UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
`OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
`
`U.S. APPLICATION
`SERIAL NO.   79252050
`
`           
`
`MARK: ROCKET
`FRESH
`
`CORRESPONDENT
`ADDRESS:
`  
`       WOO Jong-Kyun
`  
`       Jeongdong Building,
`17F,
`         21-15 Jeongdong-gil,
`           Seoul 04518
`    
`    REPUBLIC OF
`KOREA
`APPLICANT: Coupang
`Corp.
`
`    
`
`*79252050*
`
`CLICK HERE TO RESPOND TO THIS
`LETTER:
`http://www.uspto.gov/trademarks/teas/response_forms.jsp
`
`   
`
`CORRESPONDENT’S
`REFERENCE/DOCKET
`
`   
`
`NO:       
`
`  N/A
`CORRESPONDENT E-
`
`MAIL ADDRESS:       
`
`INTERNATIONAL REGISTRATION NO. 1450251
`
`OFFICE ACTION
`
`STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION:  TO AVOID ABANDONMENT OF THE REQUEST FOR
`EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE
`TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION
`WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.
`
`In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the
`USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.uspto.gov/.  To do so, enter the U.S. application serial number
`for this application and then select “Documents.”   The Mailing Date used to calculate the response deadline for this provisional full refusal is the
`“Create/Mail Date” of the “IB-1rst Refusal Note.”
`
`This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application. 
`See 15 U.S.C. §1141h(c).  See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.
`
`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.
`
`SUMMARY OF ISSUES applicant must address:
`
`Partial Section 2(d) Refusal – Likelihood of Confusion as to International Classes 29, 30, 31, 32, and 35
`Prior-Filed Application
`Disclaimer Required
`Identification of Goods & Services
`
`PARTIAL SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION AS TO INTERNATIONAL CLASSES 29, 30, 31, 32, AND 35
`
`The stated refusal refers to International Classes 29, 30, 31, 32, and 35 only and does not bar registration in the other class.
`
` 
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`Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 5080501, 4209557,
`4788593, 2758930, 4396621, 4396622, 5002137, 5324440, 5324438, and 5324439.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP
`§§1207.01 et seq.  See the attached registrations.
`
`Applicant’s mark is “ROCKET FRESH” for the following goods and services:
`
`Class 29:   Processed nuts; preserved meats and sausages; preserved, frozen, dried and cooked fruits and vegetables; dried anchovy; food
`products made primarily from fruits; kimchi [fermented vegetable dish]; processed egg foodstuffs; frozen fish; frozen meat; frozen
`vegetables; frozen fruits; frozen beans; eggs; chicken; pork; bean processed foodstuffs (excluding bean curds and their processed
`foodstuffs); tofu; foods prepared from bean curds (tofu); prepared side dishes consisting primarily of meat, fish, poultry or vegetable;
`butter; bacon; fish and shellfish (preserved); salami; fish and shellfish (not live, including those frozen or preserved with salt); beef;
`silkworm chrysalis for human consumption; oils and fats for food; edible eggs; mutton slices; fish cakes; food products made from fish and
`shellfish; duck meat; vegetable juices for cooking; processed dairy products; milk products; processed meat products; dried beef; instant or
`pre-cooked soup; processed vegetable products; cheese; processed seaweed products
`Class 30: Meat tenderizers for household purposes; cereal-based processed products; flour and preparations made from cereals; polished
`cereals; rice cakes; cooked dish consisting primarily of stir-fried rice cake with fermented hot pepper paste (topokki); Korean-style
`dumplings (mandu); baking powder; bread; sauces; flour for food; sugar for food; edible salt; edible ices; malted rice; soy sauce and soy
`bean paste; tea; beverages with a tea base; coffee; hot dogs (sausages in a bread roll); spices; chemical seasoning
`Class 31: Grains [cereals]; unprocessed beans; fodder; fish and shellfish (live); natural plants and flowers; fresh fruit; fresh vegetables;
`fresh seaweeds; litter for domestic animals; malt for brewing and distilling; hops
`Class 32:  Fruit beverages and fruit juices; mineral and aerated waters; preparations for making liqueurs; beer; preparations for making
`effervescent beverages; waters [beverages]; syrups and other preparations for making beverages; drinking waters; de-alcoholized beer;
`orange drinks; imitation beer; vegetable juices [beverages]; soft drinks; red ginseng drinks
`Class 35:  Retail services provided by hypermarket services; supermarket; comprehensive shopping mall services provided via internet;
`business intermediary services relating to mail order by telecommunications; retail convenience stores; administrative processing of goods
`delivery services; ordering services for goods for others; advertising; retail store services featuring preserved, dried and cooked fruits and
`vegetables; retail store services featuring cereal-based processed products; retail store services featuring fruit beverages and fruit juices;
`retail store services featuring confectionery; retail store services featuring processed egg foodstuffs; retail store services featuring eggs;
`retail store services featuring polished cereals; retail store services featuring tofu; retail store services featuring rice cake; retail store
`services featuring prepared side dishes consisting primarily of meat, fish, poultry or vegetable; retail store services featuring fish and
`shellfish (preserved); retail store services featuring fodder; retail store services featuring waters [beverages]; retail store services featuring
`sauces; retail store services featuring edible flour; retail store services featuring sugar for food; retail store services featuring edible salt;
`retail store services featuring oils and fats for food; retail store services featuring meat; retail store services featuring fresh fruit; retail store
`services featuring fresh vegetables; retail store services featuring fresh seaweeds; retail store services featuring milk; retail store services
`featuring milk products; retail store services featuring processed meat products; retail store services featuring soy sauce and soy bean paste;
`retail store services featuring tea; retail store services featuring beverages with a tea base; retail store services featuring processed vegetable
`products; retail store services featuring vegetable juices [beverages]; retail store services featuring soft drinks; retail store services featuring
`coffee-based beverages; retail store services featuring bean-based snack foods; retail store services featuring processed seaweed products;
`retail store services featuring spices; retail store services featuring chemical seasoning; data processing relating to transportation logistics;
`collection of data relating to transportation logistics; compilation of business statistics relating to transportation logistics
`Class 39:  Transport/storage and packaging of goods; rental of warehouses; delivery of goods; provision of tourist travel information;
`arranging and booking of travel; booking of seats for travel; delivery of processed food ordered via online networks; postal, freight and
`courier services; logistics services consisting of the storage, transport and delivery of goods; transportation logistics information via
`computer communication networks; providing traffic information via mobile applications; storage of oil; depot services for the storage of
`vehicles; physical storage of electronically-stored data; packaging of goods; courier transport services; inbound and reverse logistics of
`others; logistics services consisting of the transportation, packaging, and storage of goods; delivery of goods ordered by on-line networks
`and the Internet; goods warehousing; same day delivery services; food delivery
`
`The registrants’ marks are the following relevant goods and services:   
`
`Mark
`ROCKET FRESH
`(U.S. Reg. No. 5080501)
`
`Goods/Services
`Class 29:  Ready-to-eat meals comprised
`primarily of meats, cheese and also
`including
`poultry,
`seafood,
`and/or
`vegetables, eggs, milk and milk products,
`processed nuts and edible seeds, pasta,
`rice, whole grains, processed grains,
`beans, sauces or seasonings, edible oils
`
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`and fats; Refrigerated food package
`combinations
`consisting primarily of
`meat, meat substitutes, poultry,
`fish,
`seafood,
`cheese, and/or vegetables,
`eggs, milk and milk products excluding
`ice cream,
`ice milk and frozen yogurt,
`processed beans, processed nuts and
`edible seeds, and also including pasta,
`whole grains, sauces or seasonings, all
`ready for cooking and assembly as a
`meal
`
`Class 30:  ice cream
`
`Class 30:  cereal-based snack food
`
`Class 31:  Live plants and flowers
`
`Class 32:  Non-alcoholic beverages,
`namely,
`carbonated beverages;
`soft
`drinks, namely, sodas
`
`Class 32:  Non-alcoholic beverages,
`namely,
`carbonated beverages;
`soft
`drinks, namely, sodas
`
`Class 32:  Beer
`
`Class 35:  Retail convenience stores
`
`Class 35:  Retail convenience stores
`
`Class 35:  Retail convenience stores
`
`ROCKET
`(U.S. Reg. No. 4209557)
`ROCKET FOODS SIMPLY OUT OF THIS
`WORLD EST. 2075
`(U.S. Reg. No. 4788593)
`ROCKET FARMS
`(U.S. Reg. No. 2758930)
`ROCKET FIZZ
`(U.S. Reg. No. 4396622)
`
`ROCKET FIZZ
`(U.S. Reg. No. 4396621)
`
`ROCKET CAN
`(U.S. Reg. No. 5002137)
`ROCKET
`(U.S. Reg. No. 324440)
`R ROCKET
`(U.S. Reg. No. 5324438)
`ROCKET
`(U.S. Reg. No. 5324439)
`
`Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be
`confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of
`confusion is determined on a case-by-case basis by applying 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) (called the “ du Pont factors”).   In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747
`(Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.   M2 Software, Inc. v. M2 Commc’ns, Inc ., 450 F.3d
`1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed.
`
`Cir. 2004)); see In re Inn at St. John’s, LLC , 126 USPQ2d 1742, 1744 (TTAB 2018).  
`
`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 and/or services.  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.
`
`A)    Similarity of the Marks
`
`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 Inn at St. John’s, LLC , 126 USPQ2d
`1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
`
`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
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`parties.”   Cai v. Diamond Hong, Inc., __ F.3d __, 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 (CCPA 1971)); TMEP §1207.01(b).
`
`Here, applicant’s mark “ROCKET FRESH” is highly similar in sight, sound, connotation, and overall commercial impression to registrants’
`various “ROCKET ” marks.   All of the respective marks begin with, or consist entirely of, the identical and dominant term “ROCKET” and
`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) (finding similarity between
`VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the
`mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698,
`1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first
`notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding
`“the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”).
`
`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 COMMUNICASH confusingly similar); In re Corning Glass Works, 229
`USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560
`
`(TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii).  
`
`The fact that applicant’s mark ends with the term “FRESH” does little to obviate the similarities between the marks because this wording is, at
`best, merely descriptive of applicant’s goods and services and is required to be disclaimed (see below).   Likewise, the additional terms in some
`of the registants’ marks ( i.e., “FOODS” in U.S. Reg. No. 4788593, “FARMS” in U.S. Reg. No. 2758930, and “FIZZ” in U.S. Reg. Nos.
`4396621 and 4396622, and “CAN” in U.S. Reg. No. 5002137) is also disclaimed.   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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d
`1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp. , 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii),
`(c)(ii).  Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when
`comparing marks.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105
`F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
`
`Moreover, the design element in U.S. Reg. No. 2758930, 4396621 also does little to distinguish it from registrant’s mark.   When evaluating a
`composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater
`impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services.  In re Aquitaine Wine
`USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012));
`TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and
`is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra
`Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc. , 710 F.2d 1565, 1570-71, 218 USPQ2d
`390, 395 (Fed. Cir. 1983)).
`
`In this case, consumers will likely focus on “ROCKET FRESH” in applicant’s mark and may confuse the mark with registrant’s “ROCKET
`MARKS” marks, especially since the goods and services of the respective parties are identical in part and highly related, as shown below.
`
`B)    Relatedness of the Goods
`
`              
`
`i.                                                     
`
`Class 29:
`
`Determining likelihood of confusion is based on the description of the goods and/or services stated in the application and registration at issue, not
`on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re
`
`i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).   
`
`In this case, the application uses broad wording to describe the goods (i.e., “processed meat products”, “chicken”, “fish and shellfish”, “foods
`products made from fish or shellfish” and “ prepared side dishes consisting primarily of meat, fish, poultry or vegetable”), which presumably
`encompasses all goods of the type described, including the more narrow goods in U.S. Reg. No. 5080501 (i.e., “ food package combinations
`consisting primarily of meat, meat substitutes, poultry, fish, seafood, cheese, and/or vegetables, eggs, milk and milk products excluding ice
`cream, ice milk and frozen yogurt, processed beans, processed nuts and edible seeds, and also including pasta, whole grains, sauces or
`seasonings” and “Ready-to-eat meals comprised primarily of meats, cheese and also including poultry, seafood, and/or vegetables, eggs, milk
`and milk products, processed nuts and edible seeds, pasta, rice, whole grains, processed grains, beans, sauces or seasonings, edible oils and
`
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`fats”).   See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d
`1007, 1025 (TTAB 2015).  Thus, applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627,
`1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter
`IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9
`(TTAB 2004)).
`
`Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to
`travel in the same channels of trade to the same class of purchasers.”   In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed.
`
`Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  
`
`Moreover, the applicant’s goods and the goods in U.S. Reg. No. 5080501 are highly related because they frequently emanate from a common
`source.  The attached Internet evidence consists of manufacturers/producers of processed meat products, chicken, fish, shellfish, food products
`made from fish or shell fish, processed vegetable products, bean processed foodstuffs, and/or prepared side dishes consisting primarily of meat,
`fish, poultry or vegetable that also manufacture/produce food package combinations consisting primarily of meat, meat substitutes, poultry, fish,
`seafood, cheese, and/or vegetables, eggs, milk and milk products excluding ice cream, ice milk and frozen yogurt, processed beans, processed
`nuts and edible seeds, and also including pasta, whole grains, sauces or seasonings and/or Ready-to-eat meals comprised primarily of meats,
`cheese and also including poultry, seafood, and/or vegetables, eggs, milk and milk products, processed nuts and edible seeds, pasta, rice, whole
`grains, processed grains, beans, sauces or seasonings, edible oils and fats.  See the following:
`
`Boar’s Head
`https://boarshead.com/products
`https://boarshead.com/products/snacks
`Frontera
`http://www.fronterafoods.com/products/frozen-bowls-skillets
`Amy’s
`https://www.amys.com/our-foods?&onthemenu[0]=beans&items=24
`https://www.amys.com/our-foods?onthemenu[0]=bowls&items=72
`https://www.amys.com/our-foods/teriyaki-bowl
`
`The attached Internet evidence establishes that the same entity commonly manufactures/produces the relevant goods and markets the goods under
`the same mark, and 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.  Thus, 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).
`
`            
`
`ii.                                                     
`
`Class 30:
`
`In this case, the application uses broad wording to describe the goods (i.e., “milk products” and “ cereal-based processed products”), which
`presumably encompasses all goods of the type described, including the more narrow goods in U.S. Reg. No. 4209557 (i.e., “ice cream”) and
`U.S. Reg. No. 4788593 (“cereal-based snack food”).   See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw.
`Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus, applicant’s and registrants’ goods are legally identical.  See, e.g.,
`In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336,
`209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v.
`Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
`
`Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to
`travel in the same channels of trade to the same class of purchasers.”   In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed.
`
`Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).           
`
`Class 31:
`
`iii.                                                     
`
`In this case, the application uses broad wording to describe the goods (i.e., “natural plants and flowers”), which presumably encompasses all
`goods of the type described, including the more narrow goods in U.S. Reg. No. 2758930 (B., “live plants and flowers”).   See, e.g., In re Solid
`State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015).  Thus,
`applicant’s and registrant’s goods are legally identical.  See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo
`Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110
`USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
`
`Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to
`
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`travel in the same channels of trade to the same class of purchasers.”   In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed.
`
`Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).           
`
`Class 32:
`
`iv.                                                     
`
`When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods
`in the application and registration at issue, not on extrinsic evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
`F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16
`
`USPQ2d 1783, 1787 (Fed. Cir. 1990)).  
`
`In this case, the goods in the application and U.S. Reg. No. 5002137 are identical in part (i.e., “beer”).   Therefore, it is presumed that the
`channels of trade and class(es) of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801
`(Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).
`
`Moreover, the goods in the application and U.S. Reg. Nos. 4396621 and 4396622 are identical in part (i.e., “soft drinks”).   Therefore, it is
`presumed that the channels of trade and class(es) of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27
`USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).
`
`            
`
`v.                                                     
`
`Class 35:
`
`In this case, the services in the application and U.S. Reg. Nos. 324440, 5324438, and 5324439 are identical in part (i.e., “retail convenience store
`services”).   Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods.  See Cai v. Diamond
`Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed.
`Cir. 2012)).
`
`Thus, the foregoing makes clear that applicant’s and registrants’ goods and services are related for likelihood of confusion purposes.
`
`Therefore, registration is refused in International Classes 29, 30, 31, 32, and 35 under Section 2(d) for a likelihood of confusion.
`
`Applicant may respond to the stated refusal by submitting evidence and arguments against the refusal.  In addition, applicant may respond by
`doing one of the following:
`
`(1)  Deleting the classes to which the refusal pertains; or
`
`(2)  Filing a request to divide out the goods and/or services that have not been refused registration, so that the mark may proceed toward
`publication for opposition in the class to which the refusal does not pertain.  See 37 C.F.R. §2.87.  See generally TMEP §§1110 et seq.
`(regarding the requirements for filing a request to divide).  If applicant files a request to divide, then to avoid abandonment, applicant
`must also file a timely response to all outstanding issues in this Office action, including the refusal.  37 C.F.R. §2.87(e).;
`
`However, if applicant responds to the refusal(s), applicant must also respond to the requirement(s) set forth below.
`
`PRIOR-FILED APPLICATIONS
`
`The filing dates of pending U.S. Application Serial Nos. 87648967, 88058927, 79213411, 87648967, 87901164, and 87901192 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.
`
`DISCLAIMER REQUIRED
`
`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 “FRESH” because it is not inherently distinctive.   This unregistrable term at best is merely
`descriptive of a quality, characteristic, and/or feature, of applicant’s goods and 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 attached dictionary evidence shows that the term “FRESH” is defined as “[r]ecently made, produced, or harvested; not stale or spoiled” or
`“[n]ot preserved, as by canning, smoking, or freezing.” Thus, the wording merely describes a quality, characteristic, and/or feature, of
`applicant’s goods and services—i.e., fresh foods and beverages, the retail sale of fresh foods and beverages, and the transport, packing, and/or
`delivery of fresh foods and beverages.
`
`Applicant may respond to this issue by submitting a disclaimer in the following format:  
`No claim is made to the exclusive right to use “FRESH” 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.  
`
`IDENTIFICATION OF GOODS & SERVICES
`
`Portions of applicant’s identification of goods and services are indefinite and must be clarified because the precise nature of the goods and
`services is unclear.  TMEP §§1402.01, 1402.03.  The USPTO has the discretion to determine the degree of particularity needed to clearly identify
`the goods and/or services covered by a mark.  In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A , 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In
`re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)).  Accordingly, the USPTO requires the description of goods
`and services in a U.S. application to be specific, definite, clear, accurate, and concise.  TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp.
`Commc’ns S.p.A , 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats.
`1954).  Explanations and suggested acceptable wording are found below.
`
`At the outset, the identification of goods and/or services contains parentheses.  Generally, applicants should not use parentheses and brackets in
`identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to
`indicate goods and/or services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and/or services not
`claimed.  See TMEP §1402.12.  The only exception is that parenthetical information is permitted in identifications in an application if it serves to
`explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the
`identification, e.g., “fried tofu pieces (abura-age).”   Id.
`
`Therefore, applicant must remove the parentheses from the identification and incorporate any parenthetical or bracketed information into the
`description of the goods and/or services.
`
`In International Class 29:
`
`The wording “food products made primarily from fruits” in the identification of goods is indefinite and must be clarified beca