To: | Whole Earth Sweetener Company LLC (chiustm@ladas.net) |
Subject: | U.S. Trademark Application Serial No. 88639148 - WHOLE EARTH - 3T19719888 |
Sent: | January 07, 2020 04:39:51 PM |
Sent As: | ecom105@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. 88639148
Mark: WHOLE EARTH
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Correspondence Address: |
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Applicant: Whole Earth Sweetener Company LLC
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Reference/Docket No. 3T19719888
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: January 07, 2020
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.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
The applicant is applying to register the mark WHOLE EARTH with a design element for use with “Fruit-based spreads, marmalades, jams, and jellies; fruit-based snack food and dried fruit-based snack food” in Class 029 and “chocolate; candy; confectionery; ice cream, sorbets and other edible ices; granola; granola snacks; granola-based snack bars” in Class 030 (in pertinent part).
The cited mark in Registration No. 3920107 is THE WHOLE EARTH in standard characters for use with “Dried fruit; dried fruit mixes; processed nuts; processed nut mixes; trail mix consisting primarily of processed fruits, processed nuts and/or raisins; and snack mix consisting primarily of processed fruits and processed nuts; potato based snack foods; soy chips” in Class 029, and “Pretzels, crackers and mixes consisting primarily of pretzels and crackers; rice and corn meal-based snack foods; corn chips and corn curls; multi grain chips, wheat chips, tortilla chips; processed corn-based snack foods” in Class 030
The cited mark in Registration No. 4023090 is THE WHOLE EARTH in standard characters for use with “Fruit based snack foods, vegetable based snack foods, vegetable based chips and vegetable root based chips, kettle-cooked potato chips, vacuum-fried kettle-cooked potato chips, potato chips, dips, dairy-based dips, bean dip, snack dips, snack food dips, dip mixes” in Class 029
The cited mark in Registration No. 3944834 is THE WHOLE EARTH with a design element for use with “potato chips, partially water or steam blanched potatoes and partially fried potatoes; processed edible seeds; potato chips; processed fruit; and potato based snack foods, dried fruit; dried fruit mixes; processed nuts; processed nut mixes; trail mix consisting primarily of processed fruits, processed nuts and/or raisins; and snack mix consisting primarily of processed fruits and processed nuts, vegetable based chips; fruit based chips, potato-based snack foods, namely, potato chips, potato puffs, potato sticks and potato fries; fried snacks, processed nutmeats; and snack mixes consisting primarily of processed nuts, raisins and/or processed fruit, potato chips, and processed nutmeats, shelled nuts” in Class 029 and “seasoned puffed corn snacks; rice based snack foods; wheat based snack foods and various combination grain based snack foods, pretzels, crackers and mixes consisting primarily of pretzels and crackers, rice puffs, corn puffs, corn curls, corn chips, grain based chips, taco chips, tortilla chips; flour based chips, candy excluding mints and peppermints, frozen confections, popped popcorn, wheat chips, flour based snacks, namely, pita chips; confections, namely, caramel covered snack foods; caramel corn” in Class 030.
Comparison of the Marks
Here, applicant’s mark “WHOLE EARTH” is highly similar in sight, sound, connotation, and overall commercial impression to registrant’s “THE WHOLE EARTH” marks. All of the respective marks contain the identical and dominant phrase “WHOLE EARTH.” 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, registrant’s marks incorporate the entirety of applicant’s mark. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Moreover, the minor design element in U.S. Reg. No. 3944834 and the design element in the applicant’s mark do not obviate the similarities between the marks. 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)).
Lastly, the term “THE” in registrant’s marks does little to distinguish them from applicant’s mark. When comparing similar marks, the Trademark Trial and Appeal Board has found that inclusion of the term “the” at the beginning of one of the marks will generally not affect or otherwise diminish the overall similarity between the marks. See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE “virtually identical” marks; “[t]he addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.”); In re Narwood Prods. Inc., 223 USPQ 1034, 1034 (TTAB 1984) (finding THE MUSIC MAKERS and MUSIC-MAKERS “virtually identical” marks; the inclusion of the definite article “the” is “insignificant in determining likelihood of confusion”).
Thus, the marks are confusingly similar.
Comparison of the Goods
Here, in addition to the marks being highly related and sharing identical terms, the goods are identical, in part, as well as highly related. For example, in Class 029 the applicant provides “Fruit-based spreads, marmalades, jams, and jellies; fruit-based snack food and dried fruit-based snack food” in Class 029. The registrant provides processed fruit, dried fruit, dried fruit mixes, snack mix consisting primarily of processed fruits and fruit based chips and fruit based snack.” In Class 030 the applicant provides “chocolate; candy; confectionery; ice cream, sorbets and other edible ices; granola; granola snacks; granola-based snack bars” (in pertinent part), and the registrant provides candies, various combinations of grain-based snack foods, frozen confections, and caramel covered snack foods. As the attached reflects, granola is made from a grain product as it is made from rolled oats combined with other goods (nuts, honey or other sweeteners) and sometimes puffed rice based until crisp and toasted. Thus, applicant’s granola, granola snacks and granola-based snack bars encompasses the registrant’s grain-based snack foods. Likewise, applicant’s ice cream, sorbets and other edible ices encompasses the registrant’s frozen confections. Finally, the applicant’s chocolate, candy and confectionery encompasses the registrant’s candy.
Therefore, given the similarity of the marks and the relatedness of the goods, consumers are likely to reach the conclusion that the goods are related and originate from a common source. As such, registration must be refused under Section 2(d) of the Trademark Act.
Clarification of the Identification of Goods – Class 030
The following is suggested:
Class 030
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.
More Complete Color Claim and Description of the Mark Required
The following color claim and description is suggested, if accurate:
Color Claim: the colors black, white and grey are claimed as a feature of the mark
Description: the marks consists of a black rectangle with a leaf design in black and grey within a square to the left of the wording “WHOLE EARTH” in white letters.
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.
/CarynGlasser/
Caryn Glasser
Trademark Examining Attorney
Law Office 105
Phone: (571) 270-1517
Fax: (571) 270-2517
caryn.glasser@uspt
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