United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90122073
Mark: ARAKU
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Correspondence Address: |
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Applicant: ARAKU ORIGINALS LIMITED
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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: December 18, 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.
ADVISORY – PRIOR FILED APPLICATION
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 mark in the referenced application. 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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant’s mark is ARAKU (in special character form) for goods currently identified as “Coffee; artificial coffee; coffee essences; coffee extracts; decaffeinated coffee; ground coffee; iced coffee; instant coffee; unroasted coffee; Coffee, tea, cocoa and artificial coffee; caffeine-free coffee; coffee-based beverages; coffee flavorings; roasted coffee beans; vegetable preparations for use as coffee substitutes; tea; cocoa; rice; tapioca and sago; flour and preparations made from cereals; bread, pastry and confectionery; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces (condiments); spices; Chocolates, Biscuits, Cakes” in International Class 30.
Registrants’ marks are:
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.
Comparison of Marks:
Comparison as to Reg. Nos. 3472371; 3272909; 5238512
In the present case, applicant’s mark is ARAKU and registrant’s marks are ARAKÚ. These marks are identical in sound and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical in sound and meaning, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id.
Therefore, the marks are confusingly similar.
Comparison as to Reg. Nos. 5880667; 5880668
Here, applicant’s and registrant’s marks are similar because they share the identical first term, ARAKU. Applicant’s deletion of AROMA or FEEL THE TASTE fails to obviate the overall similarity of the marks because, although applicant’s mark does not contain the entirety of the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark. See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). Thus, merely omitting some of the wording from a registered mark may not overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257; In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). In this case, applicant’s mark does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.
Further, applicant’s deletion of design elements from Reg. No. 5880668 fails to create a distinct commercial impression because, 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)).
Given the shared first term, ARAKU, the marks at issue create a similar overall commercial impression which is sufficient for finding a likelihood of confusion.
The compared goods 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).
Relatedness as to Reg. Nos. 3472371; 3272909; 5238512
First, applicant’s coffee based beverages encompass applicant’s coffee flavored soft drink in Reg. No. 5238512. Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the application uses broad wording to describe coffee based beverages, which presumably encompasses all goods of the type described, including registrant’s more narrow coffee flavored soft drinks. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s goods 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); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, 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.
Second, applicant’s coffee, coffee essences and flavorings, coffee substitutes and tea and registrant’s coffee flavored alcohol and coffee flavored soft drinks are closely related because the same entity commonly provides applicant’s and registrants goods, under the same mark.
The attached Internet evidence, consisting of webpage screenshots from McMenamins, Two Brothers, Godiva and Koloa Rum Co., establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. In addition, the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Finally, the goods are similar or complementary in terms of purpose or function. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
The third-party Internet evidence shows that the applicant’s goods and the registrant’s goods are closely related and travel through similar trade channels to the same class of consumers.
Thus, upon encountering registrant’s marks used for the aforementioned goods and applicant’s mark used for the aforementioned goods, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source.
Relatedness as to Reg. Nos. 5880667; 5880668
First, applicant’s coffee, coffee essences, coffee extracts, tea, cocoa, coffee substitutes, flour, tapioca, sago, bread, pastry, confectionery, sugar, honey, yeast, baking powder, salt, mustard, vinegar, sauces, spices, chocolates, biscuits and cakes and registrant’s coffee are closely related because the same entity commonly provides applicant’s and registrants goods, under the same mark.
The attached Internet evidence, consisting of webpage screenshots from The Andersen’s, Caribou Coffee, Cherry Republic, Flying M Coffee, Harry & David, Panera, Zabars, Dilettante, Kona Mountain, Newman’s Own, Stonewall Kitchen, Essential Everyday, Fly Creek and Boca Java, establishes that the same entity commonly provides the relevant goods and markets the goods under the same mark. In addition, the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Finally, the goods are similar or complementary in terms of purpose or function. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
The third-party Internet evidence shows that the applicant’s goods and the registrant’s goods are closely related and travel through similar trade channels to the same class of consumers.
Thus, upon encountering registrant’s marks used for the aforementioned goods and applicant’s mark used for the aforementioned goods, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source.
Given the foregoing, registration is refused under Section 2(d) of the Trademark Act.
Applicant should note the following additional ground for refusal.
SECTION 2(e)(2) REFUSAL – PRIMARILY GEOGRAPHICALLY DESCRIPTIVE
A mark is primarily geographically descriptive when the following is demonstrated:
(1) The primary significance of the mark to the purchasing public is a generally known location;
(2) The goods or services originate in the place identified in the mark; and
(3) The purchasing public would be likely to believe that the goods originate in the geographic place identified in the mark; that is, to make a goods-place association.
TMEP §1210.01(a); see In re Societe Generale des Eaux Minerales de Vittel S.A., 824 F.2d 957, 959, 3 USPQ2d 1450, 1452 (Fed. Cir. 1987); In re Hollywood Lawyers Online, 110 USPQ2d 1852, 1853 (TTAB 2014); see also In re Newbridge Cutlery Co., 776 F.3d 854, 860-61, 113 USPQ2d 1445, 1448-49 (Fed. Cir. 2015).
Primary Significance of the Mark is a Geographic Location:
The primary significance of ARAKU is a geographic location, namely, a valley in Andra Pradesh, India. See the attached evidence from Wikipedia. Further, the attached evidence from Wikipedia shows that Araku Valley is known for coffee plantations.
The Origin of Applicant’s Goods is the Geographic Location in the Mark:
Here, the attached evidence from applicant’s website shows that the coffee is picked by farmers in the Araku valley and is grown in the highlands of the Araku valley. Accordingly, it is presumed that the goods originate in ARAKU.
Goods/Place Association Presumed:
Applicant grows and collects coffee in Araku. Therefore, it can be presumed that consumers will presume the goods originate in Araku.
For all of the reasons discussed above, the primary significance of ARAKU in applicant’s mark is that of a geographic location. Further, the evidence of record establishes a goods/place association between applicant’s goods and ARAKU.
Given this, registration is hereby refused under Section 2(e)(2) of the Trademark Act.
ADVISORY – SUPPLEMENTAL REGISTER
THIS RESPONSE OPTION ONLY APPIES TO THE SECTION 2(e)(2) REFUSAL
Although an amendment to the Supplemental Register would normally be an appropriate response to this refusal, such a response is not appropriate in the present case. The instant application was filed under Trademark Act Section 1(b) and is not eligible for registration on the Supplemental Register until an acceptable amendment to allege use meeting the requirements of 37 C.F.R. §2.76 has been timely filed. 37 C.F.R. §2.47(d); TMEP §§816.02, 1102.03.
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.
IDENTIFICATION OF GOODS
The wording “coffee flavorings” is unacceptable as indefinite because applicant must specify the nature and use for the goods.
The wording “flour and preparations made from cereals” is unacceptable as indefinite because applicant must specify the nature of the preparations in Class 30.
The wording “confectionery” is unacceptable as indefinite because applicant must specify the nature of the confectionery.
The wording “sauces (condiments)” is unacceptable as indefinite because applicant must delete the parenthesis and incorporate the parenthetical language into the identification.
Applicant may adopt any or all of the following suggested amendment to the identification of goods:
- International Class 30: Coffee; artificial coffee; coffee essences; coffee extracts; decaffeinated coffee; ground coffee; iced coffee; instant coffee; unroasted coffee; Coffee, tea, cocoa and artificial coffee; caffeine-free coffee; coffee-based beverages; coffee flavorings being syrup used in making food and beverages; roasted coffee beans; vegetable preparations for use as coffee substitutes; tea; cocoa; rice; tapioca and sago; flour and preparations made from cereals being {specify specific nature of items in Class 30}; bread, pastry and confectionery being {specify nature of confectionery, i.e. frozen confectionery, confectionery made of sugar}; edible ices; sugar, honey, treacle; yeast, baking-powder; salt; mustard; vinegar, sauces as condiments; spices; Chocolates, Biscuits, Cakes
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.
RESPONSE GUIDELINES
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.
/Tara L. Bhupathi/
Examining Attorney
Law Office 124
(571) 272-5557
tara.bhupathi@uspto.gov
RESPONSE GUIDANCE