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:  February 06, 2020

 

 

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.

 

SUMMARY OF ISSUES:

• Section 2(d) Partial Refusal – Likelihood of Confusion – Classes 5 and 44
• Specimen Unacceptable – Class 1

 

SECTION 2(d) PARTIAL REFUSAL – LIKELIHOOD OF CONFUSION

THIS PARTIAL REFUSAL APPLIES TO CLASSES 5 AND 44 ONLY

 

Applicant seeks to register JUVITA for goods and services in Classes 5 and 44.

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the following marks:

 

JIVITA in U.S. Registration No. 3289723

JAVITA in U.S. Registration No. 4140006

JUVENTA in U.S. Registration No. 4463211

 

Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

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.

 

SIMILARITY OF THE 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).

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.”  Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b).  The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks.  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (CCPA 1971)); TMEP §1207.01(b).

 

Applicant has applied for the standard character mark JUVITA and the cited registrations are the standard character marks JIVITA, JAVITA, and JUVENTA TECHNOLOGIES. Applicant’s mark is merely 1 letter different from each of the registered marks, and has virtually nothing to distinguish it from each of them, respectively.  Applicant’s mark and each registered marks are highly similar in appearance, sound, and connotation, and these elements altogether lead to a very similar commercial impression.

 

The wording TECHNOLOGIES also has minimal impact on the analysis, because 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, and here, TECHNOLOGIES is disclaimed.  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).

 

Because the marks are similar in appearance, sound, connotation and commercial impression, the marks are confusingly similar.

 

RELATEDNESS OF THE GOODS AND SERVICES

 

The applicant identifies the following goods and services:

 

Class 5            Acai powder dietary supplements; Activated charcoal dietary supplements; Albumin dietary supplements; Alginate dietary supplements; Calcium supplements; Casein dietary supplements; Dietary supplement for eliminating toxins from the intestinal tract; Dietary supplements; Dietary supplements also containing quercetin, coenzyme Q10, resveratrol, green-tea-extract, glucosamine, curcumin, curcuma, sulforaphane, broccoli extract, pterostilbene, fisetin, piperine; Dietary supplements consisting primarily of quercetin, coenzyme Q10, resveratrol, green-tea-extract, glucosamine, curcumin, curcuma, sulforaphane, broccoli extract, pterostilbene, fisetin, piperine; Dietary supplements for animals; Dietary supplements for controlling cholesterol; Dietary supplements for human beings and animals; Dietary supplements for human consumption; Dietary supplements for humans and animals; Dietary supplements for pets; Dietary supplements for treatment of claustrophobia; Dietary supplements for urinary health; Dietary supplements for healthy ageing, lifespan extension, longevity, reducing inflammation, risk of cancer and heart disease, and prevention of other age-related diseases.; Dietary supplements in the form of capsules, pills, powder; Dietary supplements in the nature of weight loss powders; Dietary supplements with a cosmetic effect; Dietary and nutritional supplements; Dietary and nutritional supplements containing quercetin, coenzyme Q10, resveratrol, green-tea-extract, glucosamine, curcumin, curcuma, sulforaphane, broccoli extract, pterostilbene, fisetin, piperine; Dietary and nutritional supplements for endurance sports; Dietary and nutritional supplements for healthy ageing, lifespan extension, longevity, reducing inflammation, risk of cancer and heart disease, and prevention of other age-related diseases.; Dietary and nutritional supplements used for weight loss; Dietary beverage supplements for human consumption in liquid and dry mix form for therapeutic purposes; Dietary fiber for use as an ingredient in the manufacture of dietary supplements; Dietary food supplements; Enzyme dietary supplements; Enzyme food supplements; Flavonoids for use as a dietary supplement; Folic acid dietary supplements; Food supplements; Food supplements for healthy ageing, lifespan extension, longevity, reducing inflammation, risk of cancer and heart disease, and prevention of other age-related diseases.; Food supplements, namely, anti-oxidants; Fungal extracts sold as a component ingredient of nutritional supplements and vitamins; Glucose dietary supplements; Green coffee bean extracts for use as dietary supplements; Health food supplements; Herbal supplements; Herbal supplements for sleeping problems; Herbal supplements for healthy ageing, lifespan extension, longevity, reducing inflammation, risk of cancer and heart disease, and prevention of other age-related diseases.; Homeopathic supplements; Ketogenic dietary and nutritional supplements; Ketogenic dietary and nutritional supplements used for weight loss; Lecithin dietary supplements; Mineral supplements; Mineral food supplements; Mineral nutritional supplements; Natural supplements for treating candida; Natural supplements for treating depression and anxiety; Natural supplements for treating erectile dysfunction; Natural dietary supplements; Natural dietary supplements for the treatment of inflammations, oxidative stress, ageing, cancer, heart disease, arthritis, overweight, obesity and other age-related diseases; Natural dietary supplements for treatment of claustrophobia; Natural herbal supplements; Nutraceuticals for use as a dietary supplement; Nutraceuticals for use as a dietary supplement for healthy ageing, lifespan extension, longevity, reducing inflammation, risk of cancer and heart disease, and prevention of other age-related diseases.; Nutritional supplement energy bars; Nutritional supplement for eliminating toxins from the intestinal tract; Nutritional supplements; Nutritional supplements consisting primarily of quercetin, coenzyme Q10, resveratrol, green-tea-extract, glucosamine, curcumin, curcuma, sulforaphane, broccoli extract, pterostilbene, fisetin, piperine; Nutritional supplements for healthy ageing, lifespan extension, longevity, reducing inflammation, risk of cancer and heart disease, and prevention of other age-related diseases.; Nutritional supplements in the form of capsules, pills, powder; Nutritional supplements, namely, carbohydrates in powdered form; Nutritional supplements, namely, probiotic compositions; Nutritional and dietary supplements formed and packaged as bars; Prebiotic supplements; Probiotic supplements; Protein supplements; Protein dietary supplements; Soy isoflavone dietary supplements; Topical nutritional supplements for healthy ageing, lifespan extension, longevity, reducing inflammation, risk of cancer and heart disease, and prevention of other age-related diseases.; Vitamin supplements; Vitamin and mineral supplements; Vitamins and dietary food supplements for animals; Weight management supplements; Yeast dietary supplements.

 

Class 44          Providing information about dietary supplements and nutrition

 

Registration No. 3289723 identifies the following goods:

 

Class 5            Dietetic foods adapted for medical use; Fodder additives for medical purposes; Fungal medications; Medicines for the treatment of gastrointestinal diseases; Nutritional additives for livestock feed for medical purposes; Nutritional additives for use in foods and dietary supplements for human consumption; Nutritional additives to foodstuffs for animals, for medical purposes; Pain relief medication; Veterinary preparations for treatment of intestinal bacteria; Veterinary preparations, namely, pain relief medication; Veterinary vaccine for horses; Veterinary vaccines; Veterinary vaccines for bovine, sheep, horse; Vitamin preparations

 

Registration No. 4140006 identifies the following services:

 

Class 35          Retail store services, mail order catalog services, and computerized online retail store services featuring coffee and nutritional supplements

 

Registration No. 4463211 identifies the following goods:

 

Class 5            Dietary supplements

 

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

The attached Internet evidence consists of screenshots from third parties that produce applicant’s goods and services in addition to all the registrant’s goods and/or services. The evidence establishes that the same entity commonly produces the relevant goods and markets the goods under the same mark, that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use, and that the goods are similar or complementary in terms of purpose or function:

 

·         GNC – Class 5 Supplements, Class 35 retail, Class 44 Information

·         http://www.gnc.com/

·         http://www.gnc.com/gnc/

·         http://www.gnc.com/vitamins-supplements/multivitamins/

·         http://www.gnc.com/health-articles-tips.html

·         Vitacost  – Class 5 Supplements, Class 35 retail, Class 44 Information

·         http://www.vitacost.com/

·         http://www.vitacost.com/blog/

·         http://www.vitacost.com/vitacost-brand-vitamins-supplements

·         Vitamin World  – Class 5 Supplements, Class 35 retail, Class 44 Information

·         http://www.vitaminworld.com/

·         http://www.vitaminworld.com/vitamins/multivitamins/?icid=dropdown-_-vitaminsminerals-_-multivitamins

·         http://blog.vitaminworld.com/

 

Thus, applicant’s and registrant’s goods and/or services 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).

 

Because the marks are confusingly similar and the goods and/or services are related, there is a likelihood of confusion to relevant consumers, and therefore registration is refused.

 

Applicant should note the following additional ground for refusal.

 

SPECIMEN UNACCEPTABLE – CLASS 1

THIS PARTIAL REFUSAL APPLIES TO CLASS 1 ONLY

 

Registration is refused because the specimen does not show the applied-for mark in use in commerce in connection with any of the goods specified in International Class 1 in the application or amendment to allege use.  Trademark Act Sections 1 and 45, 15 U.S.C. §§1051, 1127; 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); In re Keep A Breast Found., 123 USPQ2d 1869, 1876-79 (TTAB 2017); In re Graystone Consulting Assocs., Inc., 115 USPQ2d 2035, 2037-38 (TTAB 2015); TMEP §§904, 904.07(a), 1301.04(d), (g)(i).  Specifically, the same specimen is used for Class 1 and Class 5 and clearly shows supplements in Class 5, not any chemicals that are used in the manufacture in those supplements.

 

An application based on Trademark Act Section 1(a) must include a specimen showing the applied-for mark in use in commerce for each international class of goods and/or services identified in the application or amendment to allege use.  15 U.S.C. §1051(a)(1); 37 C.F.R. §§2.34(a)(1)(iv), 2.56(a); TMEP §§904, 904.07(a). 

 

Examples of specimens for goods include tags, labels, instruction manuals, containers, photographs that show the mark on the actual goods or packaging, and displays associated with the actual goods at their point of sale.  See TMEP §§904.03 et seq.  Webpages may also be specimens for goods when they include a picture or textual description of the goods associated with the mark and the means to order the goods.  TMEP §904.03(i).

 

Applicant may respond to this refusal by satisfying one of the following for each applicable international class:

 

(1)        Submit a different specimen (a verified “substitute” specimen) that (a) was in actual use in commerce at least as early as the filing date of the application or prior to the filing of an amendment to allege use and (b) shows the mark in actual use in commerce for the goods and/or services identified in the application or amendment to allege use.  A “verified substitute specimen” is a specimen that is accompanied by the following statement made in a signed affidavit or supported by a declaration under 37 C.F.R. §2.20:  “The substitute (or new, or originally submitted, if appropriate) specimen(s) was/were in use in commerce at least as early as the filing date of the application or prior to the filing of the amendment to allege use.”  The substitute specimen cannot be accepted without this statement.

 

(2)        Amend the filing basis to intent to use under Section 1(b), for which no specimen is required.  This option will later necessitate additional fee(s) and filing requirements such as providing a specimen.

 

For an overview of both response options referenced above and instructions on how to satisfy either option online using the Trademark Electronic Application System (TEAS) form, please go to http://www.gov.uspto.report/trademarks/law/specimen.jsp.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusals by submitting evidence and arguments in support of registration.

 

RESPONSE GUIDELINES

 

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.

 

Because of the legal technicalities and strict deadlines of the trademark application process, applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process.  The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process.  USPTO staff cannot provide legal advice or statements about an applicant’s legal rights.  TMEP §§705.02, 709.06.  See Hiring a U.S.-licensed trademark attorney for more information.

 

ASSISTANCE

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05. 

 

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.    

 

 

/benjaminrosen/

Benjamin Rosen

Examining Attorney

Law Office 120

(571) 272-8425

benjamin.rosen@uspto.gov

 

 

 

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 February 06, 2020 for

U.S. Trademark Application Serial No. 88673579

 

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. 

 

 

/benjaminrosen/

Benjamin Rosen

Examining Attorney

Law Office 120

(571) 272-8425

benjamin.rosen@uspto.gov

 

 

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 February 06, 2020, 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.”