To: | Zooba Eats, Inc. (ipprosecution@orrick.com) |
Subject: | U.S. Trademark Application Serial No. 88607025 - ZOOBA - 33933.6001 |
Sent: | December 27, 2019 01:38:44 PM |
Sent As: | ecom127@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 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88607025
Mark: ZOOBA
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Correspondence Address: ORRICK, HERRINGTON & SUTCLIFFE LLP
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Applicant: Zooba Eats, Inc.
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Reference/Docket No. 33933.6001
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 27, 2019
The referenced application has been reviewed by the assigned trademark examining attorney. 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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is ZOOBA for “Fresh fruit and vegetables; organic fresh fruit and vegetables; raw fruits and vegetables; unprocessed fruits and vegetables; arrangements of fruits and vegetables; gift baskets of fruits and vegetables; fresh herbs; organic fresh herbs; unprocessed herbs; raw herbs; raw roots, namely, horseradish and ginger; edible seeds; unprocessed edible seeds; sugar cane; raw sugar cane bagasses; fresh beans; raw beans; unprocessed beans; roses; raw wheat; unprocessed wheat; fresh wheat; seeds, namely for, planting, flowers, fruits and vegetables” in Class 31.
The registered is ZOOBA, combined with a design, for, in relevant part, “Processed, canned, dried and preserved fruits, frozen, prepared and packaged meals consisting primarily of meat, fish, poultry or vegetables, all natural meats, namely, buffalo, arrangements of cut fruits, beef, canned fruits, canned processed olives, canned tomatoes, canned, cooked or otherwise processed tomatoes, cheese, cheese containing herbs, cheese containing spices, cheese food, cheese in the form of dips, cheese spreads, cheese, namely, gouda, edam, cheddar and processed cheese, chicken, cooked vegetables, cooking oil, cow's milk, cut fruits bagged, canned and bottled, cut vegetables bagged, canned and bottled, dairy products excluding ice cream, ice milk and frozen yogurt, dairy-based dips, dairy-based spread, diced tomatoes, dips, dried beans, dried lentils, drinkable soups, edible oil, namely, vegetable oil, fish oil and coconut oil, egg product, eggplant parmigiana, eggs, falafel, feta cheese, French fried potatoes, french fries, fresh meat, fresh poultry, frozen chicken, namely, breaded chicken nuggets, chicken strips, chicken breasts, whole chicken, fruit and vegetables salads, fruit concentrates and purees used as ingredients of foods, Fruit peel, Fruit preserves, Fruit pulps, Fruit purees, Fruit rinds, Fruit salads, Fruit salads and vegetable salads, Fruits, namely, processed, canned, dried and preserved fruits, Fruit-based food beverage, Fruit-based organic food bars, also containing fruits, dried fruits, fruit juice, grain, vegetables, nuts, seeds and chocolate, Fruit-based raw food bars, Fruit-based snack food, Fruit-based spreads, Game, Game, not live, Garden salads, Garlic butter, Garlic-based spread, Ghee, Gherkins, Glazed fruits. Goat milk, Grape seed oil, Grapeseed oil, Greek yogurt, Ground almond, ground almonds, Guava paste, Haggis, Half and half, Hamburger, Hardened oils, Hash brown potatoes, Hazelnut spread, Hen eggs, Herrings, not live, Honey butter, Hot chili pepper puree, Hot dogs, Hummus, Hummus chick pea paste, Infused oils for cooking, Instant or pre-cooked soup, Instant or pre-cooked stew, Jams, Jams and marmalades, Jellies, Jellies and jams, Jellies for food, Jellies, jams, Jelly made from devils' tongue root (konnyaku), Legume salads, Legume-based spreads, Lemon juice for cooking purposes, Lime juice for cooking purposes, liver, Luncheon meats, Maize oil, Margarine, Margarine substitutes, Margarine, edible oils and fats, Marinated meat, seafood, fish, poultry and vegetables, Marmalade, Marmalades, Marmalades and jams, Mascarpone, Mashed potatoes, meat, meat preserved, meat stocks, Meat, fish, fruit and vegetable preserves, meat, frozen, meatballs, milk, milk based beverages containing fruit juice, Milk beverages containing fruits, Milk beverages with high milk content, milk curd, milk drinks containing fruits, milk ferments for culinary purposes, Milk-based beverage containing coffee, Milk-based beverages with high milk content, Milk-based beverages containing milk concentrates, vegetable oil and added nutrients, Milk-based beverages with chocolate, Mincemeat, Mixes for making broths, Mixes for making soup, Mold-ripened cheese, Mould-ripened cheese, Moussaka, Mozzarella sticks, Nut and seed-based snack bars, Nut oils, Nut topping, Nut and seed-based snack bars, Oil for cooking, namely, vegetable oil, salad oil and edible oil, Oils and fats for food, Oil-based baking spray containing flour, Oil-based cooking spray, Olive oil, Olive oil, Olive oils, olive pastes, omelets, Onion rings. Organic coconut oil for use in cooking and food preparation, Organic dairy products excluding ice cream, ice milk and frozen yogurt, Organic milk, Organic nut and seed-based snack bars, packaged meats, Palm kernel oil for food, Palm oil, Parmesan cheese, pastrami, pate, peanut butter, peanut butter toppings, peanut oil for food, peanut paste, peanut spread, peanut based food beverages, pectin for culinary purposes, peeled tomatoes, pepper oil, Pepper paste, pepperoni, piccalilli, pickle juice, Pickled cucumbers, Pickled fish, Pickled fruits, Pickled jalapeños, Pickled onions, Pickled peppers, Pickled pigs' feet, Pickled radishes, Pickled vegetables, Pickled vegetables in soy sauce, soybean paste or vinegar, pickled watermelon rind, pickles, potato chips, Potato chips made from yams from sweet potatoes, Potato crisps, Potato crisps and chips, Potato dumplings, Potato flakes, Potato fries, Potato fritters, Potato pancakes, Potato pudding, potato puffs, potato salad, potato skins, potato sticks, potato-based gnocchi, Potato-based snack foods, poultry, poultry and game, poultry substitutes, poultry, namely, chicken, turkey and duck, poultry not live, prawns not live, Preparations for making broths, preparation for making bouillon, preparation for making soup, preparation for making soups, prepared beef, Prepared dishes consisting principally of meat, Prepared entrees consisting primarily of vegetables, soups, fruit salads and vegetable salads, Prepared entrees consisting primarily of seafood, Prepared meals consisting principally of game, Prepared meat, Prepared nuts, prepared pistachio, prepared walnuts, preserved fish, preserved fruit and vegetables, preserved fruits, preserved fruits and vegetables, preserved meat and sausages, preserved peas, preserved vegetables, preserved vegetables (in oil), Preserved. dried and cooked fruit and vegetables, Preserved, dried and cooked vegetables, Preserved, dried and cooked olives, Preserved, dried, cooked and grilled vegetables, Preserved, frozen, dried or cooked vegetables, pre-cooked soup, pre-cut vegetables salad, Pre-packaged dinners consisting of primarily meat served with pasta, rice and vegetables, Processed acai berries, Processed almonds, Processed anchovies, Processed apples, Processed apricots, Processed artichokes, Processed arugula, Processed asparagus, Processed avocados, Processed bean sprouts, Processed beans, Processed bee pollen for food purposes, Processed beets, Processed blueberries, Processed brussel sprouts, Processed cabbage, Processed cactus for food purposes, Processed catfish, Processed cheese, Processed cherries, Processed chia seeds, Processed chickpeas, Processed coconut, Processed collard greens, Processed dates, Processed edamame, Processed edible flowers, Processed edible flowers in crystallized form, Processed edible seeds, Processed eggplant, Processed eggs, Processed fish, Processed fish roe, Processed fish spawn, Processed fruits, Processed fruits, namely, frozen blueberries and fried bananas, Processed fruit- and nut-based food bars, Processed garbanzo beans, Processed garlic, Processed ginseng for use as a vegetable, Processed goji berries, Processed grape leaves, Processed hearts of palm, Processed jicama, Processed kale, Processed kiwi fruit, Processed kola nuts, Processed lamb, Processed laver, Processed lemongrass, Processed lemons, Processed mangos, Processed meat, Processed meat, namely, ham, turkey, lamb and veal, Processed meat, namely, kidneys, Processed mushrooms, Processed mustard greens, Processed nuts, Processed nuts, namely, pistachios, Processed oils and fats, Processed olive puree, Processed olives, Processed olives with peppercorns, Processed onions, Processed oranges, Processed papayas, Processed peaches, Processed peanuts, Processed peels. Processed pepperoncinis, Processed peppers, Processed pignoli pine nuts, Processed pimientos, Processed potatoes, Processed poultry, Processed pumpkin seeds, Processed quince, Processed radicchio, Processed roots, Processed seafood, Processed seafood, namely, fish, Processed shallots, Processed stuffed olives, Processed sunflower seeds, Processed sweet potatoes, Processed tilapia, Processed vegetables and fruits, Processed vegetables, Processed vegetables, namely, cooked cucumber, daikon, mushrooms, bellflower root, spinach, soybean sprouts and bracken fern stems used in bibimbap dishes, Processed vegetables, namely, frozen peas, pre-sliced carrots, Processed yams, Processed, edible seaweed, prunes, pumpkin butter, pumpkin seed oil, quail eggs, raisins, refried beans, refrigerated food package combinations consisting primarily of meat, cheese or processed vegetables for purposes of creating a sandwich, ribs, rice bran oil, ripened cheese, ripened cheeses, roast beef, roasted nuts, roasted nuts, namely, almonds, cashews and mixed nuts, roasted peanuts, Romano cheese, salad oil, salads except macaroni, rice, and pasta salad, Salads, namely, garden salads, fruit salads, vegetable salads, salami, salted meat, sardines not live, sausage meat, sausages, sausages, namely, sujuk, seafood, not live, Seasoned meat, seafood, fish, poultry, and vegetables, Seasoned nuts, seed-based snack bars, seed-based snack foods, sesame oil, sesame oil for food, sheep cheese, sheep milk, shelled nuts, shish kabob, shortening, Shrimp, not live, shrimp not live, shrimps, prawns and lobsters, not live, Sliced fruits, sliced meat, Sliced vegetables, smoked fish, smoked fish, smoked meats, smoked sausages, smoked shellfish, snack dips, snack food dips, Snack mix consisting primarily of processed fruits, processed nuts and/or raisins, snack mix consisting primarily of dehydrated fruits, processed nuts and also including sesame sticks, snack mix consisting primarily of processed nuts, seeds, dried fruit and also including chocolate, Snack mix consisting primarily of processed nuts, and also including seeds, dried fruit and chocolate, snack mix consisting of processed seeds, snack mix consisting primarily of dehydrated fruits, processed nuts and also including sesame sticks, soft cheese, soft white cheese, soft-ripened cheese, soup concentrates, soup cubes, soup mixes, soup pastes, soups, soups and preparations for making soups, sour cream, sour cream substitutes, spicy nuts, namely, almonds, cashews and mixed nuts, spicy peanuts, spicy pickles, stewed fruit, stews, stock prepared, stock cubes, strained cheese, strained soft white cheeses, stuffed olives with feta cheese in sunflower oil, stuffed olives with pesto in sunflower oil, stuffed olives with red pepper and almond, sunflower, tahini being sesame seed paste, tapenades, tinned fish, tinned fruits, tinned meat, tinned meat, fish, vegetables and fruits, tinned olives, tinned seafood, tinned tomatoes, tinned vegetables, tomato extracts, tomato paste, tomato preserves, tomato puree, tuna fish not live, turkey, turkey bacon, turkey sausages, uncooked hamburger patties, uncooked sausages, unflavored and unsweetened gelatins, veal, veal stock, vegetables chips, vegetable juice for cooking, vegetable juices for cooking, vegetable mousse, vegetable oils, vegetable oils and fats for food, vegetable paste, vegetable pudding, namely, savory pudding, vegetable puree, vegetable salads, vegetables in vinegar, vegetables, instant frozen, vegetables, instant frozen, vegetables, namely, processed, frozen, canned and preserved, vegetable-based baking spray containing flour, vegetable-based cooking spray, vegetable-based food beverages, vegetable-based spreads, vegetarian sausages, veggie burger patties. whipped cream, whipped topping, whipping cream, white cheese, white pudding, wieners, yoghurt, yoghurt drinks, yoghurts, yogurt, yogurt drinks, yogurts, yogurt based beverages” in Class 29; “Frozen, prepared or packaged meals consisting primarily of pasta or rice; combination meals consisting of pasta or rice-based entrees and soup or salad for consumption on or off the premises” in Class 30; and “Fresh apples, fresh apricots, fresh artichokes, fresh arugula, fresh asparagus, fresh avocados, fresh bananas, fresh bean sprouts, fresh beans, fresh beets, fresh blueberries, fresh cabbage, fresh carrots, fresh chilies, fresh citrus fruits, fresh cucumbers, fresh culinary herbs, fresh dates, fresh edible flowers, fresh eggplants, fresh fruit, fresh fruit and vegetables, fresh fruits, fresh garden herbs, fresh garlic, fresh ginger, fresh grape cherry tomatoes, fresh grapes, fresh grape for winemaking, fresh herbs, fresh kale, fresh kiwi fruit, fresh leeks, fresh legumes, fresh lemons, fresh lentils, fresh lettuce, fresh limes, fresh mandarin oranges, fresh mangos, fresh melons, fresh onions, fresh oranges fresh papayas, fresh parsley, fresh peaches, fresh peas, fresh peppers, fresh potatoes, fresh pumpkins, fresh spinach, fresh strawberries, fresh sweet potatoes, fresh tangerines, fresh tomatoes, fresh truffles, fresh vegetables, fresh wine grapes, fresh yams, fresh zucchini, gift baskets of fresh fruits, organic fresh fruit, organic fresh fruit and vegetables, organic fresh herbs, organic fresh vegetables, raw apples, raw apricots, raw artichokes, raw asparagus, raw avocados, raw bark, raw bean sprouts, raw beans, raw beets, raw blueberries, raw cabbage, raw dates, raw fruits, raw garlic, raw ginger, raw herbs, raw horseradish root, raw lemons, raw onion, raw oranges, raw peaches, raw peppers, raw potatoes, raw pulses, raw red beans, raw sugar cane bagasses, raw sweet potatoes, raw tomatoes, raw vegetables, raw wheat, raw zucchini, roses, seeds and bulbs, seeds for flowers and sugar cane” in Class 31.
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 ZOOBA and the literal element of registrant’s mark is ZOOBA. These marks are partially 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 have identical literal elements, 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.
Because applicant’s mark and registrant’s mark share similar wording and create a similar commercial impression, the marks are confusingly similar.
RELATEDNESS OF THE GOODS
Therefore, because the marks are confusingly similar and the goods are closely related, purchasers encountering these goods are likely to believe that they emanate from a common source. Accordingly, there is a likelihood of confusion and registration is refused pursuant to Section 2(d) of the Trademark Act.
CLASSIFICATION AND IDENTIFICATION OF GOODS
Applicant may substitute the following wording, if accurate:
Class 29: Arrangements of cut fruits and vegetables; Arrangements of processed fruits and vegetables;
Class 31: Fresh fruit and vegetables; organic fresh fruit and vegetables; raw fruits and vegetables; unprocessed fruits and vegetables; arrangements of fresh fruits and vegetables; gift baskets of fresh fruits and vegetables; fresh herbs; organic fresh herbs; unprocessed herbs; raw herbs; raw roots, namely, horseradish and ginger; edible seeds; unprocessed edible seeds; sugar cane; raw sugar cane bagasses; fresh beans; raw beans; unprocessed beans; roses; raw wheat; unprocessed wheat; fresh wheat; seeds, namely for, planting, flowers, fruits and vegetables
ID MANUAL ONLINE: 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.
MULTIPLE-CLASS APPLICATION REQUIREMENTS
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.
(2) Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule). The application identifies goods that are classified in at least 2 classes; however, applicant submitted a fee sufficient for only 1 class. Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.
See 15 U.S.C. §§1051(b), 1112, 1126(e); 37 C.F.R. §§2.32(a)(6)-(7), 2.34(a)(2)-(3), 2.86(a); TMEP §§1403.01, 1403.02(c).
See an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form.
The fee for adding classes to a TEAS Reduced Fee (RF) application is $275 per class. See 37 C.F.R. §§2.6(a)(1)(iii), 2.23(a). See more information regarding the requirements for maintaining the lower TEAS RF fee and, if these requirements are not satisfied, for adding classes at a higher fee using regular TEAS.
RESPONSE GUIDELINES
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.
/Evelyn Kelley/
Evelyn Kelley
Trademark Examining Attorney
Law Office 127
(571) 270-7321
evelyn.kelley@uspto.gov
RESPONSE GUIDANCE