To: | Little Spoon, Inc. (ipdocket@clarkhill.com) |
Subject: | U.S. Trademark Application Serial No. 88398369 - PLATES - 53987-TBD |
Sent: | July 09, 2019 09:19:05 AM |
Sent As: | ecom121@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 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88398369
Mark: PLATES
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Correspondence Address: 130 E. RANDOLPH STREET, SUITE 3900
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Applicant: Little Spoon, Inc.
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Reference/Docket No. 53987-TBD
Correspondence Email Address: |
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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: July 09, 2019
SUMMARY OF ISSUES:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4537905, 4168764, 5036954, 5194682, 5747568, 5747569, and 5739101. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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 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, 1361, 177 USPQ 563, 567 (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)). Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the factors may control in a given case, depending upon the evidence of record. Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98 USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Similarity 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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); TMEP §1207.01(b).
Applicant’s mark is PLATES in standard character form.
The marks in the cited in registrations are:
Mark |
Registration No. |
FIESTA PLATES |
4537905 |
URBAN PLATES |
4168764 |
PUREPLATES |
5036954
5194682 |
ELATED PLATES
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5747568
5747569 |
DIRTY PLATES |
5739101 |
In this case, the applied-for mark is similar to the marks in the cited registrations in terms of sound, appearance, and meaning as each of the registered marks contains the wording in the applied-for mark in its entirety.
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)).
Here, the marks in U.S. Registration Nos. 5036954 and 5747569 do contain design and/or stylization; i.e., the former contains the stylized wording PUREPLATES INSPIRED EATING and a circular plate with a fork and knife to the left of the wording, while the latter is comprised of the wording ELATED PLATES in stylized form. However, as noted above, it is typically the word portion of a composite mark that is given more weight as consumers will use the wording to request the goods. In the present case, consumers will use the words PUREPLATES (“Inspired Eating” appears to be merely a slogan, as consumers would likely not say things such as, “Hey, I am really in the mood for Pureplates Inspired Eating.”) and ELATED PLATES to request registrants’ respective goods. Thus, these words are considered the more dominant and significant portions of the respective registered marks for the purpose of determining likelihood of confusion.
Comparing the dominant literal elements of the marks, applicant’s mark is PLATES and the registered marks are FIESTA PLATES, URBAN PLATES, PUREPLATES, ELATED PLATES, and DIRTY PLATES.
In the present case, each of the registered marks incorporates the entirety of the applied-for mark. That is, the word “PLATES” appears in each of the registered marks. While the registrations have other wording to distinguish them from amongst each other, the applied-for mark does not. Therefore, the marks are visually and aurally similar. Further, the attached definition from The Oxford English Dictionary demonstrates that a “plate” is “a main course of a meal, served on one plate” or “an amount of food on a plate.” Applicant and each of the registrations offers some form of prepared or packaged meals or entrees. Thus, the word PLATES means the same thing in all of the marks since all of the parties provide “plates” or meals, whether they are frozen, prepared, or packaged.
Accordingly, the marks are confusingly similar in sound, appearance, and meaning.
Relatedness of Goods
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).
Applicant’s identified goods are: “Toddler meals, namely, frozen, prepared or packaged entrees consisting primarily of meat, fish, poultry, vegetables or fruit; frozen, prepared or packaged meals consisting primarily of meat, fish, poultry, vegetables or fruit.”
Registrants’ identified goods are summarized in the following table:
Mark |
Registration No. |
Goods |
FIESTA PLATES |
4537905 |
Packaged microwave meals consisting of poultry; packaged microwave meals consisting primarily of poultry and also containing cheese or sauce |
URBAN PLATES |
4168764 |
Fruit salads, vegetable salads, and garden salads; soups, meat, fish, poultry and game; prepared and prepackaged combination meals and entrees consisting primarily of a meat, poultry, seafood, or vegetable-based entree for consumption on or off the premises; cooked vegetables; Beverages, namely, dairy-based beverages and fruit-based food beverage |
PUREPLATES |
5036954
5194682 |
Prepared organic foods for human consumption, namely, meats, fruits and vegetables, packaged individually and as meals, for retail sale to customers
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ELATED PLATES
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5747568
5747569 |
Pasta; pasta sauce; prepared pasta; brownies; cakes; cookie dough; pizza dough; pies; bagels; processed cereals; cereal-based snack foods, namely, cereal bars; biscuits; croissants; muffins; bread rolls; tortillas; pretzels; Danish; donuts; buns; pigs-in-a-blanket; pizza snacks, namely, pizza cheese sticks; burritos; egg rolls; pizza; sandwiches; cake mixes, namely, cake bases; biscuit mixes; bread roll mixes; bread mixes; soy bean paste; pierogies; salsa; food condiments, namely, ketchup, mustard, mayonnaise and salad dressing; bread; crackers; cookies; granola snacks; grain-based snack foods; puffed corn snacks; corn-based snack foods; wheat-based snack foods; pizza-based snack foods, namely, pizza pocket sandwiches; breakfast pocket sandwiches consisting primarily of meat and eggs; cheese-filled breadsticks; and frozen foods, namely, grain and bread based hors d'oeuvres |
DIRTY PLATES |
5739101 |
Prepared meals consisting primarily of meat, fish, poultry or vegetables |
In this case, several of the registrations use broad wording to describe prepared meals which may consist of meat, fish, poultry, or vegetables, which presumably encompasses all goods of the type described, including applicant’s more narrow toddler meals which may be frozen, prepared, or packaged entrees consisting of meat, fish, poultry, vegetables, or fruit, in addition to applicant’s frozen, prepared, or packaged meals consisting of meat, fish, poultry, vegetables, or fruit. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods 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 are related.
Accordingly, because confusion as to source is likely, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.
Applicant should note the following potential grounds for refusal.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) REFUSAL - MERELY DESCRIPTIVE
A mark is merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of an applicant’s goods. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)); In re Steelbuilding.com, 415 F.3d 1293, 1297, 75 USPQ2d 1420, 1421 (Fed. Cir. 2005) (citing Estate of P.D. Beckwith, Inc. v. Comm’r of Patents, 252 U.S. 538, 543 (1920)).
In this case, the attached definition from The Oxford English Dictionary demonstrates that a “plate” is “a main course of a meal, served on one plate” or “an amount of food on a plate.” Applicant offers “plates” in the sense that its goods are meals, whether frozen, prepared, or packaged, and the meals consist of meat, fish, poultry, vegetables, or fruit. The meals are both a main course and an amount of food.
Therefore, the word “PLATES” in the applied-for mark merely describes the main characteristic of applicant’s goods. Accordingly, registration of the mark PLATES is refused on the Principal Register as being merely descriptive under Section 2(e)(1) of the Trademark Act.
MANDATORY ELECTRONIC FILING RULES ADVISORY
The USPTO proposes to change federal trademark rules to require applicants and registrants to (1) file submissions concerning applications and registrations online using the USPTO’s Trademark Electronic Application System (TEAS) and (2) provide and maintain an accurate email address for receiving correspondence from the USPTO. See the Mandatory Electronic Filing Rules webpage for more information.
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 nonfinal Office action
/Uka Onuoha/
Examining Attorney
Law Office 121
(571) 270-5781
uka.onuoha@uspto.gov
RESPONSE GUIDANCE