Response to Office Action

PERFECT

Perfect Foods & Manufacturing, LLC

Response to Office Action

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)

Response to Office Action


The table below presents the data as entered.

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; Frozen, frosted, preserved, processed, dried, cooked or crystallized fruit and vegetables extracts for use in prepared meals or food; 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; prepared or packaged entrees consisting primarily of meat, fish, poultry or vegetables
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; Grain-based food bars; food bars containing soy, dried fruits, chocolate or nuts; Grain-based food bars also 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; Grain-based snack foods; Processed seeds used as a flavoring for foods and beverages; Multigrain-based snack foods; 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
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
EMAIL 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
EMAIL 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
EMAIL 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
EMAIL 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)

Response to Office Action


To the Commissioner for Trademarks:

Application serial no. 88439310 PERFECT (Stylized and/or with Design, see http://uspto.report/TM/88439310/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

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.



CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant hereby deletes the following class of goods/services from the application.
Class 031 for Fruit, fresh; Vegetables, fresh; Fresh fruit and vegetables; Fresh fruits and vegetables, fresh herbs; Organic fresh fruit; Organic fresh vegetables; Organic fresh fruit and vegetables; Raw fruits; Raw vegetables; Unprocessed fruits

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 029 for 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
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
Tracked Text 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; 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; prepared or packaged entrees consisting primarily of meat, fish, poultry or vegetablesClass 029 for 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), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Applicant proposes to amend the following class of goods/services in the application:
Current: Class 030 for 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
Original Filing Basis:
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

Proposed:
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; Grain-based food bars; food bars containing soy, dried fruits, chocolate or nuts; Grain-based food bars also 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; Grain-based snack foods; Processed seeds used as a flavoring for foods and beverages; Multigrain-based snack foods; 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 riceClass 030 for 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), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant.

The applicant's current attorney information: Duane C. Basch. Duane C. Basch of BASCH & NICKERSON LLP, is located at

      1751 PENFIELD ROAD
      ROCHESTER, New York 14526
      US
The docket/reference number is 1500 001 902.

The phone number is 585-899-3970.

The fax number is 5858993973.

The email address is usptomail@bnpatentlaw.com

The applicants proposed attorney information: Duane C. Basch. Other appointed attorneys are Michael J. Nickerson. Duane C. Basch of BASCH & NICKERSON LLP, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1751 PENFIELD ROAD
      ROCHESTER, New York 14526
      United States
The docket/reference number is 1500 001 902.

The phone number is 585-899-3970.

The fax number is 5858993973.

The email address is usptomail@bnpatentlaw.com

Duane C. Basch submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: DUANE C. BASCH. DUANE C. BASCH of BASCH & NICKERSON LLP, is located at

      1751 PENFIELD ROAD
      ROCHESTER, New York 14526
      US
The docket/reference number is 1500 001 902.

The phone number is 585-899-3970.

The fax number is 5858993973.

The email address is usptomail@bnpatentlaw.com; dbasch@bnpatentlaw.com

The applicants proposed correspondence information: Duane C. Basch. Duane C. Basch of BASCH & NICKERSON LLP, is located at

      1751 PENFIELD ROAD
      ROCHESTER, New York 14526
      United States
The docket/reference number is 1500 001 902.

The phone number is 585-899-3970.

The fax number is 5858993973.

The email address is usptomail@bnpatentlaw.com; dbasch@bnpatentlaw.com

SIGNATURE(S)
Response Signature
Signature: /Duane C. Basch, Esq., Reg. No. 34,545/     Date: 02/11/2020
Signatory's Name: Duane C. Basch
Signatory's Position: Attorney of Record

Signatory's Phone Number: 585-899-3970

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    DUANE C. BASCH
   BASCH & NICKERSON LLP
   
   1751 PENFIELD ROAD
   ROCHESTER, New York 14526
Mailing Address:    Duane C. Basch
   BASCH & NICKERSON LLP
   1751 PENFIELD ROAD
   ROCHESTER, New York 14526
        
Serial Number: 88439310
Internet Transmission Date: Tue Feb 11 12:01:10 EST 2020
TEAS Stamp: USPTO/ROA-XX.XXX.XX.XXX-2020021112011006
2895-88439310-7006180295b3b398caf3d8e4dc
4d3ffb0ed3ba81177b02414c7e9daa971793f230
-N/A-N/A-20200211114047236622



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