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:  October 30, 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.

 

 

SUMMARY OF ISSUES

 

·       Refusal under Trademark Act Section 2(d) – Likelihood of Confusion

·       Advisory: Prior-Filed Applications

·       Requirement to Provide English Translation

·       Requirement to Submit Processing Fee – Considered TEAS Standard Application

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark (ABSOLU) is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5703533 (ABSOLUTE FRUIT), 3536965 (ABSOLUTE VEGAN), 3255995 (ABSOLUTE VEGETARIAN), 5293328 (ABSOLUTE ORGANIC), and 5640025 (ABSOLUTE. ORGANIC).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registrations.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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. 

 

Comparing 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).

 

In this case, the marks are confusingly similar because the only wording in the applied-for mark is similar in appearance, sound, and commercial impression to the dominant wording in the registered marks.  Applicant’s mark is “ABSOLU” and the registered marks are “ABSOLUTE FRUIT”, “ABSOLUTE VEGAN”, “ABSOLUTE VEGETARIAN”, “ABSOLUTE ORGANIC”, and “ABSOLUTE. ORGANIC”.

 

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).  Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)).

 

In the present case, the registered marks have disclaimed the words “ORGANIC”, “VEGAN’, and “VEGETARIAN” as being merely descriptive of or generic for their respective goods.  Thus, these words are less significant in terms of affecting each mark’s commercial impression, and renders the wording “ABSOLUTE” the more dominant element of the registered marks and this word is similar in sound and appearance to applicant’s entire mark.

 

The applied-for mark is also the foreign equivalent of the dominant wording in the registered mark.  Under the doctrine of foreign equivalents, a mark in a common, modern foreign language and a mark that is its English equivalent may be held confusingly similar.  TMEP §1207.01(b)(vi); see, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1127-28 (TTAB 2015); In re Thomas, 79 USPQ2d 1021, 1025 (TTAB 2006).  Consequently, marks comprised of foreign wording are translated into English to determine similarity in meaning and connotation with English word marks.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1377, 73 USPQ2d 1689, 1696 (Fed. Cir. 2005).  Equivalence in meaning and connotation may be sufficient to find such marks confusingly similar.  See In re Aquamar, Inc., 115 USPQ2d at 1127-28; In re Thomas, 79 USPQ2d at 1025.

 

Applicant’s mark is in French, which is a common, modern language in the United States.  See In re Optica Int’l, 196 USPQ 775 (TTAB 1977) (French).  The doctrine is applied when “the ordinary American purchaser” would “stop and translate” the foreign term into its English equivalent.  Palm Bay, 396 F.3d at 1377, 73 USPQ2d at 1696 (quoting In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976)); TMEP §1207.01(b)(vi)(A).  The ordinary American purchaser includes those proficient in the foreign language.  In re Spirits Int’l, N.V., 563 F.3d 1347, 1352, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009); see In re Thomas, 79 USPQ2d at 1024.

 

In this case, the ordinary American purchaser would likely stop and translate the mark because the French language is a common, modern language spoken by an appreciable number of consumers in the United States.  See attached evidence from Wikipedia.org indicating that “[r]oughly 2.10 million Americans over the age of five reported speaking the language at home in a federal 2010 estimate.”  Accordingly, the applied-for mark and the registered mark also create similar commercial impressions because the dominant wording in the registered marks has the same meaning as the applied-for mark.  Thus, the marks are confusingly similar.

 

Comparing the Goods/Services

 

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 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); In re House Beer, LLC, 114 USPQ2d 1073, 1078 (TTAB 2015) (holding the use of identical marks for beer and for retail store services featuring beer likely to cause confusion); In re Thomas, 79 USPQ2d 1021, 1023 (TTAB 2006) (holding the use of similar marks for jewelry and for retail-jewelry and mineral-store services likely to cause confusion); TMEP §1207.01(a)(ii).

 

In this case, applicant’s services are “supermarkets” in International Class 35. 

 

The goods in Reg. No. 5703533 (ABSOLUTE FRUIT) are “processed fruit snacks, processed fruit rolls, processed fruit bars, processed fruit pieces” in International Class 29.

 

The goods in Reg. No. 3536965 (ABSOLUTE VEGAN) are “frozen vegetable-based food entrees” in International Class 29.

 

The goods in Reg. No. 3255995 (ABSOLUTE VEGETARIAN) are “frozen vegetarian food entrees” in International Class 29.

 

The goods in Reg. No. 5293328 (ABSOLUTE ORGANIC) are the following:

 

International Class 29 – Canned vegetables; edible oils; soups; non-dairy, non-frozen yoghurt; yoghurt; cheese; non-dairy cheese, namely, cheese substitutes; butter; jams; preserved fruits; preserved vegetables; canned tomatoes; processed edible seeds; coconut flakes, namely, flaked coconut; coconut milk for cooking; coconut oil; desiccated coconut; cheese in the form of dips; vegetable-based dips; potato chips; peanut butter; extra-virgin olive oil; sesame oil; sunflower oil for food; roasted nuts; salted nuts; all of the foregoing being organic in nature and/or comprised of organic ingredients in whole or in significant part

 

International Class 30 – Condiments, namely, savoury sauces used as a condiment, tomato sauce, ketchup, BBQ sauce, mustard, salsa; wrap sandwiches; extruded savoury corn snack foods; cocoa; glucose syrups for culinary purposes; sugar; pasta; flour for culinary purposes; salt for cooking; processed grains for use in food; spices; crispbread snacks; flour based savoury snacks, namely, flour-based chips; snacks manufactured from cereals, namely, cereal based snack foods; sandwich spread, namely, chocolate-based spread also containing nuts; coffee beans; instant tea, other than for medicinal purposes; honey; pita bread; corn chips; noodles; bread; vinegar; almond confectionery, namely, sugar coated almonds; chocolate confectionery; confectionery, namely, liquorice; popcorn; confectionery, namely, chocolate coated nuts; all of the foregoing being organic in nature and/or comprised of organic ingredients in whole or in significant part

 

International Class 31 – Grains, namely, grain seeds for planting; raw unprocessed grain; unprocessed cereal grains; fresh coconuts; unprocessed edible nuts; all of the foregoing being organic in nature and/or comprised of organic ingredients in whole or in significant part

 

The goods in Reg. No. 5640025 (ABSOLUTE. ORGANIC) are the following:

 

International Class 29 – Preserved, dried and cooked fruits and vegetables including preserved beans, lentils, chick peas and pulses; jellies, jams, compotes; eggs; milk and milk products excluding ice cream, ice milk and frozen yogurt; dairy products, namely, cheese, cream and butter; edible oils and fats; coconut oil for food; prepared and processed nuts, ground nuts, peanut paste; nut-based spreads, peanut butter, spreads made from dairy products, spreads made from vegetable oils, namely, margarine; seeds, namely, processed chia seeds; all of the foregoing being organic in nature and/or comprised of organic ingredients in whole or in significant part

 

International Class 30 – Coffee, tea, cocoa and artificial coffee; rice; tapioca and sago; flour and preparations made from cereals, namely, cereal based snack foods; cereal based snack food, crispbread snacks, flour based savory snacks, namely, flour-based chips; bread, wrap sandwiches; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, fruit vinegar, apple cider vinegar; sauces; condiments, namely, ketchup, mustard, mayonnaise, and pesto; spices; pizza and pizza products, namely, frozen dough for use as pizza and pizza sauce; malt and malt extract for food purposes; almond paste; all of the foregoing being organic in nature and/or comprised of organic ingredients in whole or in significant part

 

International Class 31 – Raw and unprocessed agricultural, aquacultural, horticultural and forestry products, namely, fruits, vegetables, nuts, quinoa, buckwheat, and teff; seeds, namely, unprocessed chia seeds; fresh fruits and vegetables; fresh herbs; fresh pulses; fresh nuts; all of the foregoing being organic in nature and/or comprised of organic ingredients in whole or in significant part

 

The trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of 10 third-party marks registered for use in connection with the same or similar goods and services as those of both applicant and registrant in this case.  This evidence shows that the goods and services listed therein, namely, supermarkets and either eggs, cheese, frozen prepared meals/entrees, butter, jam, and/or processed fruits 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).  Thus, applicant’s and registrant’s goods and services are considered related for likelihood of confusion purposes.

 

Conclusion

 

Applicant’s and registrants’ marks are confusingly similar and their goods/services are related.  Accordingly, the applied-for mark, “ABSOLU”, is refused for likelihood of confusion under Trademark Act Section 2(d).

 

 

ADVISORY: PRIOR-FILED APPLICATIONS

 

The filing dates of pending U.S. Application Serial Nos. 88928912 (ABSOLUTE CHRONIC), 88928911 (ABSOLUTE CHRONIC FARMS), and 88928913 (ABSOLUTE CHRONIC CULTIVATION) precede applicant’s filing date.  See attached referenced applications.  If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq.  Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.

 

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration.  However, if applicant responds to the refusal, applicant must also respond to the requirements set forth below.

 

 

REQUIREMENT TO PROVIDE ENGLISH TRANSLATION

 

To permit proper examination of the application, applicant must submit an English translation of the foreign wording in the mark.  37 C.F.R. §§2.32(a)(9), 2.61(b); see TMEP §809.  The following English translation is suggested:  The English translation of “ABSOLU” in the mark is “ABSOLUTE”.  TMEP §809.03.  See attached translation evidence.

 

 

Processing Fee Required – Considered TEAS Standard Application

 

Applicant must submit an additional processing fee of $125 per class because the application as originally filed did not meet the TEAS Plus application filing requirements.  See 37 C.F.R. §2.22(c); TMEP §§819.01-.01(q), 819.04.  Specifically, applicant failed to meet the following requirement:  a translation of all non-English wording in the mark was not provided. 

 

The additional processing fee is required regardless of whether applicant satisfies these application requirements.

 

Accordingly, the application will no longer be treated as TEAS Plus; it is now considered a TEAS Standard application.  See 37 C.F.R. §2.22(c); TMEP §819.04.

 

 

RESPONSE GUIDANCE

 

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

 

• 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.

 

 

QUESTIONS

 

If applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §2.191; TMEP §§709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal and/or requirements in this Office action, the trademark examining attorney may not provide legal advice or statements about applicant’s rights.  See TMEP §§705.02, 709.06.

 

/Marco Wright/

Trademark Examining Attorney

Law Office 120

(571) 272-4918

marco.wright@uspto.gov

 

 

 

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on October 30, 2020 for

U.S. Trademark Application Serial No. 90055906

 

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. 

 

 

/Marco Wright/

Trademark Examining Attorney

Law Office 120

(571) 272-4918

marco.wright@uspto.gov

 

 

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 October 30, 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.”