| To: | Nourish Technology, Inc. (lema@fklawfirm.com) |
| Subject: | U.S. Trademark Application Serial No. 88406618 - NOURISH - N/A |
| Sent: | March 30, 2020 01:52:54 PM |
| Sent As: | ecom103@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 |
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. 88406618
Mark: NOURISH
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Correspondence Address:
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Applicant: Nourish Technology, Inc.
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Reference/Docket No. N/A
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: March 30, 2020
On August 29, 2019, action on this application was suspended pending disposition of cited U.S. Registration No. 4367534, for which maintenance documents were due to be filed. See 37 C.F.R. §2.67; TMEP §716.02(e). USPTO records indicate that the cited registration has been cancelled and/or expired and is no longer a bar to registration of applicant’s mark. Therefore, the Section 2(d) refusal is withdrawn with respect to this particular registration.
In addition, as discussed in further detail below, the Section 2(d) refusal is maintained and made FINAL with respect to U.S. Registration No. 5788580.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is NOURISH in standard character form for “Industrial robots; Vending machines for preparing and serving food in restaurants, cafeterias, cafes, kitchens, shopping malls, in-store retail locations, service stops, rest areas, hospitals, eateries, offices, airports, hotels, military bases, commuter centers” in International Class 7.
Registrant’s mark is NOURISH in standard character form for “Downloadable mobile application for ordering of and payment for takeout food and beverages” in International Class 9 and “Payment services, namely, providing electronic processing of credit card, debit card, electronic check and electronic payments in the takeout food and beverage fields” in International Class 36.
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). Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.” In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).
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.
In this case, the following factors are the most relevant: Similarity of the marks, relatedness of the goods and/or services, and similarity of the trade channels of the goods and/or services.
SIMILARITY OF THE MARKS
The applied-for mark and the registered mark are sufficiently similar to create a likelihood of confusion.
In the present case, applicant’s mark is “NOURISH” and registrant’s mark is “NOURISH”. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods and/or services. Id.
Therefore, the marks are confusingly similar.
In its response, applicant argues that both NOURISH marks can exist in the food services industry without causing confusion because the marks refer to unrelated goods and services targeting different consumers. However, as discussed in further detail below, the goods and services of the parties are also related.
Applicant further argues that marks like applicants have registered on the Principal Register. Specifically, applicant argues that the mark NOURISH is “weak”, given the “many live registrations using the term ‘nourish’ in connection with food products or services.” According to applicant, “[w]idespread use of the term ‘nourish’ indicates that consumers are conditioned to distinguish between the numerous NOURISH marks.”
To support its assertion applicant provides a list of marks that include the word “NOURISH”. However, the mere submission of a list of registrations or a copy of a private company search report does not make such registrations part of the record. See In re Peace Love World Live, LLC, 127 USPQ2d 1400, 1405 n.17 (TTAB 2018) (citing In re 1st USA Realty Prof’ls, 84 USPQ2d 1581, 1583 (TTAB 2007); In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974)); TBMP §1208.02; TMEP §710.03.
To make third party registrations part of the record, an applicant must submit copies of the registrations, or the complete electronic equivalent from the USPTO’s automated systems, prior to appeal. In re Star Belly Stitcher, Inc., 107 USPQ2d 2059, 2064 (TTAB 2013); TBMP §1208.02; TMEP §710.03. Accordingly, these registrations will not be considered.
RELATEDNESS OF THE GOODS AND/OR SERVICES
Applicant has identified its goods as “Industrial robots; Vending machines for preparing and serving food in restaurants, cafeterias, cafes, kitchens, shopping malls, in-store retail locations, service stops, rest areas, hospitals, eateries, offices, airports, hotels, military bases, commuter centers” in International Class 7.
Registrant has identified its goods and services as “Downloadable mobile application for ordering of and payment for takeout food and beverages” in International Class 9 and “Payment services, namely, providing electronic processing of credit card, debit card, electronic check and electronic payments in the takeout food and beverage fields” in International Class 36.
Applicant does not believe that the goods and/or services of the parties are related in such a way that would create a likelihood of confusion. Specifically, applicant asserts that the goods and services are in different classes and registrant’s goods and services are limited to food ordering and payment services in hospitals. The trademark examining attorney counters that the fact that the Office classifies goods or services in different classes does not establish that the goods and services are unrelated under Trademark Act Section 2(d). See TMEP §1207.01(d)(v). The determination concerning the proper classification of goods or services is a purely administrative determination unrelated to the determination of likelihood of confusion. In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (citing Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993)).
Further, the goods and services detailed in the registration 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” as applicant’s goods. 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 argument that the registrant’s goods and services are limited to hospitals holds no weight because determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
Applicant also argues that its goods prepare food and registrant’s goods are merely an ordering platform that connects a customer to a vendor that prepares foods. Additionally, applicant states that it does not plan to use the applied-for mark on mobile applications. Finally, applicant argues that the parties have different consumers in different channels of trade, and the consumers of applicant’s goods are “sophisticated business owners and executives”.
The trademark examining attorney counters that applicant’s and registrant’s goods and services are related in such a way that could give rise to the mistaken belief that the goods and services emanate from the same source. Specifically, applicant’s “Industrial robots; Vending machines for preparing and serving food in restaurants, cafeterias, cafes, kitchens, shopping malls, in-store retail locations, service stops, rest areas, hospitals, eateries, offices, airports, hotels, military bases, commuter centers” and registrant’s “Downloadable mobile application for ordering of and payment for takeout food and beverages” are the means by which food and beverage services are provided. Further, vending machines are also used to provide “electronic processing of credit card, debit card, electronic check and electronic payments”.
Where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease).
With respect to applicant’s argument that its consumers are sophisticated purchasers, the trademark examining attorney counters that the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019).
Moreover, as stated in the previous Office action, the applied-for mark and the registered mark are identical. Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
Thus, contrary to applicant’s assertions, consumers are even more likely to assume the goods and services emanate from the same source because the applied-for mark and the registered-mark are identical.
Based on the foregoing, consumers encountering the identical applied-for mark and registered mark, for related goods and/or services, are likely to be confused and mistakenly believe that the respective goods and services emanate from a common source.
Accordingly, the refusal to register the applied-for mark under Section 2(d) of the Trademark Act is hereby made FINAL.
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).
/Chioma (Bata) Oputa/
Examining Attorney
Law Office 103
571-272-5234
chioma.oputa@uspto.gov
RESPONSE GUIDANCE
