To: | Beyond Meat, Inc. (ipprosecution@orrick.com) |
Subject: | U.S. Trademark Application Serial No. 90256631 - BEYOND CHEESE - 26074.6090 |
Sent: | December 17, 2020 09:57:38 AM |
Sent As: | ecom106@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. 90256631
Mark: BEYOND CHEESE
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Correspondence Address: BETSY W. LEE & KRISTIN S. CORNUELLE ORRICK, HERRINGTON & SUTCLIFFE LLP
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Applicant: Beyond Meat, Inc.
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Reference/Docket No. 26074.6090
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: December 17, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues 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
Applicant has applied to register the mark “BEYOND CHEESE” for “Cheese substitutes; non-dairy cheese; plant-based cheese substitutes” in International Class 29.
The cited registration is:
Registration No. 5675504 “BEYOND CHEESE” for “Dairy free, vegan, gluten free, and lactose free cheeses; Plant based cheese alternatives made primarily of nuts, processed beans, and/or processed seeds; Vegetarian and vegan cheese products, namely, cheese food in the form of dips, cheese powder, cheese spreads, crumbled cheese, grated cheese, diced cheese, sliced cheese, soft cheese, melting cheese, cheddar cheese substitutes, mozzarella cheese substitutes, parmesan cheese substitutes, Emmental cheese substitutes, herb cheese substitutes, and smoked cheese substitutes; Cheese substitutes; Cream cheese; Pizza cheese” in International Class 29.
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.
Comparison of Marks
In the present case, applicant’s mark is BEYOND CHEESE and registrant’s mark is BEYOND CHEESE. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id.
Therefore, the marks are confusingly similar.
Comparison of Goods
In this case, the goods in the application and registration(s) are identical. Therefore, it is presumed that the channels of trade and class(es) 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)).
Here, applicant’s goods “cheese substitutes” are identical to the registrant’s “cheese substitutes” 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 “plant-based cheese substitutes”, which presumably encompasses all goods of the type described, including registrant’s narrower list of goods, “plant based cheese alternatives made primarily of nuts, processed beans, and/or processed seeds”. 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). Furthermore, the registration uses broad wording to describe “dairy free, vegan, gluten free, and lactose free cheeses”, which presumably encompasses all goods of the type described, including applicant’s narrower list of goods, “non-dairy cheese”. Id. 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)).
Therefore, since the marks are identical and the goods are identical and legally identical, there is a likelihood of confusion and registration must be refused.
DISCLAIMER REQUIREMENT
Applicant must disclaim the wording “CHEESE” because it is merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods. See 15 U.S.C. §1052(e)(1); DuoProSS Meditech Corp. v. Inviro Med. Devices, Ltd., 695 F.3d 1247, 1251, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); TMEP §§1213, 1213.03(a).
This wording appears in applicant’s identification of goods. Thus, the wording merely describes a characteristic of applicant’s goods in that the goods imitate cheese.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “CHEESE” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
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.
How to respond. Click to file a response to this nonfinal Office action.
/Marcya N. Betts/
/Marcya N. Betts/
Examining Attorney
Law Office 106
(571) 272-4913
Marcya.Betts@uspto.gov
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