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:  September 23, 2019

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on September 4, 2019.

 

In a previous Office action dated June 24, 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. In addition, applicant was required to satisfy the following requirement: amend the identification of goods.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: definite amended identification provided.  See TMEP §§713.02, 714.04. 

 

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. 4785308.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4785308.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the previously attached registration.

 

Applicant’s proposed mark is SLATE for use with “Beverages consisting principally of milk; Beverages having a milk base; Chocolate milk; Dairy products excluding ice cream, namely flavored milk; Dairy-based beverages; Milk; Milk beverages with high milk content; Milk shakes; Milk-based beverages with chocolate; Vanilla milk” in International Class 29.

 

Registrant’s mark is GREEN SLATE CLEANSE for use with “Fruit drinks and fruit juices; Fruit juices; Prepared entrees consisting of fruit drinks and fruit juices, fruit-based beverages, non-alcoholic beverages containing fruit juices, non-alcoholic fruit extracts used in the preparation of beverages, non-alcoholic fruit juice beverages, vegetable juices, vegetable-fruit juices and smoothies; Smoothies; Vegetable drinks; Vegetable juice; Vegetable juices; Vegetable-fruit juices in International Class 32.

 

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 and/or services 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 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.

 

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 is the standard character mark SLATE. Registrant’s mark is the standard character mark GREEN SLATE CLEANSE. Applicant’s mark is highly similar to registrant’s mark in commercial impression.

 

The respective marks contain the identical term “SLATE”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression.  See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). In this case, the marks are identical in part.

 

Applicant’s mark, SLATE, is likely to perceived as a shorted form of registrant’s mark, GREEN SLATE CLEANSE. 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 the identical wording “SLATE” in the registered mark and does not contain any additional wording that would distinguish it from that mark. Thus, the respective marks are likely to evoke a similar commercial impression.

 

For the reasons mentioned above, when consumers encounter the parties’ goods using marks with these similarities, they are likely to be confused as to the source of the goods. Therefore, the marks are confusingly similar.

 

Comparison of the Goods

 

The compared goods and/or services 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 goods are closely related to registrant’s goods because the same entity commonly provides various types of beverages under the same mark such as milk based beverages, smoothies, and juice type beverages, and thus purchasers are likely to believe that the goods emanate from the same source.

 

The attached Internet evidence, consisting of screenshots from Lala, Stoneyfield, Oakhurst Dairy, Kemps, Borden, Byrne Dairy, Prairie Farms, Hiland Dairy Foods, Umpqua Dairy, and United Dairy, establishes that the same entity commonly manufactures the relevant goods, markets the goods under the same mark, and the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. For example, the attached evidence shows that dairy farms commonly offer milk based beverages and fruit juice beverages under the same mark. 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:

 

·         http://www.lalafoods.com/english/products/ (smoothies)

·         http://www.lalafoods.com/english/products/milk/#close (milk and flavored milk)

·         http://www.stonyfield.com/products/smoothies (smoothies)

·         http://www.stonyfield.com/products/milk-cream (milk)

·         http://www.oakhurstdairy.com/product/flavored-milk-products/ (flavored milks)

·         http://www.oakhurstdairy.com/product/milk-products/ (milk)

·         http://www.oakhurstdairy.com/product/juice-products/ (fruit juice) 

·         http://kemps.com/products/milk-and-cream/ (milk)

·         http://kemps.com/fridge-products/orange-juice-plastic-gallon/ (orange juice)

·         http://kemps.com/fridge-products/apple-juice-half-gallon/ (apple juice)

·         http://www.bordendairy.com/product-category/milks/ (milk and flavored milks)

·         http://www.bordendairy.com/product/100-percent-pure-orange-juice/ (orange juice)

·         http://www.byrnedairy.com/our-products/freshdairy/ (milk and juice)

·         http://byrnedairystores.com/menus (milkshake and smoothies)

·         http://www.prairiefarms.com/envira/juice/ (apple juice, orange juice, and fruit punch)

·         http://www.prairiefarms.com/products/newlook/ (milk and flavored milk)

·         http://hilanddairy.com/products/lemonade (lemonade)

·         http://hilanddairy.com/products/milks (milk and flavored milk)

·         http://hilanddairy.com/santa-shake (milkshake)

·         http://www.umpquadairy.com/our-products/type/milk-products/ (milk)

·         http://www.umpquadairy.com/our-products/type/juice/ (fruit juice)

·         http://drinkunited.com/fruit-drinks/ (fruit juice)

·         http://drinkunited.com/fruit-drinks/grape/ (grape juice)

·         http://drinkunited.com/products/ (milk)

 

The above mentioned 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.

 

Accordingly, the goods of applicant and the registrant are considered related for purposes of the likelihood of confusion analysis.

 

Other Considerations

 

Applicant argues that the term “SLATE” is diluted and weak as evidenced by co-existing marks for use with various food and beverage products. This argument is unpersuasive for the reasons set forth below.

 

In this case, applicant has submitted printed or electronic copies of third-party registrations for marks containing the wording “SLATE” to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection.  These registrations appear to be for goods that are predominantly different from or unrelated to those identified in applicant’s application. 

 

The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services.  See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field.  Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003). 

 

Evidence comprising third-party registrations for similar marks with different or unrelated goods, as in the present case, has “no bearing on the strength of the term in the context relevant to this case.”  See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751).  Thus, these third-party registrations for various types of alcoholic beverages such as wine and beer submitted by applicant are insufficient to establish that the wording “SLATE” is weak or diluted for “dairy based beverages” and “fruit drinks and fruit juices.”

 

Moreover, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case.  This evidence shows that the goods listed therein, namely, “dairy based beverages,” “milk beverages,” and “fruit drinks and fruit juices,” are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); 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).

 

In addition, applicant asserts that the respective marks have a different commercial impression because of the inclusion of the term “CLEANSE” in registrant’s mark helps to distinguish between the marks. This argument is unpersuasive because the word “CLEANSE” is disclaimed in registrant’s mark. Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording “GREEN SLATE” the more dominant element of the mark. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression.  See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).

 

Furthermore, even if potential consumers realize the apparent differences between the marks, they could still reasonably assume, due to the overall similarities in appearance and commercial impression in the respective marks, that applicant’s goods provided under the SLATE mark constitute a new or additional product line from the same source as the goods provided under the registered mark GREEN SLATE CLEANSE, and that applicant’s mark is merely a variation of the registered mark.  See, e.g., SMS, Inc. v. Byn-Mar Inc. 228 USPQ 219, 220 (TTAB 1985) (applicant’s marks ALSO ANDREA and ANDREA SPORT were “likely to evoke an association by consumers with opposer's preexisting mark [ANDREA SIMONE] for its established line of clothing.”).  Here, when taking into consideration the marks are similar in appearance and overall commercial impression, potential consumers could reasonably assume that applicant’s mark is a new product line provided under the registered mark.

 

Conclusion

 

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).

 

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. 15 U.S.C. §1052(d).

This final is hereby made FINAL.

 

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 response to this final Office action and/or appeal it to the Trademark Trial and Appeal Board (TTAB)

 

 

/Geraldine Ingold/

Trademark Examining Attorney

Law Office 121

(571) 272 - 5076

Geraldine.Ingold@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 September 23, 2019 for

U.S. Trademark Application Serial No. 88377994

 

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. 

 

 

/Geraldine Ingold/

Trademark Examining Attorney

Law Office 121

(571) 272 - 5076

Geraldine.Ingold@uspto.gov

 

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 September 23, 2019, 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.”