To: | QUANG NGAI SUGAR JOINT STOCK COMPANY (jhgreger@ipfirm.com) |
Subject: | U.S. Trademark Application Serial No. 90149840 - FAMI - 4560-014TM |
Sent: | April 04, 2022 02:21:28 PM |
Sent As: | ecom127@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. 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: April 04, 2022
INTRODUCTION
In a previous Office action dated January 5, 2021, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark in International Class 030. In addition, applicant was required to satisfy the following requirement: amend the identification of goods and/or services.
On July 9, 2021, action on this application was suspended pending the disposition of U.S. Application Serial No. 90132802 . The referenced prior-pending application has since registered. Therefore, registration is refused as follows.
SUMMARY OF ISSUES
SECTION 2(D) REFUSAL – LIKELIHOOD OF CONFUSION IN PART INTERNATIONAL CLASS 029
The following refusal applies to International Class 029 ONLY.
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.”
The cited registered marks is Reg. No. 6466976: “FAMILAC” for “Dried Whey; Yogurt containing fruit; Yogurt drink; Yogurt; Dairy-based spreads; Dairy-based food beverages; Lactobacillus fermented cheese; Lactobacillus milk powder for food purposes; Sour milk; Fermented milk; Lactose-free milk; Milk-based energy drinks; Whey; Dairy-based spreads; Dairy-based beverages; all excluding infant formula, nutritional supplements, and food for babies.”
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, the applied-for mark, “FAMI” is completely subsumed by the registered mark, “FAMILAC”. As a result, the marks appear similar, have similar sound, and similar connotation and overall commercial impression.
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
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 cheese, which presumably encompasses all goods of the type described, including registrant’s more narrow Lactobacillus fermented cheese. Moreover, the registration also uses broad wording to describe lactose free milk, which presumably encompasses all goods of the type described, including applicant’s soya milk and rice milk. 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)).
In this case, the goods in the application and registration are identical, in part, namely, yogurt and yoghurt. Therefore, it is presumed that the channels of trade and class of purchasers are the same for these goods and/or services. 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 are related. As the goods are identical in part and legally identical, and the marks are confusingly similar, registration is refused in accordance with Section 2(d) of the Trademark Act.
SECTION 2(D) REFUSAL – LIKELIHOOD OF CONFUSION IN PART INTERNATIONAL CLASS 030 MAINTAINED AND CONTINUED
The Section 2(d) Refusal in International Class 030 is maintained and continued.
IDENTIFICATION REQUIREMENTS MAINTAINED AND CONTINUED
The identification requirements are maintained and continued.
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