for “canned soups,” and FOODLAND for “processed foods; namely, mayonnaise, olive oil, chicken broth, instant soup and dip mixes, powdered instant mashed potatoes flakes, non-dairy coffee creamer, tomato paste, tomato puree, catsup, whole peeled tomatoes, sliced stewed tomatoes, canned and bottled banana mild peppers and banana hot peppers, packaged food combinations consisting of uncooked macaroni and cheese dinners in a box; salad dressing, hot sauce, soy sauce, tomato sauce, tamales, croutons, seasoned and unseasoned bread crumbs, processed microwave popcorn in a package.”
With respect to the first step in the likelihood of confusion analysis, the first term in the applied-for mark is identical to the registered marks. Therefore, the marks are confusingly similar.
With respect to the second step in the likelihood of confusion analysis, applicant provides grocery store services, and the registrant provides products that are commonly sold at grocery stores. Thus the goods and services are related.
Where the goods and/or services 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 and/or services. 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).
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Proper Response to Final Office Action
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:
(1) A request for reconsideration that fully resolves all outstanding requirements and refusals; and/or
(2) An appeal to the Trademark Trial and Appeal Board with the required filing fees.
TMEP §715.01; see 37 C.F.R. §2.63(b)(1)-(2).
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).
/David Elton/
Trademark Examining Attorney
Law Office 106
571-272-9317
david.elton@uspto.gov
RESPONSE GUIDANCE