United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88807209
Mark: HA-TOPSHELF
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Correspondence Address: |
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Applicant: HA-TOPSHELF, LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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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: May 12, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Section 2(d) Refusal: Likelihood of Confusion with Registered Marks
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 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)); TMEP §1207.01.
Similarity of the Marks
The applied-for mark is HA-TOPSHELF. The registered marks are TOP SHELF (U.S. Registration No. 4491862) and TOP SHELF SUPPLEMENTS (U.S. Registration No. 4423327).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks.” 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). Instead, 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).
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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
Disclaimed matter that is descriptive of or generic for a party’s goods or services, for example, 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). In the present case, the wording SUPPLEMENTS has been disclaimed in U.S. Registration No. 4423327. See, attached registration. Accordingly, this wording is less significant in terms of affecting the mark’s commercial impression and renders the wording TOP SHELF the more dominant element of the mark.
In addition to comprising the dominant source-indicating element of the mark in U.S. Registration No. 4423327, TOP SHELF is the entirety of the mark in U.S. Registration No. 4491862. The essentially equivalent wording TOPSHELF comprises a significant element in the applied-for mark. TOP SHELF in the registered marks and TOPSHELF in the applied-for mark sound the same, are essentially identical in appearance, and convey the same commercial impression.
Addition of HA in the applied-for mark, as compared to the registered marks, is not sufficient to alter the commercial impression or distinguish 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); TMEP §1207.01(b)(iii).
Relatedness of the Goods and Services
Applicant seeks to register its mark for “Dietary supplements; Dietary supplements for humans and animals; Dietary and nutritional supplements containing hyaluronic acid”. The mark in U.S. Registration No. 4491862 is also for, inter alia, “Dietary supplements” and “Nutritional supplements”. The mark in U.S. Registration No. 4423327 is for retail store services featuring, among other things, “dietary supplements, nutritional supplements”.
In this case, the goods in the application and U.S. Registration No. 4491862 are identical to the extent that they include “Dietary supplements”. Further, the broad wording “Dietary supplements” and “Nutritional supplements” in the registration is presumed to encompass all goods of the type described, including the dietary supplements for humans and animals and dietary and nutritional supplements containing hyaluronic acid identified in the application. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018). Thus, these goods of the parties are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981).
Additionally, the goods of the parties have no restrictions as to channels of trade or classes of purchasers and 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)). Thus, applicant’s and registrant’s goods are related.
Applicant’s goods are also related to the services identified in U.S. Registration No. 4423327. The compared goods and 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); 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).
For example, the use of similar marks on or in connection with both products and retail-store services has been held likely to cause confusion where the evidence showed that the retail-store services featured the same type of products. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (holding the use of similar marks for various clothing items, including athletic uniforms, and for retail shops featuring sports team related clothing and apparel likely to cause confusion); TMEP §1207.01(a)(ii). In this case, the applicant’s goods are dietary and nutritional supplements, and these types of goods are featured in registrant’s retail-store services. See, Identification of Goods in Application; Identification of Goods in attached U.S. Registration No. 4423327.
Potential for Likelihood of Confusion with Marks in Prior-Filed Applications
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 marks in the referenced applications. 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 because of a likelihood of confusion with the mark(s) in the referenced application(s).
Applicant must respond to the following refusal and requirements.
Section 2(e)(1) Refusal: Merely Descriptive
The determination of whether a mark is merely descriptive is made in relation to an applicant’s goods rather than in the abstract. DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1254, 103 USPQ2d 1753, 1757 (Fed. Cir. 2012); TMEP §1209.01(b). A mark is merely descriptive if it describes an ingredient or feature of an applicant’s goods. TMEP §1209.01(b); see, e.g., In re TriVita, Inc., 783 F.3d 872, 874, 114 USPQ2d 1574, 1575 (Fed. Cir. 2015) (quoting In re Oppedahl & Larson LLP, 373 F.3d 1171, 1173, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004)).
Only where the combination of descriptive terms creates a unitary mark with a unique, incongruous, or otherwise nondescriptive meaning in relation to the goods is the combined mark registrable. See In re Colonial Stores, Inc., 394 F.2d 549, 551, 157 USPQ 382, 384 (C.C.P.A. 1968).
In this case, both the individual components and the composite result are descriptive of applicant’s goods and do not create a unique, incongruous, or nondescriptive meaning in relation to the goods. Specifically, applicant seeks to register HA-TOPSHELF for dietary and nutritional supplements, including dietary supplements containing hyaluronic acid.
HA, the first component of the mark, is an initialism for hyaluronic acid. See, e.g, attached evidence from www.acronymfinder.com and www.abbreviations.com. An initialism is merely descriptive when it is an initialism for specific wording that is merely descriptive of applicant’s goods, and a relevant consumer viewing the initialism in connection with applicant’s goods will recognize it as the equivalent of the merely descriptive wording it represents. TMEP §1209.03(h); see In re Thomas Nelson, Inc., 97 USPQ2d at 1715-16 (citing In re Harco Corp., 220 USPQ 1075, 1076 (TTAB 1984)). Hyaluronic acid, the wording for which HA is an initialism, describes an ingredient of applicant’s goods. See, Identification of Goods in Application. A term that describes an ingredient of the goods is merely descriptive. TMEP §1209.01(b); see In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574 (Fed. Cir. 2015) (holding NOPALEA merely descriptive of dietary and nutritional supplements containing nopal juice). A relevant consumer viewing applicant’s mark in connection with the identified goods would recognize HA as the equivalent of hyaluronic acid because the initialism is commonly used in lieu of this wording. See, e.g., attached evidence from http://shop.purityproducts.com, http://biopureus.com, www.skinceuticals.com, and http://bluemercury.com. For these reasons, HA is merely descriptive of applicant’s goods.
TOPSHELF, the remaining component of the mark, is an adjective that means “of the best quality”. See, e.g., attached evidence from www.merriam-webster.com. “Marks that are merely laudatory and descriptive of the alleged merit of a product [or service] are . . . regarded as being descriptive” because “[s]elf-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods [or services].” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1256, 103 USPQ2d 1753, 1759 (Fed. Cir. 2012) (quoting In re The Boston Beer Co., 198 F.3d 1370, 1373, 53 USPQ2d 1056, 1058 (Fed. Cir. 1999)); TMEP §1209.03(k). In fact, “puffing, if anything, is more likely to render a mark merely descriptive, not less so.” DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d at 1256, 103 USPQ2d at 1759. Because it is laudatory of the alleged merit of applicant’s goods, TOPSHELF is also merely descriptive.
Supplemental Register
If applicant files an acceptable allegation of use and also amends to the Supplemental Register, the application effective filing date will be the date applicant met the minimum filing requirements under 37 C.F.R. §2.76(c) for an amendment to allege use. TMEP §§816.02, 1102.03; see 37 C.F.R. §2.75(b). In addition, the undersigned trademark examining attorney will conduct a new search of the USPTO records for conflicting marks based on the later application filing date. TMEP §§206.01, 1102.03.
An allegation of use has various legal requirements, including providing verified dates of first use of the mark, a verified statement that the mark is in use in commerce, a specimen showing the mark as actually used in commerce for each international class, and a fee. 37 C.F.R. §§2.76, 2.88; TMEP §806.01(b). In addition, certain time restrictions apply to filing an amendment to allege use or statement of use. See 37 C.F.R. §§2.76(a), 2.88(a); TMEP §§1104.03, 1109.04. See the ITU basis webpage for more information about an amendment to allege use or statement of use. To submit one, use the Trademark Electronic Application System (TEAS) Allegation of Use form.
(1) Use of the registration symbol ® with the registered mark in connection with the designated goods, which provides public notice of the registration and potentially deters third parties from using confusingly similar marks.
(2) Inclusion of the registered mark in the USPTO’s database of registered and pending marks, which will (a) make it easier for third parties to find it in trademark search reports, (b) provide public notice of the registration, and thus (c) potentially deter third parties from using confusingly similar marks.
(3) Use of the registration by a USPTO trademark examining attorney as a bar to registering confusingly similar marks in applications filed by third parties.
(4) Use of the registration as a basis to bring suit for trademark infringement in federal court, which, although more costly than state court, means judges with more trademark experience, often faster adjudications, and the opportunity to seek an injunction, actual damages, and attorneys’ fees and costs.
(5) Use of the registration as a filing basis for a trademark application for registration in certain foreign countries, in accordance with international treaties.
See 15 U.S.C. §§1052(d), 1091, 1094; J. Thomas McCarthy, McCarthy on Trademarks & Unfair Competition §§19:33, 19:37 (rev. 4th ed. Supp. 2017).
Applicant must also respond to the following requirements.
Amended Identification of Goods Required
Applicant’s mark includes the wording HA, which indicates that applicant’s goods have and/or exhibit, (or will have and/or will exhibit) the following feature or characteristic: be comprised of hyaluronic acid. See, e.g., attached evidence from www.abbreviations.com and www.acronymfinder.com.
This feature or characteristic is considered desirable for applicant’s goods because it, among other things, relieves joint pain. See, e.g., attached evidence from www.healthline.com, www.medicalnewstoday.com, and www.webmd.com. However, if all of the goods do not (or will not) in fact have or exhibit this feature or characteristic, then registration may be refused because the mark consists of or includes deceptive matter in relation to the identified goods. See 15 U.S.C. §1052(a); In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); TMEP §1203.02-.02(b).
To avoid such refusal, applicant may amend the identification to specify that all of the goods possess this relevant feature or characteristic. See TMEP §§1203.02(e)(ii), (f)(i), 1402.05 et seq. However, merely amending the identification to exclude goods with the named feature or characteristic will not avoid a deceptiveness refusal. TMEP §1203.02(f)(i).
Therefore, applicant may amend the identification to the following, if accurate. In the following, proposed amendments are in bold.
Dietary supplements containing hyaluronic acid; Dietary supplements for humans and animals containing hyaluronic acid; Dietary and nutritional supplements containing hyaluronic acid
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Applicant must also respond to the following requirement.
Information Required
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods is available on applicant’s website is an insufficient response and will not make the relevant website information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Applicant is advised that, if applicant’s response to the request for information indicates that all of the goods identified in the application do not or will not contain hyaluronic acid, registration may be refused on the ground that the applied-for mark is deceptive. Trademark Act Section 2(a), 15 U.S.C. §1052(a); see In re Budge Mfg. Co., 857 F.2d 773, 775-77, 8 USPQ2d 1259, 1260-62 (Fed. Cir. 1988); TMEP §1203.02-02(e).
Response to Office Action Required to Avoid Abandonment
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
Jeanine Gagliardi
/Jeanine Gagliardi/
Examining Attorney
Law Office 120
571-272-3177
jeanine.gagliardi@uspto.gov
RESPONSE GUIDANCE