Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

FINAL OFFICE ACTION

 

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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  April 10, 2020

 

 

INTRODUCTION

 

This Office action is in response to applicant’s communication filed on March 12, 2020.

 

In a previous Office action dated September 12, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:  Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.

 

In addition, applicant was required to satisfy the following requirements:  Respond to the inquiry into the identity of “Suzie”, amend the Identification of Goods to avoid a deceptiveness refusal and to disclaim the word “ORGANICS” in the mark.

 

Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: Inquiry into the identity of “Suzie”, amend the Identification of Goods to avoid a deceptiveness refusal and to disclaim the word “ORGANICS”.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

SUMMARY OF ISSUES MADE FINAL that applicant must address:

• Section 2(d) Refusal – Likelihood of Confusion

 

1. SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 5353432.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

As set forth in the September 12, 2019 Office action, applicant’s mark SUZIE'S ORGANICS, in standard characters, in International Class 30 for “ready-made sauces; dipping sauces; cocktail sauces; soy sauce; salad dressings; Worcestershire sauce; tartar sauce” was refused registration under Trademark Act Section 2(d) because of the likelihood of confusion with registrant’s mark, SUSIE'S HOT SAUCE, a design in International Class 30 for food condiments, specifically hot sauce. 

 

As explained in the September 12, 2019 Office action, the marks are nearly identical in part because the dominant word that creates the commercial impression for each mark is SUZIE'S or the alternate spelling SUSIE’S.  These terms are not only nearly identical in appearance, they are also phonetically identical and have the same commercial impression being a possessive for the diminutive form of SUSAN.  SUZIE'S/SUSIE’S is the dominant word in both marks because the wording ORGANICS and HOT SAUCE is descriptive of applicant’s and registrant’s goods, respectively.  Because the dominant word in both marks is SUZIE'S/SUSIE’S, there is a likelihood of confusion between the source of applicant’s and registrant’s goods because they create a similar commercial impression, i.e., both sets of goods being produced by an entity whose name is pronounced SUZIE/SUSIE.

 

The fact that applicant disclaimed the word “ORGANICS” in the March 12, 2020 response supports the above analysis.

 

As set forth in the September 12, 2019 Office action, applicant’s and registrant’s goods were considered related for likelihood of confusion purposes based on evidence that the same entity commonly produces the relevant goods and markets the goods under the same mark and/or the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. 

 

In the March 12, 2020 response, applicant did not present any arguments about the relatedness of the goods.  Instead, it argued that its mark should be allowed to proceed to publication and registration because of applicant’s ownership of prior registered trademarks for SUZIE’S, SUZIE’S (logo), SUZIE’S ORGANICS and SUZIE’S...PUT A LITTLE MUSTARD ON IT! in the condiment category, with the last two being allowed to register despite being filed after registrant’s mark.

 

Applicant essentially argues that no likelihood of confusion exists because (1) applicant owns prior registrations for a substantially similar or identical marks for identical or identical in part goods to those in the application, and (2) such registrations have co-existed with the cited registration.  Applicant concludes there is no likelihood of confusion between the applied-for mark and registrant’s mark; therefore, the trademark examining attorney should withdraw the Trademark Act Section 2(d) refusal.   

 

However, in In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012), the Trademark Trial and Appeal Board only reversed a Section 2(d) refusal based on an applicant’s prior registration for the following unique set of facts:  (1) the marks in applicant’s prior registration and application were virtually identical (“no meaningful difference” existed between them, such that they were “substantially similar”); (2) the goods were identical in part; and (3) the prior registration had co-existed for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds).  See TMEP §1207.01.  The Board acknowledged these facts constituted a “unique situation,” such that an applicant’s prior registration would generally need to fit within these precise parameters to overcome a Section 2(d) refusal.  In re Strategic Partners, Inc., 102 USPQ2d at 1400; see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793-94 (TTAB 2017); TMEP §1207.01.

 

In this case, by contrast, applicant’s prior registration does not correspond to the facts set forth in In re Strategic Partners, Inc.  See TMEP §1207.01.  Specifically, registrant’s mark registered December 12, 2017, so registrant’s and applicant’s prior registrations have not yet co-existed for at least five years with the cited registration.  Thus applicant’s prior registration does not obviate the Section 2(d) refusal.

 

Further, the last two marks, SUZIE’S ORGANICS and SUZIE’S...PUT A LITTLE MUSTARD ON IT! (U.S. Registration Nos. 5755891 and 5208699), list their goods as organic ketchup; organic mayonnaise; organic mustard, and mustard, respectively.  Those goods are different than registrant’s goods, which is “food condiments, specifically hot sauce.” 

 

In contrast, the foods for the applied for mark are listed as “dipping sauces, cocktail sauces, soy sauce, ketchup, mayonnaise, Worcestershire sauce, and tartar sauce.”  According to the attached article from Wikipedia, the term “dipping sauce” is used to describe a sauce that food is typically put, dipped, or added into.  Specifically listed as a type of dipping sauce is hot sauce or chili sauce, a spicy dip made from peppers.  The attached screenshots from Bonanza (Bibigo Gochujang Sauce), Greatist, Ebay, Food52, LOTTAVEG, Westside Seattle, and Round Eye Supply LLC, also show that it is common to refer to hot sauce as a type of dipping sauce.  Therefore, by broadly defining its goods as dipping sauces, applicant uses broad wording that encompasses registrant’s goods of hot sauce. 

 

Further, applicant presents a number of arguments suggesting why the prior examining attorney decided to permit registrant’s mark to register, specifically that the use of a chili pepper as the apostrophe in the word SUSIE’S, was sufficiently distinctive, and that the word SUSIE’S was sufficiently different from the word SUZIE’S that consumers would not be confused.  Those arguments are unpersuasive because prior decisions and actions of other trademark examining attorneys in registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each case is decided on its own facts, and each mark stands on its own merits.  In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793 n.10 (quoting In re Boulevard Entm’t, 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)). 

 

Specifically, in this case, applicant seeks to register a mark in which the dominant word that creates the commercial impression is similar in appearance, phonetically identical and has the same commercial impression as the dominant word in registrant’s mark and its goods are so broadly worded that they encompass the goods produced by registrant.  Allowing applicant’s mark to register would create the likelihood of confusion because applicant could then produce and sell SUZIE’S ORGANICS hot sauce (because that is a type of dipping sauce) in the same channels of trade as registrant’s SUSIE'S HOT SAUCE.  In light of that possibility, applicant’s arguments are unpersuasive and the Trademark Act Section 2(d) Refusal is maintained.

 

In the March 12, 2020 response, applicant did not present any arguments about the relatedness of the goods.  To supplement the evidence regarding the relatedness of the goods in the Office action, the attached Internet evidence, consisting of screenshots from various manufactures and merchants listed below, establishes that the same entity commonly produces the relevant goods and markets the goods under the same mark and/or the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.

 

Hellman’s makes hot sauce, ketchup, mustard, mayonnaise, tartar sauce and other sauces.

Heinz makes hot sauce, mustard, barbeque sauce, and other dipping sauces

Williams-Sonoma sells hot sauce, ketchup, barbecue sauce, and various dipping sauces

Zatarain’s makes hot sauce and mustard

Made in Oregon sells hot sauce and ketchup, mustard, Worcestershire sauce and barbecue sauce

 

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).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal 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.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal in this Office action.  See TMEP §§705.02, 709.06. 

 

The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

If applicant does not respond within six months of the date of issuance of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by:

 

(1)  Submitting a response that fully obviates the refusal, if feasible; and/or

 

(2)  Filing an appeal to the Trademark Trial and Appeal Board.

 

37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  37 C.F.R. §2.6(a)(15).

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

Edward Germick

/Edward J. Germick/

Examing Attorney

Law Office 102

(571) 272-5862

edward.germick@uspto.gov

 

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on April 10, 2020 for

U.S. Trademark Application Serial No. 88470914

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

Edward Germick

/Edward J. Germick/

Examing Attorney

Law Office 102

(571) 272-5862

edward.germick@uspto.gov

 

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from April 10, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

 

 

 

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”