United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88471456
Mark: CHULA BRAND
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Correspondence Address: LAW OFFICE OF MICHAEL J. DALEY, PLLC
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Applicant: MARTINEZ PORTE, JUAN CARLOS
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Reference/Docket No. N/A
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 16, 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.
Summary of Issues
· Section 2(d) Refusal—Likelihood of Confusion
· Advisory: Prior Pending Applications
· Identification of Goods
· Disclaimer Required
· Varietal Name Information Request
· Mark Description
· Mark Differs on Drawing and Foreign Registration
· Mark Image Unclear
· Portrait of Individual—Inquiry
· TEAS Plus Application Requirements Not Met—Additional Fee Required
Section 2(d) Refusal—Likelihood of Confusion
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 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. 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 and differences in the marks.”); TMEP §1207.01.
Applicant’s applied-for mark contains the literal element CHULA BRAND under an image of a smiling woman for “Agricultural grains for planting; Agricultural seeds, namely, not contained in other categories; Animal feed; Fresh fruit and vegetables; Fresh fruits and vegetables, fresh herbs; Live animals; Malt for brewing and distilling; Seeds for fruit and vegetables; Seeds for planting; Agricultural seeds; Crop seeds; Fruit seeds; Live plants; Natural plants and flowers; Seeds for agricultural purposes; Seeds for horticultural purposes; Unprocessed seeds for agricultural use.”
Registrant’s marks contains the literal element LA CHULA under an image of a smiling woman for:
U.S. Registration No. 3371547 is for fruit conserves, vegetable conserves
U.S. Registration No. 3377138 is for rice, sauces, salad sauces
U.S. Registration No. 5519737 is for Beans, preserved; Compotes; Edible oils and fats; Eggs; Jams; Jellies; Meat, fish, poultry and game, not live; Milk; Milk products excluding ice cream, ice milk and frozen yogurt; Vegetables, namely, preserved, frozen, dried and cooked vegetables and legumes; Canned beans; Processed beans; Refried beans.
U.S. Registration No. 5635508 is for preserved, frozen, dried, and cooked fruits.
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).
Here, the registrant’s and applicant’s mark share the term CHULA and therefore are similar in appearance, sound, connotation, and commercial impression. 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).
In addition, both marks feature the design of a smiling woman above the word portion of the mark, giving a commercial impression. Although the design portions of the marks differ in appearance, the similarity in the dominant word portion of the marks and the commercial impression of the designs makes consumer confusion likely. 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. 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)).
Based on the foregoing, applicant’s applied-for mark and registrant’s mark are sufficiently similar to find a likelihood of confusion.
Comparison of the Goods
Because applicant’s and registrant’s marks are similar and the goods are related, there is a likelihood of confusion and applicant’s applied-for mark must be refused under Section 2(d) of the Lanham Act.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
Advisory: Prior Pending Applications
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. However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
Identification of Goods
Applicant must amend this wording to specify the common commercial or generic name of the goods. See TMEP §1402.01. If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses. See id.
Applicant may substitute the following wording, if accurate:
Class 31: Agricultural grains for planting; Agricultural seeds, namely, {indicate specific type of seed, e.g., soybean, flower, etc.}; Animal feed; Fresh fruit and vegetables; Fresh fruits and vegetables, fresh herbs; Live animals; Malt for brewing and distilling; Seeds for fruit and vegetables; Seeds for planting; Agricultural seeds; Crop seeds; Fruit seeds; Live plants; Natural plants and flowers; Seeds for agricultural purposes; Seeds for horticultural purposes; Unprocessed seeds for agricultural use
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.
Disclaimer Required
In this case, applicant must disclaim all the wording in the mark because it is not inherently distinctive. These unregistrable terms at best are merely informational about the goods and are commonly used in applicant’s particular trade or industry; thus the terms do not function as a mark. See 15 U.S.C. §§1051-1053, 1127; In re Boston Beer Co., 198 F.3d 1370, 1372-74, 53 USPQ2d 1056, 1058-59 (Fed. Cir. 1999); In re Aerospace Optics, Inc., 78 USPQ2d 1861, 1864 (TTAB 2006); TMEP §§807.14(a), 1202.04, 1213.03(a), (b).
Determining whether a term functions as a trademark depends on how such matter would be perceived by the relevant public. In re Eagle Crest, Inc., 96 USPQ2d 1227, 1229 (TTAB 2010); In re Aerospace Optics, Inc., 78 USPQ2d at 1862; TMEP §1202.04. “The more commonly a [term] is used, the less likely that the public will use it to identify only one source and the less likely that it will be recognized by purchasers as a trademark.” In re Hulting, 107 USPQ2d 1175, 1177 (TTAB 2013) (quoting In re Eagle Crest, Inc., 96 USPQ2d at 1229); TMEP §1202.04.
Varietal or cultivar names are designations used to identify cultivated varieties or subspecies of live plants or agricultural seeds. TMEP §1202.12. They are generic and cannot be registered as trademarks because they are the common descriptive names of plants or seeds by which such varieties are known to the U.S. consumer. Id. Moreover, a consumer “has to have some common descriptive name he can use to indicate that he wants one [particular] variety of apple tree, rose, or whatever, as opposed to another, and it is the varietal name of the strain which naturally and commonly serves this purpose.” In re Pennington Seed, Inc., 466 F.3d 1053, 1057, 80 USPQ2d 1758, 1761 (Fed. Cir. 2006) (quoting In re Hilltop Orchards & Nurseries, Inc., 206 USPQ 1034, 1036 (TTAB 1979)); see In re Delta & Pine Land Co., 26 USPQ2d 1157, 1159 n.4 (TTAB 1993).
The attached evidence from usda.gov shows the wording CHULA is commonly used by those in the agriculture industry as a varietal name for sorghum, which is presumably included in applicant’s broadly-worded identified goods (e.g., “agricultural grains for planting”). Thus, it does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others. Trademark Act Sections 1, 2, and 45, 15 U.S.C. §§1051-1052, 1127; see TMEP §1202.12.
Additionally, applicant has disclaimed BRAND. The attached evidence from The American Heritage Dictionary shows that the wording BRAND means “a product or service so identified”. Therefore, BRAND merely identifies applicant’s goods as being a product.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “CHULA BRAND” 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.
Varietal Name Information Request
To permit proper examination of the applied-for mark, applicant must indicate the following:
(1) Whether CHULA has ever been used or will be used as a varietal or cultivar name; and
(2) Whether CHULA has ever been used or will be used in connection with a plant patent, utility patent, or certificate for plant-variety protection.
TMEP §1202.12; see 37 C.F.R. §2.61(b).
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
Mark Description
The following description is suggested, if accurate: The mark consists of an image of a smiling lady looking over her left shoulder. Beneath the lady is a shaded area with the words "CHULA BRAND" written one under another. The image and the words are enclosed in an arched shape outline.
Mark Differs on Drawing and Foreign Registration
In this case, the U.S. drawing displays the mark as a screenshot of the application on applicant’s computer that contains extraneous text at the bottom. However, the foreign registration displays the mark as without such text. The mark in the U.S. drawing does not match the mark on the foreign registration because of the extraneous text at the bottom of the image.
Applicant may respond by satisfying one of the following:
(1) Submit a new drawing of the mark that matches the foreign registration and an amendment of the description that agrees with the new drawing. See 37 C.F.R. §§2.37, 2.72(c); TMEP §§807.12(b), 1011.03. The following amended description is suggested, if accurate: “The mark consists of an image of a smiling lady looking over her left shoulder. Beneath the lady is a shaded area with the words "CHULA BRAND" written one under another. The image and the words are enclosed in an arched shape outline.” Applicant may amend the mark in the drawing to match the mark in the foreign registration but may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72(c); TMEP §§807.14 et seq., 1011.03.
(2) Submit a request to amend the filing basis to Trademark Act Section 1(a) or 1(b), if applicant can satisfy the requirements for the chosen basis. See 15 U.S.C. §1051(a)-(b); 37 C.F.R. §2.35(b)(1); TMEP §806.03. A Section 1 basis does not require applicant to submit a foreign registration but requires evidence of applicant’s mark in use in commerce. See 15 U.S.C. §1051(a)-(b); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a), 2.76(b)(2), 2.88(b)(2); TMEP §904.
For more information about drawings, amending the basis, and instructions on how to satisfy these response options online using the Trademark Electronic Application System (TEAS) response form, see the Drawing webpage.
Mark Image Unclear
Therefore, applicant must submit a new drawing showing a clear depiction of the mark. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a). Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.
For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.
Portrait of Individual—Inquiry
To register a mark that consists of or comprises a portrait or likeness of a particular living individual, an applicant must provide a written consent personally signed by the shown individual. 15 U.S.C. §1052(c); TMEP §§813, 1206.04(a).
Accordingly, if the portrait or likeness in the mark does not identify a particular living individual, applicant must submit a statement to that effect (e.g., “The portrait or likeness shown in the mark does not identify a particular living individual.”).
However, if the portrait or likeness in the mark does identify a particular living individual, applicant must submit both of the following:
(1) The following statement: “The portrait or likeness shown in the mark identifies a living individual whose consent to register is made of record.”
(2) A written consent, personally signed by the pictured individual, as follows: “I, [specify name], consent to the use and registration of my likeness as a trademark with the USPTO.”
For an overview of the requirements pertaining to portraits or likenesses appearing in marks, and instructions on how to satisfy this requirement online using the Trademark Electronic Application System (TEAS) response form, please go to http://www.gov.uspto.report/trademarks/law/consent.jsp.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.
TEAS Plus Application Requirements Not Met—Additional Fee Required
Applicant must submit an additional processing fee of $125 per class because the application as filed did not meet the TEAS Plus application filing requirements. See 37 C.F.R. §§2.6(a)(1)(v), 2.22(a), (c); TMEP §§819.01 et seq., 819.04. Specifically, applicant failed to meet the following application filing requirement(s): a consent to register the mark from the person identified in the mark (or conversely, if appropriate, a statement that the name or portrait in the mark does not identify a living individual) was not provided.
The additional fee is required even if applicant later corrects these application requirements.
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
/Catherine Caycedo/
Catherine Caycedo
Trademark Examining Attorney
Law Office 101
(571) 272-7066
Catherine.Caycedo@uspto.gov
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