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:  November 15, 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.  

 

 

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

 

 

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The referenced application and 09/03/2019 Preliminary Amendment has been reviewed by the assigned trademark examining attorney.  The Section 44 priority claim has been made of record. 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.

 

 

LIKELIHOOD OF CONFUSION REFUSAL UNDER SECTION 2(d) 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 3653015.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.   See the attached registration.

 

NOTE- Maintenance documents were due to be filed for the cited registration.  See 37 C.F.R. §2.67; TMEP §716.02(e).  If registration maintenance documents are not or were not timely filed, the registration will be cancelled under Section 8 or 71, and/or expire under Section 9 and will no longer present a bar to registration under Section 2(d). See 15 U.S.C. §§1058, 1059, 1141k; 37 C.F.R. §§2.160(a), 2.182, 7.36(b). Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending disposition of the cited 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.

 

Here the marks are identical as both marks are OPTILIFE. Where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods and/or services needed to support a finding of likelihood of confusion declines.  See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).

 

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).

 

Here, the goods and/or services identified by applicant and registrant are closely related because they are of the type that emanate from a single source.  For instance those that provide dietary supplements also provide whey beverages/ milk products, snack foods, on-line retail store services featuring foods and beverages, providing recipe information, diet and nutrition information. See websites from http://www.nowfoods.com/  http://www.gnc.com/  http://www.metrx.com/  http://www.labrada.com/  http://www.pureprotein.com/

 

Thus, applicant’s and registrant’s goods and/or 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).

 

 

The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).

 

In view of the foregoing, registration is refused under Section 2(d).

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.  If applicant responds to the refusal(s), applicant must also respond to the following issue(s) and requirement(s) set forth below.

 

 

 

IDENTIFICATION AND CLASSIFICATION

Applicant has provided the following identification and classification of goods and/ or services in its application:

 

CLASS 9         Computer programs; computers; application software; computer hardware; computer software, recorded

  

CLASS 29       Milk products; lactic acid bacteria drinks; yogurt drinks; yogurts; meat; eggs; fish, not live; frozen vegetables; frozen fruits; charcuterie; meat substitutes; processed seafood; processed vegetables and fruits; potato chips; snacks made from potato, namely, potato-based snack foods; prepared dishes consisting primarily of vegetables; prepared dishes consisting primarily of meat, fish, poultry or vegetables; jelly made from devils' tongue root (konnyaku); soya milk; tofu; fermented soybeans (natto); soups; preparations for making soup; broth and soup; instant or precooked soup; pre-cooked curry stew; instant or pre-cooked stew; soups, namely, soups containing noodles; instant soups containing noodles; mixes for making soups in the nature of dry mixes for soups; soups consisting primarily of soup mixes containing dried noodles sold in a disposable container; instant bean-starch soup containing noodles

  

CLASS 30       Tea; green tea; coffee; cocoa; ice; confectionery; pastries; snack foods; bread; sandwiches; steamed buns stuffed with minced meat (niku-manjuh); hamburger sandwiches; pizza; hot dog sandwiches; meat pies; seasonings; condiments; ice cream mixes; sherbet mixes; unroasted coffee; processed grains; noodles; uncooked noodles; dried noodles; instant noodles; chilled noodle-based prepared meals; frozen noodle-based prepared meals; fresh noodles; noodle-based prepared meals; chilled noodle-based prepared meals; frozen noodle-based prepared meals [duplicate]; fresh pasta; dried pasta; instant pasta; chilled pasta; frozen pasta; prepared meals consisting primarily of pasta; prepared meals consisting primarily of chilled pasta; frozen prepared meals consisting primarily of pasta; ready prepared meal of dim sum consisting primarily of pasta; deep frozen noodles; pasta; rice; steamed rice; instant rice; corn flakes; granola; chocolate-based spreads; ramen (Japanese noodle-based dish); prepared pasta; cooked rice; chinese stuffed dumplings (gyoza, cooked); Chinese steamed dumplings (shumai, cooked); sushi; pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables

 

CLASS 32       Soft drinks; fruit juices; vegetable juice beverages; whey beverages

 

CLASS 35       Business management analysis; business consultancy; marketing research services; marketing analysis services; provision of information concerning commercial sales; business management; filing documents or magnetic-tapes; on-line retail store services featuring foods and beverages

 

CLASS 39       Food delivery; providing information relating to food delivery

 

CLASS 42       Computer programming; design, maintenance, development and updating of computer software; providing computer programs on data networks; software as a service (SaaS); cloud computing

 

CLASS 43       Providing of food and drink; providing information relating to menu or recipe of food and drink; providing information relating to restaurant services; rental of cooking equipment for industrial purposes

 

CLASS 44       Provision of medical information; physical examination services; providing information relating to physical examination services; health care; providing information relating to health care; providing information relating to dietary and nutrition; counseling of life habit; providing information relating to life habit

 

The wording shown above in bolded text in the identification of goods and services is unacceptable as indefinite because it is too broad and could include goods and services in other international classes, specifically, "Computer programs," "application software," "computer software, recorded," in CLASS 9; "Milk products," in CLASS 29; "confectionery," "snack foods," "condiments," in CLASS 30; "providing computer programs on data networks; software as a service (SaaS); cloud computing," in CLASS 42; "providing information relating to menu or recipe of food and drink; providing information relating to restaurant services," in CLASS 43; "providing information relating to physical examination services," "providing information relating to dietary and nutrition; counseling of life habit; providing information relating to life habit," in CLASS 44 must be clarified.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.   For instance, snack foods could identify goods in two different classes, e.g., vegetable-based snack foods in class 29 and rice-based snack foods in class 30. Applicant must amend the identification to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, applicant must describe the product, its main purpose, and its intended uses.  See id.   Applicant must amend the identification to specify the common commercial or generic name of the services.  See TMEP §1402.01.  If the services have no common commercial or generic name, applicant must describe or explain the nature of the services using clear and succinct language.  See id.

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods for “chilled noodle-based prepared meals; frozen noodle-based prepared meals.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration. If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods and/or services, but not to broaden or expand the goods and/or services beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods and/or services may not later be reinserted.  TMEP §1402.07(e).

 

The identification for software and computer programs is indefinite and must be clarified because the wording does not make clear the (1) nature or (2) format of the software and could identify goods and/or services in three international classes – as a product in International Class 9 or a service in International Class 41 or 42.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.03(d), 1402.11(a).  Specifically, applicant must indicate the purpose or function of the software, and if content- or field-specific, the content or field of use of the software.  TMEP §1402.03(d).  Additionally, applicant must indicate whether the software’s format is downloadable, recorded, or online non-downloadable.  See id.  Downloadable and recorded goods are in International Class 9, whereas providing their temporary, online non-downloadable use is a service in International Class 42; except for non-downloadable game software provided online or for temporary use, which is classified in International Class 41.  See TMEP §§1402.03(d), 1402.11(a)(xii).  The USPTO requires such specificity in order for a trademark examining attorney to examine the application properly and make appropriate decisions concerning possible conflicts between the applicant’s mark and other marks.  See In re N.A.D. Inc., 57 USPQ2d 1872, 1874 (TTAB 2000); TMEP §1402.03(d). 

 

Applicant is advised that the identification is acceptable as written for classes 32, 35, and 39.

 

Applicant may adopt the following identification, if accurate: 

• Downloadable computer programs for use in [specify the function of the programs, e.g. ordering food, managing food deliveries]; computers; Downloadable mobile application  software for use in [specify the function of the programs, e.g. ordering food, managing food deliveries]; computer hardware; recorded computer software for use in [specify the function of the programs, e.g. ordering food, managing food deliveries] (INT. CLASS 9)

 

• Milk products excluding ice cream, ice milk and frozen yogurt; lactic acid bacteria drinks; yogurt drinks; yogurts; meat; eggs; fish, not live; frozen vegetables; frozen fruits; charcuterie; meat substitutes; processed seafood; processed vegetables and fruits; potato chips; snacks made from potato, namely, potato-based snack foods; prepared dishes consisting primarily of vegetables; prepared dishes consisting primarily of meat, fish, poultry or vegetables; jelly made from devils' tongue root (konnyaku); soya milk; tofu; fermented soybeans (natto); soups; preparations for making soup; broth and soup; instant or precooked soup; pre-cooked curry stew; instant or pre-cooked stew; soups, namely, soups containing noodles; instant soups containing noodles; mixes for making soups in the nature of dry mixes for soups; soups consisting primarily of soup mixes containing dried noodles sold in a disposable container; instant bean-starch soup containing noodles; Snack foods, namely, vegetable-based snack foods, nut-based snack foods, meat-based snack foods (INT. CLASS 29)

 

• Tea; green tea; coffee; cocoa; ice; confectionery, namely, candy and chocolate; pastries; snack foods, namely, rice-based snack foods and grain-based snack foods; bread; sandwiches; steamed buns stuffed with minced meat (niku-manjuh); hamburger sandwiches; pizza; hot dog sandwiches; meat pies; seasonings; condiments, namely, ready-made sauces and chutneys; ice cream mixes; sherbet mixes; unroasted coffee; processed grains; noodles; uncooked noodles; dried noodles; instant noodles; chilled noodle-based prepared meals; frozen noodle-based prepared meals; fresh noodles; noodle-based prepared meals; fresh pasta; dried pasta; instant pasta; chilled pasta; frozen pasta; prepared meals consisting primarily of pasta; prepared meals consisting primarily of chilled pasta; frozen prepared meals consisting primarily of pasta; ready prepared meal of dim sum consisting primarily of pasta; deep frozen noodles; pasta; rice; steamed rice; instant rice; corn flakes; granola; chocolate-based spreads; ramen (Japanese noodle-based dish); prepared pasta; cooked rice; chinese stuffed dumplings (gyoza, cooked); Chinese steamed dumplings (shumai, cooked); sushi; pre-packaged lunches consisting primarily of rice, and also including meat, fish or vegetables (INT. CLASS 30)

 

• (No change - INT. CLASS 32)

 

• (No change - INT. CLASS 35)

 

• (No change - INT. CLASS 39)

 

• Computer programming; design, maintenance, development and updating of computer software; Providing on-line non-downloadable computer software programs for use in [specify the function of the programs, e.g. ordering food, managing food deliveries] on data networks; Software as a service (SAAS) services featuring software for use in [specify the function of the programs, e.g. ordering food, managing food deliveries]; Consulting services in the field of cloud computing; Cloud computing featuring software for use in [specify the function of the programs, e.g. ordering food, managing food deliveries] (INT. CLASS 42)

 

• Providing of food and drink; Providing menu planning information and recipe information on food and drink; Restaurant information services; rental of cooking equipment for industrial purposes (INT. CLASS 43)

 

• Provision of medical information; physical examination services; Providing information in the field of physical examination; health care; providing information relating to health care; providing information in the fields of diet, dietary supplements and nutrition; Counseling services in the fields of health and lifestyle wellness; providing information in the fields of healthy living and lifestyle wellness  (INT. CLASS 44)

 

Applicant’s goods and/or services 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 and/or services or add goods and/or services 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 and/or services 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 and/or services will further limit scope, and once goods and/or services 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.

 

 

           

CLOSING

If applicant has questions regarding the legal issues in this Office action, please telephone or e-mail the assigned trademark examining attorney.  For all other matters, including filing questions, status inquiries and general questions, please contact the Trademark Assistance Center at (800) 786-9199.

 

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. 

 

 

 

/Benji Paradewelai/

Trademark Attorney

Law Office 101, USPTO

Direct Dial: (571) 272-1658

Email: benji.paradewelai@uspto.gov (for informal inquiries)

http://www.uspto.gov (for filing Official responses)

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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 November 15, 2019 for

U.S. Trademark Application Serial No. 88576965

 

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. 

 

 

/Benji Paradewelai/

Trademark Attorney

Law Office 101, USPTO

Direct Dial: (571) 272-1658

Email: benji.paradewelai@uspto.gov (for informal inquiries)

http://www.uspto.gov (for filing Official responses)

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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 November 15, 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.”