Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`
`ESTTA Tracking number:
`
`ESTTA753597
`
`Filing date:
`
`06/21/2016
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Proceeding
`
`91224818
`
`Party
`
`Correspondence
`Address
`
`Submission
`
`Filer's Name
`
`Filer's e-mail
`
`Signature
`
`Date
`
`Attachments
`
`Defendant
`Luciano Sztulman M.D., Inc.
`
`ROBERT SALTER
`SALTER & MICHAELSON
`321 SOUTH MAIN ST SUITE 500
`PROVIDENCE, RI 02903
`UNITED STATES
`rsalter@saltermichaelson.com
`
`Opposition/Response to Motion
`
`Robert Salter
`
`rsalter@saltermichaelson.com
`
`/Robert Salter/
`
`06/21/2016
`
`91224818 Applicants Objections to Opposers Motion for Summary Judg-
`ment.pdf(5432844 bytes )
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Before the Trademark Trial and Appeal Board
`
`Market America, Inc.,
`
`Opposer,
`
`vs.
`
`Luciano Sztulman M.D.,|nc.,
`
`Applicant.
`
`:
`
`:
`
`:
`
`Opposition #91224818
`
`TM:
`
`VITAMINDFUL
`
`Serial #86/469018
`
`APPL|CANT'S OBJECTIONS TO OPPOSER'S MOTION FOR SUMMARY
`
`JUDGMENT
`
`1.
`
`INTRODUCTION
`
`Applicant, Luciano Sztulman M.D., |nc., objects to Opposer’s Motion for Summary Judgment on the
`
`basis that genuine issues of material fact still exist, and that Applicant will be unduly prejudiced if
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`Opposer’s Motion is granted since Applicant has now produced further evidence of its bona fide
`
`intent to use the mark as required by 15 U.S.C. 1051(b) which evidence was served on Opposer’s
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`counsel June 2, 2016. Applicant further acknowledges that Opposer seeks leave of the Board to
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`amend its opposition to add this claim. In support of Applicant's Objection, Applicant submits
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`herewith the declaration of Dr. Luciano Sztulman (hereinafter referred to as the ”Sztu|man Decl.”)
`
`2.
`
`FACTS
`
`Dr. Luciano Sztulman, MD, FACOG, FACS, is a Board— Certified Gynecologist by the American Board of
`
`Obstetrics and Gynecology and has over thirty years of experience in the use of lasers in medicine
`
`and surgery.
`
`He is a Fellow of the American College of Obstetricians and Gynecologists, Fellow of
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`

`

`the American College ofSurgeons, a Member of the American Society of Cosmetic Physicians,
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`Member of the International Society of Cosmeto-Gynecology, and a Member of the International
`
`Society of Hair Restoration Surgeons. Before adopting the trademark VITAMINDFUL for its vitamins,
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`Applicant conducted an investigation for the availability ofV|TAM|NDFUL (Sztu|man Decl. para. 1).
`
`This investigation uncovered the existence of Opposer’s Registration No. 2944356 V|TA—M|ND for
`
`nutritional supplement for mental acuity and alertness (Exhibit 1). Notwithstanding, Applicant went
`
`forward with the filing of Application Serial No. 86469018 and the application was eventually passed
`
`to publication; The complete file history is annexed hereto as (Exhibit 2). Applicant purchased the
`
`domain names vitamindfu|.com and vitamindful.com.br on December 15, 2014 (Exhibit 3). Applicant
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`had a website designed on December 31, 2014 (Exhibit 4). The website has not gone live pending the
`
`disposition of the instant proceeding. Applicant produced video commercials in November and
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`December 2014 that may be seen on YouTube via the World Wide Web (Exhibit 5). Applicant
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`developed labels and purchased product (Exhibit 6). A complete compilation of Applicant's expenses
`
`is shown in Exhibit 7.
`
`3.
`
`L_A_W
`
`Summary Judgment is inappropriate.
`
`"The burden in a motion for summaryjudgment is on the moving party to establish prima
`
`facie that there is no genuine issue of material fact
`
`World Book lnc. 23 USPQ 2d 1742, 1744 (TTAB 1992). When confronted with a motion for
`
`Fed. R. Civ. P. 56(c)". Aries Systems Corp. v.
`
`summaryjudgment, the function of the Board is to determine if such genuine issues of material fact
`
`are to be tried. g.
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`All doubts as to whether the factual issues are seriously in dispute must be
`
`resolved against the moving party. Also, all inferences must be drawn in favor of the non-moving
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`party.
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`|_d_.
`
`In this case Opposer moves for a summaryjudgment, stating that no genuine issues of
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`material fact exist. Applicant disagrees.
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`A genuine issue of material fact exists with respect to Applicant's bona fide intent to use the
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`mark in commerce as evidenced by Applicant's hiring of legal counsel to conduct a preliminary
`
`screening search (Sztu|man Decl. para. 1). Its subsequent filing of Application Serial No. 86469018
`
`

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`and prosecution of same (Exhibit 2). Its purchase of domain names (Exhibit 3). Its building of a
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`website (Exhibit 4).
`
`its production of video advertising commercials (Exhibit 5).
`
`Its development
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`of
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`labels and purchase of product (Exhibit 6) and the expenses incurred for this mark shown in the
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`compilation of expenses (Exhibit 7).
`
`CONCLUSION
`
`For the foregoing reasons, Opposer’s Motion for Summary Judgment should not be granted.
`
`Applicant has proven that a genuine issue of material fact presently exists by supplementing the
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`record with additional evidence of Applicant's Bona Fide Intent to Use the mark in interstate
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`commerce said supplemental evidence was served on opposing counsel June 2, 2016. Accordingly,
`
`a grant of summaryjudgment is inappropriate.
`
`Dated:
`
`June
`
`,2016
`
`Respectfullysu
`
`itted,
`
`Robert S. Salter
`
`SALTER & MICHAELSON
`
`321 South Main Street
`
`Providence, RI 02903-7128
`Tel
`: 401.421.3141
`Fax
`:401.861.1953
`
`email : rsa|ter@sa|termichae|son.com
`
`

`

`CERTIFICATE OF SERVICE
`
`This will hereby certify that a copy of the foregoing APPL|CANT’S OBJECTIONS TO OPPOSER’S
`MOTION FOR SUMMARY JUDGMENT has been served
`on Opposer's
`attorney on
`the
`day ofiune 21, 2016, by transmitting a copy thereof to Ryan S. Luft, via email at ryan@|uft|aw.com.
`
`Certifer
`
`

`

`
`
`Exhibit 1Exhibit 1
`
`

`

` United States Patent and Trademark Office
`
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`Record 1 out of 1
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`
`
`
` ‘ .I'-.'-.'.--|- -II ‘--Lulu--.
`return to TSS)
`VITA-MIND
`
`( Use the "Back" button of the Internet Browser to
`
`Word Mark
`
`Goods and
`Services
`
`Mark Drawing
`Code
`
`VITA-MIND
`
`IC 005. US 006 018 044 046 051 052. G & S: Nutritional Supplement for mental acuity and
`alertness. FIRST USE: 20020801. FIRST USE IN COMMERCE: 20020801
`
`(1) TYPED DRAWING
`
`Serial Number
`
`76400246
`
`Filing Date
`Current Basis
`
`Original Filing
`Basis
`
`Published for
`
`Opposition
`
`Registration
`Number
`
`Registration Date
`Owner
`
`April 26, 2002
`1A
`
`1B
`
`September 14, 2004
`
`2944356
`
`April 26, 2005
`
`(REGISTRANT) Market America, Inc. CORPORATION NORTH CAROLINA 1302 Pleasant
`Ridge Road Greensboro NORTH CAROLINA 27409
`
`Attorney of Record Shawn Christenbury
`TRADEMARK
`
`Type of Mark
`
`Register
`Affidavit Text
`
`Renewal
`
`Live/Dead
`Indicator
`
`PRINCIPAL
`
`SECT 15. SECT 8 (6-YR). SECTION 8(10-YR) 20150430.
`1ST RENEWAL 20150430
`
`LIVE
`
`I.HOME | SITE INDEX] SEARCH | eBUS|NESS I HELP I PRIVACY POLICY
`
`

`

`
`
`Exhibit 2Exhibit 2
`
`

`

`
`
`Trademark/Service Mark Application, Principal Register
`
`TEAS Plus Application
`
`Serial Number: 86469018
`
`Filing Date: 12/02/2014
`
`To the Commissioner for Trademarks:
`
`MARK: VITAMINDFUL (Standard Characters, see mark)
`The literal element of the mark consists of VITAMINDFUL.
`
`The mark consists of standard characters, without claim to any particular font, style, size, or color.
`
`The applicant, Luciano Sztulman M.D., Inc., a corporation of Rhode Island, having an address of
`Suite 401,
`One Randall Square
`Providence, Rhode Island 02904
`United States
`
`requests registration of the trademark/service mark identified above in the United States Patent and Trademark Office on the Principal Register
`established by the Act of July 5, 1946 (15 U.S.C. Section 1051 et seq.), as amended, for the following:
`
`For specific filing basis information for each item, you must View the display within the Input Table.
`International Class 005: Vitamins
`
`Intent to Use: The applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on
`or in connection with the identified goods and/or services. (15 U.S.C. Section 105 l(b)).
`
`The applicant's current Attorney Information:
`Robert Salter and David Driscoll of Salter & Michaelson
`Suite 500
`321 South Main St.
`
`Providence, Rhode Island 02903
`United States
`
`The attorney docket/reference number is T005223.
`The applicant's current Correspondence Information:
`Robert Salter
`
`Salter & Michaelson
`Suite 500
`321 South Main St.
`
`Providence, Rhode Island 02903
`
`401-421-3 l41(phone)
`401-861-1953(fax)
`
`rsalter@saltermichaelson.com (authorized)
`
`A fee payment in the amount of $275 has been submitted with the application, representing payment for 1 class(es).
`
`Declaration
`
`The signatory believes that: if the applicant is filing the application under 15 U.S.C. Section 105l(a), the applicant is the owner of the
`trademark/service mark sought to be registered; the applicant or the applicant's related company or licensee is using the mark in commerce on or
`in connection with the goods/services in the application, and such use by the applicant's related company or licensee inures to the benefit of the
`applicant; the specimen(s) shows the mark as used on or in connection with the goods/services in the application; and/or if the applicant filed an
`
`

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`application under 15 U.S.C. Section 1051(b), Section 1126(d), and/or Section 1126(e), the applicant is entitled to use the mark in commerce; the
`applicant has a bona fide intention to use or use through the applicant's related company or licensee the mark in commerce on or in connection
`with the goods/services in the application. The signatory believes that to the best of the signatory's knowledge and belief, no other person has the
`right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the
`goods/services of such other person, to cause confusion or mistake, or to deceive. The signatory being warned that willful false statements and
`the like are punishable by fine or imprisonment, or both, under 18 U.S.C. Section 1001, and that such willful false statements and the like may
`jeopardize the validity of the application or any registration resulting therefrom, declares that all statements made of his/her own knowledge are
`true and all statements made on information and belief are believed to be true.
`
`Signature: /Robert Salter/ Date Signed: 12/02/2014
`Signatory's Name: Robert Salter
`Signatory's Position: Attorney
`
`RAM Sale Number: 86469018
`
`RAM Accounting Date: 12/03/2014
`
`Serial Number: 86469018
`Internet Transmission Date: Tue Dec 02 14:51:57 EST 2014
`TEAS Stamp: USPTO/FTK-XX.XX.XX.XXX-20141202145157018
`583-86469018-5009ecb6b81e2c88633a26ed78a
`67da8b03f667cb7c35cc53ad75b22lfe38-DA-10
`92-20141202144519202728
`
`

`

`
`
`VITAMINDFULVITAMINDFUL
`
`

`

`

`

`
`
`To:
`
`Subject:
`Sent:
`
`Sent As:
`
`Attachments:
`
`Luciano Sztulman M.D., Inc. (rsa1ter@sa1termichae1son.com)
`
`U.S. TRADEMARK APPLICATION NO. 86469018 - VITAMINDFUL - T005223
`
`3/24/2015 3:02:13 PM
`
`ECOM1 12@USPTO.GOV
`
`Attachment - 1
`Attachment - 2
`
`Attachment - 3
`Attachment - 4
`
`Attachment - 5
`Attachment - 6
`
`Attachment - 7
`Attachment - 8
`Attachment — 9
`
`Attachment - 10
`
`Attachment 0- 11
`Attachment - 12
`Attachment - 13
`Attachment - 14
`
`1 Attachment - 15
`\ Attachment - 16
`Attachment - 17
`
`Attachment— 18
`¥ Attachment - 19
`ALetc_11_m.er1t;2(3
`I ./’ :_2_1_
`«Attachment - 22
`
`I
`
`I
`
`Attachment - 23 I
`7 Attachment — 24
`
`UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`U.S. APPLICATION SERIAL NO. 86469018
`
`MARK: VITAMINDFUL
`
`CORRESPONDENT ADDRESS:
`ROBERT SALTER
`SALTER & MICHAELSON
`321 SOUTH MAIN ST.
`SUITE 500
`PROVIDENCE, RI 02903
`APPLICANT: Luciano Sztulman M.D., Inc.
`
`CORRESPONDENT’S REFERENCE/DOCKET NO :
`T005223
`CORRESPONDENT E-MAIL ADDRESS:
`rsalter@sa1termichae1son.com
`
`*86469018*
`
`CLICK HERE TO RESPOND TO THIS LETTER:
`http:/Iwww.uspto.gov/trademarks/teas/resgonse forms.isp
`
`VIEW YOUR APPLICATION FILE
`
`OFFICE ACTION
`
`STRICT DEADLINE TO RESPOND TO THIS LETTER
`
`

`

`TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S
`COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
`
`ISSUE/MAILING DATE: 3/24/2015
`
`SUMMARY OF ISSUES
`
`1. Likelihood of confusion.
`
`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 §§71 1, 718.03.
`
`SECTION 21d) REFUSAL — LIKELIHOOD OF CONFUSION
`
`Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 2944356. Trademark
`Act Section 2(d), 15 U.S.C. §l052(d); see TMEP §§ 1207.01 et seq. See the enclosed 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. 1. du Pont de
`Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (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 C0,, 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.
`
`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
`ofthe trade channels ofthe 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.
`
`In any likelihood of confusion determination, two key considerations are similarity of the marks and similarity or relatedness of the goods and/or
`services. Syndicat Des Proprietaires Viticulteurs De Clzateauneuf-Du~Pape v. Pasquier Des Vignes, 107 USPQ2d 1930, 1938 (TTAB 2013)
`(citing Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976)); In re Iolo Techs, LLC, 95
`USPQ2d 1498, 1499 (TTAB 2010); see TMEP §1207.01. That is, the marks are compared in their entireties for similarities in appearance,
`sound, connotation, and commercial impression. In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting In
`re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973)); TMEP §1207.01(b)-(b)(v). Additionally, the
`goods and/or services are compared to determine whether they are similar or commercially related or travel in the same trade channels. See
`Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int 'l, Inc. v.
`Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §1207.01, (a)(vi).
`
`Here, the applicant seeks registration of the mark VITAMINDFUL for its “Vitamins.”
`
`The registrant applies the mark VITA-MIND to its “Supplement for mental acuity and alertness.”
`
`Comparison of the marks
`
`The marks share the similar wording VITAMIND and VITA-MIND. Consumers are generally more inclined to focus on the first word, prefix, or
`syllable 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); Presto Prods, Inc. v. Nice-Pak Prods, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the
`first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered” when making purchasing decisions).
`
`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 I772, 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 confirsingly similar.”
`In re Davia, 110 USPQ2d 1810, 1812 (TTAB
`2014) (citing In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); In re 1s: USA Realty Prof’ls , Inc., 84 USPQ2d 1581, 1586 (TTAB
`2007)); TMEP §1207.01(b).
`
`Comgarison of the goods and services
`
`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 §1207.0l(a)( i).
`
`The respective goods and/or services need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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 §l207.01(a)(i).
`
`The trademark examining attorney has attached evidence 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. This
`evidence shows that the goods and/or services listed therein, namely, vitamins and Supplement for mental acuity and alertness, are of a kind that
`may emanate from a single source under a single mark. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); 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); TMEP
`§1207.01(d)(iii).
`
`In this case, the similarity of the marks which share the similar wording VITAMIND in the applicant’s mark and the VITA-MIND portion of the
`registrant’s mark and the similarity between their goods of vitamins and dietary supplements because of these similarities consumers are likely
`to be confused and have the mistaken belief that the goods emanate from the same source. Accordingly, the mark is refused registration on the
`Principal Register under Trademark Act Section 2(d), 15 U.S.C. Section 1052.
`
`The following legal authorities govern the processing of trademark and service mark applications by the Office: The Trademark Act, 15 U.S.C.
`§§l051 et seq., the Trademark Rules of Practice, 37 C.F.R. Part 2, and the Office’s Trademark Manual ofExamining Procedure (TMEP) (4th
`ed., 2005), available on the United States Patent and Trademark Office web site at http://www.uspto.gov/main/trademarks.htm.
`
`Applicant should include the following information on all correspondence with the Office: (1) the name and law office number of the trademark
`examining attorney; (2) the serial number of this application; (3) the mailing date of this Office action; and, (4) applicant's telephone number. 37
`C.F.R. §2.194(b)(1); TMEP §302.03(a).
`
`If the Applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
`
`TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS — TO MAINTAIN LOWER FEE, ADDITIONAL
`REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application
`online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to
`Office actions (see TMEP §§8l9.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address;
`and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application. See 37 C.F.R. §§2.22(b),
`2.23(b); TMEP §§819, 820. TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of
`$50 per international class of goods and/or services. 37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04. However, in certain
`situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone without
`incurring this additional fee.
`
`/Warren L. Olandrial
`
`Trademark Examining Attorney
`U.S. Patent & Trademark Office
`Law Office 112
`
`

`

`Phone: 571-272-9718
`
`Warren.Olandria@uspto.gov
`
`TO RESPOND TO THIS LETTER: G0 to htm://www.uspto.gov/trademarks/teas/response formsjsp. Please wait 48-72 hours from the
`issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.
`For technical assistance with online forms, e-mail TEAS@uspto.gov. For questions about the Office action itself, please contact the assigned
`trademark examining attorney. E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to
`this Office action by e-mail.
`
`All informal e-mail communications relevant to this application will be placed in the official application record.
`
`WHO MUST SIGN THE RESPONSE: It must be personally signed by an individual applicant or someone with legal authority to bind an
`applicant (i.e., a corporate officer, a general partner, all joint applicants). If an applicant is represented by an attorney, the attorney must sign the
`response.
`
`PERIODICALLY CHECK THE STATUS OF THE APPLICATION: To ensure that applicant does not miss crucial deadlines or official
`notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at
`http://tsdr.uspto.gov/. Please keep a copy of the TSDR status screen. If the status shows no change for more than six months, contact the
`Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199. For more information on checking
`status, see http://www.uspto.gov/trademarks/process/status/.
`
`TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS: Use the TEAS form at http://www.uspto.gov/trademarks/teas/correspondence.jsp.
`
`

`

`Print: Mar 17, 2015
`
`78400246
`
`DESIGN MARK
`
`serial Number
`76400246
`
`status
`SECTION 8 & l5—ACCEPTED AND ACKNOWLEDGED
`
`Word Mark
`vITA—MIND
`
`Standard Character Marl:
`No
`
`Registration Number
`2944356
`
`Date Registered
`2005f04/26
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Mark Drawing code
`:11 TYPED DRAWING
`
`Owner
`
`Market America, Inc. CORPORATION NORTH CAROLINA 1302 Pleasant Ridge
`Road Greensboro NORTH CAROLINA 27409
`
`Goodsfservices
`G & S:
`006 018 044 O46 051 052.
`US
`IC 005.
`Class Status -- ACTIVE.
`Nutritional Supplement for mental acuity and alertness. First Use:
`2002/O8/O1. First Use In Commerce: 2002/08/O1.
`
`Filing Date
`2002/04/25
`
`Examining Attorney
`POWERS, ALEXANDER L.
`
`Attorney of Record
`Ryan S. Luft
`
`

`

`
`
`VITA-MINDVITA-MIND
`
`

`

`Print: Mar 17, 2015
`
`77119198
`
`DESfl3N|HlflU(
`
`serial Number
`77119198
`
`Status
`SECTION 8—ACCE PTED
`
`Word Mark
`BURNING BUSH
`
`Standard character Marl:
`Yes
`
`Registration Number
`3355209
`
`Date Registered
`2oo7;12x18
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Mark Drawing code
`(4) STANDARD CHARACTER MARK
`
`Owner
`Funny Names, Inc. CORPORATION CALIFORNIA 15760 Ventura Blvd. Suite
`2030 Encino CALIFORNIA 91436
`
`G & S:
`
`Goodsfservices
`US U06 U18 O44 046 O51 052.
`IC 005.
`Class Status -- ACTIVE.
`Nutritional, dietary, vitamin, mineral, nutraceutical, herbal,
`botanical
`[ and homeopathic ] supplements and preparations,
`[
`non—prescription medication,
`] and food supplements and preparations
`to enhance and promote sex drive and desire, sexual sensation, sexual
`satisfaction, sexual arousal, sexual performance, energy, stamina,
`alertness, wakefulness and stimulation, delivered in the form of a
`pill, tablet, Chewable tablet, dissolvable tablet, Capsule, gel Cap,
`soft gel,
`liquid, gum, mint, drops, candy and food bars as delivery
`systems for supplements and medication; nutritionally and vitamin
`fortified beverages as a carrier for nutritional supplements and
`vitamins; nutritionally and vitamin fortified water as a carrier for
`nutritional supplements and vitamins; nutritionally and vitamin
`fortified drink mix, powder and tablet for use in making a fortified
`beverage; fortified and medicated skin cream and skin lotion and gel
`and oil and foam all for use in treating sexual dysfunction and
`enhancing sexual health and performance; medicated skin pads and
`
`4.
`
`

`

`Print: Mar 17, 2015
`
`A
`
`TT119198
`
`medicated transdermal patches for use in the treatment of sexual
`dysfunction and enhancing sexual health and performance; personal
`lubricant as delivery system for nutritional supplements and
`medication. First Use: 2005{O8/19. First Use In Commerce:
`2005/08/19.
`
`Filing Date
`200?/02/28
`
`Examining Attorney
`PILARO, MARK
`
`

`

`
`
`BURNING BUSHBURNING BUSH
`
`

`

`Print: Mar 17, 2015
`
`78341937
`
`DESIGN MARK
`
`Serial Number
`78341937
`
`Status
`SECTION 8 s. 15—ACCEPTED AND ACKNOWLEDGED
`
`Word Mark
`EAT WHAT YOU WANT
`
`Standard Character Mark
`Yes
`
`Registration Number
`3006558
`
`Date Registered
`2005/10/11
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Mark Drawing code
`[4] STANDARD CHARACTER MARK
`
`Owner
`IMADULATION INTERNATIONAL, LP LIMITED PARTNERSHIP TEXAS 7201 CUTTER
`MILL DRIVE DALLAS TEXAS 75248
`
`Goodafservices
`G & S:
`006 O18 044 046 O51 052.
`US
`IC 005.
`Class Status -— ACTIVE.
`dietary food supplement in mint form containing a blend of herbs,
`vitamins, non—sugar natural sweeteners and flavoring extracts, for use
`alone for maintenance of health and wellness. optimum overall physical
`performance,
`increased energy. mental alertness, or in a weight
`management program. First Use: 2005/O3/10. First Use In Commerce:
`2005/O3/10.
`
`Filing Date
`2003fl2/17
`
`Examining Attorney
`ANKRRH, NAAKWAMA
`
`

`

`
`
`

`

`PfinI:Mar17,2015
`
`78948025
`
`DESHSNIWAEHC
`
`Serial Number
`78948025
`
`Status
`SECTION 8—ACCE PTED
`
`Word Mark
`BIG BOOTY
`
`Standard Character Mark
`Yes
`
`Registration Number
`3369410
`
`Date Registered
`2008/O1/15
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Mark Drawing Code
`:4] STANDARD CHARACTER MARK
`
`Owner
`INC. CORPORATION CALIFORNIA SUITE 2030 I51'60 VENTURA BLVD
`FUNNY NAMES,
`ENCINO CALIFORNIA 91436
`
`Goodsfservices
`G & S:
`006 018 044 046 O51 052.
`US
`IC 005.
`Class Status —- ACTIVE.
`Nutritional supplements, dietary supplements, vitamin supplements:
`mineral supplements, herbal supplements, dietary botanical
`supplements,[ homeopathic supplement]s, nutraceutical dietary
`supplements, nutritional diet pills,
`food supplements, nutritional
`additives for medical purposes for use in dietary supplements for
`human consumption, and nutritional supplements in the form of whey
`protein and soy base; dietary supplements to enhance and promote
`weight loss, diet, appetite suppression, calorie burning and
`metabolism,
`thermogenic burning, carbohydrate blocking, fat blocking,
`calorie replacement,
`reduced calorie consumption, energy, stamina,
`alertness, wakefulness and stimulation, reduction of cellulite and
`appearance of cellulite, reduction of stretch marks and appearance of
`stretch marks, reduction of fat and appearance of fat, reduction of
`wrinkles, blemishes and dry spots and appearance Of wrinkles,
`blemishes and dry spots, enhanced sexual function, sexual performance,
`sexual health, sexual sensation and responsiveness; and combinations
`
`4.
`
`

`

`Print: Mar 17, 2015
`
`7894-3025
`
`of dietary supplements delivered in the form of a pill, tablet,
`chewable tablet, capsule, gel cap, soft gel,
`liquid: nutritionally and
`vitamin fortified waters, drinks, beverages and beverage mix as
`carriers for nutritional and vitamin supplements; nutritionally
`fortified protein beverage and protein mix for use as a meal
`replacement; medicinal creams for skin care; medicated chewing gum and
`medicated mints for weight loss, appetite suppression, energy and
`sexual performance and function; medicated lotions for weight loss,
`wrinkle reduction, skin firming, skin protection and sexual
`performance and sensation; medicated sunburn lotions; nutritional
`supplements in lotion form sold as a component of nutritional skin
`care products; fortified aloe Vera gel for therapeutic purposes;
`[nutritionally fortified oils not for cosmetic purposes;] and
`nutritional supplements otherwise ingested in or absorbed by the body.
`First Use: 1996fO3/19. First Use In Commerce: 1996/03/19.
`
`Filing Date
`2006/08/09
`
`Examining Attorney
`BHANOT, KAPIL
`
`

`

`
`
`

`

`Print: Mar 17, 2015
`
`88194602
`
`DESIGN MARK
`
`Serial Number
`86194602
`
`Status
`REGISTERED
`
`Word Mark
`EAvEo
`
`Standard character Mark
`No
`
`Registration Number
`4601459
`
`Date Registered
`2014xo9/09
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Mark Drawing Code
`(3: DESIGN PLUS WORDS, LETTERS AND/oR NUMBERS
`
`Owner
`
`Last Call Ventures, Inc CORPORATION NEVADA Suite lll 22 W. Bryan St
`Savannah GEORGIA 31401
`
`Goodsiservices
`G & S:
`006 018 044 046 051 052.
`US
`IC 005.
`Class Status -- ACTIVE.
`Dietary supplements in the form of beverages for improving health,
`namely for providing vitamins and/or antioxidants, preventing or
`reducing the effects of primary or secondary toxins, reducing the
`side—effeots of alcohol or drug consumption, reducing build-up of
`alcohol or drug metabolites,
`reducing flushing of the skin,
`improving
`sleep, and/or increasing energy and alertness. First Use: 2012/09XlT.
`First Use In Commerce: 20l2!09/17.
`
`Description of Mark
`The mark consists of The word "faveo" featuring a lowercase "f" in
`stylized font of heavier weight and larger proportion than the
`remaining letters, which are of a block letter character, and wherein
`the letter "0" has lines radiating around the top and upper right
`quadrant to provide an impression of a sun.
`
`colors claimed
`
`

`

`Print: Mar 17, 2015
`
`86194-802
`
`Color is not claimed as a feature of the mark.
`
`Filing Date
`2014/02/14
`
`Examining Attorney
`KLINE , MATTHEW
`
`Attorney of Record
`Scott E. Scioli
`
`

`

`
`
`
`
`
`
`., ,,;/5. .' .. ,,., ,,;/5. .' .. ,,
`..
`
`,..>~.L‘_:\,v‘,,..>~.L‘_:\,v‘,
`
`
`
`‘‘
`
`

`

`Print: Mar 23, 2015
`
`85570883
`
`DESIGN MARK
`
`Serial Number
`85570886
`
`status
`REGISTERED
`
`Word Mark
`BESTEA THERAPY
`
`Standard character Mark
`Yes
`
`Registration Number
`4249430
`
`Date Registered
`2012/11/27
`
`Type of Mark
`TRADEMARK
`
`Register
`PRINCIPAL
`
`Mark Drawing Code
`:4) STANDARD CHARACTER MARK
`
`Owner
`
`Pharm East, Inc. CORPORATION HAWAII PO Box 1458 16-266 E Kipimana
`Street Keaau HAWAII 96749
`
`Goodsfservices
`Class Status —- ACTIVE.
`
`IC 005.
`
`US O06 018 O44 O46 051 052.
`
`G & S:
`
`bee pollen for use as a dietary food supplement: beverages containing
`chlorophyll for use as a nutritional supplement; dietary and
`nutritional supplements; dietary and nutritional supplements
`containing herbs and minerals; dietary and nutritional supplements for
`endurance sports; dietary and nutritional supplements used for weight
`loss; dietary beverage supplements for human consumption in liquid and
`dry mix form for therapeutic purposes: dietary food supplements:
`dietary supplement beverage for sleep, eye sight, vital organs,
`longevity, beauty, health, emotional and mental health, cleansing and
`well—being; dietary supplement drink mixes; dietary supplement for
`eliminating toxins from the intestinal tract; dietary supplemental
`drinks; dietary supplements for controlling cholesterol; dietary
`supplements for human consumption; dietary supplements for pets:
`dietary supplements for pets in the nature of a powdered drink mix;
`dietary supplements for treatment of claustrophobia; dietary
`supplements for urinary health; dietary supplements for sleep, eye
`
`A.
`
`

`

`Print: Mar 23, 2015
`
`85570888
`
`longevity, beauty, health, emotional and mental
`sight, vital organs,
`health, cleansing and well—being: herbal supplements: herbal
`supplements fo