To: | Gems (hello@dripsweets.com) |
Subject: | U.S. Trademark Application Serial No. 88596444 - GEMS - N/A |
Sent: | December 10, 2019 07:31:14 AM |
Sent As: | ecom112@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88596444
Mark: GEMS
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Correspondence Address:
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Applicant: Gems
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Reference/Docket No. N/A
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: December 10, 2019
1) Section 2(d) Refusal—Likelihood of Confusion;
2) Section 2(e)(1) Refusal—Descriptive Mark;
3) Refusal Based on Duplicate Applications; and
4) Clarification of Identification of Goods Required.
15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03. Applicant should also note the advisories stated in this Office action.
1) 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. 1615927 (“FRUIT GEMS”), 3548219 (“ALOHA GEMS”), 3755730 “GODIVA CHOCOLATIER GEMS”), and 5335115 (“PECAN GEMS”). Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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.
Comparison of the Marks
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)); TMEP §1207.01(b).
In the case at hand, the applied-for mark consists solely of the term “GEMS” while the registered marks consist of the term “GEMS” with additional wording. Although applicant’s mark does not contain the entirety of the registered marks, applicant’s mark is likely to appear to prospective purchasers as a shortened form of the registrants’ marks. 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 marks because it contains some of the wording in the registered marks and does not add any wording that would distinguish it from those marks.
Here, the marks “FRUIT GEMS” (Registration No. 1615927 ) and “PECAN GEM” (Registration No. 5335115) consist of the mark “GEM/S” proceeded by an ingredient. If consumers were to encounter the applicant’s mark “GEMS” alongside these marks in the marketplace, they would like believe that the marks indicate different types of “GEMS” originating from the same source. Thus, the marks are confusingly.
The marks “ALOHA GEMS” (Registration No. 3548219) and “GODIVA CHOCOLATIER GEMS” (Registration No. 3755730) consist of the term “GEMS” plus a house mark. Adding a house mark to an otherwise confusingly similar mark will not obviate a likelihood of confusion under Section 2(d). See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007) (finding CLUB PALMS MVP and MVP confusingly similar); In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE DIOR and CACHET confusingly similar); TMEP §1207.01(b)(iii). It is likely that goods and/or services sold under these marks would be attributed to the same source. See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007). Accordingly, in the present case, the marks are confusingly similar.
Comparison of the Goods
Here, a portion of the applicant’s goods are identical to goods found in the registrations. Applicant’s goods include “candies” which are found in Registration No. 3755730 and Registration No. 1615927. When analyzing an applicant’s and registrant’s goods and/or services for similarity and relatedness, that determination is based on the description of the goods and/or services in the application and registration at issue, not on extrinsic 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)). In this case, the portions of the identifications that are identical so that it is presumed that the channels of trade and class(es) of purchasers are the same for these goods and/or services. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrants’ identical goods are related.
Applicant’s goods are also stated so broadly that they encompass the more specific goods of the registrants. Applicant’s goods “sweets” and “candies” encompass the more narrowly stated “brittle” in Registration No. 5335115; “Confectionery, namely, chocolate covered candies and nuts” in Registration No. 3548219, and “chocolate” in Registration No. 3755730. 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). Similarly, the broadly stated “candy” or “candies” in Registration Nos. 3755730 and 1615927 encompass the applicant’s more narrowly described “gummies,” “caramels,” and “gems.” Id. Thus, applicant’s and registrants’ 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 registrants’ goods and/or services are related.
Accordingly, registration is refused on the Principal Register. Although registration has been refused, the applicant may present arguments and evidence in support of registration. If applicant responds to this refusal, then the applicant must also respond to any other refusals or requirements stated in this Office action.
Advisory—Prior Pending Application May Present a Bar to Registration
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.
2) Section 2(e)(1) Refusal—Descriptive Mark
Registration is refused because the applied-for mark merely describes features of applicant’s goods. Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1); see TMEP §§1209.01(b), 1209.03 et seq.
The present application is for registration on the Principal Register of the mark “GEMS” as used with the goods currently identified as “Candies, Gummies, Cookies, Caramels, gems” in International Class 30.
Applicant’s goods include a variety of sweets and candies, including candy identified by the applicant as “gems.” The term “GEMS” refers to small, shiny, and colorful candy that resembles gemstones or jewels. Please see attached evidence from http://yorksnuthouse.com/products/blue-candy-chocolate-gems-1lb-bag?variant=845070303238¤cy=USD&gclid=Cj0KCQiA_rfvBRCPARIsANlV66N0JDwC0mH35R1djjA7UXApGZEGfrEjQkNPnAJ2CQm_J7luCV72n9gaAjs_EALw_wcB, http://www.ohnuts.com/buy.cfm/bulk-candy/gummies-gummy-candy/jelly-belly-sunkist-fruit-gems?pre=32396&gclid=Cj0KCQiA_rfvBRCPARIsANlV66OzvTJbb0-sfop8ppnQSQ6xyZPbMG3fJD6IE8ZEt3ICwTHy7EkBLSQaAuliEALw_wcB, http://www.oldtimecandy.com/products/rainbow-gems-2lb-bulk-bag?variant=7455962103860&gclid=Cj0KCQiA_rfvBRCPARIsANlV66NWGR-D1VH8pUsZwMqXpDHs6tDRqkCK6LzTywteybvwbL-tAi-GDJsaAtSnEALw_wcB, and
http://www.swisscolony.com/p/traditional-candy-002579.html?source=c001&code=all-products&medium=inhaus&link=002579&cm_mmc=google-_-pla_campaign_computer-_-all-products-_-002579&gclid=CjwKCAiAob3vBRAUEiwAIbs5ThiAy4kpGnaaODhRD6IZbiNaEVovb0RTohwZZ_j711H4o06. This evidence demonstrates that the term “GEMS” is commonly used to describe small pieces of candy that are shiny and colorful, reminiscent of gemstones. Indeed, the applicant has called a portion of the goods “gems,” which indicates that term is used to describe candy with particular features. In the context of the applicant’s sweets candies, the term merely describes features of the candy. Consumer encountering the mark “GEMS” will understand that the goods are small, colorful pieces of candy.
Accordingly, registration is refused on the Principal Register. Although registration has been refused, the applicant may present arguments and evidence in support of registration. If applicant responds to this refusal, than the applicant must respond to the other issues raised in this Office action.
3) Refusal Based on Duplicate Application
Registration is refused because this application and U.S. Application Serial No. 88604797 appear to be duplicate applications. 37 C.F.R. §2.48; TMEP §703. See the attached application. The USPTO will not issue duplicate registrations. 37 C.F.R. §2.48; TMEP §703. Applicant may respond to this refusal by abandoning one of them.
4) Clarification of Identification of Goods Required
The following suggested identification contains further guidance in bold and/or brackets. Applicant may adopt any or all of the suggestions so long as they are accurate. If applicant does not adopt a suggestion, then applicant must amend the identification so that it is as specific as the suggestions and language found in the Manual of Acceptable Identifications of Goods and Services.
International Class 30—Sweets, Candies, Gummy candies, Cookies, Caramels, Gem candies
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.
Advisory—Applicant May Wish to Hire Counsel
Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
Response Information
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.
/Marilyn Izzi Vengroff/
Trademark Examining Attorney
Law Office 112
(571) 270-1523 (phone)
(571) 270-2523 (fax)
marilyn.vengroff@uspto.gov
RESPONSE GUIDANCE