To: | Daily Harvest, Inc. (mwallach@mccarter.com) |
Subject: | U.S. Trademark Application Serial No. 88463275 - THE DIRT - 130222 |
Sent: | August 27, 2019 05:56:12 PM |
Sent As: | ecom101@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88463275
Mark: THE DIRT
|
|
Correspondence Address: |
|
Applicant: Daily Harvest, Inc.
|
|
Reference/Docket No. 130222
Correspondence Email Address: |
|
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 27, 2019
Summary of Issues
SUMMARY OF ISSUES:
Refusal -- Section 2(d) -- Likelihood of Confusion
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5072844. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods and/or services. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
In this case, the applicant seeks registration of THE DIRT for “Downloadable newsletters in the fields of food, ingredients, food growers and producers, restaurants and other food providers, recipes, and cooking information; downloadable audio and video material featuring information the fields of food, ingredients, food growers and producers, restaurants and other food providers, recipes, and cooking; downloadable podcasts in the fields of food, ingredients, food growers and producers, restaurants and other food providers, recipes, and cooking information,” in International Class 9, “Printed newsletters in the fields of food, ingredients, food growers and producers, restaurants and other food providers, recipes, and cooking information,” in International Class 16, “Providing a website featuring blogs and non-downloadable publications in the nature of newsletters and articles in the fields of food, ingredients, food growers and producers, restaurants and other food providers, recipes, and cooking information; entertainment services, namely, providing podcasts in the fields of food, ingredients, food growers and producers, restaurants and other food providers, recipes, and cooking information; providing a website featuring non-downloadable audio and video files featuring information on food, ingredients, food growers and producers, restaurants and other food providers, recipes, and cooking,” and “Providing a website featuring information in the fields of food, ingredients, food growers and producers, restaurants and other food providers, recipes, and cooking information; providing information in the fields of food, ingredients, food growers and producers, recipes, and cooking information,” in International Class 43. The mark in U.S. Registration No. 5072844 is DIRT for “On-line journals, namely, blogs featuring food and food industry related subject matter, including profiles, interviews, essays and recipes,” in International Class 41.
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).
In this case, the marks are virtually identical. The only difference between them is the addition of the term THE to the registered mark. This addition, however, is not sufficient to distinguish the marks. When comparing similar marks, the Trademark Trial and Appeal Board has found that inclusion of the term “the” at the beginning of one of the marks will generally not affect or otherwise diminish the overall similarity between the marks. See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE “virtually identical” marks; “[t]he addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.”); In re Narwood Prods. Inc., 223 USPQ 1034, 1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC-MAKERS “virtually identical” marks; the inclusion of the definite article “the” is “insignificant in determining likelihood of confusion”).
Thus, the marks themselves are confusingly similar.
Here, the goods and services are very similar, if not identical in part. Both the applicant and registrant offer blogs pertaining to food and the food industry. Applicant’s goods are also related in that the subject matter is very similar and only the method of delivery varies. This is evidenced by the proposed identifications of goods and services. The registrant’s specimen of record shows the nature of its services and is attached hereto.
Thus, because the marks are virtually identical and the goods and services related, registration is refused under Section 2(d) of the Trademark Act.
Requirement -- Identification of Goods and Services
Applicant may adopt the following identification, if accurate (changes in bold):
“Downloadable newsletters in the fields of food, ingredients, food growers and producers, restaurants and other food
providers, recipes, and cooking information; downloadable audio and video material recordings and files featuring information in
the fields of food, ingredients, food growers and producers, restaurants and other food providers, recipes, and cooking; downloadable podcasts in the fields of food, ingredients, food growers and
producers, restaurants and other food providers, recipes, and cooking information,” in International Class 9;
“Printed newsletters in the fields of food, ingredients, food growers and producers, restaurants and other food providers, recipes, and cooking information,” in International Class 16;
“Providing a website featuring blogs and non-downloadable publications in the nature of newsletters and articles in the fields of food, ingredients, food growers and producers, restaurants and other food providers, recipes, and cooking information; entertainment services, namely, providing podcasts in the fields of food, ingredients, food growers and producers, restaurants and other food providers, recipes, and cooking information; providing a website featuring non-downloadable audio and video files featuring information on food, ingredients, food growers and producers, restaurants and other food providers, recipes, and cooking,” in International Class 41;
“Providing a website featuring information in the fields of food, ingredients, food growers and
producers, restaurants and other food providers, recipes, and cooking information; providing information in the fields of food, ingredients, food growers and
producers, recipes, and cooking information,” in International Class 43;
“Providing a website featuring information in the fields of food growers and producers; providing information in the field of food growers and producers,” in International Class 44.
Applicant may amend the identification to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e). 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.
Therefore, applicant must either (1) restrict the application to the number of classes covered by the fees already paid, or (2) submit the fees for each additional class.
(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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least 5 classes; however, applicant submitted a fee(s) sufficient for only 4 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.
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
/Michael P. Keating/
Trademark Attorney
Law Office 101
571-272-9177
Michael.Keating@uspto.gov (informal inquiries only)
RESPONSE GUIDANCE