United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 90306455
Mark: H!TEA H!
|
|
|
Correspondence Address:
|
|
|
Applicant: Fei Wu
|
|
|
Reference/Docket No. N/A
Correspondence Email Address: |
|
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 09, 2021
In accordance with the authorization granted by (Kevin) Fei Wu on February 1, 2021, the application has been amended as indicated below. TMEP § 707.
If the identification of goods or services has been amended, please note that any future amendments must be in accordance with Trademark Rule of Practice 2.71(a), 37 C.F.R. § 2.71(a) (2020), and TMEP § 1402.06–.07. See TMEP § 1402.07(e).
The amended description statement of the mark in the Response is further amended, as follows:
The mark consists of the design of a hand gripping a half-filled mason jar with an inserted drinking straw and bearing the stylized wording "H!", and the stylized wording "H!TEA" below the design.
37 C.F.R. § 2.37; TMEP §§ 707.02, 808.
Applicant has authorized the following amendment:
International Class 43:
Bubble tea shops; Tea shops; Boba shops; Coffee shops; Milk tea shops; providing and serving a variety of drinks and beverages.
TMEP § 1402.01(e).
This correspondence details the following bases for refusing advancement of this application:
1. There are registered marks that bar registration of the subject mark of this application;
2. There is one potentially conflicting subject mark of prior-filed pending application that may ultimately additionally bar registration
Applicant filed this application on November 9, 2020, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based on its use of the mark “H!TEA” (and “H!”-design) to identify the source of, as amended, “Bubble tea shops; Tea shops; Boba shops; Coffee shops; Milk tea shops; providing and serving a variety of drinks and beverages” in International Class 43.
Registration of the proposed mark is refused, pursuant to Section 2(d), because of likely confusion with the subject marks of U.S. Registration No. 6112083, issued on July 28, 2020, and U.S. Registration No. 4335174, issued on May 14, 2013 (copies are attached hereto). Id. § 1052(d); see TMEP § 1207.01.
Section 2(d) is the statutory prohibition against registration when an applied-for mark so resembles a registered mark that it is likely, when applied to the relevant goods or services, to cause confusion, mistake or to deceive the potential consumer as to the source of the goods or services. 15 U.S.C. § 1052(d); see TMEP § 1207.01. In re E. I. du Pont de Nemours & Company sets forth the principal factors, considered on a case-by-case basis, in determining whether one mark is likely to cause confusion with another mark. 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973). The focus of a likelihood of confusion analysis should be the most dispositive DuPont factors, which in ex parte prosecutions are generally the similarities of the marks, the first DuPont factor, the relatedness of the goods or services, the second DuPont factor, and the similarity of the trade channels, the third DuPont factor. In re Mighty Leaf Tea, 601 F.3d 1342, 1346, 94 U.S.P.Q.2d 1257, 1259 (Fed. Cir. 2010). In such cases, likely confusion is often determined by comparing the marks for similarities in appearance, sound, connotation and commercial impression, and by comparing the goods or services to determine whether they are similar or related, or whether the activities surrounding their marketing are such that confusion as to origin is likely. See, e.g., In re Aquamar, Inc., 115 U.S.P.Q.2d 1122 (TTAB 2015); see TMEP § 1207.01.
As the cited registrations are owned by different registrants, and the refusals pertain to different points of analysis, the determinations for reaching this refusal are addressed separately.
The first cited registered mark is “HI-TEA” used to indicate the source of “Boba shops; Bubble tea shops; Coffee bars; Coffee shops; Restaurant and café services; Tea bars; Tea rooms.”
For purposes of determining the strength of the second DuPont factor for Section 2(d) analysis, likely confusion is determined based on the goods or services as they are identified in the application and the registration. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973); see, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 U.S.P.Q.2d 1047, 1052 (Fed. Cir. 2018).
Here, the comparison is between the following:
Services in this application, as amended:
Bubble tea shops; Tea shops; Boba shops; Coffee shops; Milk tea shops; providing and serving a variety of drinks and beverages;
Services in Registration No. 6112083:
Boba shops; Bubble tea shops; Coffee bars; Coffee shops; Restaurant and café services; Tea bars; Tea rooms.
The identified “Bubble tea shops,” “Boba shops,” and “Coffee shops” are explicitly listed in both the application and the cited registration. In this regard, these services are legally identical for relatedness purposes.
Where the services in the application at issue or in the cited registration are broadly identified as to their nature and type, without restrictions as to the channels of trade and limitations as to the classes of purchasers, it is presumed that the scope the of the services encompasses all services of the nature and type described, and that the identified services are offered in all normal channels of trade, and to all potential purchasers. In re Solid State Design Inc., 125 U.S.P.Q.2d 1409, 1412-15 (TTAB 2018); In re Elbaum, 211 U.S.P.Q. 639, 640 (TTAB 1981); see TMEP § 1207.01(a)(iii).
Here, the identified services of “providing and serving a variety of drinks and beverages” in this application encompasses the identified “Boba shops; Bubble tea shops; Coffee bars; Coffee shops; Tea bars; Tea rooms” in the cited registration, and the identified “Restaurant and café services” in the cited registration encompasses all of the identified services in this application. In this regard, the respective services are legally identical for relatedness purposes.
Where the services are legally identical, it must be presumed that the channels of trade and classes of purchasers are the same. In re Viterra Inc., 671 F.3d 1358, 101 U.S.P.Q.2d 1905, 1908 (Fed. Cir. 2012); In re Smith & Mehaffey, 31 U.S.P.Q.2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers.”); see TMEP § 1207.01(a)(iii).
Moreover, under the second DuPont factor, it is not necessary to prove relatedness as to each and every activity listed in the description of services. It is sufficient for a refusal based on likelihood of confusion that relatedness is established for any activity encompassed by the identification of services in a particular class in the application. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 U.S.P.Q. 986, 988 (C.C.P.A. 1981); In re i.am.symbolic, llc, 116 U.S.P.Q.2d 1406, 1409 (TTAB 2015); Inter IKEA Sys. B.V. v. Akea, LLC, 110 U.S.P.Q.2d 1734, 1745 (TTAB 2014).
In view of the foregoing analysis, the respective services are sufficiently related to cause likely confusion as to their source in the minds of the consuming public if offered under the same or similar marks, and thus, the legal test for relatedness of the services, the second DuPont factor, and the test regarding established, likely-to-continue trade channels, the third DuPont factor, both favor a finding of likelihood of confusion.
For purposes of determining the strength of the first DuPont factor for Section 2(d) analysis, the similarity or dissimilarity of the marks is determined by focusing on the appearance, sound, connotation and commercial impression of the marks in their entirety. Stoncor Group, Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1331, 111 U.S.P.Q.2d 1649, 1651 (Fed. Cir. 2014). The respective marks must be considered in light of the fallibility of human memory and not based on a side-by-side comparison. In re St. Helena Hosp., 774 F.3d 747, 751, 113 U.S.P.Q.2d 1082, 1085 (Fed. Cir. 2014). “The proper perspective on which the analysis must focus is on the recollection of the average customer, who retains a general rather than specific impression of marks.” In re i.am.symbolic, llc, 127 U.S.P.Q.2d 1627, 1630 (TTAB 2018); TMEP § 1207.01(b). In addition, in comparisons such as this one, when the “marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 877, 23 U.S.P.Q.2d 1698, 1701 (Fed. Cir. 1992).
In the comparison analysis, while marks must be compared in their entireties, literal portions are generally the dominant and most significant features of marks comprised of literal and design elements, because consumers will call for the goods or services in the marketplace by referencing literal elements of the mark. E.g., CBS Inc. v. Morrow, 708 F.2d 1579, 1581, 218 U.S.P.Q. 198, 200 (Fed. Cir. 1983) (finding minor designs insufficient to obviate likely confusion); In re Dakin’s Miniatures, Inc., 59 U.S.P.Q.2d 1593, 1596 (TTAB 1999) (“In the case of marks which consist of words and a design, the words are normally accorded greater weight because they would be used by purchasers to request the goods.”). “Similarity in sound alone may be sufficient for a finding of likelihood of confusion.” In re 1st USA Realty Prof’ls Inc., 84 U.S.P.Q.2d 1581, 1586 (TTAB 2007). “The principle is especially important in cases involving restaurant services in view of the propensity of persons to try restaurants based on word-of-mouth recommendations.” In re Appetito Provisions Co., 3 U.S.P.Q.2d 1553, 1554 (TTAB 1987).
In this comparison, the marks resemble each other. First, and most significantly, the marks share the identical literal phrase “HI TEA.” While Applicant’s mark displays the letter “i” in an upside down manner as an exclamation point, the relevant purchaser would still see and think “HI TEA.” See B.V.D. Licensing Corp. v. Body Action Design, Inc., 846 F.2d 727, 6 U.S.P.Q.2d 1719, 1721 (Fed. Cir. 1988) (“The purchasing public, we believe, does not indulge in such recognitional contortions but sees things as they are. It will not read an A for a V and, seeing an A between a B and a D will react to it as the common word "bad," not as a copy or simulation or suggestion of the well-known mark B.V.D.”); In re Johnson Prods. Co., 220 U.S.P.Q. 539, 540 (TTAB 1983) ("It is undeniable that if the mark is carefully examined, the two overlapping 'S's can be discerned. What is more significant, however, is that this sort of studied analysis of the mark is unlikely to occur in the marketplace where these products are sold."). Thus, “H!TEA” and “HI-TEA” would share the same meaning or connotation to the relevant public.
Second, the phrase “HI-TEA” forms the entirety of the subject mark of Registration No. 6112083, and this fact is critical in this analysis, as Applicant’s proposed mark incorporates the cited registered mark entirely. Likelihood of confusion has frequently been found where one mark incorporates the entirety of another mark. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 U.S.P.Q.2d 1257, 1260 (Fed. Cir. 2010) (“ML” for personal care and skin care products and “ML MARK LEES” for skin care products); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 U.S.P.Q. 105, 106 (C.C.P.A. 1975) (“BENGAL” for gin and “BENGAL LANCER” for nonalcoholic club soda, quinine water and ginger ale); In re Toshiba Med. Sys. Corp., 91 U.S.P.Q.2d 1266, 1269 (TTAB 2009) ( “VANTAGE TITAN” for MRI diagnostic apparatus and “TITAN” for medical ultrasound device); In re U.S. Shoe Corp., 229 U.S.P.Q. 707 (TTAB 1985) (“CAREER IMAGE” for women's clothing stores and women's clothing and “CREST CAREER IMAGES” for uniforms); In re S. Bend Toy Mfg. Co., 218 U.S.P.Q. 479, 480 (TTAB 1983) (“LIL’ LADY BUG” for toy doll carriages and “LITTLE LADY” for doll clothing); Helga, Inc. v. Helga Howie, Inc., 182 U.S.P.Q. 629, 630 (TTAB 1974) (“HELGA” for women’s clothing and “HELGA HOWIE” for women’s clothing); In re Hepperle, 175 U.S.P.Q. 512, 512 (TTAB 1972) (“ACAPULCO GOLD” for suntan lotion and “ACAPULCO” for lipstick and powder). Thus, Applicant has appropriated this registered mark into its proposed mark. See In re Jump Designs LLC, 80 U.S.P.Q.2d 1370, 1375 (TTAB 2006) (“The general rule is that a subsequent user may not appropriate the entire mark of another and avoid a likelihood of confusion by adding descriptive or subordinate matter thereto.”).
Third, as to appearance, while the cited registered mark has a hyphen between the terms “HI” and “TEA” and Applicant’s proposed mark is displayed in compound form. However, it is well-settled law that in a comparison of marks determination, “the presence or absence of a hyphen is insignificant.” Nahshin v. Prod. Source Int'l LLC, 107 U.S.P.Q.2d 1257, 1258 n.2 (TTAB 2013); see, e.g., Mag Instrument Inc. v. Brinkmann Corp., 96 U.S.P.Q.2d 1701, 1712 (TTAB 2010) (finding “MAGNUM” and “MAG-NUM” to be essentially identical).
Further as to appearance, Applicant’s proposed mark, H!TEA, is a special form mark consisting of this wording and the design of a hand gripping a half-filled mason jar with an inserted drinking straw and bearing the stylized wording "H!". The cited registered mark, HI-TEA, is presented entirely in standard character form. The rights associated with a mark in standard characters reside in the wording and not in any particular display in terms of font, style, size or color. 37 C.F.R. § 2.52(a); see In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 U.S.P.Q.2d 1257, 1260 (Fed. Cir. 2010). Therefore, in actual use, the cited registered mark may be displayed in a same manner of font, style, color and size as the wording of the proposed mark of this application. In re Viterra Inc., 671 F.3d 1358, 1363, 101 U.S.P.Q.2d 1905, 1909 (Fed. Cir. 2012); In re Aquitaine Wine USA, LLC, 126 U.S.P.Q.2d 1181, 1186 (TTAB 2018).
Thus, the marks are more similar than dissimilar, particularly in the beverage providing industry, heavily known for patrons’ ubiquitous word-of-mouth marketing where similarity in sound is particularly significant.
In sum, Applicant’s mark sufficiently resembles the cited registered mark that, if used on the same or related services, confusion would be likely to occur.
Viewed in their entireties with the differences evaluated, the marks are similar in appearance, sound and meaning, and would create similar commercial impressions on the minds of purchasers. Thus, despite considering the differences of the respective marks, their similarities far outweigh the dissimilarities, based on guiding legal authority, and the rights vested in the registered mark. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 U.S.P.Q.2d 1001, 1003 (Fed. Cir. 2002). Therefore, the legal test for similarity of the marks, the first DuPont factor, favors a finding of likelihood of confusion.
Based on a determination that the marks are similar and the services are legally identical, and the presumption that the services move in the same channels of trade and are available to the same classes of consumers, Applicant’s mark is refused registration on the grounds of likely confusion with the above-cited registered mark.
Although the examining attorney has refused registration, Applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
The second cited registered mark is “HI-T,” used to indicate the source of “Non alcoholic organic hemp and tea based beverages.”
For purposes of determining the strength of the first DuPont factor for Section 2(d) analysis, the similarity or dissimilarity of the marks is determined by focusing on the appearance, sound, connotation and commercial impression of the marks in their entirety. Stoncor Group, Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 1331, 111 U.S.P.Q.2d 1649, 1651 (Fed. Cir. 2014). The respective marks must be considered in light of the fallibility of human memory and not based on a side-by-side comparison. In re St. Helena Hosp., 774 F.3d 747, 751, 113 U.S.P.Q.2d 1082, 1085 (Fed. Cir. 2014). “The proper perspective on which the analysis must focus is on the recollection of the average customer, who retains a general rather than specific impression of marks,” In re i.am.symbolic, llc, 127 U.S.P.Q.2d 1627, 1630 (TTAB 2018), such that “confusion as to the source of the goods offered under the respective marks is likely to result.” In re Davia, 110 U.S.P.Q.2d 1810, 1813 (TTAB 2014); see TMEP § 1207.01(b).
“[I]t has been consistently held that similarity in any one of the elements of sound, appearance or meaning is sufficient to indicate a likelihood of confusion.” RE/MAX of America, Inc. v. Realty Mart, Inc., 207 U.S.P.Q. 960, 964 (TTAB 1980); see TMEP § 1207.01(b). “Similarity in sound alone may be sufficient for a finding of likelihood of confusion.” In re 1st USA Realty Prof’ls Inc., 84 U.S.P.Q.2d 1581, 1586 (TTAB 2007). The Board has held this “especially true” where the application and registration are for goods and services that “may be referred to or recommended by word of mouth.” Id. (citing Miles Labs., Inc. v. Whorton Pharmacal Co., 199 U.S.P.Q. 758 (TTAB 1978)). Here, the relevant public is the general public interesting in tea-based beverages.
In the comparison analysis, while marks must be compared in their entireties, literal portions are generally the dominant and most significant features of marks comprised of literal and design elements, because consumers will call for the goods or services in the marketplace by referencing literal elements of the mark. E.g., CBS Inc. v. Morrow, 708 F.2d 1579, 1581, 218 U.S.P.Q. 198, 200 (Fed. Cir. 1983) (finding minor designs insufficient to obviate likely confusion); In re Dakin’s Miniatures, Inc., 59 U.S.P.Q.2d 1593, 1596 (TTAB 1999) (“In the case of marks which consist of words and a design, the words are normally accorded greater weight because they would be used by purchasers to request the goods.”). “Similarity in sound alone may be sufficient for a finding of likelihood of confusion.” In re 1st USA Realty Prof’ls Inc., 84 U.S.P.Q.2d 1581, 1586 (TTAB 2007). “The principle is especially important in cases involving restaurant services in view of the propensity of persons to try restaurants based on word-of-mouth recommendations.” In re Appetito Provisions Co., 3 U.S.P.Q.2d 1553, 1554 (TTAB 1987).
In this comparison, the marks resemble each other. First, and most significantly, H!TEA” and “HI-T” are phonetic equivalents, understood by the relevant public to be “HI TEA.” See B.V.D. Licensing Corp. v. Body Action Design, Inc., 846 F.2d 727, 6 U.S.P.Q.2d 1719, 1721 (Fed. Cir. 1988) (“The purchasing public, we believe, does not indulge in such recognitional contortions but sees things as they are. It will not read an A for a V and, seeing an A between a B and a D will react to it as the common word "bad," not as a copy or simulation or suggestion of the well-known mark B.V.D.”); In re Johnson Prods. Co., 220 U.S.P.Q. 539, 540 (TTAB 1983) ("It is undeniable that if the mark is carefully examined, the two overlapping 'S's can be discerned. What is more significant, however, is that this sort of studied analysis of the mark is unlikely to occur in the marketplace where these products are sold."). Thus, “H!TEA” and “HI-T” would share the same meaning or connotation to the relevant public.
Second, the phrase “HI-T” forms the entirety of the subject mark of Registration No. 4335174, and this fact is critical in this analysis, as Applicant’s proposed mark essentially incorporates the cited registered mark entirely. Likelihood of confusion has frequently been found where one mark incorporates the entirety of another mark. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 U.S.P.Q.2d 1257, 1260 (Fed. Cir. 2010) (“ML” for personal care and skin care products and “ML MARK LEES” for skin care products); Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 U.S.P.Q. 105, 106 (C.C.P.A. 1975) (“BENGAL” for gin and “BENGAL LANCER” for nonalcoholic club soda, quinine water and ginger ale); In re Toshiba Med. Sys. Corp., 91 U.S.P.Q.2d 1266, 1269 (TTAB 2009) ( “VANTAGE TITAN” for MRI diagnostic apparatus and “TITAN” for medical ultrasound device); In re U.S. Shoe Corp., 229 U.S.P.Q. 707 (TTAB 1985) (“CAREER IMAGE” for women's clothing stores and women's clothing and “CREST CAREER IMAGES” for uniforms); In re S. Bend Toy Mfg. Co., 218 U.S.P.Q. 479, 480 (TTAB 1983) (“LIL’ LADY BUG” for toy doll carriages and “LITTLE LADY” for doll clothing); Helga, Inc. v. Helga Howie, Inc., 182 U.S.P.Q. 629, 630 (TTAB 1974) (“HELGA” for women’s clothing and “HELGA HOWIE” for women’s clothing); In re Hepperle, 175 U.S.P.Q. 512, 512 (TTAB 1972) (“ACAPULCO GOLD” for suntan lotion and “ACAPULCO” for lipstick and powder). Thus, Applicant has appropriated this registered mark into its proposed mark. See In re Jump Designs LLC, 80 U.S.P.Q.2d 1370, 1375 (TTAB 2006) (“The general rule is that a subsequent user may not appropriate the entire mark of another and avoid a likelihood of confusion by adding descriptive or subordinate matter thereto.”).
Third, as to appearance, Applicant’s proposed mark, H!TEA, is a special form mark consisting of this wording and the design of a hand gripping a half-filled mason jar with an inserted drinking straw and bearing the stylized wording "H!". The cited registered mark, HI-T, is presented entirely in standard character form. The rights associated with a mark in standard characters reside in the wording and not in any particular display in terms of font, style, size or color. 37 C.F.R. § 2.52(a); see In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 U.S.P.Q.2d 1257, 1260 (Fed. Cir. 2010). Therefore, in actual use, the cited registered mark may be displayed in a same manner of font, style, color and size as the wording of the proposed mark of this application. In re Viterra Inc., 671 F.3d 1358, 1363, 101 U.S.P.Q.2d 1905, 1909 (Fed. Cir. 2012); In re Aquitaine Wine USA, LLC, 126 U.S.P.Q.2d 1181, 1186 (TTAB 2018).
In sum, Applicant’s mark sufficiently resembles the cited registered mark that, if used in connection with related goods and services, confusion would be likely to occur.
Viewed in their entireties with the differences evaluated, the marks are sufficiently similar in appearance, sound and connotation, and would create sufficiently similar commercial impressions on the minds of purchasers. Thus, despite considering the differences of the respective marks, their similarities far outweigh the dissimilarity, based on guiding legal authority, and the rights vested in the registered marks. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 U.S.P.Q.2d 1001, 1003 (Fed. Cir. 2002). Therefore, the legal test for similarity of the marks, the first DuPont factor, favors a finding of likelihood of confusion.
For purposes of determining the strength of the second DuPont factor for Section 2(d) analysis, likely confusion is determined based on the goods or services as they are identified in the application and the registration. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563 (C.C.P.A. 1973); see, e.g., In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 U.S.P.Q.2d 1047, 1052 (Fed. Cir. 2018). “Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services.” Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1267, 62 U.S.P.Q.2d 1001, 1004 (Fed. Cir. 2002). The question is not whether purchasers can differentiate the goods themselves, but rather whether purchasers are likely to confuse the source of the goods. In re Aquitaine Wine USA, LLC, 126 U.S.P.Q.2d 1181, 1188 (TTAB 2018).
When it comes to services providing or serving food or beverages, "something more" is required (over and above a showing that the goods and services are offered together) because the relatedness of the parties’ respective goods and services is not evident. In re Opus One Inc., 60 U.S.P.Q.2d 1812, 1813 (TTAB 2001) (finding restaurant services related to wine under identical “OPUS ONE” mark, as it is a strong and arbitrary mark). For example, the Trademark Trial and Appeal Board has found the “something more” requirement to be met when the record shows that the services are an “establishment specializing in a specific beverage” sold under its mark. See, e.g., In re Accelerate s.a.l., 101 U.S.P.Q.2d 2047, 2050-51 (TTAB 2012) (“COLOMBIANO COFFEE HOUSE” for “providing food and drink” likely to be confused with “COLOMBIAN” for “coffee,” as the record showing both mean “of or from Colombia,” the country is renowned for and one of the largest producers of coffee beans; and the “emphasis of a coffee house is on coffee beverages”).
Here, the comparison is between the following:
Services in this application:
Bubble tea shops; Tea shops; Boba shops; Coffee shops; Milk tea shops; Boba and beverage shop;
Goods in Reg. No. 4335174:
Non alcoholic organic hemp and tea based beverages.
In comparing Applicant’s listed services and the goods in the cited registration, the attached evidence, comprised of marketing and menus of tea, boba and bubble tea shops, supports a determination that potential purchasers would reasonably expect or anticipate that the services under the mark will in fact serve non-alcoholic tea-based beverages and even non-alcoholic organic hemp and tea based beverages under at least one common source identifier, and that the respective goods and services are complementary and interrelated beverages and beverage-based services. See attached Internet evidence. Based on the evidence, the requisite “something more” showing has been made and the identified services in this application are sufficiently related to the identified goods in the cited registration.
Furthermore, because there are no limitations in the cited registration and the subject application, it is presumed that the respective goods and services travel in all normal channels of trade and are offered to all potential relevant consumers. In re i.am.symbolic, llc, 866 F.3d 1315, 123 U.S.P.Q.2d 1744, 1749 (Fed. Cir. 2017).
In view of the foregoing analysis, the respective goods and services are sufficiently related to cause likely confusion as to their source in the minds of the consuming public if offered under the same or similar marks, and thus, the legal test for relatedness of the goods and services, the second DuPont factor, and the test regarding established, likely-to-continue trade channels, the third DuPont factor, both favor a finding of likelihood of confusion.
Based on a determination that the marks are similar and the goods and services are related, and the evidentiary showing and presumption that the goods and services move in the same channels of trade and are available to the same classes of consumers, Applicant’s mark is refused registration on the grounds of likely confusion with the above-cited registered mark.
Although the examining attorney has refused registration, Applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
In addition, Applicant should note the potential bar to registration:
In addition, please be advised that ONE potentially conflicting mark in a prior-filed pending application may present a bar to registration also under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), because of a likelihood of confusion. See attached pending application.
Information is attached concerning pending Application Serial No. 87947946 (Filing Date: June 4, 2018). The filing date of said application precedes Applicant’s filing date. There may be a likelihood of confusion between Applicant’s proposed mark and the subject mark of this cited application. Therefore, if the earlier‑filed application registers, registration may be refused additionally under Section 2(d). 37 C.F.R. § 2.83; see 15 U.S.C. § 1052(d); TMEP § 1208. Upon receipt of Applicant’s response to this Office action, action on this case may be suspended pending final disposition of the earlier‑filed application.
Applicant may present arguments relevant to the issue of a potential conflict in its response to this Office Action. The election not to submit arguments pertaining to the prior pending application in any response at this time in no way limits Applicant’s right to address this issue at a later point if a Section 2(d) refusal issues vis-à-vis the cited earlier‑filed application.
Because of the legal technicalities and strict deadlines of the trademark application process, Applicant is encouraged to hire a private attorney who specializes in trademark matters to assist in this process. The assigned trademark examining attorney can provide only limited assistance explaining the content of an Office action and the application process. USPTO staff cannot provide legal advice or statements about the legal rights of an applicant. TMEP §§ 705.02, 709.06. See Hiring a U.S.-licensed trademark attorney for more information.
Applicant must respond timely and completely to the issues raised in this Office Action. 15 U.S.C. § 1062(b); 37 C.F.R. §§ 2.62(a), 2.65(a); TMEP §§ 711, 718.03. Otherwise, this application will be abandoned. 37 C.F.R. § 2.65(a).
How to respond: Click to file a response to this non-final Office action. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§ 2.62(c), 2.191; TMEP §§ 304.01-.02, 709.04-.05.
Please contact the undersigned attorney with any additional questions.
Sincerely,
/Judy Helfman/
Judith M. Helfman
Attorney, Law Office 111
571/272-5892
judy.helfman@uspto.gov
RESPONSE GUIDANCE
