To: | Mars, Incorporated (mars.us.mp@effem.com) |
Subject: | U.S. Trademark Application Serial No. 88612344 - MARS - CORP-MARS |
Sent: | December 06, 2019 02:11:40 PM |
Sent As: | ecom108@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88612344
Mark: MARS
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Correspondence Address: |
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Applicant: Mars, Incorporated
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Reference/Docket No. CORP-MARS
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 06, 2019
SUMMARY OF ISSUES
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION [CLASSES 029 AND 035 ONLY]
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.
The applicant’s mark is MARS for in pertinent part:
Class 029: Preserved vegetables; vegetables, dried; vegetables, cooked; processed fruits, fungi and vegetables (including nuts and pulses); processed legumes; soya beans, preserved, for food; tofu; whey; formed textured vegetable protein for use as a meat substitute; pickles; preparations for making soup; soups; preparations for making bouillon; bouillon; dairy products and dairy substitutes; milk; milk products; milk substitutes; milk powder for nutritional purposes; protein milk; coconut milk; cheese; yoghurt; edible oils and fats; dips; nuts, prepared; nut-based spreads; seeds, prepared; fruit-based snack food; snack foods based on legumes; snack foods based on nuts; snack foods based on vegetables; prepared vegetable dishes
Class 035: Promotional services and consultancy services to promote public awareness of, agriculture, environment, sustainability, social responsibility, human rights, health, well-being, nutrition, healthcare, pharmaceutical, natural science, earth science, medical and veterinary issues and initiatives; providing information and consultancy services in relation to corporate practices and business solutions relating to social responsibility, environmental and sustainability issues and initiatives; promotional services and consultancy services to promote public awareness of the need for adopting animals, responsible pet ownership and the proper care and treatment of pets; business analysis, research and information services; retail, wholesale and distributorship services, mail order retail services, online retail services, retail services via global computer networks and retail services via any electronic media in relation to food, beverages, pet food, pet care products, pet products, healthcare products, hygiene products, dietary products, nutritional products, veterinary products, kitchen utensils, apparel for animals, clothing, footwear and headgear, games, toys, agricultural products and information and consultancy services in relation to all the aforesaid; providing product information for the purpose of assisting with the selection of goods and services in the fields of food, beverages, pet food, pet care products, pet products, healthcare products, hygiene products, dietary products, nutritional products, veterinary products, agricultural products; providing of consultancy to veterinarians, breeders, and outlets retailing foodstuffs for animals, relating to the conduct of their business; veterinary practice business management
The registrant’s marks are:
4566981 MARS CHEESE CASTLE for Cheese; Cheese and cracker combinations; Cheese food; Cheese spreads
4657754 THE MARS AGENCY for advertising agency services; advertising and marketing services; shopper marketing services
3687192 MARS for advertising agency services
2008113 MARS for advertising agency
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).
The applicant’s mark MARS, is similar to the registered marks MARS CHEESE CASTLE, THE MARS AGENCY, and MARS, as all contain the term MARS. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). Here all the marks contain the term MARS and thus confusion is likely.
Comparison of the Goods
Class 029: (for Reg. No. 4566981) Applicant’s cheese, snacks, and prepared meals are closely related to registrant’s goods as they all are cheese, snacks, and prepared foods found in the same trade channels.
Class 035: (for Reg. Nos. 4657754, 3687192, and 2008113) Applicant’s promotional, business, and retail services are similar to Registrant’s advertising services as they all are business and promotional services in the same trade channels.
Please see attached the following third party websites:
Accordingly, because confusion as to source is likely, registration is refused under Trademark Action Section 2(d) based on a likelihood of confusion.
If applicant chooses to respond to the refusal(s) to register, then applicant must also respond to the following requirement(s).
INFORMALITIES
IDENTIFICATION AND CLASSIFICATION OF GOODS REQUIREMENT
The identification of services is indefinite and must be clarified because. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. 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.
The wording in the identification is indefinite for the following reasons:
With respect to International Class 29, the identification of goods is partially indefinite. The applicant must clarify the goods by common commercial name and remove the parentheses which are not allowed in an identification of goods or services. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
With respect to International Class 30, the identification of goods is partially indefinite. The applicant must remove the parentheses, and specify the goods by common commercial name. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
With respect to International Class 31, the identification of goods is partially indefinite and must be clarified in common commercial terms. “Forestry products” are not in the Trademark ID manual. “Fortified food substances for animals” could include “dietary food supplements” which are in International Class 5. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
With respect to International Class 35, the identification of services is indefinite and must be clarified because the applicant must specify that the services are for business and have retail stores, wholesale stores, provide consumer information and are for the purposes of promoting public awareness. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
With respect to International Class 41, the identification of services is indefinite and must be clarified because the applicant must specify the type of entertainment and educational services and the fields in which those services are provided. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
With respect to International Class 42, the identification of services is partially indefinite and must be clarified because applicant must specify the field of services and remove redundant wording. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
With respect to International Class 44, the identification of services is partially indefinite and must be clarified because the applicant must specify the field of services. As written, some of the services could fall into International Class 42. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate (changes in bold):
Veterinary preparations, namely, antioxidants and dietetic food treats for animals; dietetic food adapted for veterinary use; food supplements; health food supplements; dietary supplements; dietary and nutritional supplements for humans; dietary and nutritional supplements for animals. International Class 5.
Preserved vegetables; vegetables, dried; vegetables, cooked; dried edible fungi and preserved vegetables, roasted nuts and processed pulses; processed legumes; soya beans, preserved, for food; formed textured vegetable protein for use as a meat substitute; soups; dairy products and dairy substitutes, namely, Greek yogurt, soy yogurt and soy milk; milk; milk products, namely, evaporated milk, organic milk, nut milk, hemp milk; milk substitutes; milk powder for nutritional purposes; protein milk; coconut milk; cheese; yoghurt; prepared nuts; seeds prepared for human consumption, not being seasonings or flavourings; black bean-based snack foods; nut-based snack foods; vegetable-based snack foods; prepared entrees consisting primarily of vegetables. International Class 29.
Cocoa; rice; pasta; noodles; couscous; preparations made from cereals, namely, _____; processed cereals; processed grains, food starch and starch noodles; confectionery, namely, pastilles; biscuits; high-protein cereal bars; ice cream; grain-based chips; condiments, namely, ketchup and soya bean paste; sauces; cooking sauces; sauce mixes; marinades; chutneys; Farinaceous food pastes for human consumption; relish; pasta sauce; pesto sauce; tomato sauce; soy sauce; mustard; vinegar; salt; spices; seasonings; processed herbs for cooking; herbal infusions for food; food flavourings other than essential oils; combination meals consisting primarily of pasta; combination meals consisting primarily of rice; noodle-based prepared meals; instant noodles; instant rice; cereal-based snack food; rice-based snack food; pasta-based snack food. International Class 30.
Agricultural seeds and seeds for horticultural purposes; agricultural grains for planting; aquaculture feed; dried plants; living plants; foodstuffs and fodder for animals, birds and fish; pet food; animal feed; forage, namely, food for animals; digestible chewing bones for dogs; edible chews for animals; edible treats for animals; wood shavings and chopped straw for animal bedding; litter for animals. International Class 31.
Promotional services and consultancy services to promote public awareness of initiatives in the fields of agriculture, environment, sustainability, social responsibility, human rights, health, well-being, nutrition, healthcare, pharmaceutical, natural science, earth science, medicine and veterinarian medicine; providing information relating to corporate image consulting in the fields of social responsibility and environmental and sustainability issues; promotional services and consultancy services to promote public awareness of the need for adopting animals, responsible pet ownership and the proper care and treatment of pets; business management analysis, business research and providing business information services; retail store, wholesale store, mail order catalog, online retail store services and distributorship services all featuring food, pet food, pet care products, pet products, healthcare supplements, dietary supplements, nutritional supplements, veterinary products and agricultural products; providing consumer product information relating to pet food, pet care products, veterinary products, dietary supplements and nutritional supplements; providing business referrals for consumers in the fields of veterinarians, breeders and retailers for foodstuffs for animals; business management for veterinary practice. International Class 35.
Charitable fundraising, namely, providing financial sponsorship of ______ (specify event); charitable fundraising; charitable fundraising, namely, collecting financial donations; charitable fundraising by collecting grant funds for non-profit organizations, educational institutions, non-governmental organizations, and community organizations; Advisory, consultancy and information services all in the field of charitable fundraising and financial sponsorship. International Class 36.
Educational services, namely, providing training in the fields of _______ (specify field); entertainment services, namely, live concerts, theater productions and organizing sports competitions; organizing live exhibitions and conferences in the field of culture, education, sports and entertainment for non-business and non-commercial purposes; educational services, namely, conducting seminars, workshops, conferences, congresses and symposiums all in the fields of ________ (specify subject); educational services, namely, conducting courses of instruction in the field of _______ (specify e.g. pet care); providing recreational areas in the nature of play areas for pets; providing an in-person educational and cultural forum in the field of _______ (specify subject); educational training, namely, conducting courses of instruction in the fields of agriculture, environment, sustainability, social responsibility, human rights, food, cooking, animals, pet food, pet care, health, well-being, nutrition, healthcare, natural science, earth science and veterinary practice; organizing live exhibitions and conferences in the fields agriculture, environment, sustainability, social responsibility, human rights, food, cooking, animals, pet food, pet care, health, well-being, nutrition, healthcare, natural science, earth science and veterinary practice all for non-business and non-commercial purposes; providing on-line training courses in the fields of agriculture, environment, sustainability, social responsibility, human rights, food, cooking, animals, pet food, pet care, health, well-being, nutrition, healthcare, natural science, earth science and veterinary practice; providing a website featuring non-downloadable videos in the fields of agriculture, environment, sustainability, social responsibility, human rights, food, cooking, animals, pet food, pet care, health, well-being, nutrition, healthcare, natural science, earth science and veterinary practice; entertainment services, namely, an on-going multi-media program featuring agriculture, environment, sustainability, social responsibility, human rights, food, cooking, animals, pet food, pet care, health, well-being, nutrition, healthcare, natural science, earth science and veterinary practice distributed via various platforms across multiple forms of transmission media; entertainment services, namely, providing on-line reviews of ______ (specify sports competitions, music, games, books); providing a website featuring the ratings, reviews and recommendation of users on events and activities in the field of entertainment and education; providing a website featuring blogs and non-downloadable publications in the nature of newsletters featuring classes in the fields agriculture, environment, sustainability, social responsibility, human rights, food, cooking, animals, pet food, pet care, health, well-being, nutrition, healthcare, natural science, earth science and veterinary practice; providing information relating to education services via the Internet; interactive educational services, namely, providing education courses in the fields of agriculture, environment, sustainability, social responsibility, human rights, food, cooking, animals, pet food, pet care, health, well-being, nutrition, healthcare, natural science, earth science and veterinary practice offered through online, non-downloadable videos and computer-assisted instruction. International Class 41.
Scientific and technological services, namely, research and design in the fields of agriculture and the environment; research testing and analysis of the goods of others to assure compliance with industry standards; scientific research in the fields of natural science and earth science; medical and pharmacological research; agricultural research; veterinary research; food research; environmental testing; pharmaceutical research; technical consultancy in the field of environmental science; technical consultancy in the fields of earth science; technical consultancy in the field of biochemistry; technical consultancy in the field of biology; scientific research and development; biological research and medical research; clinical research in the field of _______ (specify); laboratory analysis in the field of veterinarian specimens; medical laboratories; providing scientific research information in the field of _______ (specify e.g. oncology); providing an online searchable database featuring scientific research in the field of ______ (specify); providing information and data all relating to scientific research and development in the fields of medicine and veterinary medicine; basic and clinical research in the field of natural science and medicine products; providing scientific research information all relating to the environment, sustainability, natural science and earth science; design and testing for new product development; scientific development of diagnostic apparatus for _____ (specify); product development consultation; scientific research and development; research and development of ______ (specify e.g. vaccines, medicines, computer software); technical support, namely, monitoring technological functions of computer network systems; hosting an online website for others for organizing meetings to analyze personal preferences and conduct recommendations; technical consultancy in relation to research services relating to dietary, health food and nutritional supplements; providing information about research developments in medical science and veterinary science. International Class 42.
Veterinary services; pet hospital services; medical services for the treatment of pets; hygienic and beauty care for animals; agriculture and horticulture services, namely, planting, growing, fertilizing, pruning and picking _____ (specify crops) for others; aquaculture services, namely, the cultivation and breeding or plants or animals in a water environment; forest habitat restoration; agricultural services relating to environmental conservation, namely, providing recommendations for plant and soil nutrition supplements; animal breeding; animal healthcare services; animal grooming services; healthcare consultancy; veterinary consultancy; providing an internet website featuring information for pet owners relating to animal health and animal behavior; providing a website featuring information about health, wellness, diet and nutrition; nutrition counseling; providing information in the fields of diagnostic medical testing and nutrition; providing veterinary information, namely, providing information for medical services for pets; providing information in the fields of agricultural advice, veterinary medicine, health care for pets, nutrition for animals and pets, health care, wellness, nutrition, medical information about pharmaceuticals and medical services. International Class 44.
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.
TELEPHONE OR EMAIL FOR CLARIFICATION
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.
/Kapil K. Bhanot/
Examining Attorney
Law Office 108
571.270.1516
Kapil.Bhanot@uspto.gov
RESPONSE GUIDANCE