To: | Vivid Supplements LLC (madanlawpllc@gmail.com) |
Subject: | U.S. Trademark Application Serial No. 90235688 - VIVID - N/A |
Sent: | February 16, 2021 03:30:04 PM |
Sent As: | ecom122@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90235688
Mark: VIVID
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Correspondence Address:
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Applicant: Vivid Supplements LLC
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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: February 16, 2021
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
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 and differences in the marks.”); TMEP §1207.01.
COMPARISON OF THE MARKS
Applicant’s mark is VIVID (in standard character form).
Registrant’s mark (for U.S. Registration No. 4689811) is VIVID FRUIT (also in standard character form).
The respective marks, VIVID and VIVID FRUIT, are confusingly similar. Both these marks begin with the identical dominant wording VIVID. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
In this instance, VIVID and VIVID FRUIT are confusingly similar and create the same overall impression because the marks are identical in part and the differences between them are slight, and do not overcome a likelihood of confusion. Specifically, the deletion of the word VIVID the applied-for mark does not alter the overall shared commercial impression 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.
Consumers are also more inclined to focus on the first word VIVID in registrant's marks because FRUIT is highly descriptive of or generic for registrant’s goods and has in fact been disclaimed by registrant. 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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
Thus, the wording FRUIT is less significant in terms of affecting the registered mark's commercial impression, and renders the wording VIVID the more dominant element of the mark.
As a result, the dominant portions of the marks are VIVID (in the applied-for mark) and VIVID (in U.S. Registration No. 4689811), which are confusingly similar.
For these reasons, the marks are confusingly similar.
COMPARISON OF GOODS
The applicant's goods are identified as “Concentrates for use in the preparation of energy drinks; Concentrates, syrups or powders used in the preparation of sports and energy drinks; Energy drinks; Energy drinks enhanced with nootropics, nutritional supplements, caffeine and caffeine derivatives, electrolytes, amino acids, herbal extracts, micronutrients, vitamins, minerals, or nutrients; Sports drinks; Non-alcoholic drinks, namely, energy shots”
Registrant’s goods (for U.S. Registration No. 4689811) are identified as “Dietary supplement drink mixes; Nutritional supplement in the nature of a nutrient-dense, protein-based drink mix”
The Internet Evidence of Relatedness
The attached Internet evidence consists of screenshots from the following third party manufacturer and retailer websites:
http://mytrusource.com (makes goods such as or similar to applicant’s and registrant’s recited mixes, drinks, and concentrates)
http://www.gatorade.com/ (makes goods such as or similar to applicant’s and registrant’s recited mixes, drinks, and concentrates)
http://www.melaleuca.com (makes and/or provides at retail goods such as or similar to applicant’s and registrant’s recited mixes, drinks, and concentrates)
This evidence establishes that the same entity commonly manufactures, produces, or provides the relevant goods and markets the goods under the same mark; and that 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. 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).
In summary, the applicant’s and registrant’s marks create the same commercial impression and the respective goods are legally identical and/or highly related. Therefore, consumers are likely to be confused and mistakenly believe that these goods originate from a common source.
COMMUNICATIONS
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.
/Paul Ferrer/
Trademark Examining Attorney
Law Office 122
Tel: (571) 272-7379
Paul.Ferrer@uspto.gov
RESPONSE GUIDANCE