Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

NONFINAL 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).  A link to the appropriate TEAS response form appears at the end of this Office action. 

 

Issue date:  September 24, 2019

 

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.  

 

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
• Identification of goods

 

SECTION 2(d) REFUSAL – 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. 3663427.  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.

 

The applicant’s mark is a design mark, which consists of a raindrop containing a plus symbol, for nutritional supplements, namely, probiotic and prebiotic compositions; nutritional supplement beverages in the nature of a blend of probiotics and prebiotics packaged and sold unmixed with the base beverage; nutritional supplements and nutritional supplement beverages containing probiotics and prebiotics for beauty, detoxification, energy, sleep, health and wellness purposes; nutritional beverages; nutritionally fortified beverages for beauty, detoxification, energy, sleep, health and wellness purposes; protein supplement shakes; Powdered nutritional supplement drink mix containing probiotics, prebiotics, protein, in International Class 5;  Beverages; Dairy-based beverages; snack foods, in International Class 29; Beverages; Tea-based beverages; powders used in the preparation of tea based beverages; snack foods, in International Class 30 and Beverages; Fruit-based beverages; beverages containing electrolytes, in International Class 32.

 

The registrant’s mark is a design mark, which consists of a raindrop containing a plus symbol, for electrolyte and vitamin fortified non-alcoholic beverages, namely, beverages for hangover prevention and relief and for replenishment of electrolytes, nutrients, vitamins, and minerals.

 

Similarities of the marks:

 

In the present case, the applicant’s mark is a design mark which consists of a raindrop containing a plus symbol, and the registrant’s mark is a design mark which consists of a raindrop containing a plus symbol.  These marks are identical in appearance.  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with the goods of the applicant and the registrant.

 

Here, identical marks are used to identify closely related goods that include health supplements, snack foods and beverages.  As such, the marks are confusingly similar. 

 

Similarities of the goods:

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

The applicant’s goods include health supplements, snack foods and beverages.  The registrant’s goods include beverages and beverages containing electrolytes, nutrients, vitamins, and minerals.  The goods of both parties include health supplements, snack foods and beverages, and as such, are closely related.   

 

In support thereof, the trademark examining attorney refers to the excerpted materials from the Google search engine that evidence the relatedness of the goods by showing others providing the goods of both parties.  See attachments.

 

For purposes of evaluating a trademark, material obtained from the Internet is generally accepted as competent evidence.  See In re Bayer Aktiengesellschaft, 488 F.3d 960, 966, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007); In re Reed Elsevier Props., Inc., 482 F.3d 1376, 1380, 82 USPQ2d 1378, 1381 (Fed. Cir. 2007); TBMP §1208.03; TMEP §710.01(b).

 

Based on the evidence of record it is clear that the goods of the parties are closely related.  As such, the goods of the parties will travel and will be marketed in the same channels of trade to the same class of consumers.  Thus, consumers are likely to encounter the goods of the parties and are likely to mistakenly believe that the goods emanate from the same source.  Accordingly, confusion is likely. 

 

Because the marks are identical and they identify closely related goods, their contemporaneous use is likely to cause confusion.  Therefore, the proposed mark is refused registration pursuant to Section 2(d) of the Trademark Act. 

 

RESPONSE:

 

Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.  If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following issue.

 

IDENTIFICATION OF GOODS:

 

The identifications of goods are not acceptable because wording is indefinite and must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.  Suggested amendments are highlighted below.  Applicant may adopt the following wording, if accurate: 

 

Nutritional supplements, namely, probiotic and prebiotic compositions; nutritional supplement beverages in the nature of a blend of probiotics and prebiotics packaged and sold unmixed with the base beverage; nutritional supplements and nutritional supplement beverages containing probiotics and prebiotics for beauty, detoxification, energy, sleep, health and wellness purposes; nutritional fortified beverages for medical purposes; nutritionally fortified beverages for beauty, detoxification, energy, sleep, health and wellness purposes; protein supplement shakes; powdered nutritional supplement drink mix containing probiotics, prebiotics, protein, in International Class 5.

 

Beverages, namely, _____ (the applicant must specify the items, for instance, dairy-based food beverages also containing cocoa); dairy-based beverages; snack foods, namely, ______ (the applicant must specify the items, vegetable-based snack foods, nut-based snack foods, dried fruit-based snacks), in International Class 29.

 

Beverages, namely, _____ (the applicant must specify the items, for instance, coffee-based iced beverages); tea-based beverages; powders used in the preparation of tea based beverages; snack foods, namely, ______ (the applicant must specify the items, for instance, cereal-based snack food, rice-based snack food), in International Class 30.

 

Beverages, namely, _______ (the applicant must specify the items, for instance, non-alcoholic fruit juice beverages); fruit-based beverages; beverages containing electrolytes, namely, _____ (the applicant must specify the items, for instance, sports drinks containing electrolytes), in International Class 32.

 

Applicant’s goods may be clarified or limited, but may not be expanded beyond those originally itemized in the application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Applicant may clarify or limit the identification by inserting qualifying language or deleting items to result in a more specific identification; however, applicant may not substitute different goods or add goods not found or encompassed by those in the original application or as acceptably amended.  See TMEP §1402.06(a)-(b).  The scope of the goods sets the outer limit for any changes to the identification and is generally determined by the ordinary meaning of the wording in the identification.  TMEP §§1402.06(b), 1402.07(a)-(b).  Any acceptable changes to the goods will further limit scope, and once goods are deleted, they are not permitted to be reinserted.  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.

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

How to respond.  Click to file a response to this nonfinal Office action  

 

 

/Marlene Bell/

Trademark Examining Attorney

Law Office 118

571-272-9291

marlene.bell@uspto.gov (for informal inquiries)

 

 

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 September 24, 2019 for

U.S. Trademark Application Serial No. 88496538

 

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. 

 

 

/Marlene Bell/

Trademark Examining Attorney

Law Office 118

571-272-9291

marlene.bell@uspto.gov (for informal inquiries)

 

 

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 September 24, 2019, 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.”