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. 88402881
Mark: BASMA
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Correspondence Address:
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Applicant: Dewi, Ratna
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Reference/Docket No. N/A
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 16, 2019
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.
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.
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 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).
The applicant’s mark is comprised of three Arabic characters that transliterate to “Basma” above the wording BASMA, with the characters within an oval and “BASMA” within a curled banner. The registered mark includes an element that is identical in appearance to the applicant’s mark, appearing on a package that also displays green leaves, the wording “400g” within an oval, and an additional banner that includes the wording “GREEN MOLOKHA” on one side and Arabic wording on the other.
The applicant’s mark is similar to the registered mark because the Arabic characters and word BASMA in the applicant’s mark appear in identical form in the registered mark, and the applicant’s mark is thus wholly incorporated into the registered mark. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii).
Although the registered mark is in color, and has additional literal and design elements, this does not obviate the finding that the marks are confusingly similar. The overall appearance of the registered mark is of packaging for goods, and the additional literal and design elements in the mark are a pictorial representation of the goods, the name of the goods, and the total weight of the goods in the package. Thus, these differing elements in the registered mark do not change the overall impression or significance of the mark, and it is the Arabic characters and word “BASMA” within the oval and banner design that are the more dominant source-identifying features in 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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
Moreover, 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). In the present case, the word “BASMA” and Arabic characters that transliterate to “Basma” appear in virtually identical fashion in the applicant’s and registrant’s marks, with the only difference being that in the registered mark these features are in color. The remainder of the registrant’s mark is merely informational matter about the relevant goods. Thus, consumers encountering the related goods of the parties when marked with the respective marks would reasonably believe that all of the “Basma” goods originate from the same source, and would perceive the remainder of the registrant’s mark merely as product packaging used to identify a particular “Basma” good.
For the reasons discussed above, the applicant’s mark is confusingly similar to the registered mark.
Relatedness of the Goods and Services
Moreover, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009). This applies in the present case because the applicant’s mark is highly similar to the registered mark, in that it is wholly incorporated in the registered mark and is virtually identical to the dominant feature of the registered mark.
The applicant has applied to register the mark for use on a variety of foods and beverages; specifically, “Canned cooked meat; Dried beans; Dried meat; Frankfurters; Pickles; Processed beans; Processed peppers; Refried beans; Dried lentils; Filo leaves; Processed grains, namely, rice, stuffed eggplants, stuffed grape leaves, green peppers stuffed with rice; Fruit juice, namely, apple, grape, nectar, mango, pomegranate, lemon, kiwi, juice; Herbal juices juice.”
The registered mark is used in connection with “Frozen fruit and vegetables, namely, okra, molokhia, artichokes, green peas, green beans, mixed vegetables, cauliflower, colcassia, also known as taro root, green spinach, broad beans vine leaves also known as grape leaves, falafel, broccoli, strawberries, sweet corn, carrots, coriander, garlic, potatoes.”
The goods of the parties are related because they are all food products, and those of a type commonly provided by the same entity under a single mark. The examining attorney references the attached web pages, which are third-party retail pages showing for sale a variety of food products such as those listed in the application and registration, including frozen fruits and/or vegetables and some combination of canned meat, dried or processed beans, stuffed grape leaves, and fruit juices. The attached Internet evidence establishes that the same entity commonly produces the relevant goods and markets the goods under the same mark, that 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, and that the goods are similar or complementary in terms of purpose or function. Therefore, 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).
The applicant’s mark is similar to the registered mark, and the goods of the parties are related. Accordingly, there would be a likelihood of confusion as to the source of the goods. Registration of the applicant’s mark is therefore refused under Trademark Act Section 2(d) based on a likelihood of confusion with the mark in U.S. Registration No. 3398369.
Although the trademark examining attorney has refused registration, applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If applicant chooses to respond to the refusal to register, then applicant must also respond to the following issues:
Specimen Unacceptable: Does Not Show Use with Goods—Classes 30 and 32
Registration is refused in International Classes 30 and 32 because the specimen does not show the applied-for mark in use in commerce in connection with the Class 30 or 32 goods specified in the application. Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).
The relevant goods are “Filo leaves; Processed grains, namely, rice, stuffed eggplants, stuffed grape leaves, green peppers stuffed with rice” (Class 30) and “Fruit juice, namely, apple, grape, nectar, mango, pomegranate, lemon, kiwi, juice; Herbal juices juice” (Class 32). However, while three specimens were submitted with the application, each specimen is a label for “luncheon beef loaf.” As “luncheon beef loaf” is not any of the goods specified in Classes 30 or 32 of the application, the specimen is unacceptable to show use of the mark in those classes.
An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application. 15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a).
Applicant may respond to this refusal by satisfying one of the following for the goods in Classes 30 and 32:
(1) Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application and (b) shows the mark in actual use in commerce for the goods identified in the application. A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20: “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.” The substitute specimen cannot be accepted without this statement.
(2) Amend the filing basis to intent to use under Section 1(b), for which no specimen is required. This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.
Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale. See TMEP §§904.03 et seq. Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods. TMEP §904.03(i).
For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.
Identification of Goods—Classes 30 and 32
The identification of goods in Class 29 is acceptable. However, the identification in Classes 30 and 32 is unacceptable because it includes indefinite wording and lists goods that may be misclassified. TMEP §1402.01.
In Class 30, the applicant has selected a “fill in the blank” entry from the Identification Manual, with the introductory wording “processed grains, namely.” However, the items then specified by the applicant include items that are not processed grains. Specifically, “stuffed eggplants, stuffed grape leaves, green peppers stuffed with rice.” In addition, not only are these goods not processed grains, they are all food items that are properly classified in Class 29, as the primary component of each item is a processed vegetable, with the processed grain at best being the item the vegetable is stuffed with.
In Class 32, the applicant has selected the introductory wording “fruit juice, namely,” and then has specified various fruits, which presumably identify specific types of juice; e.g., apple juice, grape juice, and pomegranate juice. However, the applicant has also included “nectar” and “juice,” which are indefinite because the specific type of nectar or juice is not provided. The applicant must therefore amend this wording to further specify the nature of the goods.
The applicant must amend the application to adopt an acceptable identification and classification of goods. The applicant may amend to adopt one or more of the following, if accurate:
INTERNATIONAL CLASS 29: Canned cooked meat; Dried beans; Dried meat; Frankfurters; Pickles; Processed beans; Processed peppers; Refried beans; Dried lentils; Stuffed eggplant; Stuffed grape leaves; Green peppers stuffed with rice.
INTERNATIONAL CLASS 30: Filo leaves; Processed grains, namely, rice.
INTERNATIONAL CLASS 32: Fruit juice, namely, apple, grape, mango, pomegranate, lemon, and kiwi juice; Herbal juices; Fruit juice; Fruit nectars.
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.
Translation of Foreign Wording Required
The following transliteration and translation statement are suggested, if accurate:
The English translation of “BASMA” is “SMILE”. The non-Latin characters in the mark transliterate to “BASMA” and this means “SMILE” in English.
TMEP §809.03. See the attached translation evidence.
Amended Mark Description Required
The following amended description is suggested, if accurate:
The mark consists of three Arabic characters within an oval above a banner containing the stylized wording “BASMA”.
Additional Fee Required—TEAS Plus Status Lost
The additional fee is required even if applicant later corrects these application requirements.
How to respond. Click to file a response to this nonfinal Office action
/Kimberly Frye/
Examining Attorney
Law Office 113
(p)571-272-9430
(f) 571-273-9430
(e) kimberly.frye@uspto.gov
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