Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

 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 partially 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:  February 24, 2020

 

This Office action is in response to applicant’s response filed on February 19, 2020.

 

The Section 2(d) refusal as to U.S. Registration No. 5750296 in International Class 5 is continued and maintained.

 

Pending U.S. Application Serial No. 88389006 has since registered and registration of the mark in the application is now refused as set forth below in International Class 29.

 

The requirement for clarification of the identification of goods has been satisfied.

 

Trademark Act Section 2(d) – Likelihood of Confusion Refusal to Register

 

THIS REFUSAL APPLIES TO INTERNATIONAL CLASSES 5 AND 29 ONLY

 

Registration of the applied-for mark is refused in International Class 5 because of a likelihood of confusion with the mark in U.S. Registration No. 5750296. Registration of the applied-for mark is also refused in International Class 29 because of a likelihood of confusion with the mark in U.S. Registration No. 5885321. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  A copy of U.S. Registration No. 5750296 was provided with the August 18, 2019 office action. A copy of U.S. Registration No. 5885321 is attached to this action.

 

U.S. Registration No. 5750296 is NATUREWELL in standard characters for “Retail store services offering homeopathic supplements and homeopathic preparations; online retail store offering homeopathic supplements and homeopathic preparations.”

 

U.S. Registration No. 5885321 is NATUREWELL in standard characters for goods and services including “Smoothies; Fruit smoothies; Fruit drinks and fruit juices; Vegetable juices; Vegetable smoothies; Vegetable-fruit juices.”

 

The mark in the application is NATUREWELL in standard characters for goods including “Nutritional supplements in the form of powder; Powdered nutritional supplement concentrate; Powdered nutritional supplement drink mix; Vitamin oils for human consumption; Herbal supplements; Herbal teas for medicinal purposes; Medicinal tea; Mineral supplements; Nutritional supplements; Vitamin supplements; Dehydrated fruit snacks; Cheese-based snack foods; Fruit and soy based snack food; Fruit-based snack food; Nut-based snack foods; Potato-based snack foods; Seed-based snack foods; Vegetable-based snack foods.”

 

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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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. 

 

Identical Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); 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)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

The mark in the application and in each registration is NATUREWELL in standard characters.  These marks are identical in 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 they 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 and/or services.  Id. Therefore, the marks are confusingly similar. 

 

Related Goods and Services

 

U.S. Registration No. 5750296: The goods in the application in International Class 5 are “nutritional supplements in the form of powder; Powdered nutritional supplement concentrate; Powdered nutritional supplement drink mix; Vitamin oils for human consumption; Herbal supplements; Herbal teas for medicinal purposes; Medicinal tea; Mineral supplements; Nutritional supplements; Vitamin supplements”. The goods in the registration are “Retail store services offering homeopathic supplements and homeopathic preparations; online retail store offering homeopathic supplements and homeopathic preparations”. The use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).

 

The Internet evidence of record consists of website excerpts showing retail and online retail stores featuring homeopathy also offer vitamins and supplements.  See evidence attached to the August 19, 2019 office action: http://www.thebetterhealthstore.com/ (homeopathic store, and supplements, vitamins), http://www.swansonvitamins.com (online store with homeopathic preparations, and vitamins, supplements, tea), http://castleremedies.com (retail store with homeopathic preparations and supplements), http://daveshealth.com (retail store with supplements, vitamins and homeopathic preparations), http://nutritionworksfenton.com (retail store with vitamins, supplements and homeopathic preparations, and house brand supplements and vitamins). Thus, applicant’s and registrant’s goods and services 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).

 

Applicant argues that it would be more likely for a manufacture to have their own store, however, determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  Neither the application, nor the registration, include any limitations as to the nature, type, channels of trade, or classes of purchasers.  The presumption under Trademark Act Section 7(b) is that the registrant is the owner of the mark and that their use of the mark extends to all goods and/or services identified in the registration.  15 U.S.C. §1057(b).  In the absence of limitations as to channels of trade or classes of purchasers in the goods and/or services in the registration, the presumption is that the goods and/or services move in all trade channels normal for such goods and/or services and are available to all potential classes of ordinary consumers of such goods and/or services.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); TMEP §1207.01(a)(iii).

 

Applicant also argues that the registrant no longer uses the mark. This argument is not relevant in ex parte examination. A trademark or service mark registration on the Principal Register is prima facie evidence of the validity of the registration and the registrant’s exclusive right to use the mark in commerce in connection with the specified goods and/or services.  See 15 U.S.C. §1057(b); TMEP §1207.01(d)(iv). Thus, evidence and arguments that constitute a collateral attack on a cited registration, such as information or statements regarding a registrant’s nonuse of its mark, are not relevant during ex parte prosecution.  See In re Dixie Rests., 105 F.3d 1405, 1408, 41 USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992); TMEP §1207.01(d)(iv).  Such evidence and arguments may, however, be pertinent to a formal proceeding before the Trademark Trial and Appeal Board to cancel the cited registration.

 

U.S. Registration No. 5885321: The goods in the application in International Class 29 are “Dehydrated fruit snacks; Cheese-based snack foods; Fruit and soy based snack food; Fruit-based snack food; Nut-based snack foods; Potato-based snack foods; Seed-based snack foods; Vegetable-based snack foods.” The goods in the registration are “Smoothies; Fruit smoothies; Fruit drinks and fruit juices; Vegetable juices; Vegetable smoothies; Vegetable-fruit juices.”

 

The attached Internet evidence, consisting of website excerpts, establishes that the same entity commonly  produces, provides, and markets the relevant goods together, under the same mark, and in the same channels of trade. See attached: http://www.welchs.com (fruit snacks, juice, smoothies), http://dolesunshine.com (fruit juice, fruit and nut snacks, dried fruit), http://www.motts.com (fruit juice, fruit snacks), http://www.drinkarizona.com (fruit snacks, cheese snack, juice), http://www.projectjuice.com (nut snacks, fruit and seed snacks, fruit and vegetable juices), http://www.freshdelmonte.com (fruit snacks, vegetable snacks, fruit juices), http://www.edenfoods.com (fruit juice, fruit and nut snacks, dried fruit). 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).

 

Conclusion

 

Given the identical marks and the relatedness of the goods and services, consumers are likely to confuse the source of the goods and services set forth in the application and the registration.  Accordingly, registration of the applied-for mark is refused in International Classes 5 and 29 under Section 2(d) of the Trademark Act.

 

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

 

Response and Partial Abandonment Information

 

For this application to proceed, applicant must explicitly address each refusal and/or requirement 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.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

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

 

Partial Abandonment Advisory. If applicant does not timely respond to this Office action, International Classes 5 and 29 will be deleted from the application. See 37 C.F.R. §2.65(a); TMEP §718.02(a).  In such case, the application will then proceed with International Class 3 only. See TMEP §718.02(a). 

 

Advisory re TEAS RF Changes. USPTO changed federal trademark rules to rename TEAS Reduced Fee (RF) application to “TEAS Standard” and to eliminate TEAS Regular application form.  Current TEAS RF applicants will generally need to continue to meet similar application requirements.  See Changes to the Trademark Rules of Practice to Mandate Electronic Filing Final Rule and Correction, 84 Fed. Reg. 37,081, 68,045, 69,330 (published July 31, 2019, effective Feb. 15, 2020) (codified at 37 C.F.R. pts. 2 & 7). 

 

Applicant may 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(s) and/or requirement(s) 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.

 

 

 

/April Roach/

April Roach

Examining Attorney

Law Office 115

571-272-1092

April.Roach@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 February 24, 2020 for

U.S. Trademark Application Serial No. 88498520

 

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. 

 

 

/April Roach/

April Roach

Examining Attorney

Law Office 115

571-272-1092

April.Roach@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 February 24, 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.”