United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 90254329
Mark: AMAZON
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Correspondence Address:
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Applicant: AL ATHEED GENERAL TRADING L.L.C
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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: March 22, 2021
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
· Refusal under Section 2(d) – Likelihood of Confusion
· Domicile requirement
· Description of the Mark and Color Claim amendment required
· Transliteration amendment required
· Request for Information
· Notice of prior pending applications
Section 2(d) – 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 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.
The applicant’s mark is AMAZON with design for “Eggs; Milk; Edible oils and fats; Jellies, jams, compotes; Meat extracts; Meat, fish, poultry and game, not live; Milk products excluding ice cream, ice milk and frozen yogurt; Preserved, frozen, dried and cooked fruits and vegetables”; “Bread; Flour; Ice; Mustard; Noodles; Pastry; Rice; Salt; Sauces; Spices; Vinegar; Coffee, tea, cocoa and artificial coffee; Confectionery made of sugar; Confectionery made of sugar substitutes; Honey and treacle; Preparations made from cereals, namely, cereal based snack food; Tapioca and sago; Yeast, baking-powder”; and “Beers; Fruit beverages; Fruit juices; Mineral and aerated water; Non-alcoholic water-based beverages also containing herbal and fruit extracts; Syrups for making beverages”
The registrant’s marks are AMAZON PEPPER for “red pepper sauce; chili pepper sauce; dehydrated red pepper; and dehydrated chili pepper”; AMAZON with design for “Red sauce, Green sauce, Mango sauce, Habanero sauce, Chipotle sauce, Sweet chili sauce, Guava sauce, Buffalo wing sauce, Sriracha sauce, Barbeque ripe dried jalapeno sauce, Crushed pizza food seasoning, Encurti sauce”; AMAZON with design for “processed peppers in vinegar; pepper sauces”; AMAZON with design for “jelly; preserved fruits and vegetables; sauces, ketchup; salad dressings; relishes”
The registrant’s marks are AMAZON SUPERFOOD for “non alcoholic fruit based beverages” and AMAZON SUPERFOODS for “fruit purees; sorbets; non alcoholic fruit based beverages” and AMAZON ENERGY for “non alcoholic fruit beverages”.
The registrant’s marks are AMAZON HEALTH PRODUCTS for “chocolate and caramel used as dips; dehydrated fruit snacks; dried fruit mixes; dried fruits; dried fruits in powder form; nuts in powdered form; dried fruit-based snacks; freeze-dried fruits; fruit chips; fruit pulps; fruit-based organic food bars; fruit-based organic food bars; fruit-based snack food; fruit-based spreads; non-alcoholic fruit extracts for use as ingredients of nutritional supplements and vitamins; nut and dried fruit based snack bars; snack mix consisting primarily of processed fruits; processed nuts and/or raisins; snack mix consisting of dehydrated fruit and processed nuts; snack mix consisting primarily of processed nuts, seeds, dried fruit, and chocolate; snack mix consisting primarily of processed nuts; trail mix consisting primarily of processed nuts, seeds, dried fruit and also including chocolate; trail mix consisting primarily of processed nuts; milk powder; dried vegetables in powder form”; and AMAZON HEALTH PRODUCTS for “Edible oil, namely, sacha inchi oil; Cooking oil, Edible oils and edible fats, roasted nuts; Roasted nuts, namely, sacha inchi nuts; Powdered oils and fats for food, Vegetable oils, Vegetable oils and fats for food, Chocolate nut butter, Dips excluding salsa and other sauces”
The registrant’s mark is AMAZON SUPER LEAF for “tea and beverages made from tea; energy drinks; energy drinks containing nutritional supplements”
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).
Here the applicant’s mark is AMAZON with non-Latin characters that transliterate to the same wording. All of the registrant’s marks contain AMAZON as the first or only term in the marks. 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).
While some of the registrants’ marks contain additional wording, it is descriptive or generic of the goods. 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 and/or services 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). This renders AMAZON the more dominant portion of the marks.
Lastly, while some of the marks contain design elements, 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 and/or services. 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)).
Given the above, it is likely that the goods sold under these marks would be attributed to the same source, and thus, the marks are confusingly similar.
The Goods/Services
The applicant’s mark is AMAZON with design for “Eggs; Milk; Edible oils and fats; Jellies, jams, compotes; Meat extracts; Meat, fish, poultry and game, not live; Milk products excluding ice cream, ice milk and frozen yogurt; Preserved, frozen, dried and cooked fruits and vegetables”; “Bread; Flour; Ice; Mustard; Noodles; Pastry; Rice; Salt; Sauces; Spices; Vinegar; Coffee, tea, cocoa and artificial coffee; Confectionery made of sugar; Confectionery made of sugar substitutes; Honey and treacle; Preparations made from cereals, namely, cereal based snack food; Tapioca and sago; Yeast, baking-powder”; and “Beers; Fruit beverages; Fruit juices; Mineral and aerated water; Non-alcoholic water-based beverages also containing herbal and fruit extracts; Syrups for making beverages”
The applicant and registrant both use the marks in connection with sauces, jelly, and preserved fruits and vegetables.
The applicant and registrant both use the marks in connection with fruit beverages.
The applicant and registrant both use the marks in connection with dried fruits and vegetables, and edible oils and fats.
The applicant and registrant both use the marks in connection with tea.
In this case,
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.
Given the above, confusion as to source is likely and therefore, registration is refused under Trademark Act Section 2(d) based on a likelihood of confusion.
Domicile Requirement
An individual applicant’s domicile is the place a person resides and intends to be the person’s principal home. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. A juristic entity’s domicile is the principal place of business, i.e., headquarters, where a juristic entity applicant’s senior executives or officers ordinarily direct and control the entity’s activities. 37 C.F.R. §2.2(o); Examination Guide 4-19, at I.A. An applicant whose domicile is located outside of the United States or its territories is foreign-domiciled and must be represented at the USPTO by a U.S.-licensed attorney qualified to practice before the USPTO under 37 C.F.R. §11.14. 37 C.F.R. §2.11(a).
The application record lists applicant as a juristic entity and specifies applicant’s domicile as a post office box or mail forwarding service instead of a street address. In most cases, a post office box or mail forwarding service is not acceptable as a domicile address because it does not identify the location of applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. See37 C.F.R. §§2.2(o)-(p), 2.189; Examination Guide 4-19, at I.A.3. Thus, applicant must provide its domicile street address. See 37 C.F.R. §2.189. Alternatively, an applicant may demonstrate that the listed address is, in fact, the applicant’s domicile. Examination Guide 4-19, at I.A.3.
To provide documentation supporting applicant’s domicile. Open the correct TEAS response form and enter the serial number, answer “yes” to wizard question #3, and on the “Additional Statement(s)” page, below the “Miscellaneous Statement” field, click the button below the text box to attach documentation to support the address.
To provide applicant’s domicile street address. After opening the correct TEAS response form and entering the serial number, answer “yes” to wizard question #5, and provide applicant’s street address on the “Owner Information” page. Information provided in the TEAS response form will be publicly viewable.
If applicant wants to hide its domicile address from public view because of privacy or other concerns, applicant must have a mailing address that can be made public and differs from its domicile address. In this case, applicant must follow the steps below in the correct order to ensure the domicile address will be hidden:
(1) First submit a TEAS Change Address or Representation (CAR) form. Open the form, enter the serial number, click “Continue,” and
(a) Use the radio buttons to select “Attorney” for the role of the person submitting the form;
(b) Answer “Yes” to the wizard question asking, “Do you want to UPDATE the mailing address, email address, phone or fax number(s) for the trademark owner/holder?” and click “Continue;”
(c) On the “Owner Information” page, if the previously provided mailing address has changed, applicant must enter its new mailing address in the “Mailing Address” field, which will be publicly viewable;
(d) On the “Owner Information” page, uncheck the box next to “Domicile Address” and enter the new domicile address in the text box immediately below the checkbox.
(2) Then submit a TEAS response form to indicate the domicile address has been changed. Open the form and
(a) Answer “yes” to wizard question #3 and click “Continue;”
(b) Click on the “Miscellaneous Statement” box on the “Additional Statement(s)” page, and enter a statement in the text box immediately below the checkbox that the domicile address was previously changed in the CAR form.
Description of the Mark amendment required
Generic color names must be used to describe the colors in the mark, e.g., red, yellow, blue. TMEP §807.07(a)(i)-(ii). If black, white, and/or gray represent background, outlining, shading, and/or transparent areas and are not part of the mark, applicant must so specify in the description. See TMEP §807.07(d).
Applicant must also submit an amended description of the mark because the current one is incomplete and does not describe all the significant aspects of the mark. 37 C.F.R. §2.37; see TMEP §§808.01, 808.02. Descriptions must be accurate and identify all the literal and design elements in the mark. See 37 C.F.R. §2.37; TMEP §§808 et seq.
Lastly, the applicant must provide an amended color claim that references all the colors in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq. Specifically, the following colors have been omitted: white. A complete color claim must list all the colors appearing in the drawing of the mark. See 37 C.F.R. §2.52(b)(1); TMEP §§807.07(a) et seq.
The following color claim is suggested: “The colors black, gold and white are claimed as a feature of the mark.”
The following description is suggested, if accurate:
“The mark consists of the stylized wording "AMAZON" outlined in white and outlined in black. A design with crossed set of curled lines, gold on the left and black on the right appears above Arabic characters in shades of gold above the wording AMAZON. Two gold and white leaves in the form of a “V” appear both above the first Arabic character on the left and in the center of the “O” in AMAZON. The entire mark appears on a white background.
Transliteration amendment required
Here, the applicant has indicated that the non-Latin characters transliterate to “AMAZON”. However, the wording transliterates to “AL-AMAZON”. See attached.
The applicant should use the following format, if accurate: The non-Latin characters in the mark transliterate to “AL-AMAZON” and this means “The Amazon” in English. TMEP §809.03.
Request for Information
As part of this information, applicant must answer the following questions:
Factual information about the goods must clearly indicate how they operate, their salient features, and their prospective customers and channels of trade. Factual information about the services must clearly indicate what the services are and how they are rendered, their salient features, and their prospective customers and channels of trade. Conclusory statements will not satisfy this requirement for information.
Failure to comply with a request for information is grounds for refusing registration. In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814. Merely stating that information about the goods or services is available on applicant’s website is an insufficient response and will not make the relevant information of record. See In re Planalytics, Inc., 70 USPQ2d 1453, 1457-58 (TTAB 2004).
Prior Pending Applications
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 marks in the referenced applications. 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.
General Response Information
How to respond. Click to file a response to this nonfinal Office action.
/Andrea Butler/
Trademark Attorney
Law Office 124
571-272-7491
andrea.butler@uspto.gov
RESPONSE GUIDANCE
