To: | Frost Popsicles USA LLC (trademarks@brandandbranch.com) |
Subject: | U.S. Trademark Application Serial No. 88614406 - FROST - N/A |
Sent: | December 13, 2019 03:35:36 PM |
Sent As: | ecom106@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88614406
Mark: FROST
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Correspondence Address: AMANDA R. CONLEY AND SHABNAM MALEK 1305 FRANKLIN STREET, SUITE 220
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Applicant: Frost Popsicles USA LLC
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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 13, 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
U.S. Registration No. 3180438 for the mark “FROST” in standard characters for the goods “Frozen confections, gelatos, Italian ice cream, ice cream, sorbet, ice cream cones, ice cream floats, milkshakes, coffee, coffee and espresso drinks, frozen coffee beverages” in International Class 030;
U.S. Registration No. 3859856 for the mark “FROST GELATO” in standard characters for the goods “Frozen confections, gelatos, Italian ice cream, milkshakes, coffee, coffee and espresso drinks, frozen coffee beverages” in International Class 030 with a disclaimer for the term “GELATO”;
U.S. Registration No. 3180427 for the mark “FROST A GELATO SHOPPE” in standard characters for the goods “Frozen confections, gelatos, Italian ice cream, ice cream, sorbet, ice cream cones, ice cream floats, milkshakes, coffee, coffee and espresso drinks, frozen coffee beverages” in International Class 030 with a disclaimer for the wording “A GELATO SHOPPE”.
Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
General Principles
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.
Comparing the Parties’ Marks
Applicant’s mark for “FROST” in plain font with snowflake design is nearly identical to the cited mark “FROST” and highly similar to the cited marks “FROST GELATO” in standard characters and “FROST A GELATO SHOPPE” in standard characters.
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 sole literal element of applicant’s mark, “FROST” is identical in all respects to the cited mark “FROST” and the dominant portion “FROST” of the other two cited marks.
Registrant’s addition of “GELATO” and “A GELATO SHOPPE” to the term “FROST” will not adequately differentiate the registrant’s marks from applicant’s “FROST” mark. 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). The registrant has entered disclaimers for such descriptive wording. The overall commercial impressions of the cited marks are heavily dominated by the term “FROST”.
Of note, the first term in the cited marks “FROST GELATO” in standard characters and “FROST A GELATO SHOPPE” in standard characters is “FROST”. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
Applicant’s use of a snowflake design as a border to the sole literal element of “FROST” will not adequately differentiate the mark from the cited marks to avoid a likelihood of confusion. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).
For the above reasons, the applied-for mark is nearly identical to and highly and confusingly similar to the cited marks.
Comparing the Parties’ Goods
Applicant’s goods are identified as follows: “Frozen confections, namely, freezer pops infused with alcohol”.
Registrant’s goods are identified as follows:
U.S. Registration No. 3180438 for the mark “FROST” in standard characters for the goods “Frozen confections, gelatos, Italian ice cream, ice cream, sorbet, ice cream cones, ice cream floats, milkshakes, coffee, coffee and espresso drinks, frozen coffee beverages” in International Class 030;
U.S. Registration No. 3859856 for the mark “FROST GELATO” in standard characters for the goods “Frozen confections, gelatos, Italian ice cream, milkshakes, coffee, coffee and espresso drinks, frozen coffee beverages” in International Class 030 with a disclaimer for the term “GELATO”;
U.S. Registration No. 3180427 for the mark “FROST A GELATO SHOPPE” in standard characters for the goods “Frozen confections, gelatos, Italian ice cream, ice cream, sorbet, ice cream cones, ice cream floats, milkshakes, coffee, coffee and espresso drinks, frozen coffee beverages” in International Class 030 with a disclaimer for the wording “A GELATO SHOPPE”.
Applicant’s goods are legally identical to registrant’s goods because “Frozen confections, namely, freezer pops infused with alcohol” on its face is subsumed by “Frozen confections”. Further, applicant’s freezer pops are highly related to the remainder of registrant’s frozen treats, as they are all for human consumption as desserts or treats not for primary sustenance, and are frozen.
Where the goods and/or services of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b). Here, the goods are legally identical.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration. If applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
International Class 033
Applicant may substitute the following wording, if accurate:
"Frozen confections, namely, freezer pops infused with alcohol" in International Class 030; and/or
“Frozen alcoholic cocktails in the form of freezer pops infused with alcohol" in International Class 033.
If applicant adopts the suggested amendment of the goods and/or services, then applicant must amend the classification to International Classes 030 and/or 033. See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§805, 1401. Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO. See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).
It is noted applicant’s website shows a frozen confection product stating the alcohol content is 7%. See attached website image capture.
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
Section 1(b) Based on Intent-to-Use
(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(s) already paid (view the USPTO’s current fee schedule). The application identifies goods and/or services that are classified in at least two classes; however, applicant submitted a fee(s) sufficient for only one class(es). 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.
Payment of Additional Fees – TEAS RF
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.
ATTORNEY INFORMATION – CLARIFICATION REQUIRED
The attorney of record is named “Amanda R. Conley and Shabnam Malek”, and the bar information of one attorney was provided therewith. Applicant must clarify this inconsistency. Specifically, applicant must appoint one attorney of record with corresponding bar information. TMEP §§602, 605 et seq.
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.
/Ada P. Han/
Trademark Examining Attorney
Law Office 106
US Patent & Trademark Office
(571) 272-5873
ada.han@uspto.gov
RESPONSE GUIDANCE