To: | Mass Probiotics, Inc. (elizabeth.burkhard@hklaw.com) |
Subject: | U.S. Trademark Application Serial No. 88496538 - + - 125793.000XX |
Sent: | September 24, 2019 12:26:52 PM |
Sent As: | ecom118@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 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88496538
Mark: +
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Correspondence Address: 10 ST. JAMES AVENUE, 11TH FLOOR
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Applicant: Mass Probiotics, Inc.
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Reference/Docket No. 125793.000XX
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 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.
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 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:
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 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.
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:
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.
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