UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 88392639
MARK: CLEVER BLEND
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CORRESPONDENT ADDRESS: COLLEN IP, INTELLECTUAL PROPERTY LAW, P. |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Tesconi, Luca
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW. A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.
ISSUE/MAILING DATE: 6/27/2019
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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.
Applicant is seeking registration for the following goods: "Coffee cups, tea mugs and mugs," in International Class 21, "Coffee; Ground Coffee Beans; Roasted Coffee Beans," in International Class 30, "Retail store services featuring coffee, tea, cocoa, packaged and prepared foods, cups, mugs, tote bags, clothing, caps and hats, non-electric appliances, coffee makers, coffee drippers; On- line retail store services featuring coffee and coffee related products, cups, mugs, non-electric appliances, namely, beverage makers, coffee makers, coffee drippers; Wholesale store services featuring coffee, non-electric appliances, namely, beverage makers, coffee makers, coffee drippers; Direct mail sales in the nature of direct mail advertising, featuring coffee, cups, mugs, non-electric appliances, namely, beverage makers, coffee makers, coffee drippers; online- retail store services sales accessible through mobile devices and similar technology in the nature of {specify} featuring coffee and coffee related products, cups, mugs,; non- electric appliances, namely, beverage makers, coffee makers, coffee drippers," in International Class 35 and "Coffee Shop and Cafe services," in International Class 43 in connection with the mark "CLEVER BLEND". The cited registration identifies the following services: "coffee shops," in International Class 43 in connection with the mark "THE CLEVER BEAN" & design.
Marks are Similar
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).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).
Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).
Here, applicant is seeking registration for the mark "CLEVER BLEND", displayed in standard characters. The cited registration is for the mark "THE CLEVER BEAN", displayed in a slightly stylized manner and including design elements. The visual, phonetic and overall commercial impressions derived from the respective marks are substantially similar. The trademark examining attorney submits it is well-established through case law that 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). Similarly, non-disclaimed but matter that is still descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark. See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).
In the present case, registrant has disclaimed the wording "BEAN", thereby acknowledging that such wording is less significant in terms of making likelihood of confusion determinations and rendering "CLEVER" the more dominant and source-identifying element of such mark. Further, the attached evidence shows that the wording "BLEND" in the applied-for mark is merely descriptive of or generic for applicant’s goods and/or services because such wording is often used in connection with similar goods and/or services to refer to specific types of coffee bean mixtures. Please see attached evidence from Coffee Review and Wise Geek, also available at http://www.coffeereview.com/coffee-reference/coffee-basics/coffee-language/traditional-blend-names/ and http://www.wisegeek.com/what-is-a-coffee-blend.htm. Thus, this wording is also less significant in terms of affecting the mark’s commercial impression, and renders the wording "CLEVER" the more dominant element of applicant's mark. Clearly, the dominant and source-identifying literal elements of the respective marks are identical.
With respect to the design elements present in the registrant's mark, the trademark examining attorney submits that 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 and/or services. 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)).
Accordingly, the slight stylization and design elements present in the registered mark does not obviate the substantial similarities present between the dominant and source-identifying literal elements of the marks overall. Finally, since a standard character claim allows an applicant or registrant to display a mark in any font or stylization, applicant could display its mark in a manner identical to that of registrant.
Based on the foregoing, the visual, phonetic and subsequently, overall commercial impressions derived from the respective marks are substantially similar as to create a likelihood of confusion.
Goods and/or Services are Related (and Identical in Part)
Applicant is seeking registration for the following goods: "Coffee cups, tea mugs and mugs," in International Class 21, "Coffee; Ground Coffee Beans; Roasted Coffee Beans," in International Class 30, "Retail store services featuring coffee, tea, cocoa, packaged and prepared foods, cups, mugs, tote bags, clothing, caps and hats, non-electric appliances, coffee makers, coffee drippers; On- line retail store services featuring coffee and coffee related products, cups, mugs, non-electric appliances, namely, beverage makers, coffee makers, coffee drippers; Wholesale store services featuring coffee, non-electric appliances, namely, beverage makers, coffee makers, coffee drippers; Direct mail sales in the nature of direct mail advertising, featuring coffee, cups, mugs, non-electric appliances, namely, beverage makers, coffee makers, coffee drippers; online- retail store services sales accessible through mobile devices and similar technology in the nature of {specify} featuring coffee and coffee related products, cups, mugs,; non- electric appliances, namely, beverage makers, coffee makers, coffee drippers," in International Class 35 and "Coffee Shop and Cafe services," in International Class 43. The cited registration identifies the following services: "coffee shops," in International Class 43.
In this case, a portion of the services in the application and registration(s) are identical, i.e., "coffee shops". Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods and/or services are related.
With respect to the remaining goods and services in applicant's application, the trademark examining attorney notes that goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi). 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).
Additionally, the goods and/or services of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods and/or services are related.
To provide further support for the above-referenced contentions, the trademark examining attorney submits that it is well-established that companies/persons that provide coffee shop services, also often provide related coffee goods, accessory goods, retail services and the like. Please evidence representative examples of such companies and U.S. registrations regarding same (please also see attached evidence):
Therefore, applicant's and registrant's goods and/or services are considered related for likelihood of confusion purposes.
Based on the foregoing, a likelihood of confusion exists between applicant's mark and the cited registration(s) and registration is refused under Section 2(d) of the Trademark Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
DISCLAIMER – Required
In this case, applicant must disclaim the wording "BLEND" in the mark because it is not inherently distinctive. These unregistrable term(s) at best are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence shows that the wording "BLEND" in the applied-for mark is merely descriptive for applicant’s goods and/or services because such wording is often used in connection with similar goods and/or services to refer to specific types of coffee bean mixtures. Please see attached evidence from Coffee Review and Wise Geek, also available at http://www.coffeereview.com/coffee-reference/coffee-basics/coffee-language/traditional-blend-names/ and http://www.wisegeek.com/what-is-a-coffee-blend.htm. Thus, this wording is merely descriptive of applicant's goods and services because applicant provides coffee goods and related retail and coffee shop services that feature coffee bean blends.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “BLEND” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
IDENTIFICATION OF GOODS & SERVICES – Indefinite
In general, commas should be used in an identification (1) to separate a series of related items identified within a particular category of goods or services, (2) before and after “namely,” and (3) between each item in a list of goods or services following “namely” (e.g., personal care products, namely, body lotion, bar soap, shampoo). Id. Semicolons generally should be used to separate a series of distinct categories of goods or services within an international class (e.g., personal care products, namely, body lotion; deodorizers for pets; glass cleaners). Id.
Applicant must amend the identification to specify the nature of the wholesale activity that applicant provides (e.g., wholesale distributorships, wholesale services by direct solicitation by sales agents, or wholesale store services). If the services are in the nature of wholesale stores, direct solicitation, or distributorships, the identification should also indicate the field or type of goods offered through the wholesale services, e.g., “wholesale distributorships featuring {indicate specific field, e.g. auto parts, clothing},” “wholesale services by direct solicitation by sales agents in the field of {indicate specific field},” and “wholesale store services featuring {indicate specific field, e.g. auto parts, clothing, jewelry}.” See TMEP §§1301.01(a)(ii), 1402.11.
Therefore, applicant must delete “sale(s)” from the identification and indicate with greater specificity the nature of the service in International Class 35; e.g., “retail store services featuring …,” “wholesale distributorships featuring ….,” “on-line wholesale and retail store services featuring …” or other acceptable wording.
Applicant may substitute the following wording, if accurate:
"Coffee cups, tea mugs and mugs," in International Class 21; - NO CHANGE
"Coffee; Ground Coffee Beans; Roasted Coffee Beans," in International Class 30; - NO CHANGE
"Retail store services featuring coffee, tea, cocoa, packaged and prepared foods, cups, mugs, tote bags, clothing, caps and hats,
non-electric appliances, coffee makers, coffee drippers; On- line retail store services featuring coffee and coffee related products, cups, mugs, non-electric appliances, namely, beverage makers,
coffee makers, coffee drippers; Wholesale store services featuring coffee, non-electric appliances, namely, beverage makers, coffee makers, coffee
drippers; Direct mail sales advertising services, featuring coffee, cups, mugs, non-electric
appliances, namely, beverage makers, coffee makers, coffee drippers; online- retail store services sales accessible through mobile devices and similar technology featuring coffee and coffee related products, cups,
mugs,;[delete semi-colon] non- electric appliances, namely, beverage makers, coffee makers, coffee drippers," in International Class 35;
and
"Coffee Shop and Cafe services," in International Class 43. – NO CHANGE
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.
DECLARATION & SIGNATURE – Required
The following statements must be verified: That applicant believes applicant is the owner of the mark; that the mark is in use in commerce and was in use in commerce as of the application filing date; that to the best of the signatory’s knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services of such other persons, to cause confusion or mistake, or to deceive; that the specimen shows the mark as used on or in connection with the goods or services as of the application filing date; and that the facts set forth in the application are true. 37 C.F.R. §§2.33(b)(1), (c), 2.34(a)(1)(i), 2.59(a). For more information about this, see the Verified statement webpage.
To provide these verified statements. After opening the correct TEAS response form, answer “yes” to wizard question #10, and follow the instructions within the form for signing. In this case, the form will require two signatures: one in the “Declaration Signature” section and one in the “Response Signature” section.
RESPONSE GUIDELINES
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
/Erin Z. Dyer/
Erin Zaskoda Dyer
Examining Attorney
Law Office 103
(571) 272-9740
erin.zaskoda@uspto.gov (preferred)
TO RESPOND TO THIS LETTER: Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp. Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application. For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.
All informal e-mail communications relevant to this application will be placed in the official application record.
WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the response.
PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.
TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.
