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:  August 13, 2020

 

 This letter is in response to applicant’s communication filed June 24, 2020.  Applicant has indicated that the mark is not in color.  Therefore, the issue relating to the color claim and color location statement is satisfied.  The information request is satisfied.  The examining attorney has reviewed applicant’s arguments for registration of the mark and has found them unpersuasive.  Therefore, the likelihood of confusion refusal is maintained.   The examining attorney regrets any inconvenience caused as a result of not raising the classification issue previously. 

 

SUMMARY OF ISSUES:

 

• Classification of the Goods
• Likelihood of Confusion Refusal

 

CLASSIFICATION OF THE GOODS

 

The goods are classified incorrectly.  Applicant must amend the application to classify the goods in International Class 031.  See 37 C.F.R. §§2.32(a)(7), 2.85; TMEP §§1401.02(a), 1401.03(b).

 

 

Proper classification of goods and services is a purely administrative matter within the sole discretion of the USPTO.  See In re Faucher Indus. Inc., 107 USPQ2d 1355, 1357 (TTAB 2013) (quoting In re Tee-Pak, Inc., 164 USPQ 88, 89 (TTAB 1969)).

 

LIKELIHOOD OF CONFUSION REFUSAL

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4995323.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  Registration was previously attached. 

 

While the applicant seeks to register the mark DOMAIN with design for “agricultural seeds for use in wildlife food plots, namely, seeds for cultivating land that attracts animals for hunting; all of the foregoing excluding seeds for trees, flowers, fruit, vegetables, grass, spores, spawn, products for human consumption, and products for harvesting,” the registered mark LES DOMAINES with design is in pertinent part for “agricultural, horticultural and forestry products and grains, namely, agricultural grains for planting, bulbs and seeds for agricultural purposes, spores and spawn, bulbs and seeds for agricultural purposes, live trees, seedlings; seeds, namely agricultural seeds, crop seeds, flower seeds, grass seed, seeds for planting; natural plants and flowers; all the foregoing excluding apples and apple trees.”

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d).  The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d).  See TMEP §1207.01.  However, not all the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., ___ F.3d ___, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567.

 

In this case, the following factors are the most relevant:  similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services.  See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.

 

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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)); 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., 901 F.3d 1367, 1373, 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 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).

 

Applicant argues that when the marks are compared in their entirety, they are sufficiently distinguishable.  Applicant further argues that the literal and design elements of the marks are different and that the marks can be immediately distinguished by consumers.  Applicant contends that the marks are not confusing and that the mere fact that both marks contain the term DOMAIN in some form does not mean that the marks are likely to be confused.  Applicant argues that the presence of additional elements in the marks is sufficient to overcome the likelihood of confusion.  

 

Applicant further argues that the terms in the parties’ marks have different meanings and that the examining attorney has not presented evidence showing that the marks have the same meaning.   Applicant argues that the term “DOMAIN” in its mark relates to the exercise of domain and control.  Applicant contends that the presence of similar terms in the marks must be weighed against the dissimilarities of the marks in appearance and sound.  Applicant contends that the fact that applicant’s mark contains a foreign term weighs against the likelihood of confusion refusal and that the doctrine of foreign equivalents does not apply in this case. 

 

Applicant’s arguments notwithstanding, the term DOMAIN in applicant’s mark is similar in connotation and sound to the term DOMAINES in the registered mark.  Consumers are more likely to focus on these terms when calling for the parties’ goods.  While the examining attorney did not assert the doctrine of foreign equivalents in this case, the marks essentially have the same meaning.  The French term “domaine” means “domain” in English.  [See attached internet evidence.]  The term “domaines” and “domain” mean land, property or estate.  [See previously attached dictionary evidence.]  Even though applicant’s mark includes a design and the registered mark includes the term “LES” and a design, the marks create the same overall commercial impression.  Contrary to applicant’s contention, applicant’s mark DOMAIN with design is sufficiently and confusingly similar to the registered mark LES DOMAINES with design.

 

COMPARISON OF THE GOODS

 

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’s goods, namely, “agricultural seeds for use in wildlife food plots, namely, seeds for cultivating land that attracts animals for hunting; all of the foregoing excluding seeds for trees, flowers, fruit, vegetables, grass, spores, spawn, products for human consumption, and products for harvesting,” are related to the registrant’s goods namely, “agricultural, horticultural and forestry products and grains, namely, agricultural grains for planting, bulbs and seeds for agricultural purposes, spores and spawn, bulbs and seeds for agricultural purposes, live trees, seedlings; seeds, namely agricultural seeds, crop seeds, flower seeds, grass seed, seeds for planting; natural plants and flowers; all the foregoing excluding apples and apple trees” because these goods are in the same or related fields.  Accordingly, the goods would be available to the same class of consumers and would be encountered under circumstances leading one to mistakenly believe that they originate from the same source. 

 

Applicant urges that the parties’ goods are not related and would not be encountered by the same consumers.  Applicant contends that if consumers came across the parties’ goods sold together, such an encounter would be by chance or accident.  Applicant argues that such an encounter would not cause confusion.  Applicant further argues that its goods are not for human consumption or harvest.  Applicant contends that the registrant bears the burden of proving that the marks in question are likely to be confused.  Nevertheless, the attached internet evidence shows that the parties’ goods are of a kind that are likely to come from a single source under a single mark.

 

 

Pennington:

Wildlife Food Plot: http://www.pennington.com/all-products/wildlife

Grass Seed: http://www.pennington.com/all-products/grass-seed

 

Hancock Seed Company:

Wildlife Food Plot: http://hancockseed.com/collections/wildlife-food-plot-seed

Grass Seed: http://hancockseed.com/collections/hancocks-signature-series-grass-seed

Wildflowers: http://hancockseed.com/collections/wildflowers

Pasture Seed: http://hancockseed.com/collections/hancock-s-pasture-seed-mixes

 

Merit Seed:

Wildlife Food Plot: http://meritseed.com/wildlife-food-plot-store/

Agriculture Seeds: http://meritseed.com/agriculture-seeds/

 

Johnston Seed Company:

Wildlife Food Plot: http://www.johnstonseed.com/products/wildlife/

Field Crop Seeds: http://www.johnstonseed.com/products/field-crops/

Wildflowers: http://www.johnstonseed.com/products/wildflowers/

Native Grasses: http://www.johnstonseed.com/products/native-grass/

 

Ernst Seed:

Products: http://www.ernstseed.com/products/

 

ArrowSeed:

Products: http://arrowseed.com/shop-arrow-seed/

 

http://www.linguee.com/french-english/translation/domaine.html

http://dictionary.cambridge.org/us/dictionary/french-english/domaine

 

 

Applicant argues that the parties’ consumers are sophisticated.  Nevertheless, 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).

 

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 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.

 

Since the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods.  Therefore, applicant’s mark is not entitled to registration. 

 

This refusal is maintained and continued.

.

 

How to respond.  Click to file a response to this nonfinal Office action.

 

 

/Evelyn Bradley/

Evelyn Bradley

Trademark Examiner

Law Office 104

(571) 272-9292

 

 

 

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 August 13, 2020 for

U.S. Trademark Application Serial No. 88781659

 

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. 

 

 

.

/Evelyn Bradley/

Evelyn Bradley

Trademark Examiner

Law Office 104

(571) 272-9292

 

 

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 August 13, 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.”