To: | Fresh Trading Limited (charlmurphy@coca-cola.com) |
Subject: | U.S. Trademark Application Serial No. 88465918 - INNOCENT - 81338130 |
Sent: | September 11, 2019 01:39:59 PM |
Sent As: | ecom103@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 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88465918
Mark: INNOCENT
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Correspondence Address:
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Applicant: Fresh Trading Limited
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Reference/Docket No. 81338130
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: September 11, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
SECTION 2(d) PARTIAL REFUSAL—LIKELIHOOD OF CONFUSION
THIS PARTIAL REFUSAL APPLIES ONLY TO THE GOODS SPECIFIED THEREIN
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.
Applicant seeks to register INNOCENT (& design), for, in relevant part, “confectionery, namely, candy, cookies, confectionery made from sugar, chocolate, caramel, hazelnut, rice, grains, granola or oats; pastry; ice cream; ice cream products and frozen confections; preparations for making ices, ice cream, ice cream products and frozen confections, namely, concentrates used in the preparation of flavoring syrups for shaved ice confections, powders for making ice cream, starch-based binding agents for ice cream; chocolate; products made principally of chocolate, namely, chocolate based ready to eat candies and snacks, chocolate bars, chocolate covered nuts, chocolate confections; chocolate based drinks; desserts containing any of the above products, namely, dessert puddings, rice-based pudding desserts, dessert souffles, and ice cream desserts; meringues” in Class 030, and “beer” in Class 032.
The cited registrations are:
U.S. Registration No. 4809556, for, INNOCENT CHOCOLATE EAT CHOCOLATE. LOSE WEIGHT. (& design, w/ “CHOCOLATE EAT CHOCOLATE. LOSE WEIGHT.” disclaimed), for, “Chocolate; Chocolate and chocolates; Chocolate bars; Chocolate candies; Chocolate chips; Chocolate confections; Chocolate covered cocoa nibs; Chocolate covered roasted coffee beans; Chocolate-based meal replacement bars; Chocolate-based ready-to-eat food bars; Chocolates and chocolate based ready to eat candies and snacks; Snack foods, namely, chocolate-based snack foods,” and;
U.S. Registration No. 4388008, for, INNOCENT INDULGENCE, for, “Desserts and gift packages containing confectionaries, namely, cheesecakes, cookies/cookie bars, brownies, pies, parfaits and toppings,” and;
U.S. Registration No. 4378782, for, INNOCENCE, for, “Ale, Beer, Larger, Stout, non-alcoholic beer, low-calorie beer, mixed drinks containing primarily beer.”
Comparison 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).
When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). In the present case, although applicant’s mark includes a design element, the literal element, “INNOCENT,” is the dominant distinctive element. Similarly, the wording in Reg. No. 4809556 is the dominant element in the cited registration.
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). As noted above, the wording “CHOCOLATE EAT CHOCOLATE. LOSE WEIGHT” is disclaimed in the registration; thus, the wording “INNOCENT” is the dominant literal element in this cited registration.
Therefore, the wording “INNOCENT” is the dominant distinctive element in the cited registrations and in applicant’s mark. Because the dominant distinctive elements in the marks are identical, the marks present highly similar overall commercial impressions.
In regards to Reg. No. 4378782, where the goods of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b). As discussed below, the relevant goods of the applicant and registrant are identical. Thus, the degree of similarity in the mark required to show a likelihood of confusion is lessened.
The wording “INNOCENCE” in Reg. No. 4378782 and “INNOCENT” in the applied-for mark are highly similar aurally, in appearance, and in regards to their overall meanings and commercial impressions. Because the dominant distinctive element is highly similar to the entirety of the mark in this cited registration, and because the degree of similarity required to show a likelihood of confusion is lessened, the marks are confusingly similar.
Thus, this factor favors a refusal.
Comparison of the Goods
In this case, the application uses broad wording to describe “confectionery, namely, candy, cookies, confectionery made from sugar, chocolate, caramel, hazelnut, rice, grains, granola or oats; chocolate; products made principally of chocolate, namely, chocolate based ready to eat candies and snacks, chocolate bars, chocolate covered nuts, chocolate confections; chocolate based drinks; desserts containing any of the above products, namely, dessert puddings, rice-based pudding desserts, dessert souffles, and ice cream desserts; meringues,” which presumably encompasses all goods of the type described, including the registrants’ more narrowly described chocolate goods, confectioneries, and desserts. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
In regards to applicant’s “pastry; ice cream; ice cream products and frozen confections; preparations for making ices, ice cream, ice cream products and frozen confections, namely, concentrates used in the preparation of flavoring syrups for shaved ice confections, powders for making ice cream, starch-based binding agents for ice cream,” the attached Internet evidence, consisting of excerpts from third-party websites, establishes that the same entities often sell both the goods of the applicant and the registrants, and market such goods under the same marks through the same trade channels to the same consumers. See attached evidence from http://andersenssantabarbara.com, http://www.bigislandcandies.com, www.swisscolony.com, and http://www.godiva.com. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
In regards to Reg. No. 4378782, the goods in the application and registration are identical in regards to “beer.” Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods are related.
Because the marks are highly similar and the goods are identical, encompassing, or closely related, registration is refused in regards to the aforementioned goods pursuant to Section 2(d) of the Trademark Act.
IDENTIFICATION OF GOODS—AMENDMENT REQUIRED
Class 030
The wording "ices" is unacceptable as indefinite because applicant must clarify that the ices are edible ices. See id. See suggested amendment below.
SUGGESTED AMENDMENTS
Applicant may adopt the following identification, if accurate:
Class 029 (no changes)
Dairy products, namely, dairy-based food beverages, dairy-based spreads, butter, cream and creme fraiche; milk and milk products, namely, flavoured milk, organic milk, albumin milk, soy milk, coconut milk, almond milk, condensed milk, milk powder, milk substitutes and milk-shakes; drinks consisting of dairy products, namely, dairy based beverages; yoghurts; yogurt products, namely, flavoured yogurts, custard style yoghurt; yoghurt drinks; products consisting wholly of or principally wholly of yoghurt; yoghurts incorporating jellies, jams, fruits, fruit sauces, fruit purees, chocolate, nuts, cereals, cereal products or cereal preparations as a condiment, flavouring or ingredient thereof; snack foods consisting principally of vegetables; soup
Class 030
Processed cereals; preparations made from cereals, namely, cereal-based snack foods, cereal bars; flour; preparations made from flour, namely, flour-based chips; sausage rolls; quiches; sandwiches; confectionery, namely, candy, cookies, confectionery made from sugar, chocolate, caramel, hazelnut, rice, grains, granola or oats; bread; pastry; edible ices; ice cream; ice cream products and frozen confections; preparations for making ices, ice cream, ice cream products and frozen confections, namely, concentrates used in the preparation of flavoring syrups for shaved ice confections, powders for making ice cream, starch-based binding agents for ice cream; chocolate; products made principally of chocolate, namely, chocolate based ready to eat candies and snacks, chocolate bars, chocolate covered nuts, chocolate confections; tea based food and beverage products; tea-based beverages; fruit teas; iced tea; chocolate based drinks; green tea; coffee; cocoa; desserts containing any of the above products, namely, dessert puddings, rice-based pudding desserts, dessert souffles, and ice cream desserts; meringues
Class 032 (no changes)
Non-alcoholic beverages, namely, non-carbonated soft drinks and non-carbonated, non-alcoholic frozen flavoured beverages; fruit drinks; fruit juices; mineral water; aerated beverages, namely, carbonated waters, fruit flavoured carbonated drinks, carbonated non-alcoholic drinks; syrups for making beverages; beers; smoothies; fruit smoothies; coconut water
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.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
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/Michael FitzSimons/
Michael FitzSimons
Trademark Examining Attorney
Law Office 103
(571) 272-0619
michael.fitzsimons@uspto.gov
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