To: | Greene Concepts Inc. (arollins@bscattorneys.com) |
Subject: | U.S. Trademark Application Serial No. 90645587 - BE WATER - MAVE-1 |
Sent: | January 05, 2022 09:28:53 PM |
Sent As: | ecom116@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90645587
Mark: BE WATER
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Correspondence Address: 101 WEST KIRKWOOD AVENUE, SUITE 238
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Applicant: Greene Concepts Inc.
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Reference/Docket No. MAVE-1
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: January 05, 2022
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.
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. 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.
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 Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34).
Comparison of the marks
In this case, the registered marks are as follows:
REG. 4295026: BE for “Coconut water” in International Class 32.
REG. 5107372: BE and design for “Preparations for making aerated water, namely, capsules pre-filled with powders, liquids and essences for preparing aerated water, excluding coconut water and similar water, that are custom-made to fit into bottles and containers or into beverage-making machines; preparations for making mineral water, namely pre-filled capsules pre-filled with powders, liquids and essences for preparing mineral water, excluding coconut water and similar water, that are custom-made to fit bottles and containers or into beverage-making machines; capsules containing powders, liquids and essences for preparing non-alcoholic beverages, excluding coconut water and similar water; capsules containing powders, liquids and essences for preparing aerated beverages, excluding coconut water and similar water; all of the aforementioned goods custom-made to fit into closures of bottles and containers or into beverage making machines; beers” in International Class 32.
REG. 6132609: BE and design for “Fruit beverages and fruit juices; non-alcoholic beverages containing fruit juices; beverages consisting principally of fruit juices” in International Class 32.
The proposed mark, BE WATER and design, is for the following: “Bottled water” in International Class 32.
The registered marks are similar to the applicant’s mark because all the marks contain the dominant term, BE. Therefore, the marks are very similar in sound and appearance and give a consumer a similar commercial impression. Applicant’s mark only adds the word WATER, which is less significant in creating a commercial impression for these goods because it is generic for the goods in the application.
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Comparison of the goods
The goods of the applicant and registrants are closely related because applicant’s “bottled water” is similar to the goods of the registrants, namely, coconut water, preparations for making aerated water, and various types of fruit beverages in that all are beverages and may be consumed by the same consumers. Therefore, the goods must be considered closely related. As such, they are very likely to travel through the same channels of trade to the same consumers, namely, those who are thirsty, for example.
When confronted by closely related goods bearing marks with the identical dominant term, a consumer is likely to have the mistaken belief that the goods originate from the same source. Because this likelihood of confusion exists, registration of applicant’s proposed mark must be refused.
Although the examining attorney has refused registration, the applicant may respond to the refusals to register by submitting evidence and arguments in support of registration.
The effective filing dates of pending U.S. Application Serial Nos. 88594859 and 88878261 precede applicant’s filing date. See attached referenced applications. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.
If the applicant chooses to respond to the refusals to register, the applicant must also respond to the following requirements.
Applicant must disclaim the wording “WATER” 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).
The attached evidence from Internet dictionaries shows this wording means “A clear, colorless, odorless, and tasteless liquid, H2O, essential for most plant and animal life and the most widely used of all solvents.” Thus, the wording merely describes applicant’s goods because it immediately describes a feature, characteristic, and ingredient of the applicant’s goods.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “WATER” 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.
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.
/Marcie R. Frum Milone/
Trademark Examining Attorney
Law Office 116
571-272-9726
Marcie.Milone@uspto.gov
(email for informal communications only)
RESPONSE GUIDANCE