To: | ICA TriNova, LLC (docketing@mcciplaw.com) |
Subject: | U.S. Trademark Application Serial No. 88616012 - FRUITGARD - 10085-800US1 |
Sent: | December 17, 2019 06:55:37 PM |
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 Attachment - 29 Attachment - 30 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88616012
Mark: FRUITGARD
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Correspondence Address: |
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Applicant: ICA TriNova, LLC
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Reference/Docket No. 10085-800US1
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 17, 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
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.
Here, applicant’s applied-for mark is “FRUITGARD” for “Chemical preparations for cleaning purposes in the food and food processing industries; Chemical products for the fresh-keeping and preserving of food; Food preservative compositions; Food preserving chemicals; Produce stabilizer used for preserving foods; Specialty chemicals, namely, chemical additives for use in the manufacture of fabrics and of surfaces of a wide variety of manufactured products, for health and safety related purposes” in Class 1. Registrant’s mark is “FRUIT GUARD” for “Insecticides and fungicides for agricultural and domestic use” in Class 5.
SIMILARITY OF THE MARKS
In the present case, applicant’s mark is “FRUITGARD” in standard characters and registrant’s mark is “FRUIT GUARD” in standard characters. These marks are nearly 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. Id.
More specifically, both marks are comprised of the wording “FRUIT” and a variation of the word “GUARD” or “GARD”, which means to watch over or protect. See attached evidence from Lexico powered by Oxford Dictionary, available at http://www.lexico.com/en/definition/guard, which shows that “GUARD” is pronounced the same as “GARD.” The marks are essentially phonetic equivalents and thus sound similar. Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).
Therefore, the marks are confusingly similar.
RELATEDNESS OF THE GOODS
As noted above, applicant’s mark is for “Chemical preparations for cleaning purposes in the food and food processing industries; Chemical products for the fresh-keeping and preserving of food; Food preservative compositions; Food preserving chemicals; Produce stabilizer used for preserving foods; Specialty chemicals, namely, chemical additives for use in the manufacture of fabrics and of surfaces of a wide variety of manufactured products, for health and safety related purposes” in Class 1, and registrant’s mark is for “Insecticides and fungicides for agricultural and domestic use” in Class 5.
The attached Internet evidence, consisting of third party website, establishes that the same entity commonly manufactures the relevant goods and markets the goods under the same mark. See attached evidence from Clariant, Eastman, and Stepan, available at http://www.clariant.com/en/Corporate, http://www.eastman.com/Pages/Home.aspx, and http://www.stepan.com/default.aspx, respectively, which demonstrates that applicant’s and registrant’s goods can be provided by a single source. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Thus, the goods are related for likelihood of confusion purposes.
Therefore, applicant’s mark is refused under Section 2(d) for likelihood of confusion purposes because the marks are similar and the goods are related.
ADVISORY – IMPROPER USE OF REGISTRATION NOTICE
This information is advisory only. Applicant need not respond to this issue.
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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.
Tyler Seling
/Tyler M. Seling/
Tyler M. Seling, Esq.
Examining Attorney
Law Office 112
(571) 272-0272
Tyler.Seling@uspto.gov
RESPONSE GUIDANCE