To: | QUANG NGAI SUGAR JOINT STOCK COMPANY (jhgreger@ipfirm.com) |
Subject: | U.S. Trademark Application Serial No. 90149840 - FAMI - 4560-014TM |
Sent: | January 05, 2021 09:23:48 AM |
Sent As: | ecom127@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90149840
Mark: FAMI
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Correspondence Address: |
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Applicant: QUANG NGAI SUGAR JOINT STOCK COMPANY
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Reference/Docket No. 4560-014TM
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: January 05, 2021
SUMMARY OF ISSUES
· Section 2(d) Refusal – Likelihood of Confusion In Part
· Prior Pending Application
· Identification Requirements
SECTION 2(D) REFUSAL – LIKELIHOOD OF CONFUSION IN PART
The following refusal pertains to International Class 030 ONLY.
Registration of the applied-for mark is refused in International Class 030 ONLY because of a likelihood of confusion with the mark in U.S. Registration No. 5056951. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
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.
Applicant’s applied-for mark is: “FAMI” for “Soya milk; buttercream; cheese; margarine; yoghurt; soya bean oil for food; soya beans, preserved, for food; rice milk”; “Chocolate-based beverages; cocoa-based beverages; coffee-based beverages; cereal preparations; soya flour; soya sauce; cereal-based snack food”; and “Non-alcoholic beverages; non-alcoholic fruit juice beverages; syrups for beverages; soya-based beverages, other than milk substitutes.”
The cited registered marks is Reg. No. 5056951: “FAMIASIA” for in relevant part, “Sugar; candy; breadcrumbs; biscuits; instant corn flakes being process cereal; oat-based food, namely, oat based cereal bars; cereal based snack food; rice based snack food; cakes; sushi; spring rolls; glutinous rice cake; sweetened bean paste; steamed bread; instant rice; dumplings; steamed stuffed buns stuffed with minced meat, primarily meat with vegetables; cereal products, namely, cereal bars, breakfast cereals, processed cereals; macaroni; fine dried noodles; instant noodle; spring roll rice wrapper; noodles; rice-flour noodles; crispy rice; rice cracker; soya flour; vermicelli; prawn cracker; ice cream powder; vinegar; sauces as condiments; soya sauce; flavoring sauce; seasonings; soya bean paste as condiment; flavorings other than essential oils for cakes and beverages; curry powder; spices; mustard meal; tomato sauce; mayonnaise; dressings for salad; Indian chutneys, meat gravies; [ fermented soybean paste; ] oyster sauce; fish sauce; chicken essence as condiment sauce; chilli oil for use as a seasoning or condiment; gourmet seasoning powder; leaven being yeast.”
COMPARISON OF 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, applicant’s mark is “FAMI” and the registered mark is “FAMIASIA”. As such, the applicant’s mark is entirely incorporated within the registrant’s mark. Moreover, the dominant portion of the registrant’s mark, “FAMI”, is identical to the applicant’s mark.
Moreover, where the goods of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b).
Based on the foregoing, the applicant’s applied-for and registrant’s marks are sufficiently similar to find a likelihood of confusion.
COMPARISON OF GOODS
When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)).
In this case, the goods in the application and registration are identical in part. Specifically, both the application and registration include cereal based snack food, soya flour, and soya sauce. Therefore, it is presumed that the channels of trade and class of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods are related.
Based on the analysis above, applicant’s and registrant’s goods in International Class 030 are identical in part. As the goods are identical in part and the marks are confusingly similar, registration is refused in International Class 030 in accordance with Section 2(d) of the Trademark Act.
PRIOR PENDING 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.
IDENTIFICATION REQUIREMENT
The wording “cereal preparations” in the identification of goods is indefinite and must be clarified because it is unclear what type of cereal preparations the goods are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
The wording “non-alcoholic beverages” in the identification of goods is indefinite and must be clarified because it is unclear what type of non-alcoholic beverages the goods are. See 37 C.F.R. §2.32(a)(6); TMEP §1402.01.
Applicant may substitute the following wording, if accurate:
International Class 029, “Soya milk; buttercream icing; cheese; margarine; yoghurt; soya bean oil for food; soya beans, preserved, for food; rice milk.”
International Class 030, “Chocolate-based beverages; cocoa-based beverages; coffee-based beverages; cereal preparations, namely, cereal based snack foods; soya flour; soya sauce; cereal-based snack food
International Class 032, “Non-alcoholic carbonated beverages; non-alcoholic fruit juice
beverages; syrups for beverages; soya-based beverages, other than milk substitutes.”
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.
CONCLUSION
Please call or email the assigned trademark examining attorney with questions about this Office action. Although an examining attorney cannot provide legal advice, the examining attorney can provide additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06.
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.
/Justin R. Moscati/
Justin R. Moscati
Attorney Examiner
Law Office 127
(571) 272-6305
justin.moscati@uspto.gov
RESPONSE GUIDANCE