United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88581647
Mark: GOLD STANDARD
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Correspondence Address: 222 N. LASALLE STREET - 24TH FLOOR
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Applicant: Glanbia Nutritionals (Ireland) Limited
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Reference/Docket No. 45192020134
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: November 20, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SUMMARY OF ISSUES:
SECTION 2(d) – LIKELIHOOD OF CONFUSION REFUSAL
In this case, applicant has applied to register the mark “GOLD STANDARD” for use in connection with “Ready to drink beverages, namely, energy drinks and sports drinks; sports training drinks; energy drinks and sports drinks containing nutritional supplements; sports drinks fortified with protein; powders for the preparation of beverages, namely, energy and sports drinks; smoothies” in Class 32.
The mark in Registration No. 5124461 is “GOLD STANDARD” used in connection with “beer,” in Class 32.
Introduction to Section 2(d) Analysis
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 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. 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.
Similarity of the Marks
In the present case, applicant’s mark is “GOLD STANDARD” and registrant’s mark is “GOLD STANDARD”. 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. Id.
Therefore, the marks are confusingly similar.
Relatedness of the Goods
In this case, applicant’s energy and sports drinks are closely related to registrant’s beer because the goods are frequently offered in the same channels of trade and under the same mark. The following attached Internet evidence demonstrates that beer and energy or sports drinks are frequently consumed together and offered in the same channels of trade, such as bars and clubs. See e.g.,
1. http://www.addictioncampuses.com/blog/mixing-alcohol-energy-drinks/ (“The Dangers Of Mixing Alcohol and Energy Drinks…As energy drinks surge in popularity across the country, they've brought a new trend with them- mixing caffeinated beverages with alcohol. The combination of energy drinks and alcohol has created a host of new flavorful drinks that mask the feelings of being drunk while keeping drinkers up for hours. Despite the growing fan base, particularly among teens and young adults, mixing energy drinks with alcohol can be dangerous and, in rare cases, deadly.”).
2. http://www.cdc.gov/alcohol/fact-sheets/caffeine-and-alcohol.htm (“Mixing alcohol with energy drinks is a popular practice, especially among young people in the United States. In 2017, 10.6% of students in grades 8, 10, and 12 and 31.8% of young adults aged 19 to 28 reported consuming alcohol mixed with energy drinks at least once in the past year.”)
3. http://www.bbc.com/news/health-39326304 (“Mixing spirits and liqueurs with energy drinks, such as Red Bull and Monster, has become increasingly popular - in pubs and clubs, and at home.”)
4. http://www.ncbi.nlm.nih.gov/pubmed/18439201 (“Caffeinated cocktails: energy drink consumption, high-risk drinking, and alcohol-related consequences among college students….Conclusion: Almost one-quarter of college student current drinkers reported mixing alcohol with energy drinks.”).
5. http://alcoholjustice.org/images/stories/pdfs/energydrinks_and_intoxication.pdf (“Recent studies employing non-probability sampling have found that 73% of an American college sample (Malinauskas et al., 2007) and 85% of an Italian medical school student sample (Oteri, Salvo, Caputi, & Calapai, 2007) had consumed energy drinks mixed with alcohol during the past month. College students are a major market for energy drinks (O'Brien, McCoy, Rhodes, Wagoner, & Wolfson, 2008) and they are a ubiquitous feature of recreational events in many campus communities (Miller, 2008a). The major motivations college students cite for using energy drinks is to compensate for insufficient sleep, increase energy, and mix with alcohol while partying (Malinauskas et al., 2007). In regard to alcohol abuse, concerns have emerged over the increasing popularity of such drinks as “Red Bull and vodka” and “Jager Bombs” (Jagermeister and Red Bull) served at bars and nightclubs (O'Brien et al., 2008).”).
The attached evidence establishes that goods similar to the parties’ respective goods are frequently consumed together. Where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease). Thus, applicant’s and registrant’s respective goods are closely related under the likelihood of confusion analysis.
See Registration Nos. 5832195, 5689656, 5495832, 5109595, 4769857, 5154229, 4684862, and 5212882.
This evidence establishes that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Accordingly, 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).]
Ultimately, because the marks are confusingly similar and the goods are closely related, it is likely a potential consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant. Therefore, registration must be refused under Section 2(d).
Response to Section 2(d) – Likelihood of Confusion Refusal
Applicant should note the following additional ground for refusal.
SECTION 2(e)(1) – MERE DESCRIPTIVENESS REFUSAL
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968); In re Positec Grp. Ltd., 108 USPQ2d 1161, 1162-63 (TTAB 2013).
In this case, the mark, “GOLD STANDARD”, is defined as “something that is considered to be the best and that is used to judge the quality or level of other, similar things.” See http://www.merriam-webster.com/dictionary/the%20gold%20standard. As such, the mark directly conveys the applied-for goods are the best of its type, and is therefore laudatory.
The following attached evidence demonstrates the phrase “GOLD STANDARD” is commonly used in connection with similar goods to convey goods that are the best of their type. See e.g.,
1. http://marcuspape.com/xsgold/ (“XS Gold will provide deeper, more meaningful energy to the XS Nation. As a distributor, you are on the front-lines of this exciting new gold standard in energy drinks, what we are calling functional energy.”)
2. http://www.gq.com/story/what-to-eat-after-workout (“The 7 Best Things to Eat and Drink After Your Workout…The Lowdown: Trendy foods come and go—but "an egg is the gold standard," says dietitian Leah Mark, M.S., C.D.N., C.P.T. Though they weigh in at just 70 calories apiece, eggs contain all nine essential amino acids (the building blocks of protein), plus branched-chain amino acids, which help reduce muscle damage in the body. And if you're after the most nutritional bang for your buck, don't even think about throwing away the yolk: That golden center is home to half the protein, not to mention all of the egg's vitamin D and omega-3 fatty acids.”).
3. http://www.accesswire.com/442607/Kona-Gold-Solutions-Inc-Places-Order-for-New-Hemp-Infused-Energy-Drink (“Kona Gold will begin developing Hemp Energy Drinks, Energy Patches, Hemp Apparel, Hemp Shampoo as well as a Hydroponics division…There are many hemp companies out there that get lost in the crowd, but Kona Gold sets the gold standard with its premiere line of products.”).
4. http://www.goodhousekeeping.com/health/fitness/g28089471/best-protein-powder/ (“The 12 Best Protein Powders You Can Buy Online, According to a Nutritionist…Eating real, whole ingredients to up your protein intake (particularly: eggs, seafood, beef, poultry, legumes, seeds, nuts, dairy products, and pork) is always the gold standard, no matter what.”).
The attached evidence of third-party usage of the phrase “GOLD STANDARD” to describe goods that are the best of their kind demonstrates that purchasers will immediately understand the applied-for-mark as describing the quality of the applied-for goods is the best. Thus the mark is merely laudatory and descriptive of the alleged merit of the applied-for goods.
Ultimately, when purchasers encounter applicant’s goods, they will immediately understand the mark as an indication of a feature of applicant’s goods rather than as an indication that applicant is the source of the goods. Therefore, the mark is merely descriptive and registration is refused pursuant to Section 2(e)(1) of the Trademark Act.
Response to Section 2(e)(1) – Mere Descriptiveness Refusal
ADVISORY: SUPPLEMENTAL REGISTER NOT PERMITTED UNTIL ACCEPTABLE AMENDMENT TO ALLEGE USE FILED
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
How to respond. Click to file a response to this nonfinal Office action
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.
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.
ASSISTANCE
Please call or email the assigned trademark examining attorney with questions about this Office action.
If applicant requires technical assistance in using the online response form, applicant may email TEAS@uspto.gov or call the Trademark Assistance Center at 1-800-786-9199.
/Tiffany Y. Chiang/
Examining Attorney
Law Office 113
(571) 272-7681
tiffany.chiang@uspto.gov