United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88933468
Mark: CULTIVATE ELEVATE
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Correspondence Address:
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Applicant: Global Eco Resources inc.
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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: August 27, 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.
The applicant must address:
Also contained herein is an advisory regarding prior-filed and pending applications that may be the subject of another Section 2(d) likelihood of confusion refusal should those applications register.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Here, the applicant’s mark is CULTIVATE ELEVATE for a variety of supplements in Class 5, and the registrant’s marks, owned by the same party, are CULTIVATE (U.S. Registration No. 5408108) for, among other things, a variety of food and beverages in Classes 29 and 32, and CULTIVATE (U.S. Registration No. 5662192) for a variety of foods in Classes 29 and 30.
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. 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 and differences in the marks.”); TMEP §1207.01.
In this case, the following factors are the most relevant: confusingly similar marks and similar producers and trade channels of the goods. 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.
Confusingly Similar 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 standard character mark CULTIVATE ELEVATE is confusingly similar to the registrant’s standard character marks CULTIVATE.
Specifically, the applicant’s mark begins with and the registrant’s marks are comprised of the same distinctive CULTIVATE, which is identical in appearance, sound, commercial impression, and meaning, namely, “[t]o improve and prepare (land), as by plowing or fertilizing, for raising crops; till.” http://www.ahdictionary.com/word/search.html?q=cultivate. Consumers are generally more inclined to focus on the first word in a trademark. 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 CULTIVATE is the first word in the applicant’s mark and the only one in the registrant’s mark, consumers will focus on this element for source identification, thereby making it the dominant feature of the marks.
Though the applicant’s mark ends with ELEVATE, 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.
Accordingly, the marks are confusingly similar.
Closely Related Goods
Here, the applicant’s variety of supplements in Class 5 is closely related to the registrant’s variety of food and beverages in Classes 29 and 32 (U.S. Registration No. 5408108) and variety of foods in Classes 29 and 30 (U.S. Registration No. 5662192).
Specifically, the attached evidence establishes that third parties routinely produce the identified goods under the same mark and sell them in the same trade channels. E.g., http://www.nowfoods.com/natural-foods/raw-energy-nut-mix and http://www.nowfoods.com/supplements/aloe-10000-probiotics-veg-capsules (producing trail mix and supplements under NOW mark and sold on NOW website); http://shop.mercola.com/product/2656/1/organic-fermented-fruits-90-servings-1-bag and http://shop.mercola.com/product/2476/1/organic-astaxanthin-12mg-30-per-bottle-30-day-supply (producing dehydrated fruit and supplements under Dr. Mercola mark and sold on M Mercola Market website); http://www.nutrisystem.com/diet-nutrition/shop-a-la-carte/5408/lifestyle/25/nutrisystem+essentials+vitamins+for+women and http://www.nutrisystem.com/jsps_hmr/diet-plans/weight-loss-plans.jsp?plan=uniquelyyours#men-plan (producing supplements and prepared meals under Nutrisystem mark and sold on Nutrisystem website); http://shop.mediweightloss.com/Fat-Burner_p_272.html and http://shop.mediweightloss.com/Triple-Chocolate-Brownie-Soft-Baked-Square_p_472.html (producing supplements and baked desserts under Medi Weightloss mark and sold on Medi Weightloss website).
Accordingly, the goods are closely related.
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 Options to Refusal
Although the applicant’s mark has been refused registration, the applicant may respond to the refusal by submitting evidence and offering argument against the refusal and in support of registration.
POTENTIAL SECTION 2(d) LIKELIHOOD OF CONFUSION REFUSAL ADVISORY – PRIOR-FILED AND PENDING 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 another refusal under Section 2(d) issues.
Although the applicant is not required to respond to the issue of the prior-filed and pending applications, the applicant must respond to the above refusal and below requirement within six months of the mailing date of this Office action to avoid abandonment.
REQUIREMENTS
If the applicant responds to the refusal, then the applicant also must respond to the below requirements.
SUBSTITUTE SPECIMEN REQUIRED
Specifically, the applicant applied to register a mark for “Dietary and nutritional supplements for endurance sports; Food supplements; Food supplements, namely, anti-oxidants; Health food supplements; Herbal supplements; Natural dietary supplements; Nutritional supplements; Vitamin supplements; Vitamin and mineral supplements” in Class 5. Though the specimen depicts mushroom powder, it is unclear whether these goods are supplements in Class 5 or, for example, are intended for cooking in Class 29, where processed mushrooms are classified.
Examples of specimens. Specimens for goods include a photograph of (1) the actual goods bearing the mark; (2) an actual container, packaging, tag or label for the goods bearing the mark; or (3) a point-of-sale display showing the mark directly associated with the goods. See 37 C.F.R. §2.56(b)(1), (c); TMEP §904.03(a)-(m). A webpage specimen submitted as a display associated with the goods must show the mark in association with a picture or textual description of the goods and include information necessary for ordering the goods. TMEP §904.03(i); see 37 C.F.R. §2.56(b)(1), (c).
Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed. 37 C.F.R. §2.56(c).
Response options. Applicant may respond to this refusal by satisfying one of the following:
(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 and (b) shows the mark in actual use in commerce for the goods identified in the application. 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) as no specimen is required before publication. This option will later necessitate additional fee(s) and filing requirements, including a specimen.
For an overview of the response options referenced above and instructions on how to satisfy these options using the online Trademark Electronic Application System (TEAS) form, see the Specimen webpage.
PRO SE APPLICANT ADVISORY
Because of the legal technicalities and strict deadlines of the trademark application process, the applicant may wish to hire a private attorney who specializes in trademark matters to assist in the process. The below 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.
RESPONSE GUIDELINES
For this application to proceed, the applicant must explicitly address each refusal and requirement in this Office action. For the refusal, the applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For the requirement, the 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.
The USPTO does not accept e-mails as responses to Office actions; however, e-mails 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.
If the applicant does not respond to this Office action within six months of the issue/mailing date, or responds by expressly abandoning the application, the application process will end and the trademark will fail to register. See 15 U.S.C. §1062(b); 37 C.F.R. §§2.65(a), 2.68(a); TMEP §§718.01, 718.02. Additionally, the USPTO will not refund the application filing fee, which is a required processing fee. See 37 C.F.R. §§2.6(a)(1)(i)-(iv), 2.209(a); TMEP §405.04.
When an application has abandoned for failure to respond to an Office action, an applicant may timely file a petition to revive the application, which, if granted, would allow the application to return to active status. See 37 C.F.R. §2.66; TMEP §1714. The petition must be filed within two months of the date of issuance of the notice of abandonment and may be filed online via the Trademark Electronic Application System (TEAS) with a $100 fee. See 37 C.F.R. §§2.6(a)(15)(ii), 2.66(a)(1), (b)(1).
How to respond. Click to file a response to this nonfinal Office action.
/Kevin G. Crennan/
Trademark Examining Attorney
Law Office 113
(571) 272-7949
kevin.crennan@uspto.gov
RESPONSE GUIDANCE