United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88564874
Mark: POW!
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Correspondence Address: |
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Applicant: Talking Rain Beverage Company, Inc.
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Reference/Docket No. 890105.20008
Correspondence Email Address: |
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COMBINED EXAMINER’S AMENDMENT/PRIORITY ACTION 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 21, 2019
Applicant must address issues shown below. On September 17, 2019, the examining attorney and Russell Pangborn discussed the issues below. If applicant elects to proceed, the applicant must timely respond to these issues. See 15 U.S.C. §1062(b); 37 C.F.R. §2.62(a); TMEP §708.05.
REFUSAL: LIKELIHOOD OF CONFUSION WITH PRIOR REGISTERED MARKS
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 4975321 [POW]; 4920351 [PROTEIN POW, standard characters] and 4920352 [PROTEIN POW with design] (both owned by the same registrant). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registrations.
A likelihood of confusion determination involves a two-part analysis. The marks are compared for similarities in their appearance, sound, connotation and commercial impression. TMEP §§1207.01, 1207.01(b). The goods and/or services are also compared to determine whether they are similar or commercially related or travel in the same trade channels. See Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 1336, 57 USPQ2d 1557, 1559 (Fed. Cir. 2001); TMEP §§1207.01, 1207.01(a)(vi).
Registration No. 4975321 [POW]
Here, registrant owns the mark, POW, for “Guarana drinks; energy drinks; isotonic drinks; soft drinks; non-alcoholic fruit drinks; sports drinks; carbonated soft drinks; concentrates for use in the preparation of soft drinks; energy drinks not for medical purposes; jelly drinks, namely, soft drinks featuring gelatin; syrups for making fruit-flavored drinks; non-alcoholic aloe vera drinks.”
Applicant intends to use the mark POW! for “Soft drinks; energy drinks; sports drinks; non-alcoholic water-based beverages; non-alcoholic beverages, namely, carbonated beverages; water beverages; carbonated flavored waters; flavored bottled water; flavored water; flavored enhanced water; non-alcoholic fruit-flavored beverages; non-alcoholic fruit juice beverages.”
In a likelihood of confusion determination, the marks are compared for similarities in their appearance, sound, meaning or connotation and commercial impression. 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). Similarity in any one of these elements may be sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1043 (TTAB 1987); see TMEP §1207.01(b).
Further, each mark is represented in standard character form, meaning that it may be displayed in any lettering style; i.e., the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, the marks could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
Therefore, the marks are confusingly similar.
The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
In this case, both the registrant and the applicant provide the identical categories of “energy drinks; soft drinks; sports drinks.” and each provides some form of fruit beverage, e.g., “non-alcoholic fruit drinks,” (registrant); “non-alcoholic fruit-flavored beverages; non-alcoholic fruit juice beverages” (applicant).
Further, the broad wording “soft drinks” and “energy drinks” in the applicant’s identification would also encompass the registrant’s more specific “carbonated soft drinks; energy drinks not for medical purposes; jelly drinks, namely, soft drinks featuring gelatin.” When the identifications of the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers, they 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)). Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
The registrant also provides the highly related “concentrates for use in the preparation of soft drinks; syrups for making fruit-flavored drinks,” goods that would be used to make the same goods provided by the applicant.
Therefore, based on the essentially identical marks, and the identical and highly related goods, a likelihood of confusion exists and registration is refused.
Registration Nos. 4920351[PROTEIN POW, standard characters] & 4920352 [PROTEIN POW with design]
Here, registrant owns the mark, PROTEIN POW, both in standard characters and with design, for, among a wide range of other food and supplement goods “food supplements in the form of beverages and powdered drink mixes containing protein; nutritional preparations containing protein, namely, nutritional supplement shakes; compositions for the preparation of protein-based drinks, namely, nutritional supplements in the nature of nutrient-dense, protein-based mixes; whey-based protein supplement drinks and mixes, and whey protein compositions for the preparation thereof; mixes for the preparation of dietary supplement beverages containing protein for promoting weight loss, weight gain and muscle gain; protein powder based foods, namely, shakes and soups; shakes and soups having a protein powder base; milk products, namely, protein milk, milk and milk beverages with high protein content.”
Applicant intends to use the mark POW! for “Soft drinks; energy drinks; sports drinks; non-alcoholic water-based beverages; non-alcoholic beverages, namely, carbonated beverages; water beverages; carbonated flavored waters; flavored bottled water; flavored water; flavored enhanced water; non-alcoholic fruit-flavored beverages; non-alcoholic fruit juice beverages.”
The marks in this case share the identical term POW; it is the entirety of the applicant’s mark and is combined only with a descriptive term in the registrant’s mark, i.e., PROTEIN POW. Although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
The commercial impression of each mark is the same, the term POW communicating a strength or intensity of the products’ results, for example, while the additional term PROTEIN in registrant’s mark merely conveys a particular type of product emanating from the same source as denoted by applicant’s POW! mark.
The registrant owns its mark in both standard characters and in a design format. 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. 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)).
As noted above, marks in standard character form, may be displayed in any lettering style; i.e., the rights reside in the wording or other literal element and not in any particular display or rendition. See In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1909 (Fed. Cir. 2012); In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); 37 C.F.R. §2.52(a); TMEP §1207.01(c)(iii). Thus, the marks could be presented in the same manner of display. See, e.g., In re Viterra Inc., 671 F.3d at 1363, 101 USPQ2d at 1909; Squirtco v. Tomy Corp., 697 F.2d 1038, 1041, 216 USPQ 937, 939 (Fed. Cir. 1983) (stating that “the argument concerning a difference in type style is not viable where one party asserts rights in no particular display”).
In this case, the marks are highly similar, making it difficult for consumers to distinguish between them, and creating a likelihood of confusion. Consumers are likely to believe that applicant’s mark represents a product in the registrant’s product line or vice versa.
As stated above, the goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi). Further, as a general note, the greater degree of similarity between the applied-for mark and the registered mark, the lesser the degree of similarity between the goods 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).
In this case, both the registrant and the applicant provide beverage products that include additional features/benefits, e.g., “food supplements in the form of beverages and powdered drink mixes containing protein; whey-based protein supplement drinks and mixes,” (registrant); “sports drinks, energy drinks” (applicant).
Further, the broad wording such as “carbonated beverages” and “water beverages” in the applicant’s identification would also encompass the registrant’s unrestricted as to type “food supplements in the form of beverages…containing protein.”
Please see the attached online industry examples demonstrating the relationship and overlap between nutritionally-enhanced beverages, including those containing protein specifically, and those that are fruit-flavored, and energy drinks, sports drinks, carbonated and water beverages, as well as showing that nutritional supplements and related food items may be found from the same source, and side-by-side in the marketplace.
Therefore, based on the highly similar marks, and the overlapping and highly related goods, a likelihood of confusion exists and registration is refused.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.
If applicant elects to respond to the refusal, applicant must also note the following:
PRIOR-FILED APPLICATION ADVISORY
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
RESPONSE GUIDELINES FOR REFUSAL
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
Application has been amended as shown below. As agreed to by the individual identified in the Priority Action section, the examining attorney has amended the application as shown below. Please notify the examining attorney immediately of any objections. TMEP §707. In addition, applicant is advised that amendments to the goods and/or services are permitted only if they clarify or limit them; amendments that add to or broaden the scope of the goods and/or services are not permitted. 37 C.F.R. §2.71(a).
IDENTIFICATION OF GOODS AMENDED
The identification of goods is amended to read as follows. See TMEP §§1402.01, 1402.01(e).
Soft drinks; energy drinks; sports drinks; non-alcoholic water-based beverages; non-alcoholic beverages, namely, carbonated beverages; water beverages; carbonated flavored waters; flavored bottled water; flavored water; flavored enhanced water; non-alcoholic fruit-flavored beverages; non-alcoholic fruit juice beverages
/Ellen F. Burns/
Ellen F. Burns
Examining Attorney
Law Office 116
571.272.9098
ellen.burns@uspto.gov
(email for informal communications o
RESPONSE GUIDANCE
