To:
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`Subject:
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`Sent:
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`Sent As:
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`Attachments:
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`Optimist Industries, LLC (trademarks@loeb.com)
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`U.S. Trademark Application Serial No. 88668558 - OPTIMIST BOTANICALS - 233351-00001
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`December 09, 2020 10:49:47 AM
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`ecom115@uspto.gov
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`United States Patent and Trademark Office (USPTO)
`Office Action (Official Letter) About Applicant’s Trademark Application
`
`U.S. Application
`Serial No. 88668558
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`     
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`Mark:   OPTIMIST
`BOTANICALS
`
`Correspondence
`Address: 
`MELANIE J.
`HOWARD
`LOEB & LOEB LLP
`10100 SANTA
`MONICA
`BOULEVARD
`SUITE 2200
`LOS ANGELES, CA
`90067
`Applicant:   Optimist
`Industries, LLC
`
`    
`
`Reference/Docket
`No. 233351-00001
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`   
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`Correspondence
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`Email Address:  
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`trademarks@loeb.com
`
`FINAL OFFICE ACTION
`
`Issue date:  December 09, 2020
`
`INTRODUCTION
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`This Office action is in response to applicant’s communication filed on 11/19/2020.
`
`The Trademark Trial and Appeal Board (Board) instituted and suspended appeal; remanded application to trademark examining attorney for
`review of request for reconsideration.  See TBMP §1204; TMEP §715.04.  On 11/19/2020, applicant filed a notice of appeal to the Board and a
`request for reconsideration of a final Office action that issued on 5/19/2020.  On 11/19/2020, the Board instituted and then suspended the appeal
`
`proceeding, remanding the application to the trademark examining attorney for review of the request for reconsideration.  
`
`Applicant’s request for reconsideration presented an amendment to the Identification of Goods for which new evidence of relatedness was
`required as this amendment was relevant to an issue on appeal.   See TBMP §1204; TMEP §715.04(b).  Therefore, this new final Office action is
`being issued to address the amendment, and supersedes the previous final Office action.  TMEP §715.04(b).  After issuing this new final Office
`action, the trademark examining attorney will return the application to the Board for resumption of the appeal.  Id.  Any further request for the
`trademark examining attorney to consider the application must be made in a request for remand to the Board, for which good cause must be
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`shown.  See TBMP §1204.  
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`The trademark examining attorney accepts the following amendment(s):  
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`The Identification of Goods is amended to read as “Non-alcoholic water-based beverages made with botanicals.”
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`Further, the following refusal(s) and requirement(s) are maintained and continued to be held final:   
`
`REFUSAL – SECTION 2(d) – LIKELIHOOD OF CONFUSION
`REQUIREMENT – DISCLAIMER
`
`REFUSAL – SECTION 2(d) – LIKELIHOOD OF CONFUSION
`
`Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration No. 5500691
`(“OPTIMISM” for “Beer; sparkling water”).   Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the
`previously attached registration.
`
`Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a potential consumer
`would be confused, mistaken, or deceived as to the source of the goods and/or services of the applicant and registrant.  See 15 U.S.C. §1052(d). 
`A determination of likelihood of confusion under Section 2(d) is made on a case-by case basis and the factors set forth in In re E. I. du Pont de
`Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) aid in this determination.  Citigroup Inc. v. Capital City Bank Grp.,
`Inc., 637 F.3d 1344, 1349, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011) (citing On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1085, 56
`USPQ2d 1471, 1474 (Fed. Cir. 2000)).  Not all the du Pont factors, however, are necessarily relevant or of equal weight, and any one of the
`factors may control in a given case, depending upon the evidence of record.  Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d at 1355, 98
`USPQ2d at 1260; In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont de
`Nemours & Co., 476 F.2d at 1361-62, 177 USPQ at 567.
`
`The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from
`adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690
`(Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP
`§1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper
`Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
`
`In this case, the following factors are the most relevant:  similarity of the marks, similarity and nature of the goods and/or services, and similarity
`of the trade channels of the goods and/or services.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In
`re Dakin’s Miniatures Inc. , 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
`
`Comparison of the Goods
`
`Applicant’s goods are “non-alcoholic water-based beverages made with botanicals.” The goods in the registration include “sparkling water.”
`These goods are related as the previously attached evidence shows that they emanate from a single source under a single mark and this
`terminology also often describes the same product as the currently attached evidence shows that it is common for manufacturers to produce
`sparkling water beverages made with botanicals.
`
`The goods and/or services of the parties need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v.
`Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894,
`1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be
`
`related in the mind of the consuming public as to the origin of the goods.”); TMEP §1207.01(a)(i).   
`
`The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing are such that
`they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”   Coach Servs., Inc. v. Triumph
`Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724
`(TTAB 2007)); TMEP §1207.01(a)(i).
`
`The attached Internet evidence consists of screenshots of products from “Active Botanical Co.,” “Aqua Botanical,” “Arrowhead,” “Petal,”
`“Seasons Sparkling,” “Sparkling Botanicals,” “No.1 Botanicals,” “Aura Bora,” “Hush Aqua”, “Forage & Foster,” “Creative Waters Co.”
`and “Sweet Reason.” Each of these companies produces non-alcoholic sparkling waters which contain botanicals. This evidence establishes that
`the same entity commonly produces the relevant goods and markets the goods under the same mark, 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 and that the goods are similar or
`complementary in terms of purpose or function since they describe the same beverage product.  Therefore, 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
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`re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
`
`   Furthermore, the trademark examining attorney previously attached evidence to this office action from the USPTO’s X-Search database
`
`consisting of a number of third-party marks registered for use in connection with the same or similar goods and/or services as those of both
`applicant and registrant in this case. Please see the previously attached U.S. Reg. Nos. 5602982, 5555116, 5708106, 5892146, 5555796,
`5886218, 5738698, 5739241, 5753433, 5765702, 5779688, 5891440, 5945324, 6043532 and 6044006.  This evidence shows that the goods or
`similar goods listed therein, namely “sparkling water” as well as the more generalized types of “non-alcoholic water-based beverages,” are of a
`kind that may emanate from a single source under a single mark. The “non-alcoholic water-based beverages” from these registrations are
`unrestricted in terms of flavorings or ingredients and are presumed to encompasses all goods of the type described, including those made with
`botanicals. See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB
`2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6
`(TTAB 1988)); 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). TMEP §1207.01(d)(iii).
`
`Thus, applicant’s and registrant’s goods are related.
`
`Comparison of the Marks
`
`Applicant’s applied-for mark is “OPTIMIST BOTANICALS.” The registered mark is “OPTIMISM”. Both of the marks are in standard
`character mark form.
`
`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 Davia, 110 USPQ2d 1810, 1812 (TTAB
`2014) (citing In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB
`1988)); TMEP §1207.01(b).
`
`Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the
`marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals
`Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004);
`TMEP §1207.01(b).
`
`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).  Matter that is descriptive of or generic for a party’s
`goods and/or services is typically less significant or less dominant in relation to other wording in a mark.  See Anheuser-Busch, LLC v. Innvopak
`Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed.
`Cir. 2004)). In the present case, please see the discussion in the “REQUIREMENT – DISCLAIMER” section of the office action showing that
`the wording “BOTANICALS” in the applied-for mark is merely descriptive of or generic for applicant’s goods.  Thus, this wording is less
`significant in terms of affecting the mark’s commercial impression, and renders the wording “OPTIMIST” the more dominant element of the
`mark.
`
`With respect to the wording “OPTIMISM” in the registered mark, the previously attached evidence from Merriam-Webster Dictionary shows
`that the word “OPTIMIST” is defined as “person who is inclined to be hopeful and to expect good outcomes” or “someone who is given to
`optimism,” and that the word “OPTIMISM” is defined as “an inclination to put the most favorable construction upon actions and events or to
`anticipate the best possible outcome.” Thus these words have very similar meanings, they share the same first seven letters with the exception of
`the last letter and the previously attached evidence shows that they are derived from the same root word. Consumer confusion has been held
`likely for marks that do not physically sound or look alike but that convey the same idea, stimulate the same mental reaction, or may have the
`same overall meaning.  Proctor & Gamble Co. v. Conway, 419 F.2d 1332, 1336, 164 USPQ 301, 304 (C.C.P.A. 1970); see In re M. Serman &
`Co., 223 USPQ 52, 53 (TTAB 1984) (holding CITY WOMAN for ladies’ blouses likely to be confused with CITY GIRL for a variety of female
`clothing); H. Sichel Sohne, GmbH v. John Gross & Co., 204 USPQ 257, 260-61 (TTAB 1979) (holding BLUE NUN for wines likely to be
`confused with BLUE CHAPEL for the same goods); Ralston Purina Co. v. Old Ranchers Canning Co., 199 USPQ 125, 128 (TTAB 1978);
`Downtowner Corp. v. Uptowner Inns, Inc., 178 USPQ 105, 109 (TTAB 1973); TMEP §1207.01(b).
`
`Here the registered mark, “OPTIMISM”, and the dominant element of the applied-for mark, “OPTIMIST”, share the same first seven letters
`with the exception of the last letter and are derived from the same root word. 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
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`(finding CONFIRM and
`In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985)
`COMMUNICASH confusingly similar);
`In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and
`CONFIRMCELLS confusingly similar);
`MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).
`
`As such, viewed as a whole, applicant’s mark is substantially similar in sound, appearance, connotation and commercial impression to the
`registered mark.
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`Applicant’s Arguments with respect to the Refusal
`
`Applicant makes three main arguments with respect to the refusal:
`
`Based on applicant’s amendment to the Identification of Goods, the goods have been differentiated
`
`Applicant states that their amendment to clearly indicate that the applied-for goods are made with botanicals makes it so that that the applicant’s
`goods no longer encompass those of the registrant and therefore the goods are no longer related or confusable. While the amendment does
`eliminate the overlap or encompassing relationship between the good, the attached evidence clearly shows that it is common in the beverage
`industry for manufacturers to produce sparkling waters which contains botanicals as an ingredient. As such, while the wording “non-alcoholic
`water-based beverages made with botanicals” may no longer directly encompass “sparkling waters,” the evidence firmly establishes that this
`language from the application and registration can still refer to the same particular drink and therefore the goods are overlapping in nature,
`produced by the same entities and consumed by the same target audience. Therefore, 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).
`
`The marks create distinguishable commercial impressions due to the presence of the word “BOTANICALS” in the applied-for mark
`
`Applicant argues that the additional word “BOTANICALS” in the applicant’s mark was not given proper weight in terms of the comparison of
`the marks. Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the
`individual components of a mark to determine its overall commercial impression.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d
`1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given
`to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l
`
`Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).  
`
`As was previously noted, the evidence and discussion provided in the “REQUIREMENT – DISCLAIMER” section of the office action shows
`that the mark as a whole is not unitary and that the wording “BOTANICALS” is less significant in terms of affecting the mark’s commercial
`impression, and renders the wording “OPTIMIST” the more dominant element of the applied-for mark. See TMEP §1207.01(b)(viii). Further
`reinforcing its dominance is the fact that the word “OPTIMIST” appears first in the applied-for mark. Consumers are generally more inclined to
`focus on the first word in any trademark or service mark.  See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
`F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d
`1698, 1700 (Fed Cir. 1992); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018). Further,
`applicant has now explicitly made it clear in their Identification of Goods amendment that the goods do in fact contain “BOTANICALS” as a
`highlighted ingredient, therefore this word is almost certainly generic. The generic name of an ingredient of the goods is incapable of identifying
`and distinguishing their source and the TTAB has previously stated that generic terms are the antithesis of trademarks.  See In re Merrill Lynch,
`Pierce, Fenner, & Smith, Inc., 828 F.2d 1567, 1569; In re Hask Toiletries, Inc., 223 USPQ 1254, 1255 (TTAB 1984); In re Pepcom Indus., Inc.,
`192 USPQ 400, 402 (TTAB 1976); TMEP §1209.01(c). While the applied-for mark does contain the additional word “BOTANICALS”,
`this
`wording has next to no source indicating value and would simply be viewed by the relevant purchasing public as primarily being as the name for
`the featured ingredient of the goods such that they would fully focus on the word “OPTIMIST” as the dominant source indicating element.
`TMEP §1209.01(c)
`
`Here the dominant wording “OPTIMIST” in the applied-for mark and “OPTIMISM” in the registered mark have very similar meanings since
`the previously attached evidence establishes that “OPTIMIST” is defined as “someone who is given to optimism.” The words may not sound
`exactly alike but they share the same first seven letters and consumer confusion has been held likely for marks that do not physically sound or
`look alike but that convey the same idea, stimulate the same mental reaction, or may have the same overall meaning. See TMEP §1207.01(b). As
`such, the marks each create similar commercial impressions and confusion is likely to occur given that the goods in this case are legally identical.
`Where the goods and/or services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the
`marks required to support a finding of likelihood of confusion is not as great as in the case of diverse goods and/or services.  In re J.M. Originals
`Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004);
`TMEP §1207.01(b).
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`The wording “OPTIMIST”, “OPTIMISM” and “OPTIMISTIC” is diluted in a crowded field of beverages
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`Applicant argues that the Federal Register demonstrates co-existence of marks containing the shared root “OPTIM.“ However, in this case, the
`goods in question are “sparkling water” for the registrant and “non-alcoholic water-based beverages made with botanicals” for the applicant. In
`their response, applicant highlighted “OPTIM-” based mark for various types of alcoholic beverages and had previously submitted printed or
`electronic copies of third-party registrations for marks containing the root word “OPTIM-” to support the argument that this wording is weak,
`diluted, or so widely used that it should not be afforded a broad scope of protection.  These registrations appear to primarily be for goods and/or
`services that are predominantly different from or unrelated to those identified in applicant’s application. None of these show that this “OPTIM-”
`
`based wording is diluted with respect to water-based beverages.  
`
`The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the
`marketplace in connection with similar goods and/or services.  See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572,
`1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A.
`1973).  Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively
`weak and entitled to only a narrow scope of protection” in that particular industry or field.  Omaha Steaks Int’l, Inc. v. Greater Omaha Packing
`Co., 908 F.3d 1315, 1324, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee
`en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)).
`
`Further, evidence comprising third-party registrations for similar marks with different or unrelated goods and/or services, as in the present case,
`has “no bearing on the strength of the term in the context relevant to this case.”  See Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d
`1043, 1058 (TTAB 2017) (citing In re i.am.symbolic, llc, 866 F.3d at 1328, 123 USPQ2d at 1751).  Thus, these third-party registrations
`submitted by applicant are insufficient to establish that the wording “OPTIMIST” or “OPTIMISM” is weak or diluted.
`
`Applicant also referenced several precedential opinions where the marks contained similar terms but the Section 2(d) refusals were overturned,
`for example “PEAK PERIOD” for deodorants was found dissimilar from “PEAK” for dentifrices and “PARENTS” was found differentiated
`from “PARENTS DIGEST” for magazines. None of these decisions that were cited are related to water based beverages or beverages in general
`and applicants main argument is that marks are not automatically similar if they share the same or similar wording. However, the marks in
`question in this case do not simply share similar wording, instead they also are being used for overlapping and highly related goods and the
`determination of confusion here is being made based on this individual evidentiary record and the relatedness of the marks. When determining
`whether an applied-for mark is eligible for registration, each application must be considered on its own record.   In re Cordua Rests., Inc., 823
`F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (“[The Federal Circuit], like the Board, must evaluate the evidence in the present record
`to determine whether there is sufficient evidence . . . .”); In re Shinnecock Smoke Shop, 571 F.3d 1171, 1174, 91 USPQ2d 1218, 1221 (Fed. Cir.
`2009) (“Applicant’s allegations regarding similar marks are irrelevant because each application must be considered on its own merits.”); see
`also In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some
`characteristics similar to Nett Designs’ application, the PTO’s allowance of such prior registrations does not bind the [Trademark Trial and
`Appeal] Board or this court.”).
`
`Lastly, to support applicant’s arguments, applicant previously submitted evidence of cancelled or expired third-party registrations.  However, a
`cancelled or expired registration is “only evidence that the registration issued and does not afford [an applicant] any legal presumptions under
`Trademark Act Section 7(b),” including the presumption that the registration is valid, owned by the registrant, and the registrant has the
`exclusive right to use the mark in commerce in connection with the goods and/or services specified in the registration certificate.  Bond v. Taylor,
`119 USPQ2d 1049, 1054-55 (TTAB 2016) (citing In re Pedersen, 109 USPQ2d 1185, 1197 (TTAB 2013)); see Anderson, Clayton & Co. v.
`Krier, 478 F.2d 1246, 1248, 178 USPQ 46, 47 (C.C.P.A. 1973) (statutory benefits of registration disappear when the registration is cancelled);
`TBMP §704.03(b)(1)(A); TMEP §1207.01(d)(iii), (d)(iv).  Nor does a cancelled or expired registration provide constructive notice under Section
`22, in which registration serves as constructive notice to the public of a registrant’s ownership of a mark.  See Action Temp. Servs. Inc. v. Labor
`Force Inc., 870 F.2d 1563, 1566, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A] canceled registration does not provide constructive notice of
`
`anything.”).   Thus, these third-party registrations have little, if any, probative value with respect to the registrability of applicant’s mark.   
`Other registrants have agreed that “OPTIMIST” and “OPTIMISM” marks can coexist   
`
`Applicant argues that because the registrants of two “OPTIMIST” and “OPTIMISM” marks agreed that there is no likelihood of confusion
`between the common terms in their marks, this understanding and treatment should also extend to the applied-for mark. However, the consent
`agreement in question was an agreement between two private parties in which in which each party consented to the registration of an identical or
`similar mark by the other party. See TMEP §1207.01(d)(viii). The registrant and applicant only agreed to registration by the other particular party
`and this consent agreement does not extend to other third parties such as the owner of the applied-for mark. The consent agreement also related to
`wholly different goods from those in question here, applicant’s own evidence shows that “OPTIM” based marks are relatively common for beer
`and alcoholic beverages, however, this is not true for water-based beverages where these marks are very strong and unique and where there is no
`evidence of dilution. Furthermore, this consent agreement was submitted in order to overcome a refusal of registration under §2(d) of the Act
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`since the marks in question had been found confusingly similar by the trademark examining attorney. In general, prior decisions and actions
`taken with respect to registering other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and
`Appeal Board.  TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017).  Each
`case is decided on its own facts, and each mark stands on its own merits.  In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d at 1793
`n.10 (quoting In re Boulevard Entm’t , 334 F.3d 1336, 1343, 67 USPQ2d 1475, 1480 (Fed. Cir. 2003)). Given the similarity of the marks and the
`relatedness of the goods, the Section 2(d) refusal is continued and maintained.
`
`Based on the foregoing, the refusal of registration under Trademark Act Section 2(d) is continued to be made FINAL.
`
`REQUIREMENT – DISCLAIMER
`
`Applicant must provide a disclaimer of the unregistrable part(s) of the applied-for mark even though the mark as a whole appears to be
`registrable.  See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a).  A disclaimer of an unregistrable part of a mark will not affect the mark’s
`appearance.  See Schwarzkopf v. John H. Breck, Inc., 340 F.2d 978, 979-80, 144 USPQ 433, 433 (C.C.P.A. 1965).
`
`In this case, applicant must disclaim the wording “BOTANICALS” because it is not inherently distinctive.  These unregistrable term(s) at best
`are merely descriptive of an ingredient, quality, characteristic, function, feature, purpose, or use of applicant’s goods and/or services.  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 previously attached evidence from Merriam-Webster Dictionary shows that “BOTANICAL” means “plant material used as a flavoring
`agent” and is usually used in the plural, as it is in the applied-for mark. Although each mark must be evaluated on the specific facts of the case,
`the plural of a descriptive term is generally still descriptive as pluralization usually does not alter the meaning of the term beyond making it
`plural.  See In re Cordua Rests., Inc., 823 F.3d 594, 603, 118 USPQ2d 1632, 1637 (Fed. Cir. 2016) (citing In re Belgrade Shoe, Co., 411 F.2d
`1352, 1353, 162 USPQ 227, 227 (C.C.P.A. 1969); Wilson v. Delauney, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957)); TMEP
`§1209.01(c)(1). The previously attached Internet evidence also shows this wording is commonly used to describe a type of ingredient used to
`enhance flavor in connection with beverages including similar water-based beverages. Please see the previously attached website evidence from
`“Beverage Industry,” “My Drink Powered By BevSource,” the “Kerry” Group, “Food Business News,” “Drinking in America,” “Imbibe:
`The Drink Tank,” “Simply Nature,” the “Watson” group, “Javo” Beverages and “No. 1 Botanicals.”
`
`Further, the applicant has amended their Identification of Goods in order to explicitly state that their goods are “ made with botanicals.” A term
`that describes an ingredient of the goods is at minimum merely descriptive and in this case likely generic.  TMEP §1209.01(b); see In re TriVita,
`Inc., 783 F.3d 872, 114 USPQ2d 1574 (Fed. Cir. 2015) (holding NOPALEA merely descriptive of dietary and nutritional supplements containing
`nopal juice); In re Keebler Co., 479 F.2d 1405, 178 USPQ 155 (C.C.P.A. 1973) (holding RICH ‘N CHIPS merely descriptive of chocolate chip
`cookies); In re Andes Candies Inc., 478 F.2d 1264, 178 USPQ 156 (C.C.P.A. 1973) (holding CREME DE MENTHE merely descriptive of
`candy); In re Entenmann’s, Inc., 15 USPQ2d 1750 (TTAB 1990) (holding OATNUT merely descriptive of bread containing oats and hazelnuts);
`Flowers Indus., Inc. v. Interstate Brands Corp., 5 USPQ 2d 1580 (TTAB 1987) (holding HONEY WHEAT merely descriptive of bread
`containing honey and wheat).
`
`Thus, as the Identification of Goods indicates, the wording merely describes that applicant’s identified “non-alcoholic water-based beverages
`made with botanicals” contain botanicals or plant materials used as a flavoring ingredient.
`
`Applicant may respond to this issue by submitting a disclaimer in the following format:  
`No claim is made to the exclusive right to use “BOTANICALS” apart from the mark as shown.   
`
`For an overview of disclaimers and instructions on how to satisfy this issue using the Trademark Electronic Application System (TEAS), see the
`
`Disclaimer webpage.  
`
`Applicant’s Arguments with respect to the Requirement
`
`Applicant makes one main argument with respect to the requirement which was incorporated from their previous response which was submitted
`on 5/15/2020:
`
`The mark is a unitary mark and therefore no disclaimer is required
`
`The test for unitariness inquires whether the elements of a mark are so integrated or merged together that they cannot be regarded as
`separable.  See  In re EBS Data Processing, 212 USPQ 964, 966 (TTAB 1981) ;  In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983). The Court of
`Appeals for the Federal Circuit has set forth the elements of a unitary mark: “A unitary mark has certain observable characteristics. Specifically,
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`its elements are inseparable. In a unitary mark, these observable characteristics must combine to show that the mark has a distinct meaning of its
`own independent of the meaning of its constituent elements. In other words, a unitary mark must create a single and distinct commercial
`impression.” See TMEP §1231.05.
`
`Here the applicant’s mark consis