To: | ConSeal International Incorporated (trademarks@johnsonmartinlaw.com) |
Subject: | U.S. Trademark Application Serial No. 88419626 - PROBIO - 57997-0211 |
Sent: | February 28, 2020 04:37:08 PM |
Sent As: | ecom125@uspto.gov |
Attachments: |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88419626
Mark: PROBIO
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Correspondence Address: |
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Applicant: ConSeal International Incorporated
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Reference/Docket No. 57997-0211
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: February 28, 2020
This Office action is in response to applicant’s communication filed on February 3, 2020.
In a previous Office action dated August 3, 2019, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to amend the identification of goods and satisfy the multiple class application requirements, if applicable.
Applicant responded on February 3, 2020, argued against the Section 2(d) refusal for likelihood of confusion and amended the identification of goods. However, applicant’s arguments were reviewed but found unpersuasive for the reasons discussed herein. In addition, the identification of goods still contains several entries that are improperly classified, and applicant failed to address or satisfy the multiple class application requirements.
As a result, the trademark examining attorney maintains and now makes FINAL the refusal and requirements in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL THAT APPLICANT MUST ADDRESS:
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. 5515261. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. The registration was attached to the previous Office action.
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. 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
The applied-for mark is PROBIO in standard characters.
The registered mark is PROBIO LIVING (Reg. No. 5515261) in standard characters.
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In this case, the applied-for and registered marks each share the identical first wording “PROBIO”. 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).
The additional wording “LIVING” in the registered mark does not obviate the similarity between it and the applied-for mark. 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 some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
As a result, the marks are confusingly similar and share the same overall commercial impression.
COMPARISON OF GOODS
The applicant’s goods are identified as “Odor neutralizing preparations and odor eliminators for use on carpets, textiles, concrete, linoleum, wood, marble, granite, litter boxes, and clothing; chemical odor counteractants, namely, odor neutralizing sprays for clothing, hair, carpets skin, fur, feathers, fabrics, soft surfaces, and hard surfaces for both domestic and industrial use; odor neutralizing preparations for general use on various surfaces; cleaning preparations; cleaning preparations, namely, odor eliminators not for personal use; cleaning preparations, namely, odor neutralizers not for personal use; liquid and dried bacterial enzymes in the nature of animal feed additives to assist in digestion; Liquid and dried bacterial enzyme preparations for industrial purposes, namely, for use use in silage preservers, hard surface cleaning products, detergent products, and drain and septic tank cleaners and treatments; liquid and dried bacterial enzyme preparations for industrial purposes, namely, for use in chemical waste treatment, municipal waste treatment, organic waste treatment.”
The registrant’s goods are identified as “Air deodorant; Car deodorant; Household deodorant.”
In this case, the registration uses broad wording to describe its services as air, car, and household deodorants, which presumably encompasses all goods of the type described, including applicant’s narrower identifications for odor neutralizing preparations, sprays, eliminators, and neutralizers not for personal use or for use on various surfaces including carpets, textiles, linoleum, wood, marble, granite, litter boxes, clothing, various other surfaces, and for domestic use, each of which are merely specific examples of the type of household surfaces identified by registrant. 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.
Applicant’s Arguments
Applicant contends in its February 3, 2020 Response to Office Action that confusion is unlikely because the additional word “LIVING” in the registered mark creates a different commercial impression than that of the applied-for mark and the respective goods are unrelated. These arguments were reviewed but found unpersuasive.
With regard to applicant’s argument that the additional wording “LIVING” in the registered mark sufficiently differentiates it from the applied-for mark, this argument is unpersuasive. As explained above and in the previous Office action, 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). Here, consumers would view applicant’s mark 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)). In the present case, the marks are identical in part, and the additional wording “LIVING” at the end of the registered mark does not alter the similarity of the marks or create a commercial impression separate or apart from that of the applied-for mark.
Second, applicant’s contention that its goods are sufficiently different from those of the registrant because applicant’s surface deodorizers are different from what applicant refers to as the registrant’s “air fresheners” is also unpersuasive. Applicant appears to refer to only one of the registrant’s identified goods, “Air deodorants,” to support its bald assertion that its goods are unrelated to those of the registrant. Further, as explained above and in the previous Office action, the applicant has identified deodorants for use with a variety of surfaces, nearly all of which are common household surfaces and therefore are encompassed by the registrant’s identifications for air, car, and household deodorants. 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).
Finally, the overriding concern is not only to prevent buyer confusion as to the source of the goods, 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).
In summary, applicant’s and registrant’s marks create the same commercial impression and their respective goods are sufficiently related such that consumers are likely to be confused by the use of similar marks on or in connection with these goods. Accordingly, the refusal to register the applied-for mark for likelihood of confusion with the registered mark pursuant to Section 2(d) of the Trademark Act is continued and made FINAL.
CLASSIFICATION AND IDENTIFICATION OF GOODS – FINAL
Class 1: Liquid and dried bacterial enzyme preparations for industrial purposes, namely, for use in silage preservers, hard surface cleaning products, detergent products, and drain and septic tank cleaners and treatments; liquid and dried bacterial enzyme preparations for industrial purposes, namely, for use in chemical waste treatment, municipal waste treatment, organic waste treatment
Class 3: cleaning preparations
Additionally, applicant has provided the application fee for only one international class. Thus, not all international classes in the application are covered by the application fee. Because of this disparity, applicant must clarify the number of classes for which registration is sought. See 37 C.F.R. §§2.32(d), 2.86.
Applicant may respond by (1) adding one or more international class(es) to the application, and reclassifying the above goods accordingly; or (2) deleting from the application the goods for all but the number of international class(es) for which the application fee was submitted. See 37 C.F.R. §§2.86(a), 6.1; TMEP §§1403.02 et seq. If applicant adds one or more international classes to the application, applicant must comply with the multiple-class application requirements specified in this Office action.
Applicant may substitute the following wording, if accurate:
Class 1: Liquid and dried bacterial enzyme preparations for industrial purposes, namely, for use in silage preservers, hard surface cleaning products, detergent products, and drain and septic tank cleaners and treatments; liquid and dried bacterial enzyme preparations for industrial purposes, namely, for use in chemical waste treatment, municipal waste treatment, organic waste treatment
Class 3: Cleaning preparations
Class 5: Odor neutralizing preparations and odor eliminators for use on carpets, textiles, concrete, linoleum, wood, marble, granite, litter boxes, and clothing; chemical odor counteractants, namely, odor neutralizing sprays for clothing, hair, carpets skin, fur, feathers, fabrics, soft surfaces, and hard surfaces for both domestic and industrial use; odor neutralizing preparations for general use on various surfaces; cleaning preparations, namely, odor eliminators not for personal use; cleaning preparations, namely, odor neutralizers not for personal use; liquid and dried bacterial enzymes in the nature of animal feed additives to assist in digestion
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.
MULTIPLE CLASS APPLICATION REQUIREMENTS – FINAL
(1) List the goods by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods based on use in commerce that are classified in at least three classes; however, applicant submitted a fee sufficient for only one class. Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for Class 5 and applicant needs a specimen for Classes 1 and 3. See more information about specimens.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Any webpage printout or screenshot submitted as a specimen, whether for goods or services, must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
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).
Justin Miller
/Justin Miller/
Trademark Examining Attorney Law Office 125
(571) 272-6040
justin.miller@uspto.gov
RESPONSE GUIDANCE