Offc Action Outgoing

United States Patent and Trademark Office (USPTO)

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

 

 

 

FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA).  A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action. 

 

 

Issue date:  October 06, 2020

 

The Office has received the applicant’s communication filed on September 25, 2020.  The assigned examining attorney has reviewed the prosecution history of the referenced application and determined the following.

 

Prosecution History

In a previous Office Action, the examining attorney refused registration pursuant to Section 2(d). 

 

In its response, the applicant: (1) argued that its proposed mark is not confusingly similar to the registered mark, and (2) amended the identification of goods.  The applicant’s identification amendment is accepted and made part of this application. 

 

The applicant’s arguments and evidence concerning the Section 2(d) refusal have been carefully considered but found unpersuasive.  After a thorough review of the applicant’s response, the prosecution history and the relevant case law, the examining attorney issues this FINAL OFFICE ACTION noting the following.

 

Application Refused—FINAL REFUSAL--Section 2(d) Refusal—Likelihood of Confusion

Previously, the examining attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d) because the applicant’s applied-for mark when used on or in connection with the identified goods so resembled the mark in U.S. Registration No. 4913055  as to be likely to cause confusion, to cause mistake, or deceive. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

 

In its response, the applicant claims the Section 2(d) refusal is improper because of the differences between the respective marks and goods and also because there have been no instances of actual confusion.  The applicant’s arguments ignore and contradict the relevant case law.  Accordingly, the prior Section 2(d) refusal is CONTINUED and made FINAL.

 

Case Law Determinations Governing Likelihood of Confusion Analysis

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant(s).  See 15 U.S.C. §1052(d).  Determining likelihood of confusion is made 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).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  Furthermore, the relevant du Pont factors are not necessarily “of equal weight in a given case, and any one of the factors may control a particular case.” Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F3d 1344, 1355, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011) (quoting In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003).

 

The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods [and/or services].”  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)); see TMEP §1207.01.  In this case, the examining attorney finds the following du Pont factors are most relevant: the similarity of the marks, the similarity and nature of the goods and/or services, and the similarity of the trade channels for these goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

The applicant’s proposed mark is ALLERGENA; the registered mark is ALLERGENZA.

 

Comparison of the Respective Marks

In a likelihood of confusion determination, the examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (CCPA 1973); TMEP §1207.01(b).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB (1988); In re Mack, 197 USPQ 755 (TTAB 1977); see TMEP §§1207.01(b).

 

The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The issue is whether the marks create the same overall impression. See Racot, Inc. v. M.C. Becton, 214 F.2d 1322, 1329-30, 54 USPQ2d 1894, 1899 (Fed Cir. 2000); Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

The examining attorney refuses registration of the proposed mark ALLERGENA on the grounds that it will cause a likelihood of confusion with the registered ALLERGENZA mark.  In this case, the applicant’s proposed mark so resembles the registered mark so as to render confusion as to source likely.  The applicant mistakenly claims that the respective marks are distinguishable because the cited mark ends in a hard "Z" sound; in reality it ends with short “e” sound.

 

Despite the applicant’s claim to the contrary, the proposed mark ALLERGENA (pronounced ăl’ər-jənĕ) is highly similar in sound appearance and meaning to the cited ALLERGENZA (pronounced ăl’ər-jənzĕ) mark.  Indeed, but for the additional hard “z” sound made by the letter “Z” appearing at the end of the cited registration, the respective marks are identical.  Not only have the courts consistently and repeatedly found that similarity in sound alone is sufficient to support a finding of likelihood of confusion, but also, that slight differences in the sound of similar marks will not avoid a finding of likelihood of confusion. See e.g., RE/MAX of Am., Inc., v. Realty Mart, Inc. 207 USPQ 960, 964 (TTAB 1980); Molenaar, Inc. v. Happy Toys Inc., 188 USPQ 469 (TTAB 1975); In re Cresco Mfg. Co., 138 USPQ 401 (TTAB 1963); In re Energy Telecommunications & Electrical Association, 222 USPQ 350 (TTAB 1983); TMEP §1207.01(b)(iv). 

 

This is especially true considering, (as more fully explained below) that the respective goods are deemed to be highly related, if not identical, found in the same channels of trade, and marketed to the same consumers.  The courts have consistently and repeatedly found that where the goods of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods.  See, In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b).  In sum, the examining attorney finds that applicant’s proposed mark so resembles the registered mark in relation to sound, appearance, and meaning that confusion as to source is likely.

 

Comparison of the Respective Goods

The goods and/or services are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).  It is well settled that the compared products 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 examining attorney refuses registration of the mark ALLERGENA because the channels of trade in which the applicant’s goods travel are similar to those used by the registrant.  The applicant’s goods are identified as:

Homeopathic supplements, namely supplements to reduce allergic reactions to airborne allergens.

 

The goods named in the registration comprise:

Dietary and nutritional supplements; Dietary food supplements; Dietary supplements; Dietary supplements for human consumption; Health food supplements; Herbal supplements; Vitamin and mineral supplements. 

 

When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Absent restrictions in an application or registration, the identified goods are presumed to “travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  In this case, the identifications set forth in the application and registration have no restrictions as to their nature, type, channel of trade or class of purchasers.  Therefore, it must be presumed that these supplement products all travel in the same channels of trade to the same class of purchasers.  The applicant has not provided any evidence that would rebut this required presumption.

 

In addition, it is noted that unrestricted and broad identifications are presumed to encompass all goods of the type described.  See In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006) (citing In re Elbaum, 211 USPQ 639, 640 (TTAB 1981)).  In this case, the registrant uses broad wording (dietary and nutritional supplements; dietary supplements; dietary supplements for human consumption; health food supplements; herbal supplements; vitamin and mineral supplements) in its identification of goods.  Therefore, the case law requires that the Office presume this broad wording encompasses all kinds of dietary and nutritional supplements, all kinds of dietary supplements, all kinds of dietary supplements for human consumption, all kinds of health food supplements, all kinds of herbal supplements and all kinds of vitamin and mineral supplements—including dietary and nutritional supplements that reduce allergic reactions to allergens—the goods specifically identified in the applicant’s more narrow identification. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015); In re N.A.D., Inc., 57 USPQ2d 1872, 1874 (TTAB 2000).  Accordingly, the examining attorney must find the respective supplement products are highly related, if not identical, found in the same channels of trade and marketed to the same consumers.  As such, they are considered related for purposes of likelihood of confusion analysis.

 

As evidence establishing that a wide variety of supplement products, including those for allergy relief, are found in the same channels of trade, marketed to the same consumers, and commonly produced by the same entity under the same mark, the examining attorney refers to the attached webpages of FOREST LEAF[1] BHI[2] and MEDINATURA[3] showing such use.  Evidence obtained from the Internet may be used to support a determination under Section 2(d) that 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); In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009). 

 

In light of this evidence and the required presumptions under the relevant case law, the examining attorney must find that the respective goods are related in that they are consistently found in the same channels of trade and marketed to, or encountered by, the same consumers under a single mark—a situation that would necessarily give rise to a mistaken belief by consumers that these goods come from a common source, when in fact, they do not.  As such, the respective supplement products are considered related for purposes of likelihood of confusion analysis.

 

The Absence of Actual Confusion is Not Relevant

The applicant claims the Section 2(d) refusal is unwarranted because there is no evidence of actual confusion in the record.  The applicant is mistaken.  It is well settled that the relevant test is likelihood of confusion, not actual confusion; thus, it is unnecessary to show actual confusion to establish likelihood of confusion. In re Detroit Athletic Co., ___ F3d ___, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002); Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990); In re Big Pig, 81 USPQ2d 1436, 1439-40 (TTAB 2006).  As such, the fact there are no documented cases of actual confusion in the record has no bearing on whether there is a likelihood of confusion between the respective marks.

 

In sum, given the similarity between the respective marks when viewed in light of the relatedness between the respective goods as well as the similarity between the channels of trade for such goods, it is likely that consumers will be confused as to the ultimate source of these supplement products and associate the registered mark with the applicant’s proposed mark.  Accordingly, the prior likelihood of confusion refusal under Section 2(d) of the Trademark Act is hereby CONTINUED and made FINAL.  The overriding concern is not only to prevent buyer confusion as to the source of the goods, 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).

 

Applicant’s Response

There is no required format or form for responding to an Office action.  Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

Responses to Office actions must be properly signed.  See 37 C.F.R. §§2.62(b), 2.193(e)(2); TMEP §§712, 712.01.  If an applicant is not represented by a U.S.-licensed attorney, the response must be signed by the individual applicant or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  See 37 C.F.R. §2.193(e)(2)(ii); TMEP §§611.03(b), 611.06(b)-(h), 712.01.  In the case of joint applicants, all must sign.  37 C.F.R. §2.193(e)(2)(ii); TMEP §611.06(a). 

 

If an applicant is represented by a U.S.-licensed attorney authorized to practice before the USPTO, the attorney must sign the response.  37 C.F.R. §2.193(e)(2)(i); TMEP §§611.03(b), 712.01.  The only attorneys who may sign responses are (1) attorneys in good standing with a bar of the highest court of any U.S. state or territory, or (2) Canadian trademark attorneys or agents reciprocally recognized by the USPTO’s Office of Enrollment and Discipline (OED) who are appointed in connection with a U.S.-licensed attorney.  See 37 C.F.R. §§2.17(a), 11.14(a), (c), (e).  Foreign attorneys, other than recognized Canadian trademark attorneys or agents, do not have authority to sign responses.  See 37 C.F.R. §§2.17(e), 11.14(c)(1), (e).  If an applicant is initially represented by an attorney, and then later retains another U.S.-licensed attorney from a different firm, the newly retained attorney may not sign responses until the applicant files a new power and/or revocation of attorney.  See 37 C.F.R. §2.18(a)(7); TMEP §604.03.  Please Note:  In all cases, the signer must be identified by first and last name and title or position.  37 C.F.R. §2.193(d).

 

If the applicant has technical questions about the TEAS response to Office action form, applicant can review the electronic filing tips available online at http://www.gov.uspto.report/teas/eFilingTips.htm and email technical questions to TEAS@uspto.gov.

 

If the applicant or its appointed attorney has any questions or needs assistance in responding to this final action, please telephone the assigned examining attorney.

 

/Michael Tanner/

Michael Tanner

Trademark Attorney

Law Office 119

Telephone: 571-272-9706

Email:  Michael.Tanner@uspto.gov

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

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.