To: | Simply Natural LLC (james@simplynaturalnutritionals.com) |
Subject: | U.S. Trademark Application Serial No. 88489917 - SIMPLY NATURAL - N/A |
Sent: | September 17, 2019 02:44:47 PM |
Sent As: | ecom113@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88489917
Mark: SIMPLY NATURAL
|
|
Correspondence Address:
|
|
Applicant: Simply Natural LLC
|
|
Reference/Docket No. N/A
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: September 17, 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.
In response to this Office action, the applicant must address the following issues:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In this case, applicant has applied to register the mark SIMPLY NATURAL for use in connection with “Gummy vitamins.”
Registration No. 2177745 is for the mark SIMPLY NATURAL used in connection with “dietary supplements and dietary food supplements, and vitamin and mineral supplements.”
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.
Similarity of the Marks
In the present case, applicant’s mark is SIMPLY NATURAL and registrant’s mark is SIMPLY NATURAL. Thus, the word portion of the marks is identical in terms of appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because the word portions are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id. Therefore, the marks are confusingly similar.
Further, the design element in the applied-for mark does not obviate the similarities between the marks. 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)). Here, the dominant portion of the applied-for mark is the identical wording to the registered mark. Therefore, the addition of less significant design elements in the applied-for mark does not obviate the similarities between the marks.
Ultimately, when purchasers call for the goods of the applicant and registrant using SIMPLY NATURAL and SIMPLY NATURAL, they are likely to be confused as to the sources of those goods by the similarities between the marks. Thus, the marks are confusingly similar.
Relatedness of the Goods
In this case, applicant's “Gummy vitamins” are related to registrant’s “dietary supplements and dietary food supplements, and vitamin and mineral supplements.” Specifically, both the application and registration identify vitamins.
In this case, the registration uses broad wording to describe vitamin supplements, which presumably encompasses all goods of the type described, including registrant’s more narrow vitamin supplements in the form of gummies. 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)).
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.
When purchasers encounter the vitamin goods of the applicant and registrant, they are likely to be confused as to the source of the goods by the relationship between them. Thus, the goods are closely related.
Therefore, because the marks are confusingly similar and the goods are closely related, purchasers encountering these goods are likely to believe, mistakenly, that they emanate from a common source. Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of the Trademark Act.
DISCLAIMER REQUIRED
In this case, applicant must disclaim the wording “NATURAL” because it is not inherently distinctive. The unregistrable term is at best merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use 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 the American Heritage Dictionary shows this wording means produced by nature. Further, the term is commonly used in connection with similar goods to mean produced by nature. See attached websites for PHARMACA, http://www.pharmaca.com/vitamins-supplements (“Natural vitamins and supplements can boost your strength, fortify your immune system and lead to a healthier lifestyle.”); VITAFUSION ORGANIC Gummy Vitamin, http://www.gummyvites.com/en/organic (“vitafusion stands for a better way to vitamin, with a fusion of natural fruit flavors, delicious taste and the essential nutrients your body needs.”); and PURE SYNERGY PURE RADIANCE C Capsules 100% Natural Vitamin C, http://www.thesynergycompany.com/pure-radiance-c-90-capsules. Thus, the wording merely describes applicant’s goods because it describes a characteristic of the goods.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “NATURAL” 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.
DRAWING DOES NOT REPRODUCE SATISFACTORILY – NEW DRAWING REQUIRED
(1) Shows the mark either in black on a white background, if color is not a feature of the mark, or in color on a white background, if color is a feature of the mark.
(2) Is of sufficient quality that will reproduce well.
(3) Includes in the application a description of all literal and design elements in the mark.
37 C.F.R. §§2.37, 2.52(b), 2.53(b)-(c), 2.54(e); see TMEP §§807.04-.04(a), 808.01-.02.
Therefore, applicant must submit a new drawing showing a clear depiction of the mark on a white background. 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.
POTENTIALLY DECEPTIVE IDENTIFICATION OF GOODS – AMENDMENT REQUIRED
This feature or characteristic is considered desirable for applicant’s goods because natural vitamins have health benefits. See attached KCAL article “The Wonderful Benefits of Natural Vitamins,” http://kcallife.com/wellness/a60/. However, if some or all of the goods do not in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods. See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).
To avoid such refusal, applicant may amend the identification to specify that the goods possess this relevant feature or characteristic. See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq. However, merely amending the identification to exclude goods or services with the named feature or characteristic will not avoid a deceptiveness refusal. TMEP §1203.02(f)(i).
Applicant may adopt the following identification, if accurate:
Class 05 – “Gummy vitamins made in whole or substantial part of natural ingredients.”
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 TO THIS OFFICE ACTION
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.
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
How to respond. Click to file a response to this nonfinal Office action
/Emma Sirignano/
Examining Attorney, Law Office 113
United States Patent and Trademark Office
(571) 272-7031
emma.sirignano@uspto.gov
RESPONSE GUIDANCE