To: | VB Brands, LLC (nicholas@themyerslg.com) |
Subject: | U.S. Trademark Application Serial No. 88579323 - CLICK - VBB01-2004 |
Sent: | March 10, 2020 09:11:44 PM |
Sent As: | ecom101@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88579323
Mark: CLICK
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Correspondence Address: 4695 MACARTHUR COURT, SUITE 200
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Applicant: VB Brands, LLC
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Reference/Docket No. VBB01-2004
Correspondence Email Address: |
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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: March 10, 2020
This Office action is in response to applicant’s communication filed on February 17, 2020. The applicant has amended the identification of goods. However, the amendment is unacceptable. In addition, prior cited U.S. Application Ser.No. 88333850 has registered. As such, the applicant must address the following.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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 CLICK. The registrant’s mark is CLICK COFFEE & PROTEIN DRINK MIX.
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. 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)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In addition, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Here, the registrant’s mark has disclaimed the descriptive wording “COFFEE & PROTEIN DRINK MIX,” and the marks of the applicant and registrant share the wording “CLICK.”
Applicant’s goods are for “Dietary and nutritional supplements; Sublingual doses for therapeutic and medicinal purposes; Medicated lotion, creams, or gels for skin, hair, face, and body; Herbal medicated topical creams, and ointments for the relief of aches and pain; Topical medicated preparations, namely, sprays, creams, containing terpene; Edible oils for use as a dietary or nutritional supplement; Edible oils for therapeutic and medicinal purposes.”
Registrant’s goods are for “Dietary and nutritional supplements containing protein.”
In this case, the application uses broad wording to describe its dietary and nutritional supplements, as well as, various therapeutic and medicinal goods, which presumably encompasses all goods of the type described, including registrant’s more narrow “Dietary and nutritional supplements containing protein.” See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and 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)). Thus, applicant’s and registrant’s goods and/or services are related.
AMENDMENT OF IDENTIFICATION OF GOODS
The proposed amendment to the identification is not acceptable because it exceeds the scope of the identification in the application, as amended on February 17, 2020. See 37 C.F.R. §§2.32(a)(6), 2.71(a); TMEP §§805, 1402.06 et seq., 1402.07. Applicant’s goods and/or services may be clarified or limited, but may not be expanded beyond those originally itemized in the U.S. application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Therefore, the original identification in the application, and any previously accepted amendments, remain operative for purposes of future amendment.[1] See 37 C.F.R. §2.71(a); TMEP §1402.07(d).
In this case, the original application identified the goods as follows: “Dietary and nutritional supplements; Sublingual doses for therapeutic and medicinal purposes; Medicated lotion, creams, or gels for skin, hair, face, and body; Herbal medicated topical creams, and ointments for the relief of aches and pain; Topical medicated preparations, namely, sprays, creams, containing terpene; Edible oils for use as a dietary or nutritional supplement; Edible oils for therapeutic and medicinal purposes.”
However, the application, as amended, identifies the goods as follows: “Sublingual doses for non-medicinal purposes; Mouth sprays; Oral sprays.”
This proposed amendment is beyond the scope of the current identification because it expands beyond those originally itemized in the application.
Nevertheless, the identification of goods remains indefinite and must be clarified because as worded, the exact nature of the goods is unclear. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant may adopt the following identification, if accurate:
“Dietary and nutritional supplements; Sublingual doses for therapeutic and medicinal purposes, namely, [specify exact nature as well as what the goods are treating by its common commercial name]; Medicated lotion, creams, or gels for skin, hair, face, and body; Herbal medicated topical creams, and ointments for the relief of aches and pain; Topical medicated preparations, namely, sprays, creams, containing terpene for the treatment of [specify what the goods are treating]; Edible [specify type, i.e., fish] oils for medical purposes, namely, for use as a dietary or nutritional supplement; Edible oils for therapeutic and medicinal purposes, namely, [specify exact nature of goods by its common commercial name],” in International Class 5.
Applicant may amend the identification 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. Generally, any deleted goods and/or services may not later be reinserted. See TMEP §1402.07(e).
How to respond. Click to file a response to this nonfinal Office action.
/George M. Lorenzo/
Examining Attorney
Law Office 101
United States Patent and Trademark Office
(571-272-9367
george.lorenzo@uspto.gov
RESPONSE GUIDANCE
[1] PLEASE NOTE: The proposed amendment to the identification of goods is not acceptable for the reasons stated in this Office action. Thus, the previous wording in the existing identification remains operative for purposes of future amendments and for determining the scope of future amendments. See TMEP §1402.07(d).