United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88524221
Mark: WHOLE EARTH
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Correspondence Address: |
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Applicant: Whole Earth Sweetener Company LLC
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Reference/Docket No. 3T19717819
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: October 08, 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 applicant must address:
TRADEMARK ACT SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 3920107 and 3944834. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
Applicant’s mark is “WHOLE EARTH” for “Fruit based spreads, jams, jellies, marmalades” in International Class 29.
Registrant’s marks are “THE WHOLE EARTH” (U.S. Reg. No. 3920107) for, in relevant part, “Dried fruit; dried fruit mixes; processed nuts; processed nut mixes; trail mix consisting primarily of processed fruits, processed nuts and/or raisins; and snack mix consisting primarily of processed fruits and processed nuts; potato based snack foods; soy chips” in International Class 29, and “THE WHOLE EARTH” and design (U.S. Reg. No. 3944834) for, in relevant part, “potato chips, partially water or steam blanched potatoes and partially fried potatoes; processed edible seeds; potato chips; processed fruit; and potato based snack foods, dried fruit; dried fruit mixes; processed nuts; processed nut mixes; trail mix consisting primarily of processed fruits, processed nuts and/or raisins; and snack mix consisting primarily of processed fruits and processed nuts, vegetable based chips; fruit based chips, potato-based snack foods, namely, potato chips, potato puffs, potato sticks and potato fries; fried snacks, processed nutmeats; and snack mixes consisting primarily of processed nuts, raisins and/or processed fruit, potato chips, and processed nutmeats, shelled nuts” in International Class 29.
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.
A) Similarity of the Marks
Here, applicant’s mark “WHOLE EARTH” is highly similar in sight, sound, connotation, and overall commercial impression to registrant’s “THE WHOLE EARTH” marks. All of the respective marks contain the identical and dominant phrase “WHOLE EARTH” and 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).
Here, registrant’s marks incorporate the entirety of applicant’s mark. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Moreover, the minor design elements in U.S. Reg. No. 3944834 do 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 and/or services. 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)).
Lastly, the term “THE” in registrant’s marks does little to distinguish them from applicant’s mark. When comparing similar marks, the Trademark Trial and Appeal Board has found that inclusion of the term “the” at the beginning of one of the marks will generally not affect or otherwise diminish the overall similarity between the marks. See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE “virtually identical” marks; “[t]he addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.”); In re Narwood Prods. Inc., 223 USPQ 1034, 1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC-MAKERS “virtually identical” marks; the inclusion of the definite article “the” is “insignificant in determining likelihood of confusion”).
In this case, consumers will likely focus on “WHOLE EARTH” in applicant’s mark and may confuse the mark with registrant’s “WHOLE EARTH” marks, especially since the goods of the parties are highly related, as discussed below.
B) Relatedness of the Goods
Here, the respective goods are highly related because they frequently emanate from a common source. The attached Internet evidence consists of manufacturers/producers of fruit based spreads, jams, jellies, and/or marmalades that also manufacture/produce dried fruit, dried fruit mixes, processed nuts, processed nut mixes, and/or trail mixes comprised of fruits or nuts. See the following:
· Archer Farms
o Jelly / Fruit Spread http://www.target.com/s?searchTerm=jelly&facetedValue=89as3&Nao=0
o Trail mix http://www.target.com/s/archer+farms+trail+mix
o Nuts http://www.target.com/s?searchTerm=archer+farms+fruit&Nao=0&facetedValue=89as3Zo2gsi
· Trader Joe’s
o Fruit based spread http://www.traderjoes.com/fearless-flyer/article/4931
o Dried fruit http://www.traderjoes.com/fearless-flyer/article/4935
o Nuts http://www.traderjoes.com/fearless-flyer/article/5071
· 365 Everyday Value
o Jelly http://www.amazon.com/365-Everyday-Value-Organic-Concorde/dp/B074J9RHF8
o Dried fruit http://www.amazon.com/365-Everyday-Value-Organic-Apricots/dp/B074HC7LF8 and http://products.wholefoodsmarket.com/product/365-everyday-value-dried-mango-d093ea
o Dried fruit and nuts http://www.wholefoodsmarket.com/product-category/nuts-seeds-dried-fruits-and-trail-mixes
· Great Value
o Nuts and trail mix http://www.walmart.com/search/?cat_id=0&query=great+value+nuts
o Dried fruit http://www.walmart.com/search/?cat_id=0&query=great+value+dried+fruit
· Goya
o Jelly http://www.goya.com/en/products/confectionery/jelly-and-jams
o Dried fruit http://www.amazon.com/Goya-Foods-Dehydrated-Fruit-Ounce/dp/B00B9JH8VA
· Simply Balanced
o Jelly / Fruit spread http://www.target.com/s?searchTerm=jelly&Nao=0&facetedValue=ablt4
o Nut snack mixes http://www.target.com/p/vanilla-nut-clusters-3oz-simply-balanced-153/-/A-50580696
Upon encountering applicant’s and registrant’s marks, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source.
Lastly, it is important to note that the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods and/or services of the parties is required to support a finding of likelihood of confusion. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015) (citing In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009).
Accordingly, applicant’s mark is refused registration in under Section 2(d) for a likelihood of confusion.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
RESPONSE GUIDELINES
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
/Eric Sable/
Trademark Examining Attorney
Law Office 117
571-272-4653
Eric.Sable@uspto.gov
RESPONSE GUIDANCE