United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88774701
Mark: OPTIMUM NUTRITION
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Correspondence Address: 222 N. LASALLE STREET - 24TH FLOOR
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Applicant: GLANBIA PERFORMANCE NUTRITION LIMITED
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Reference/Docket No. 45192020138
Correspondence Email Address: |
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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: June 14, 2021
This Office action is in response to applicant’s communication filed on May 14, 2021.
In a previous Office action(s) dated November 16, 2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirement: provide domicile address.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: domicile address. See TMEP §§713.02, 714.04.
Further, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – CONTINUED AND MADE FINAL
Here, applicant’s mark is OPTIMUM NUTRITION for “High protein ready to eat snack foods and snack bars made primarily from wheat and chocolate” and the registrant’s marks are:
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.
Comparison 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Here, the applicant’s mark OPTIMUM NUTRITION is confusingly similar to the registrant’s marks OPTIMUM, OPTIMUM SLIM, and OPTIMUM POWER.
The marks all begin with the same inherently distinctive word OPTIMUM, which is identical in sight, sound, and commercial impression. Consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Because OPTIMUM is the first word in the marks, it is the dominant element in the marks.
The applicant’s mark also includes the word NUTRITION. This addition, however, does not obviate the similarities between the marks. 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. 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).
Here, the applicant disclaimed the word NUTRITION, making the word OPTIMUM the dominant element of the mark.
For these reasons, when consumers encounter the parties' goods using marks with these similarities, they are likely to be confused as to the source of the goods. Therefore, the marks are confusingly similar.
Comparison of the Goods
Here, the applicant’s “High protein ready to eat snack foods and snack bars made primarily from wheat and chocolate” is closely related to the registrant’s “breakfast cereals” and “breakfast cereals, oatmeal”.
Specifically, the same entity commonly manufactures, produces, and provides the same type of goods as both the applicant and registrant under a common mark. See attached evidence. For example, Kind, Alpen, Think!, Bear Naked, and Annie’s. Additionally, please see the previously attached evidence from Special K, Kashi, and Nature Valley.
Collectively, this evidence demonstrates that the parties' goods are similar in nature and regularly travel in the same trade channels under the same mark. For these reasons, consumers are likely to mistakenly conclude that the goods emanate from the same source. Therefore, the goods are closely related.
The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a representative sample of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. This evidence shows that the goods listed therein, namely “High protein ready to eat snack foods and snack bars made primarily from wheat and chocolate”, “breakfast cereals” and “breakfast cereals, oatmeal”, are of a kind that may emanate from a single source under a single mark. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii). The attached Registration Nos. are: 5833126, 5935637, 5957290, 5955124, 6133137, 6149504, 6070456, 6290370, 6335720, and 6348636.
The trademark examining attorney also attached six registrations owned by the applicant that lists oatmeal and high protein cereal-based snack bars under a common mark. See attached registrations. As the applicant already sells the same goods as both the applicant and registrant under a common mark, consumers would likely presume that goods sold under the OPTIMUM/OPTIMUM NUTRITION/OPTIMUM SLIM/OPTIMUM POWER marks originate from the same source.
Therefore, as these goods originate from the same sources, these goods are related for likelihood of confusion purposes.
Because the marks are confusingly similar and the goods are closely related, consumers are likely to be confused as to the source of the goods. Thus, registration is refused pursuant to Trademark Act Section 2(d).
Response to Applicant’s Arguments
Applicant submitted arguments that the cited marks have co-existed with applicant’s registrations for OPTIMUM NUTRITION, OPTIMUM QUALITY, OPTI-MEN, and OPTIMUM all for Class 5 goods. Applicant argues that no likelihood of confusion exists because (1) applicant owns a prior registration for a substantially similar or identical mark for related goods, and (2) such registration has co-existed with the cited registration. Applicant concludes there is no likelihood of confusion between the applied-for mark and registrant’s mark; therefore, the trademark examining attorney should withdraw the Trademark Act Section 2(d) refusal.
However, in In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012), the Trademark Trial and Appeal Board only reversed a Section 2(d) refusal based on an applicant’s prior registration for the following unique set of facts: (1) the marks in applicant’s prior registration and application were virtually identical (“no meaningful difference” existed between them, such that they were “substantially similar”); (2) the goods were identical in part; and (3) the prior registration had co-existed for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds). See TMEP §1207.01. The Board acknowledged these facts constituted a “unique situation,” such that an applicant’s prior registration would generally need to fit within these precise parameters to overcome a Section 2(d) refusal. In re Strategic Partners, Inc., 102 USPQ2d at 1400; see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793-94 (TTAB 2017); TMEP §1207.01.
In this case, by contrast, applicant’s prior registration does not correspond to the facts set forth in In re Strategic Partners, Inc. See TMEP §1207.01. Specifically, applicant’s prior registration for OPTIMUM NUTRITION, although for the same mark, is not for the same goods and has not co-existed for at least five years with the cited registration. The applicant’s registrations for OPTIMUM QUALITY, OPTI-MEN, and OPTIMUM are not for the same mark or goods and the registration for OPIMUM QUALITY has not co-existed for at least five years with the cited registration. Thus applicant’s prior registration does not obviate the Section 2(d) refusal.
Applicant also submitted arguments that the co-existence of the applicant’s registrations and the registrant’s registrations is enough to obviate the likelihood of confusion between the prior registrations include goods that are closely related and commonly come from the same source. Unfortunately, this is not sufficient as In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012) states, the goods were overlapping in part. It is understood that the goods must be identical or virtually identical for the co-existence to negate a likelihood of confusion.
The applicant also submitted arguments that even if it does not meet the stringent requirements for Strategic Partners, the co-existence shows that there is not a likelihood of confusion because they have previously co-existed. This argument, however, is unpersuasive. The prior registrations are for goods in Class 5 for goods that include dietary supplements. The wording OPTIMUM in Class 5 is diluted, whereas, the wording OPTIMUM in Class 30 is not diluted.
Additionally, the applicant’s goods in the prior registrations are not as closely related as the applicant’s current goods. As the attached evidence and previously attached evidence demonstrates, it is common for the same type of goods as the applicant and registrant to come from a common source.
Applicant also submitted arguments that the marks differ because applicant’s mark includes the descriptive wording “NUTRITION” and the registrations are for OPTIMUM without additional wording and OPTIMUM with the wording POWER or SLIM. These arguments, however, are unpersuasive as the addition of a word to a registered mark does not obviate the similarities between the marks. Adding a term to a registered mark generally 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 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 and BENGAL LANCER and design confusingly similar); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1269 (TTAB 2009) (finding TITAN and VANTAGE TITAN confusingly similar); In re El Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (finding MACHO and MACHO COMBOS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
Additionally, as previously discussed in the prior Office Action, the application and the registrations all contain the word OPTIMUM. 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).
Additionally, applicant’s mere addition of a descriptive term, does not obviate the similarities of the marks. 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. 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).
Applicant has disclaimed the word “NUTRITION”. Therefore, the word OPTIMUM is the dominant element of the mark.
Applicant also submitted arguments that the goods are different. This argument, however, is unpersuasive. 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 applicant further submitted arguments that a consumer would not mistake the goods offered in connection with applicant’s mark or the cited marks as emanating from the same source. This argument, however, is unpersuasive. The fact that the goods of the parties differ is not controlling in determining likelihood of confusion. The issue is not likelihood of confusion between particular goods, but likelihood of confusion as to the source or sponsorship of those goods. In re Majestic Distilling Co., 315 F.3d 1311, 1316, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003); In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); TMEP §1207.01.
Applicant also submitted arguments that the consumers are sophisticated. This argument, however, is unpersuasive. For products that are relatively low-priced and subject to impulse buying, the risk of likelihood of confusion increases because purchasers of these products are held to a lesser standard of purchasing care. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (quoting Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000)). Casual purchasers of low-cost, every-day consumer items are generally more likely to be confused as to the source of the goods. In re Davia, 110 USPQ2d 1810, 1818 (TTAB 2014) (citing Specialty Brands, Inc. v. Coffee Bean Distribs., Inc., 748 F.2d 669, 672, 223 USPQ 1281, 1282 (Fed. Cir. 1984)).
Further, even if the consumers were sophisticated, which they are not here, this argument would not be persuasive. The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163), aff’d per curiam, 777 F. App’x 516, 2019 BL 375518 (Fed. Cir. 2019). Here, the consumers are the general public and the goods are low cost so the consumers are not considered sophisticated.
Here, as the previous trademark attorney explained in the previous Office Action, the goods are related as the same entity commonly manufactures, produces, and provides the same or similar goods as both the applicant and the registrant under a common mark. See previously attached evidence. As such, a consumer would likely presume that applicant’s goods and registrant’s goods bearing the marks OPTIMUM NUTRITION, OPTIMUM, OPTIMUM SLIM, and OPTIMUM POWER all come from the same source. Therefore, consumer confusion is likely.
Therefore, the refusal under Section 2(d) for a likelihood of confusion with the registered marks is continued and maintained.
RESPONSE GUIDELINES
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).
/Sarah C. Hopkins/
Sarah Hopkins
Examining Attorney
Trademark Office 123
(571) 270-0942
sarah.hopkins@uspto.gov
RESPONSE GUIDANCE
