To: | Société des Produits Nestlé S.A. (docket@hollandhart.com) |
Subject: | U.S. Trademark Application Serial No. 88445804 - GARDEN GOURMET - 82145.2595 |
Sent: | August 07, 2019 01:27:57 PM |
Sent As: | ecom120@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88445804
Mark: GARDEN GOURMET
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Correspondence Address: |
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Applicant: Société des Produits Nestlé S.A.
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Reference/Docket No. 82145.2595
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: August 07, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5347365, 5083214, 3555914, 2691849, 1615879, and 1615028. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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.
The following chart lists the marks, their registration numbers, and the goods:
Registration No. |
Mark |
Goods |
Applied-For Mark |
GARDEN GOURMET |
Preserved vegetables; frozen vegetables; dried vegetables; cooked vegetables; preserved fruits, frozen fruits, dried fruits; cooked fruits; foods prepared from cereal protein-based meat substitutes; food spreads prepared from vegetables; food spreads prepared from fruits; food spreads prepared from grain protein; food spreads of mushroom-based meat substitutes, food spreads of soybean-based meat substitutes, food spreads of vegetable-based meat substitutes, food spreads of bean-based meat substitutes; prepared meals consisting mainly of soy bean-based meat substitutes; Prepared meals consisting mainly of meat substitutes prepared from mushroom; Prepared meals consisting mainly of meat substitutes prepared from soybean; Prepared meals consisting mainly of meat substitutes prepared from beans; Prepared meals consisting mainly of meat substitutes prepared from vegetables; vegetarian foods for consumption based on vegetables; soy bean-based meat substitute; vegetarian foods for consumption based on soybeans, vegetarian foods for consumption based on beans; Meat substitutes based on vegetables, Meat substitutes based on mushrooms, Meat substitutes based on beans; protein prepared from milk for human consumption; Hummus; hummus-based salads; hummus-based spreads; vegetable salad; fruit salad; Preparations for making soups, soups; Starters mainly made from pasta; starters mainly prepared from cereals, starters mainly prepared from flour, starters mainly prepared from tapioca; Pasta; chocolate dips, cocoa dips, honey dips; Sauces (spices), dressing for salads; dipping sauces |
5347365 |
GARDEN FRESH GOURMET |
Dips; Guacamole; Hummus |
5083214 |
GARDEN FRESH GOURMET |
Soups |
3555914 |
GOURMET GARDENS |
Processed vegetables and fruits |
2691849 |
GOURMET GARDEN |
[Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; bread and pastry; salt,] pepper, [mustards; vinegar, ]sauces; processed herbs and spice blends |
1615879 |
GARDEN GOURMET |
Frozen vegetable and grain protein foods used as substitutes for meat |
1615028 |
GARDEN GOURMET |
Frozen vegetable and grain protein foods used as substitutes for meat |
Similarity of the Marks
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Further, applicant’s mark is similar to all of the registered marks because they contain similar terms. 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).
Thus, applicant’s mark is similar to the registered marks for likelihood of confusion purposes.
Similarity or Relatedness of the Goods
In this case, the application uses broad wording to describe fruits, vegetables, meat substitutes, dipping sauces, hummus, soups, and sauces, which presumably encompasses all goods of the type described, including registrants’ narrower fruits, vegetables, meat substitutes, dipping sauces, hummus, soups, and sauces. 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 registrants’ 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 registrants’ goods are related.
Conclusion
Given that the applied-for mark is confusingly similar to the registrants’ marks in sound and appearance and that applicant’s goods are related to registrants’ goods, applicant is rightly refused registration under Section 2(d) for a likelihood of confusion.
It is important to note that 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, 1025 (Fed. Cir. 1988). This is because 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).
Applicant should note the following additional ground for refusal.
CLARIFICATION OF IDENTIFICATION OF GOODS
Several entries in the identification of goods are indefinite and overly broad and must be clarified as to the nature or specific type of goods provided, as indicated further below. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01, 1402.03. Applicant’s goods encompass goods in Classes 1, 29, 30, and 31 as shown in the suggestion below. If applicant adds an international class to the application, applicant must comply with the multiple-class application requirements in this Office action.
Applicant may adopt the following identification of goods, if accurate:
Class 1: “Proteins for the food industry, namely, protein prepared from milk for human consumption.”
Class 29: “Preserved vegetables; frozen vegetables; dried vegetables; cooked vegetables; preserved fruits, frozen fruits, dried fruits;
cooked fruits; foods prepared from cereal; protein-based meat substitutes; food spreads prepared from vegetables; food spreads prepared from fruits; food spreads prepared from grain protein; food spreads of mushroom-based meat substitutes, food spreads of soybean-based meat substitutes, food spreads of vegetable-based meat
substitutes, food spreads of bean-based meat substitutes; prepared meals consisting mainly of soy bean-based meat substitutes; Prepared meals consisting mainly of meat substitutes prepared from
mushroom; Prepared meals consisting mainly of meat substitutes prepared from soybean; Prepared meals consisting mainly of meat substitutes prepared from beans; Prepared meals consisting mainly of
meat substitutes prepared from vegetables; vegetarian foods for consumption based on vegetables, namely, {specify, e.g., vegetarian sausages, vegetable-based meat substitutes};
soy bean-based meat substitute; vegetarian foods for consumption based on soybeans, namely, {specify, e.g., meat substitutes}; vegetarian foods for consumption based on
beans, namely, {specify, e.g., meat substitutes, canned beans}; Meat substitutes based on vegetables, Meat substitutes based on mushrooms, Meat substitutes based on beans;
protein prepared from milk for human consumption, namely, protein milk; Hummus; hummus-based salads; hummus-based spreads; vegetable salad; fruit salad; Preparations for making
soups, soups.”
Class 30: “{Indicate frozen, prepared or packaged} starters mainly made from pasta; {Indicate frozen, prepared or packaged} starters mainly prepared from cereals; starters mainly prepared from flour, namely, {specify, e.g., bread}; starters mainly prepared from tapioca, namely, {specify, e.g., tapioca bread}; Pasta; dipping sauces, namely, chocolate dips, cocoa dips, honey dips; Sauces being spices; dressing for salads; dipping sauces; foods prepared from cereal, namely, {specify, e.g., cereal bars, cereal-based snack foods}; grain based snack foods, namely, food spreads prepared from grain protein.”
Class 31: “Vegetarian foods for consumption based on vegetables, namely, fresh vegetables; vegetarian foods for consumption based on soybeans, namely, young fresh soybeans in the pod (eda-mame); vegetarian foods for consumption based on beans, namely, fresh beans.”
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
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least four classes; however, applicant submitted a fee sufficient for only two classes. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
In this case, applicant must disclaim the wording “GOURMET” because it is not inherently distinctive. This unregistrable term is merely descriptive of a feature of applicant’s goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
The attached evidence from Merriam-Webster defines “gourmet” as “of, relating to, or being high quality, expensive, or specialty food typically requiring elaborate and expert preparation.” Thus, the wording “gourmet” merely describes a feature of applicant’s goods, namely, that applicant’s foods are high quality, expensive, or specialty foods.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “GOURMET” apart from the mark as shown.
For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
ATTORNEY BAR INFORMATION REQUIRED
RESPONSE GUIDELINES
ASSISTANCE
TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.
How to respond. Click to file a response to this nonfinal Office action
/Clare Cahill/
Examining Attorney
Law Office 120
(571) 272-5218
clare.cahill@uspto.gov
RESPONSE GUIDANCE