To: | International Golden Foods, Inc. (ipdocket@greensfelder.com) |
Subject: | U.S. Trademark Application Serial No. 90001996 - GOLDEN CROWN - 48408-888020 |
Sent: | April 20, 2021 09:58:09 PM |
Sent As: | ecom116@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90001996
Mark: GOLDEN CROWN
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Correspondence Address: |
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Applicant: International Golden Foods, Inc.
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Reference/Docket No. 48408-888020
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: April 20, 2021
This Office Action responds to applicant’s letter filed on March 17, 2021. The attorney has reviewed the above referenced response and determined the following:
Applicant’s arguments with respect to the likelihood of confusion with Registration No. 4468398 were not persuasive. Therefore refusal of registration based upon the prior registration is made FINAL.
Applicant’s identification and classification of goods remains unacceptable. As such, the requirement of an amendment is maintained and made FINAL.
REGISTRATION
Likelihood of Confusion – Final Refusal
The examining attorney has considered applicant's arguments carefully but has found them unpersuasive. For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.
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.
The proposed mark and the prior registered mark are highly similar under the analysis set forth above. Applicant’s mark is GOLDEN CROWN with a crown and lion design. Registrant’s mark is GOLDEN CROWN GARDEN with a square design featuring Chinese characters. The shared wording, namely, GOLDEN CROWN, creates a highly similar overall commercial impression, conjuring the image of a crown made of gold.
Applicant argues that the additional wording in registrant’s mark obviates any likelihood of confusion. 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”). In this case, the first two words of the mark are identical, thereby creating a highly similar commercial impression. As such, applicant’s arguments are not persuasive.
Applicant also argues that the differing designs in the marks overcomes the likelihood of confusion. When evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services. In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii). Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed. In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)). In this case, the wording is distinctive, thereby reinforcing its dominance over the designs. Consumers are likely to refer to the marks by their wording rather than their design. As such, applicant’s arguments are not persuasive.
Additionally, the goods of the parties are overlapping and found in the same channels of trade. Applicant offers processed chia seeds; registrant offers Tea; molasses for food; instant rice; flour for food; condiments, namely, oyster sauce, ketchup, pepper sauce, Soya bean paste, Worcestershire sauce, Barbecue sauce, teriyaki sauce; soy sauce; vinegar; food leavening agents; Curry powder, chili powder, pepper powder essences for foodstuffs, except etheric essences and essential oils; meat tenderizers, for household purposes; flavoring sauce. The goods are closely related and travel in the same channels of trade. See previously attached trademark registrations showing rice and chia seeds under the same marks. Consumers, therefore, are likely to believe that the goods of the parties originate from the same source.
Applicant argues that the ownership of several prior registrations for the mark GOLDEN overcomes the refusal. Applicant’s registrations are for the mark GOLDEN, not GOLDEN CROWN, and are therefore not dispositive of the registrability of the present mark.
The same consumers will be exposed to the goods identified with the marks. The similarities among the marks and the goods of the parties are so great as to create a likelihood of confusion in favor of the registrant and against the applicant who has a legal duty to select a mark which is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner- Lambert Co., 203 USPQ 191 (TTAB 1979). Accordingly, the refusal to register the mark under Section 2(d) is maintained and made FINAL.
Identification and Classification of Goods – Final Requirement
The identification of goods is unacceptable as indefinite and because it may be properly classified in more than one International Class. Applicant may adopt the following identification, if accurate:
Processed grains, namely, rice; orzo (International Class 30);
Unprocessed quinoa (International Class 31). TMEP §1402.01.
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
(1) List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class (for example, International Class 3: perfume; International Class 18: cosmetic bags sold empty).
(2) Submit a filing fee for each international class not covered by the fee(s) already paid (view the USPTO’s current fee schedule). Specifically, the application identifies goods and/or services based on use in commerce that are classified in at least 2 classes; however, applicant submitted a fee(s) sufficient for only 1 class(es). Applicant must either (a) submit the filing fees for the classes not covered by the submitted fees or (b) restrict the application to the number of classes covered by the fees already paid.
(3) Submit verified dates of first use of the mark anywhere and in commerce for each international class. See more information about verified dates of use.
(4) Submit a specimen for each international class. The current specimen is acceptable for class(es) 30; and applicant needs a specimen for class(es) 31. See more information about specimens.
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).
Specimens for services must show a direct association between the mark and the services and include: (1) copies of advertising and marketing material, (2) a photograph of business signage or billboards, or (3) materials showing the mark in the sale, rendering, or advertising of the services. See 37 C.F.R. §2.56(b)(2), (c); TMEP §1301.04(a), (h)(iv)(C).
Any webpage printout or screenshot submitted as a specimen must include the webpage’s URL and the date it was accessed or printed on the specimen itself, within the TEAS form that submits the specimen, or in a verified statement under 37 C.F.R. §2.20 or 28 U.S.C. §1746 in a later-filed response. See 37 C.F.R. §2.56(c); TMEP §§904.03(i), 1301.04(a).
(5) Submit a verified statement that “The specimen was in use in commerce on or in connection with the goods and/or services listed in the application at least as early as the filing date of the application.” See more information about verification.
See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).
For an overview of the requirements for a Section 1(a) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.
Applicant’s Response
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 that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.64(a); 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. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
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).
/wgb/
William Breckenfeld
Examining Attorney
Law Office 116
571-272-9133
Email: william.breckenfeld@uspto.gov
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