To: | Frost Popsicles USA LLC (trademarks@brandandbranch.com) |
Subject: | U.S. Trademark Application Serial No. 88614443 - FROST - N/A |
Sent: | December 13, 2019 03:33:47 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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88614443
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 standard characters is identical in all respects to the cited mark “FROST” in standard characters and highly similar to the cited marks “FROST GELATO” in standard characters and “FROST A GELATO SHOPPE” in standard characters.
In the present case, as pertaining to the marks consisting solely of the term “FROST”, applicant’s mark is “FROST” in standard characters and registrant’s mark is “FROST” in standard characters. 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 and/or services. Id. Therefore, the marks are confusingly similar.
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.
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).
As pertaining to registrant’s 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”).
For the above reasons, the applied-for mark is 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”.
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” 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.
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