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:  November 05, 2020

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issue(s) below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF ISSUES:

• Section 2(d) Refusal – Likelihood of Confusion
• Amended Identification of Goods Required
• Multiple Class Application Requirements

 

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

 

Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4122204. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.

 

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 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)).

 

Standard of Analysis:

 

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.  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 applicant has applied to register the mark SAGE with design for the following goods:

 

• “Aerated beverage making machines; Beverage processing machines; Bottle capping machines for food and beverages; Bottle filling machines; Bread cutting machines; Can openers, electric; Coffee extracting machines; Components for machines and machine tools, grinding machines, material handling machines, food processing machines, chemistry processing machines and textile industry machines, namely, sand, chemical and reverse osmosis filters; Compressors as parts of machines, motors and engines; Compressors for dehumidifying machines; Cutting machines; Dish washing machines; Dish washing machines for household purposes; Dough kneading machines for household purposes; Egg brooders; Egg incubators; Electric bag sealers; Electric brooms; Electric can openers; Electric cherry pit removing machines; Electric coffee grinders; Electric compressors; Electric egg beaters; Electric flour sifters; Electric flour sifters for household use; Electric food blenders; Electric food blenders; Electric food choppers; Electric food grinders; Electric food grinders for household use; Electric food preparation apparatus, namely, tumblers for marinating food; Electric food processors; Electric fruit peelers; Electric fruit presses; Electric fruit presses for household use; Electric fruit squeezers for household purposes; Electric garlic peeling machines; Electric graters; Electric hand-held mixers for household purposes; Electric ice crushers; Electric ice crushing machines; Electric juice extractors; Electric juicers; Electric knife sharpeners; Electric knives; Electric meat grinders; Electric milk frothers; Electric mixers; Electric motors for machines; Electric pasta makers for domestic use; Electric pasta makers for household purposes; Electric pasta making machines; Electric pepper mills; Electric pizza cutters; Electric salt mills; Electric scissors; Electric spiral slicers; Electric vacuum food sealers for household purposes; Electric vegetable peelers; Electric whisks for household purposes; Electrical coffee grinders; Electrical juice extractors for fruit; Electrical squeezers for fruit and vegetable; Electrically-powered kitchen appliance for dicing, mincing, slicing and chopping food; Filters for coffee and espresso machines; Food processors, electric; Fruit core removing machines; Fruit presses, electric, for household purposes; Fruit washing machines; Grating machines for vegetables; Grinding tools for grinding machines; Hand-held electric-powered food processors; Juice extractors, electric; Kitchen machines, namely, electric standing mixers; Machines for making beverages from water; Machines for making carbonated beverages; Meat and food grinder attachments for electric mixers for household use; Milk filtering machines; Miso making machines; Multi-purpose steam cleaners; Multi-purpose, electric countertop food preparation apparatus, namely, a combination meat tenderizer and marinator, for household use; Non-aerated beverage making machines; Packaging machines for food; Pasta making machines, electric; Pepper mills, other than hand-operated; Power-operated angle grinders; Power-operated coffee grinders; Refrigerated vending machines; Salt and pepper mills, other than hand-operated; Sieves being machines; Soda-pop making machines; Tea processing machines; Vacuum cleaners for household purposes; Vegetable core removing machines; Vegetable grating machines; Vegetable spiralizers, electric; Wet-dry vacuums; Whisks, electric, for household purposes”.

 

The cited mark is as follows:

• SAGE SPOONFULS (in standard characters) in Registration No. 4122204 for “Electric handheld mixers for household use”.

 

Comparison of 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).

 

Applicant’s mark is SAGE with a font and color. The mark in Registration No. 4122204 is SAGE SPOONFULS in standard characters. While applicant’s mark does have a slight design and is missing a word present in the cited mark, the dominant element of both marks is identical and thus the differences do not obviate a likelihood of confusion between the marks.

 

First, regarding the font choice and color in applicant’s mark, these additions do not alter the overall impression of the mark from the literal element, SAGE. 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.  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)). This is especially true when, as is the case here, the design elements are merely a font and color choice. Nothing in either of these additions creates a unique perspective on the base word, SAGE, and thus they do not alter the commercial impression of the dominant, underlying literal element. Thus, the literal element in the mark, SAGE, is the dominant element in the mark.

 

Additionally, turning to the registered mark, SAGE is also the dominant element in this mark. Consumers are generally more inclined to focus on the first word in any trademark.  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”). Here, the shared term, SAGE, is the first term in the registered mark and thus the dominant element in the registered mark. Thus, applicant’s mark has the same dominant element as the registered mark.

 

Therefore, because applicant’s mark has an identical dominant element to the registered mark, applicant’s mark has a likelihood of confusion with the registered mark.

 

Comparison of the Goods:

 

The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels.  See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi). 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).

 

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)). 

 

Applicant has applied for various kitchen appliances including “electric hand-held mixers for household purposes”, “electric mixers”, “electric standing mixers”, and “electric food blenders. Registration No. 4122204 covers “electric handheld mixers for household use”.

 

In this case, the goods in the application and registration are identical in part. Applicant covers “electric hand-held mixers for household purposes” and the registration covers “electric handheld mixers for household use”. 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)). 

 

In this case, the application uses broad wording to describe electric mixers, which presumably encompasses all goods of the type described, including registrant’s more narrow “electric handheld mixers for household use”.  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 in part.  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 attached Internet evidence, establishes that the same entity commonly manufactures and provides hand mixers, stand mixers, and blenders and markets the goods under the same mark. See attached evidence from Hamilton Beach, Cuisinart, and KitchenAid. The attached evidence also shows that the relevant goods are sold through the same trade channels and used by the same classes of consumers in the same fields of use.  Thus, applicant’s and registrant’s goods are considered related as general kitchen and household appliances 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).

 

Conclusion:

 

The similarity between the applicant's mark and the registered mark, and the relatedness of the applicant's goods to the registrant’s goods, is so great as to create a likelihood of confusion. Thus, registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4122204. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.

 

Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. Applicant should also note the following requirements.

 

 

AMENDED IDENTIFICATION OF GOODS REQUIRED

 

Applicant is advised to delete or modify the duplicate entry in the identification of goods and/or services in International Class 007 for “electric food blenders.”  See generally TMEP §§1402.01, 1402.01(a).  If applicant does not respond to this issue, be advised that the USPTO will remove duplicate entries from the identification prior to registration.

 

If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Also, generally, any deleted goods may not later be reinserted.  TMEP §1402.07(e).

 

Additionally, he wording “filters for coffee and espresso machines” in the identification of goods for International Class 007 must be clarified because it is too broad and could include goods in other international classes.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, this wording could encompass “paper coffee filters” in class 016 or “coffee filters not of paper being part of electric coffee makers” in class 011.

 

Applicant may substitute the following wording, if accurate (changes in bold):

 

Class 007: Aerated beverage making machines; Beverage processing machines; Bottle capping machines for food and beverages; Bottle filling machines; Bread cutting machines; Can openers, electric; Coffee extracting machines; Components for machines and machine tools, grinding machines, material handling machines, food processing machines, chemistry processing machines and textile industry machines, namely, sand, chemical and reverse osmosis filters; Compressors as parts of machines, motors and engines; Compressors for dehumidifying machines; Cutting machines; Dish washing machines; Dish washing machines for household purposes; Dough kneading machines for household purposes; Egg brooders; Egg incubators; Electric bag sealers; Electric brooms; Electric can openers; Electric cherry pit removing machines; Electric coffee grinders; Electric compressors; Electric egg beaters; Electric flour sifters; Electric flour sifters for household use; Electric food blenders; Electric food choppers; Electric food grinders; Electric food grinders for household use; Electric food preparation apparatus, namely, tumblers for marinating food; Electric food processors; Electric fruit peelers; Electric fruit presses; Electric fruit presses for household use; Electric fruit squeezers for household purposes; Electric garlic peeling machines; Electric graters; Electric hand-held mixers for household purposes; Electric ice crushers; Electric ice crushing machines; Electric juice extractors; Electric juicers; Electric knife sharpeners; Electric knives; Electric meat grinders; Electric milk frothers; Electric mixers; Electric motors for machines; Electric pasta makers for domestic use; Electric pasta makers for household purposes; Electric pasta making machines; Electric pepper mills; Electric pizza cutters; Electric salt mills; Electric scissors; Electric spiral slicers; Electric vacuum food sealers for household purposes; Electric vegetable peelers; Electric whisks for household purposes; Electrical coffee grinders; Electrical juice extractors for fruit; Electrical squeezers for fruit and vegetable; Electrically-powered kitchen appliance for dicing, mincing, slicing and chopping food; Filters for coffee and espresso manufacturing machines; Food processors, electric; Fruit core removing machines; Fruit presses, electric, for household purposes; Fruit washing machines; Grating machines for vegetables; Grinding tools for grinding machines; Hand-held electric-powered food processors; Juice extractors, electric; Kitchen machines, namely, electric standing mixers; Machines for making beverages from water; Machines for making carbonated beverages; Meat and food grinder attachments for electric mixers for household use; Milk filtering machines; Miso making machines; Multi-purpose steam cleaners; Multi-purpose, electric countertop food preparation apparatus, namely, a combination meat tenderizer and marinator, for household use; Non-aerated beverage making machines; Packaging machines for food; Pasta making machines, electric; Pepper mills, other than hand-operated; Power-operated angle grinders; Power-operated coffee grinders; Refrigerated vending machines; Salt and pepper mills, other than hand-operated; Sieves being machines; Soda-pop making machines; Tea processing machines; Vacuum cleaners for household purposes; Vegetable core removing machines; Vegetable grating machines; Vegetable spiralizers, electric; Wet-dry vacuums; Whisks, electric, for household purposes

 

Class 011: Coffee filters not of paper being part of electric coffee makers

 

Class 016: Paper coffee and espresso filters; Paper filters for coffee and espresso makers

 

Class 021: Non-electric, pour over coffee filters not of paper for brewing coffee and espresso

 

Applicant may amend the identification to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended.  See 37 C.F.R. §2.71(a); TMEP §1402.06.  Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).

 

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.

 

 

MULTIPLE CLASS APPLICATION REUIREMENTS

 

The fee for adding classes to a TEAS Plus application is $225 per class.  See 37 C.F.R. §2.6(a)(1)(iv); TMEP §§819.03, 819.04.  For more information about adding classes to an application, see the Multiple-class Application webpage.

 

The application identifies goods and/or services in more than one international class; therefore, applicant must satisfy all the requirements below for each international class based on Trademark Act Section 1(b):

 

(1)        List the goods and/or services by their international class number in consecutive numerical order, starting with the lowest numbered class.

 

(2)        Submit a filing fee for each international class not covered by the fee already paid (view the USPTO’s current fee schedule).  The application identifies goods that are classified in at least four classes; however, applicant submitted a fee sufficient for only one class.  Applicant must either submit the filing fees for the classes not covered by the submitted fees or restrict the application to the number of classes covered by the fees already paid.

 

See 37 C.F.R. §2.86(a); TMEP §§1403.01, 1403.02(c).

 

For an overview of the requirements for a Section 1(b) multiple-class application and how to satisfy the requirements online using the Trademark Electronic Application System (TEAS) form, see the Multiple-class Application webpage.

 

 

RESPONDING TO THIS OFFICE ACTION

 

Response guidelines.  For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action.  For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above.  For a requirement, applicant should set forth the changes or statements.  Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.

 

Assistance. 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.    

 

/Carolyn R. Detmer/

Carolyn R. Detmer

Examining Attorney

Law Office 127

571-272-2722

carolyn.detmer1@uspto.gov

 

 

RESPONSE GUIDANCE

• 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.

 

United States Patent and Trademark Office (USPTO)

 

USPTO OFFICIAL NOTICE

 

Office Action (Official Letter) has issued

on November 05, 2020 for

U.S. Trademark Application Serial No. 90162191

 

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. 

 

 

/Carolyn R. Detmer/

Carolyn R. Detmer

Examining Attorney

Law Office 127

571-272-2722

carolyn.detmer1@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 November 05, 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.”