Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

Office Action (Official Letter) About Applicant’s Trademark Application

 

 

 

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:  November 01, 2019

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issuew below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

•  REFUSAL – 2(d) Likelihood of Confusion
• Application Not Entitled to Register – One Earlier-filed Pending Application  – Applicant May Present Arguments

 

SEARCH OF OFFICE’S DATABASE OF MARKS

    

1. REFUSAL – 2(d) Likelihood of Confusion

Registration of the applied-for special form mark, GOFRESH and DESIGN is refused because of a likelihood of confusion with the standard character  mark, GO FRESH in U.S. Registration No. 4071076, under Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

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 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.  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 and differences in the marks.”); TMEP §1207.01.

 

The applied-for mark, GOFRESH and DESIGN is to be used with adult diapers; baby diapers; disposable sanitizing wipes; feminine hygiene pads; sanitary sterilizing preparations; and sanitizing wipes, in International Class 005.

 

The cited U.S. Registration No. 4071076 for the mark, GO FRESH is used with Body wash, beauty bars for cleansing and nourishing the skin; skin moisturizers, hair shampoo and hair conditioner, deodorant and antiperspirant, in International Class 003.

 

1. Similarity in the Marks

The dominant element, the wording, GOFRESH in applicant’s mark, GOFRESH and DESIGN (the stylized letters “GF” in a circle) is identical in sound and similar in appearance and commercial impression to the cited mark, GO FRESH in registrant’s mark.    

 

The words GOFRESH and GO FRESH in the marks are identical in sound and nearly identical in  commercial impression; therefore, the addition of a design element does not obviate the similarity of the marks in this case.  See In re Shell Oil Co., 992 F.2d 1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); TMEP §1207.01(c)(ii).

 

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.  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)).

 

 

Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)). 

 

In the present case, the marks are identical in part and likely to cause confusion.

 

2. Comparison of the Goods

 

Applicant’s goods are adult diapers, baby diapers, disposable sanitizing wipes, feminine hygiene pads, sanitary sterilizing preparations, and sanitizing wipes;  and registrant’s goods are body wash, beauty bars for cleansing and nourishing the skin; skin moisturizers, hair shampoo and hair conditioner, deodorant and antiperspirant.   Applicant’s and registrant’s goods are related and may be found in the same channels of trade as shown below.  See attached copies of advertisements listed below, where retailers provide both applicant and registrant’s goods

 

            HONEST   (baby diapers and hair shampoo) http://www.tomsofmaine.com/products

http://www.honest.com/on/demandware.store/Sites-honest-Site/default/Search-Show?q=diapers&lang=default

 

http://www.honest.com/on/demandware.store/Sites-honest-Site/default/Search-Show?q=hair+shampoo&lang=default

             

Health Products for You (adult diapers and skin moisturizerhttp://www.healthproductsforyou.com/p-medline-fitright-basic-clothlike-adult-disposable-briefs.html?gclid=EAIaIQobChMI4KiBlPrJ5QIVlYrICh30zwAZEAQYASABEgJhsfD_BwE

 

            http://www.healthproductsforyou.com/p-all-terrain-co-aloe-gel-skin-relief.html

 

Where evidence shows that the goods at issue are purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks.  See In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease). 

 

In this case, applicant’s mark, GOFRESH and DESIGN (the stylized letters “GF” in a circle) and registrant’s mark GO FRESH, are identical in part in sound, similar in appearance, and commercial impression, and the goods related, such that, if found in the marketplace, confusion is likely among consumers as to the single source of the goods.  For these reasons, registration is refused of  GOFRESH and DESIGN (the stylized letters “GF” in a circle).  

 

Although the trademark examining attorney has refused registration, applicant may submit evidence and arguments in support of registration.  Applicant should note the additional refusal below.

 

 

2. Application Not Entitled to Register – One Earlier-filed Pending Application – Applicant May Present Arguments

The filing date of pending U.S. Application Serial Nos. 88218628 (12/05/2018), precedes  applicant’s filing date (10/15/2019).  See attached referenced application .  If the mark  in the referenced application  registers, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion between the two marks.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced application.

 

In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark  in the referenced application .  Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.

 

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  

 

If the Applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned Trademark Examining Attorney directly at the number below, or email.

/Odessa Bibbins/

Attorney-Advisor

Law Office 118

Odessa.Bibbins@USPTO.GOV (informal questions only)

571-272-9425 Telephone

571-273-9425 Fax

 

 

RESPONSE GUIDANCE

• Missing the response deadline to this letter will cause the application to abandon.  A response or notice of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period.  TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely respond.  

 

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

 

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 01, 2019 for

U.S. Trademark Application Serial No. 88654860

 

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

 

(1)  Read the official letter.

 

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

 

 

/Odessa Bibbins/

Attorney-Advisor

Law Office 118

Odessa.Bibbins@USPTO.GOV (informal questions only)

571-272-9425 Telephone

571-273-9425 Fax

 

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

 

(3)  Respond within 6 months (or earlier, if required in the Office action) from November 01, 2019, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond.

 

 

 

GENERAL GUIDANCE

·       Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

 

·       Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

 

·       Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”