Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
OMB No. 0651-0050 (Exp 09/20/2020) |
Input Field |
Entered |
---|---|
SERIAL NUMBER | 88439310 |
LAW OFFICE ASSIGNED | LAW OFFICE 128 |
MARK SECTION | |
MARK FILE NAME | http://uspto.report/TM/88439310/mark.png |
LITERAL ELEMENT | PERFECT |
STANDARD CHARACTERS | NO |
USPTO-GENERATED IMAGE | NO |
ARGUMENT(S) | |
U.S. APPLICATION SERIAL NO. 88439310 MARK: (design mark) CORRESPONDENT ADDRESS: DUANE C. BASCH BASCH & NICKERSON LLP 1751 PENFIELD ROAD PENFIELD, NEW YORK 14526 usptomail@bnpatentlaw.com
Response to Office Action dated August 12, 2019
Prior Pending Applications The Office Action identified the following U.S. Applications as having potential conflicts, subject to examination and registration: 88439004, 88436748, 87902542, 87835660, 87908509, 87831757, and 88001212. Applicant reserves the right to present arguments in support of registration of Applicant’s mark over the referenced applications. As the particular basis, and analysis relative to a potential Section 2(d) refusal are not set forth with specificity, Applicant elects not to submit specific arguments at this time, but to reserve the right to address this issue later if a refusal is issued based upon one or more of the pending applications identified.
Section 2(d) Refusal – Likelihood of Confusion The current application for registration has been refused because of an alleged likelihood of confusion with the marks in U.S. Registration Nos. 2087495, 3992729, 1225219, 4574427, 4574426, 4574425, 4574424, 3688759, 4884019, 2647455, 2655118, and 2667374. In conducting an analysis of the likelihood of confusion, the seminal case involving §2(d), In In re E. I. du Pont de Nemours & Co. (“du Pont”), the U.S. Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion. 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). In setting forth the factors, the court cautioned that, with respect to determining likelihood of confusion, "[t]here is no litmus rule which can provide a ready guide to all cases." Id. at 1361, 177 USPQ at 567. Not all of the factors are relevant and only those relevant factors for which there is evidence in the record must be considered. Id. at 1361-62, 177 USPQ at 567-68. Moreover, the TMEP acknowledges that the weight given to the relevant du Pont factors may vary. (TMEP §1207.01) The du Pont factors include: The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. The relatedness of the goods or services as described in the application and registration(s). The similarity or dissimilarity of established, likely-to-continue trade channels. The conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing. The number and nature of similar marks in use on similar goods. TMEP §1207.01(a)(vi), citing du Pont, 476 F.2d at 1362-63, 177 USPQ at 568-69; In re Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015) ; In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272-74 (TTAB 2009); and Ass’n of the U.S. Army, 85 USPQ2d at 1271-73. In addition to discussing relevant du Pont factors, the examining attorney must provide evidence showing that the goods and services are related to support a finding of likelihood of confusion. TMEP §1207.01, citing In re White Rock Distilleries Inc.,92 USPQ2d 1282, 1285 (TTAB 2009) A. Refusal incomplete on its face. As an initial matter, as noted in the Office Action, “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)….” On the other hand, the refusal appears to have treated the analysis for likelihood of confusion as a “combination”, mischaracterizing the marks as though they are the same registration or originate from a single registrant. (e.g., “Registrant’s marks are FRUIT PERFECT, PERFECT PRAWNS, PASTA PERFECT, PERFECT CUCUMBERS, PERFECT HONEYDEWS, PERFECT BEANS, PERFECT SQUASH, PERFECT EGGPLANT, PERFECT PECAN, PERFECT PICKLES, PERFECT BEANS, and PERFECT PRODUCE in either standard characters or as a typed drawing.”) Applicant respectfully submits that the failure to address each of the registered marks on its own, and to set forth an analysis of the relevant du Pont factors for each cited registration leads to error as it is contrary to the instructions of du Pont to treat the analysis on a case-by-case basis. For at least this reason, Applicant respectfully submits that the refusal is at least incomplete on its face, and withdrawal of the refusal is respectfully requested. B. du PontFactors The following remarks are, to the extent possible in the absence of separate bases of refusal in the Office Action, set forth in response to the current combination refusal. 1. Similarity or Dissimilarity of Marks When comparing the marks, "[a]ll relevant facts pertaining to appearance, sound, and connotation must be considered before similarity as to one or more of those factors may be sufficient to support a finding that the marks are similar or dissimilar." Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000). The Office Action fails to make a specific analysis of aby particular registration, and rather focuses on the use of a common term “PEFECT” in each of the cited registration to arrive at a conclusion that the marks are “confusingly similar”. Applicant respectfully disagrees. Indeed, the Office Action itself cites to cases indicate that hold the proper test is not a side-by-side comparison, but a determination of “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)).” While seeming to acknowledge that Applicant’s mark is different (“stylization of the word PERFECT does not obviate a likelihood of confusion refusal “) the refusal nonetheless fails to make any analysis of the appearance, sound, connotation or a consumer’s (or average purchaser’s) commercial impression. Instead, based upon a narrow comparison of only the “word portions of the marks” a conclusion is set forth that the marks are “nearly identical in appearance, sound, connotation, and commercial impression”. (emphasis added) And, only after stating such a conclusion does the Office Action acknowledge that Applicant’s mark has a design element. Applicant respectfully contends that such an analysis is flawed as it has broken down the registered marks to a common word, and has improperly employed that piecemeal analysis to support a conclusion that, Applicant’s mark is confusingly similar, even though Applicant’s mark is not identical to any of the cited registrations. Indeed, the “nearly identical” aspect is limited to only a portion of each of the registrations. Also note that the use of registrant’s disclaimers of additional terms, while arguably allowing for a focus on other terms in a mark, does not allow the balance of a registered mark to simply be ignored or removed from an analysis of similarity. Each of the registered marks cited in the refusal include additional words that are not part of the applied-for mark. Applicant respectfully contends that it is an error to eliminate disclaimed terms from a likelihood of confusion analysis. Furthermore, the registered marks are significantly dissimilar from a visual perspective because graphical features are part of Applicant’s applied-for mark - thereby further distinguishing Applicant’s design mark in appearance, connotation and commercial impression from the cited registrations. For this reason, as well, Applicant respectfully contends that while there is some similarity in a literal element, overall the marks are dissimilar from Applicant’s applied-for mark in appearance, sound, connotation and commercial impression, thus favoring registration. 2. Relatedness of the Goods or Services With respect to the alleged relatedness of goods, the Office Action merely lists, a of the description of goods for the associated registrations along with a conclusion of similarity. As a first example, the registration No. 2087495 for FRUIT PERFECT, use of “fruit preserves,” is alleged to presumably encompasses all goods of the type described, including applicant’s more narrow “ preserved, processed, dried, cooked or crystallized fruit . . . extracts for use in prepared meals or food.” As noted above, Applicant has amended the description of goods to eliminate reference to preserves, and respectfully submits that the current description, and particularly the “Frozen, frosted, processed, dried, cooked or crystallized fruit and vegetable extracts for use in prepared meals or food” would not be understood or confused as characterizing fruit preserves. Accordingly, in view of Applicant’s amendments to the description of goods included herein, withdrawal of the refusal is respectfully requested. Next, the Office Action states, relative to Registration No. 3992729 for PERFECT PRAWNS, “the registration use(s) broad wording to describe ‘frozen entrees and appetizers consisting primarily of meat, fish, poultry, and/or vegetables with pasta; and microwavable meal kits featuring prepared food products, namely, frozen entrees and side dishes consisting primarily of meat, fish, poultry, and/or vegetables with pasta,’ which presumably encompasses all goods of the type described, including applicant’s more narrow ‘Prepared and prepackaged meals and entrees consisting primarily of egg with one or more of meat, fish, poultry, vegetable, cheese or onion’ and ‘prepared or packaged entrees consisting primarily of meat, fish, poultry or vegetables.’” Applicant respectfully disagrees that the registrant’s description of frozen entrees and appetizers or sides encompasses Applicant’s description of goods. Nonetheless, Applicant has, at this time, amended the description for class 029 to remove the allegedly overlapping goods. In view of Applicant’s amendments, any refusal based upon Registration No. 3992729 is believed to have been overcome. With respect to the further bases for refusal, particularly Registration Nos. 2647455 (PERFECT PICKLES), 4574426 (PERFECT HONEYDEWS), 4574427 (PERFECT CUCUMERS), 4574425 (PERFECT BEANS), 4574424 (PERFECT SQUASH), and 2655118 (PERFECT BEANS), Applicant has canceled the description of goods relative to class 031. As a result, withdrawal of the refusal based upon Registration Nos. 2647455, 4574426, 4574427, 4574425, 4574424, and 2655118 is respectfully requested. Finally, considering the refusal based upon likelihood of confusion with Registration Nos. 2667374 and 3688759, Applicant again notes the cancelation of goods under class 031, and respectfully submits that no likelihood of confusion remains with regard to these registrations as a result of the cancelation. 3. Number and Nature of Similar Marks Applicant notes that there are a number of registrations and/or applications that include the word “PERFECT”, a number of which are cited in the Office Action. Applicant respectfully submits that the number of registrations that have been granted for marks that include “PERFECT” suggests that the scope of such registrations should be narrowly characterized as other registrations of the same or similar-sounding mark were granted both before and after. Applicant respectfully submits that the number and nature of marks that are the same or similar indicate that this factor should be considered in favor of Applicant, and that Applicant’s design elements must be considered as distinctive relative to the registrations.
Refusal – Applied-for Mark is a Varietal Name Registration was refused because the applied-for mark is a varietal name for goods set forth in Class 31. In response, Applicant has canceled claims to goods of class 31 and respectfully submits that the amendment of goods/services accompanying this response overcomes the refusal. Acknowledgement of the withdrawal of this refusal is respectfully requested. Information Required Regarding Applied-for Mark Applicant respectfully responds that the applied-for, stylized design mark ( ) is not presently known to or will be used as a varietal or cultivar name, and the applied-for mark has not been used or will be used in connection with a plant patent, utility patent, or certificate for plant variety protection.
Section 2(e)(1) Refusal -- Merely Descriptive Registration of the applied-for was refused because the mark is alleged to be descriptive of Applicant’s goods. Trademark Act Section 2(e)(1) Applicant respectfully traverses this refusal. As noted in TMEP §§1209.01(b), the refusal requires that “a mark must be merely descriptive or deceptively misdescriptive of the goods or services to which it relates. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services,” and the “correct test is whether the mark conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods.” (citations omitted) In support of the refusal the Office Action sets forth evidence of various definitions of the term “perfect” but does not indicate or otherwise establish how the definitions are applicable to Applicant’s recited goods. The refusal simply concludes, without support, that “the wording PERFECT is merely laudatory of the supposed superior quality of applicant’s goods.” Applicant respectfully contends that such a conclusion fails to establish that the mark conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods. Indeed, how could the mark communicate such information as a stylized, single word – with no subject. In the absence of any proof that the mark conveys an idea of “supposed superior quality” there is no support for the conclusion. Furthermore, Applicant respectfully submits that the stylized wording for the applied-for mark includes stylization that does indeed create a commercial impression separate and apart from the wording itself. And, the absence of a subject arguably would lead a potential consumer not to conclude anything, but to consider goods so labeled for purchase. For at least these reasons, Applicant respectfully submits that the refusal is, at best incomplete as lacking in support of the alleged conclusion. Accordingly, Applicant respectfully requests withdrawal of the refusal. |
|
GOODS AND/OR SERVICES SECTION (029)(current) | |
INTERNATIONAL CLASS | 029 |
DESCRIPTION | |
Processed fruit- and nut-based food bars; Frozen, frosted, preserved, processed, dried, cooked or crystallized fruit and vegetables extracts for use in prepared meals or food; Fruit-based organic food snacks also containing grain, vegetables, nuts or seeds; Prepared and prepackaged meals and entrees consisting primarily of egg with one or more of meat, fish, poultry, vegetable, cheese or onion; Vegetable-based raw food bars; prepared or packaged entrees consisting primarily of meat, fish, poultry or vegetables | |
FILING BASIS | Section 1(b) |
GOODS AND/OR SERVICES SECTION (029)(proposed) | |
INTERNATIONAL CLASS | 029 |
TRACKED TEXT DESCRIPTION | |
Processed fruit- and nut-based food bars; |
|
FINAL DESCRIPTION | |
Processed fruit- and nut-based food bars; Frozen, frosted, processed, dried, cooked or crystallized fruit and vegetable extracts for use in prepared meals or food; Fruit-based organic food snacks also containing grain, vegetables, nuts or seeds; Prepared and prepackaged meals and entrees consisting primarily of egg with one or more of meat, fish, poultry, vegetable, cheese or onion; Vegetable-based raw food bars | |
FILING BASIS | Section 1(b) |
GOODS AND/OR SERVICES SECTION (030)(current) | |
INTERNATIONAL CLASS | 030 |
DESCRIPTION | |
Bread; Bread and pastry; Gluten-free bread; Gluten-free pasta; Macaroni and cheese; Macaroni with cheese; Packaged meal kits consisting primarily of pasta or rice; Packaged meal mixes consisting primarily of pasta or rice; Cereal-based snack foods; Corn-based snack foods; Frozen foods, namely, grain and bread based appetizers, hors d'oeuvres, and canapés; Grain-based food bars; Grain-based food bars also containing soy, dried fruits, chocolate or nuts; Grain-based snack foods; Multigrain-based snack foods; Processed cereal-based food to be used as a breakfast food, snack food or ingredient for making other foods; Processed seeds used as a flavoring for foods and beverages; Processed, frozen, cooked or packaged whole grains; Quinoa-based food bars; Quinoa-based snack foods; Rice, pasta and noodles; Rice-based snack foods; Snack foods, namely, chocolate-based snack foods; Wheat-based snack foods; prepared or packaged entrees consisting primarily of pasta or rice | |
FILING BASIS | Section 1(b) |
GOODS AND/OR SERVICES SECTION (030)(proposed) | |
INTERNATIONAL CLASS | 030 |
TRACKED TEXT DESCRIPTION | |
Bread; Bread and pastry; Gluten-free bread; Gluten-free pasta; Macaroni and cheese; Macaroni with cheese; Packaged meal kits consisting primarily of pasta or
rice; Packaged meal mixes consisting primarily of pasta or rice; Cereal-based snack foods; Corn-based snack
foods; Frozen foods, namely, grain and bread based appetizers, hors d'oeuvres, and canapés; |
|
FINAL DESCRIPTION | |
Bread; Bread and pastry; Gluten-free bread; Gluten-free pasta; Macaroni and cheese; Macaroni with cheese; Packaged meal kits consisting primarily of pasta or rice; Packaged meal mixes consisting primarily of pasta or rice; Cereal-based snack foods; Corn-based snack foods; Frozen foods, namely, grain and bread based appetizers, hors d'oeuvres, and canapés; food bars containing soy, dried fruits, chocolate or nuts; Processed cereal-based food to be used as a breakfast food, snack food or ingredient for making other foods; Processed seeds used as a flavoring for foods and beverages; Processed, frozen, cooked or packaged whole grains; Quinoa-based food bars; Quinoa-based snack foods; Rice, pasta and noodles; Rice-based snack foods; Snack foods, namely, chocolate-based snack foods; Wheat-based snack foods; prepared or packaged entrees consisting primarily of pasta or rice | |
FILING BASIS | Section 1(b) |
GOODS AND/OR SERVICES SECTION (031)(class deleted) | |
ATTORNEY SECTION (current) | |
NAME | Duane C. Basch |
ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
YEAR OF ADMISSION | NOT SPECIFIED |
U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
FIRM NAME | BASCH & NICKERSON LLP |
STREET | 1751 PENFIELD ROAD |
CITY | ROCHESTER |
STATE | New York |
POSTAL CODE | 14526 |
COUNTRY | US |
PHONE | 585-899-3970 |
FAX | 5858993973 |
usptomail@bnpatentlaw.com | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
DOCKET/REFERENCE NUMBER | 1500 001 902 |
ATTORNEY SECTION (proposed) | |
NAME | Duane C. Basch |
ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
YEAR OF ADMISSION | XXXX |
U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
FIRM NAME | BASCH & NICKERSON LLP |
STREET | 1751 PENFIELD ROAD |
CITY | ROCHESTER |
STATE | New York |
POSTAL CODE | 14526 |
COUNTRY | United States |
PHONE | 585-899-3970 |
FAX | 5858993973 |
usptomail@bnpatentlaw.com | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
DOCKET/REFERENCE NUMBER | 1500 001 902 |
OTHER APPOINTED ATTORNEY | Michael J. Nickerson |
CORRESPONDENCE SECTION (current) | |
NAME | DUANE C. BASCH |
FIRM NAME | BASCH & NICKERSON LLP |
STREET | 1751 PENFIELD ROAD |
CITY | ROCHESTER |
STATE | New York |
POSTAL CODE | 14526 |
COUNTRY | US |
PHONE | 585-899-3970 |
FAX | 5858993973 |
usptomail@bnpatentlaw.com; dbasch@bnpatentlaw.com | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
DOCKET/REFERENCE NUMBER | 1500 001 902 |
CORRESPONDENCE SECTION (proposed) | |
NAME | Duane C. Basch |
FIRM NAME | BASCH & NICKERSON LLP |
STREET | 1751 PENFIELD ROAD |
CITY | ROCHESTER |
STATE | New York |
POSTAL CODE | 14526 |
COUNTRY | United States |
PHONE | 585-899-3970 |
FAX | 5858993973 |
usptomail@bnpatentlaw.com; dbasch@bnpatentlaw.com | |
AUTHORIZED TO COMMUNICATE VIA EMAIL | Yes |
DOCKET/REFERENCE NUMBER | 1500 001 902 |
SIGNATURE SECTION | |
RESPONSE SIGNATURE | /Duane C. Basch, Esq., Reg. No. 34,545/ |
SIGNATORY'S NAME | Duane C. Basch |
SIGNATORY'S POSITION | Attorney of Record |
SIGNATORY'S PHONE NUMBER | 585-899-3970 |
DATE SIGNED | 02/11/2020 |
AUTHORIZED SIGNATORY | YES |
FILING INFORMATION SECTION | |
SUBMIT DATE | Tue Feb 11 12:01:10 EST 2020 |
TEAS STAMP | USPTO/ROA-XX.XXX.XX.XXX-2 0200211120110062895-88439 310-7006180295b3b398caf3d 8e4dc4d3ffb0ed3ba81177b02 414c7e9daa971793f230-N/A- N/A-20200211114047236622 |
Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
OMB No. 0651-0050 (Exp 09/20/2020) |
U.S. APPLICATION SERIAL NO. 88439310
MARK: (design mark)
CORRESPONDENT ADDRESS:
DUANE C. BASCH
BASCH & NICKERSON LLP
1751 PENFIELD ROAD
PENFIELD, NEW YORK 14526
usptomail@bnpatentlaw.com
Response to Office Action dated August 12, 2019
Prior Pending Applications
The Office Action identified the following U.S. Applications as having potential conflicts, subject to examination and registration: 88439004, 88436748, 87902542, 87835660, 87908509, 87831757, and 88001212. Applicant reserves the right to present arguments in support of registration of Applicant’s mark over the referenced applications. As the particular basis, and analysis relative to a potential Section 2(d) refusal are not set forth with specificity, Applicant elects not to submit specific arguments at this time, but to reserve the right to address this issue later if a refusal is issued based upon one or more of the pending applications identified.
Section 2(d) Refusal – Likelihood of Confusion
The current application for registration has been refused because of an alleged likelihood of confusion with the marks in U.S. Registration Nos. 2087495, 3992729, 1225219, 4574427, 4574426, 4574425, 4574424, 3688759, 4884019, 2647455, 2655118, and 2667374.
In conducting an analysis of the likelihood of confusion, the seminal case involving §2(d), In In re E. I. du Pont de Nemours & Co. (“du Pont”), the U.S. Court of Customs and Patent Appeals discussed the factors relevant to a determination of likelihood of confusion. 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). In setting forth the factors, the court cautioned that, with respect to determining likelihood of confusion, "[t]here is no litmus rule which can provide a ready guide to all cases." Id. at 1361, 177 USPQ at 567. Not all of the factors are relevant and only those relevant factors for which there is evidence in the record must be considered. Id. at 1361-62, 177 USPQ at 567-68. Moreover, the TMEP acknowledges that the weight given to the relevant du Pont factors may vary. (TMEP §1207.01)
The du Pont factors include:
The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
The relatedness of the goods or services as described in the application and registration(s).
The similarity or dissimilarity of established, likely-to-continue trade channels.
The conditions under which and buyers to whom sales are made, i.e., "impulse" vs. careful, sophisticated purchasing.
The number and nature of similar marks in use on similar goods.
TMEP §1207.01(a)(vi), citing du Pont, 476 F.2d at 1362-63, 177 USPQ at 568-69; In re Thor Tech, Inc., 113 USPQ2d 1546 (TTAB 2015) ; In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272-74 (TTAB 2009); and Ass’n of the U.S. Army, 85 USPQ2d at 1271-73.
In addition to discussing relevant du Pont factors, the examining attorney must provide evidence showing that the goods and services are related to support a finding of likelihood of confusion. TMEP §1207.01, citing In re White Rock Distilleries Inc.,92 USPQ2d 1282, 1285 (TTAB 2009)
A. Refusal incomplete on its face. As an initial matter, as noted in the Office Action, “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)….” On the other hand, the refusal appears to have treated the analysis for likelihood of confusion as a “combination”, mischaracterizing the marks as though they are the same registration or originate from a single registrant. (e.g., “Registrant’s marks are FRUIT PERFECT, PERFECT PRAWNS, PASTA PERFECT, PERFECT CUCUMBERS, PERFECT HONEYDEWS, PERFECT BEANS, PERFECT SQUASH, PERFECT EGGPLANT, PERFECT PECAN, PERFECT PICKLES, PERFECT BEANS, and PERFECT PRODUCE in either standard characters or as a typed drawing.”) Applicant respectfully submits that the failure to address each of the registered marks on its own, and to set forth an analysis of the relevant du Pont factors for each cited registration leads to error as it is contrary to the instructions of du Pont to treat the analysis on a case-by-case basis. For at least this reason, Applicant respectfully submits that the refusal is at least incomplete on its face, and withdrawal of the refusal is respectfully requested.
B. du PontFactors
The following remarks are, to the extent possible in the absence of separate bases of refusal in the Office Action, set forth in response to the current combination refusal.
1. Similarity or Dissimilarity of Marks
When comparing the marks, "[a]ll relevant facts pertaining to appearance, sound, and connotation must be considered before similarity as to one or more of those factors may be sufficient to support a finding that the marks are similar or dissimilar." Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000). The Office Action fails to make a specific analysis of aby particular registration, and rather focuses on the use of a common term “PEFECT” in each of the cited registration to arrive at a conclusion that the marks are “confusingly similar”. Applicant respectfully disagrees.
Indeed, the Office Action itself cites to cases indicate that hold the proper test is not a side-by-side comparison, but a determination of “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)).” While seeming to acknowledge that Applicant’s mark is different (“stylization of the word PERFECT does not obviate a likelihood of confusion refusal “) the refusal nonetheless fails to make any analysis of the appearance, sound, connotation or a consumer’s (or average purchaser’s) commercial impression. Instead, based upon a narrow comparison of only the “word portions of the marks” a conclusion is set forth that the marks are “nearly identical in appearance, sound, connotation, and commercial impression”. (emphasis added) And, only after stating such a conclusion does the Office Action acknowledge that Applicant’s mark has a design element. Applicant respectfully contends that such an analysis is flawed as it has broken down the registered marks to a common word, and has improperly employed that piecemeal analysis to support a conclusion that, Applicant’s mark is confusingly similar, even though Applicant’s mark is not identical to any of the cited registrations.
Indeed, the “nearly identical” aspect is limited to only a portion of each of the registrations. Also note that the use of registrant’s disclaimers of additional terms, while arguably allowing for a focus on other terms in a mark, does not allow the balance of a registered mark to simply be ignored or removed from an analysis of similarity. Each of the registered marks cited in the refusal include additional words that are not part of the applied-for mark. Applicant respectfully contends that it is an error to eliminate disclaimed terms from a likelihood of confusion analysis.
Furthermore, the registered marks are significantly dissimilar from a visual perspective because graphical features are part of Applicant’s applied-for mark - thereby further distinguishing Applicant’s design mark in appearance, connotation and commercial impression from the cited registrations. For this reason, as well, Applicant respectfully contends that while there is some similarity in a literal element, overall the marks are dissimilar from Applicant’s applied-for mark in appearance, sound, connotation and commercial impression, thus favoring registration.
2. Relatedness of the Goods or Services
With respect to the alleged relatedness of goods, the Office Action merely lists, a of the description of goods for the associated registrations along with a conclusion of similarity.
As a first example, the registration No. 2087495 for FRUIT PERFECT, use of “fruit preserves,” is alleged to presumably encompasses all goods of the type described, including applicant’s more narrow “ preserved, processed, dried, cooked or crystallized fruit . . . extracts for use in prepared meals or food.” As noted above, Applicant has amended the description of goods to eliminate reference to preserves, and respectfully submits that the current description, and particularly the “Frozen, frosted, processed, dried, cooked or crystallized fruit and vegetable extracts for use in prepared meals or food” would not be understood or confused as characterizing fruit preserves. Accordingly, in view of Applicant’s amendments to the description of goods included herein, withdrawal of the refusal is respectfully requested.
Next, the Office Action states, relative to Registration No. 3992729 for PERFECT PRAWNS,
“the registration use(s) broad wording to describe ‘frozen entrees and appetizers consisting primarily of meat, fish, poultry, and/or vegetables with pasta; and microwavable meal kits featuring prepared food products, namely, frozen entrees and side dishes consisting primarily of meat, fish, poultry, and/or vegetables with pasta,’ which presumably encompasses all goods of the type described, including applicant’s more narrow ‘Prepared and prepackaged meals and entrees consisting primarily of egg with one or more of meat, fish, poultry, vegetable, cheese or onion’ and ‘prepared or packaged entrees consisting primarily of meat, fish, poultry or vegetables.’”
Applicant respectfully disagrees that the registrant’s description of frozen entrees and appetizers or sides encompasses Applicant’s description of goods. Nonetheless, Applicant has, at this time, amended the description for class 029 to remove the allegedly overlapping goods. In view of Applicant’s amendments, any refusal based upon Registration No. 3992729 is believed to have been overcome.
With respect to the further bases for refusal, particularly Registration Nos. 2647455 (PERFECT PICKLES), 4574426 (PERFECT HONEYDEWS), 4574427 (PERFECT CUCUMERS), 4574425 (PERFECT BEANS), 4574424 (PERFECT SQUASH), and 2655118 (PERFECT BEANS), Applicant has canceled the description of goods relative to class 031. As a result, withdrawal of the refusal based upon Registration Nos. 2647455, 4574426, 4574427, 4574425, 4574424, and 2655118 is respectfully requested.
Finally, considering the refusal based upon likelihood of confusion with Registration Nos. 2667374 and 3688759, Applicant again notes the cancelation of goods under class 031, and respectfully submits that no likelihood of confusion remains with regard to these registrations as a result of the cancelation.
3. Number and Nature of Similar Marks
Applicant notes that there are a number of registrations and/or applications that include the word “PERFECT”, a number of which are cited in the Office Action. Applicant respectfully submits that the number of registrations that have been granted for marks that include “PERFECT” suggests that the scope of such registrations should be narrowly characterized as other registrations of the same or similar-sounding mark were granted both before and after. Applicant respectfully submits that the number and nature of marks that are the same or similar indicate that this factor should be considered in favor of Applicant, and that Applicant’s design elements must be considered as distinctive relative to the registrations.
Refusal – Applied-for Mark is a Varietal Name
Registration was refused because the applied-for mark is a varietal name for goods set forth in Class 31. In response, Applicant has canceled claims to goods of class 31 and respectfully submits that the amendment of goods/services accompanying this response overcomes the refusal. Acknowledgement of the withdrawal of this refusal is respectfully requested.
Information Required Regarding Applied-for Mark
Applicant respectfully responds that the applied-for, stylized design mark ( ) is not presently known to or will be used as a varietal or cultivar name, and the applied-for mark has not been used or will be used in connection with a plant patent, utility patent, or certificate for plant variety protection.
Section 2(e)(1) Refusal -- Merely Descriptive
Registration of the applied-for was refused because the mark is alleged to be descriptive of Applicant’s goods. Trademark Act Section 2(e)(1) Applicant respectfully traverses this refusal.
As noted in TMEP §§1209.01(b), the refusal requires that “a mark must be merely descriptive or deceptively misdescriptive of the goods or services to which it relates. A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services,” and the “correct test is whether the mark conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods.” (citations omitted) In support of the refusal the Office Action sets forth evidence of various definitions of the term “perfect” but does not indicate or otherwise establish how the definitions are applicable to Applicant’s recited goods. The refusal simply concludes, without support, that “the wording PERFECT is merely laudatory of the supposed superior quality of applicant’s goods.” Applicant respectfully contends that such a conclusion fails to establish that the mark conveys an immediate idea of an ingredient, quality, characteristic, feature, function, purpose or use of the goods. Indeed, how could the mark communicate such information as a stylized, single word – with no subject. In the absence of any proof that the mark conveys an idea of “supposed superior quality” there is no support for the conclusion.
Furthermore, Applicant respectfully submits that the stylized wording for the applied-for mark includes stylization that does indeed create a commercial impression separate and apart from the wording itself. And, the absence of a subject arguably would lead a potential consumer not to conclude anything, but to consider goods so labeled for purchase. For at least these reasons, Applicant respectfully submits that the refusal is, at best incomplete as lacking in support of the alleged conclusion. Accordingly, Applicant respectfully requests withdrawal of the refusal.