PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`EVIDENCE SECTION
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)EVIDENCE FILE NAME(S)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)ORIGINAL PDF FILE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)CONVERTED PDF FILE(S)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(16 pages)
`
`The table below presents the data as entered.
`
`Entered
`
`86258033
`
`LAW OFFICE 113
`
`http://tsdr.uspto.gov/img/86258033/large
`
`BELLYBIOTIC
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style, size
`or color.
`
`evi_1-701095314-20141013143137179326_.__FINAL__BELLYBIOTIC__86258033__-
`_OA_Response.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\580\86258033\xml5\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\580\86258033\xml5\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\580\86258033\xml5\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\580\86258033\xml5\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\580\86258033\xml5\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\580\86258033\xml5\ROA0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\580\86258033\xml5\ROA0008.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\580\86258033\xml5\ROA0009.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\580\86258033\xml5\ROA0010.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\580\86258033\xml5\ROA0011.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\580\86258033\xml5\ROA0012.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\580\86258033\xml5\ROA0013.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\580\86258033\xml5\ROA0014.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\580\86258033\xml5\ROA0015.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\580\86258033\xml5\ROA0016.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\862\580\86258033\xml5\ROA0017.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`Response to May 28, 2014 Office Action
`
`ADDITIONAL STATEMENTS SECTION
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`SUPPLEMENTAL REGISTER
`
`NEW ATTORNEY SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`The applicant seeks registration of the mark on the Supplemental Register (i.e., a change
`of the words 'Principal Register' to 'Supplemental Register').
`
`Tom Dunlap
`
`DunlapWeaver PLLC
`
`211 Church St., SE
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`7037777319
`
`ip@dunlapweaver.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`CORRESPONDENCE SECTION
`
`ORIGINAL ADDRESS
`
`NEW CORRESPONDENCE SECTION
`
`NAME
`
`FIRM NAME
`
`STREET
`
`CITY
`
`STATE
`
`ZIP/POSTAL CODE
`
`COUNTRY
`
`PHONE
`
`EMAIL
`
`PHARMVISTA INC.
`31 HARRIER CT
`WAYNE
`New Jersey (NJ)
`US
`07470-8461
`
`Tom Dunlap
`
`DunlapWeaver PLLC
`
`211 Church St., SE
`
`Leesburg
`
`Virginia
`
`20175
`
`United States
`
`7037777319
`
`ip@dunlapweaver.com
`
`AUTHORIZED EMAIL COMMUNICATION
`
`Yes
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`/Seth Willig Chadab/
`
`Seth Willig Chadab
`
`Associate Attorney, DunlapWeaver PLLC, Maryland Bar Member
`
`7037777319
`
`10/13/2014
`
`YES
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`Mon Oct 13 15:08:35 EDT 2014
`
`

`

`USPTO/ROA-XX.XXX.XX.XX-20
`141013150835847467-862580
`33-5009c6ef9f1fc75353863e
`ab087efbf62bb2a4c3d90a8f5
`90083e2e173391ce4-N/A-N/A
`-20141013143137179326
`
`TEAS STAMP
`
`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 86258033(cid:160)BELLYBIOTIC(Standard Characters, see http://tsdr.uspto.gov/img/86258033/large) has been amended as
`follows:
`
`EVIDENCE
`Evidence in the nature of Response to May 28, 2014 Office Action has been attached.
`Original PDF file:
`evi_1-701095314-20141013143137179326_.__FINAL__BELLYBIOTIC__86258033__-_OA_Response.pdf
`Converted PDF file(s) ( 16 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`Evidence-11
`Evidence-12
`Evidence-13
`Evidence-14
`Evidence-15
`Evidence-16
`
`ATTORNEY ADDRESS
`Applicant proposes to amend the following:
`Proposed:
`Tom Dunlap of DunlapWeaver PLLC, having an address of
`211 Church St., SE Leesburg, Virginia 20175
`United States
`ip@dunlapweaver.com
`7037777319
`
`CORRESPONDENCE ADDRESS CHANGE
`Applicant proposes to amend the following:
`Current:
`PHARMVISTA INC.
`31 HARRIER CT
`WAYNE
`New Jersey (NJ)
`US
`
`

`

`07470-8461
`
`Proposed:
`Tom Dunlap of DunlapWeaver PLLC, having an address of
`211 Church St., SE Leesburg, Virginia 20175
`United States
`ip@dunlapweaver.com
`7037777319
`
`ADDITIONAL STATEMENTS
`Supplemental Register
`The applicant seeks registration of the mark on the Supplemental Register (i.e., a change of the words 'Principal Register' to 'Supplemental
`Register').
`
`SIGNATURE(S)
`Response Signature
`Signature: /Seth Willig Chadab/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 10/13/2014
`Signatory's Name: Seth Willig Chadab
`Signatory's Position: Associate Attorney, DunlapWeaver PLLC, Maryland Bar Member
`
`Signatory's Phone Number: 7037777319
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an
`associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not
`currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently
`filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or
`Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`Mailing Address: (cid:160)(cid:160)(cid:160)Tom Dunlap
`(cid:160)(cid:160)(cid:160)DunlapWeaver PLLC
`(cid:160)(cid:160)(cid:160)211 Church St., SE
`(cid:160)(cid:160)(cid:160)Leesburg, Virginia 20175
`
`Serial Number: 86258033
`Internet Transmission Date: Mon Oct 13 15:08:35 EDT 2014
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20141013150835847
`467-86258033-5009c6ef9f1fc75353863eab087
`efbf62bb2a4c3d90a8f590083e2e173391ce4-N/
`A-N/A-20141013143137179326
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Serial No.:
`Mark:
`
`86258033
`BELLYBIOTIC
`
`Pharrnvista Inc.
`Applicant:
`Office Action Date: May 28, 2014
`
`RESPONSE TO MAY 28, 2014 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e—mailed on May 28, 2014. The Applicant
`respectfully submits the following response. Applicant submits that the above-identified
`trademark application for BELLYBIOTIC is in condition for allowance to publication.
`
`Potential Section 21d! Refusal: Likelihood of Confusion
`
`Applicant submits a preliminary response to the potential section 2(d) refusal; however,
`Applicant reserves all rights to provide a detailed and more descriptive response if Examining
`Attorney Jennifer D. Richardson raises a Section 2(d) refusal in a subsequent Office Action.
`
`Preliminary Response with Reservation ofRights
`
`The USPTO has refused registration of the Applicant’s mark, BELLYBIOTIC, “because of a
`likelihood of confusion with the mark in US. Registration No. 3986965.” “[T]he question of
`confusion is related not to the nature of the mark but to its effect ‘when applied to the
`applicant?” In re El du Pont de Nemous & Co., 476 F.2d 1357, 1360-61 (C.C.P.A. 1973). The
`United States Court of Customs and Patent Appeals listed thirteen factors to weigh in the
`likelihood of confusion analysis and stated that all of the factors must be considered “when of
`record.” Id. at 1361. The Examining Attorney has indicated that similarity of the marks and
`similarity or relatedness of the goods and/or services weigh against the Applicant’s mark.
`However, Applicant respectfully asserts that when all factors are weighed, the majority weighs
`against the existence of a likelihood of confusion.
`
`(I) Similarity of Conflicting Designations
`
`The first factor is the similarity of the conflicting designations, including in their appearance,
`sound, meaning or connotation, and commercial impression. In re E. I du Pont de Nemours &
`Ca, 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). A similar phrase found in two
`marks is not dispositive of a confusing similarity between the marks when the marks give off
`different commercial expressions. See Kellogg Co. v. Pack ’em Enterprises, Inc, 951 F.2d 330
`(Fed. Cir. 1991). When Applicant’s mark BELLYBIOTIC, and Registranfs mark PRO-BELLY-
`OTIC are compared, the appearance is not confusingly similar.
`
`

`

`A) ADDING DIFFERENT TERMS TO A COMMON ELENIENT CAN REDUCE A
`LIKELIHOOD OF CONFUSION
`
`Courts across the country have long held that the addition of different terms to a common
`element appreciably reduces the likelihood of confusion between two marks. See US Trust v.
`US. States Trust Co., 210 F. Supp. 2d 9, 27-28 (D. Mass 2002) (UNITED STATES TRUST
`COMPANY not confusingly similar to UNITED STATES TRUST COMPANY OF BOSTON,
`both for financial services); Colgate Palmolive Co. V. Carter-Wallace, Inc, 432 F.2d 1400, 1402,
`167 U.S. P. Q. 529, 530 (C.C.P.A. 1970) (PEAK PERIOD not confusing similar to PEAK);
`Servo Corp. Am. 12. Servo—TekProa’. Co, 289 F. 2d 955, 981 129 U.S.P.Q. 352, 353 (C.C.P.A.
`1961) (SERVOSPEED not confilsingly similar to SERVO); Sweats Fashions, Inc. v. Pannill
`Knitting Co., 833 F. 2d 1560, 1564, 4 U.S.P.Q. 2d 1793, 1796 (Fed. Cir. 1987) (SWEATS not
`confusing similar to ULTRA SWEATS, both for sportswear); Gen. Mills Inc. V. Kellog Co., 824
`F. 2d 622, 627, 3 U.S.P.Q. 2d 1442, 1446 (8th Cir. 1987) (OATMEAL RAISIN CRISP not
`confilsingly similar to APPLE RASIN CRISP, both for breakfast cereal); Consol. Cigar v. RJR
`Tobacco Co., 491 F.2d 1265, 1267, 181 U.S.P.Q. 44, 45 (C.C.P.A. 1974) (DUTCH APPLE for
`pipe tobacco not confilsingly similar to DUTCH MASTERS for cigars); Wooster Brush Co. v.
`Prager Brush Co., 231 USPQ 316 (TTAB 1986) (POLY PRO and POLY FLO not confusingly
`similar).
`
`Here, the USPTO suggests that it will refuse registration of Applicant’s mark,
`BELLYBIOTIC, because of an alleged likelihood of confiision with the registered mark PRO-
`BELLY-OTIC.
`
`Applicant’s Word Mark
`
`Cited Registered Mark
`
`BELLYBIOTIC
`
`PRO-BELLY-OTIC
`
`INTERNATIONAL CLASS 005
`
`INTERNATIONAL CLASS 005
`
`Dietary supplements; Nutritional supplements,
`namely, probiotic compositions in liquid form
`
`Probiotic nutritional and dietary supplements in
`the form of functional drinks containing beneficial
`bacteria resulting from fermented compositions
`such as greens, grains, fruits, Vegetables, and
`proteins
`
`mark .
`
`It is well established that "likelihood of confusion cannot be predicated on dissection of a
`. the ultimate conclusion rests on consideration of the marks in their entireties." In re
`
`.
`
`National Data Corp., 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(iV). The
`Examining Attorney must look to the overall impression that the marks create, rather than
`comparing individual parts. See Mead Data Cent, Inc. v. Toyota Motor Sales, USA, Inc., 875
`F.2d 1026, 1029, 10 USPQ2d 1961 (2d Cir. 1989). When the marks are compared in their
`
`

`

`entireties, they are significantly different in visual and aural impression and in overall
`commercial impression. Similarities and differences must both be considered in the analysis. In
`re Electrolyte Laboratories Ir1c., 929 F.2d 645, 647, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990)
`(K+ and design for dietary potassium supplement held not likely to be confused with K+EFF
`(stylized) for dietary potassium supplement). See also Lugino ’s Inc. v. Stoufler Corp, 50
`USPQ2d 1047, 1051 (8th Cir. 1999) (“Lean Cuisine” not confusingly similar to “Michelina’s
`Lean ‘N Tasty” despite both marks use of the word “Lean” for low—fat frozen foods).
`
`B) HYPHENS ARE DISTINCT PUNCTUATION CREATING A DIFFERENT
`COMMERCIAL IMPRESSION
`
`Visually, BELLYBIOTIC is easily distinguished from PRO-BELLY-OTIC because PRO-
`BELLY—OTIC includes punctuations that standout in the mark. While Applicant’s mark is one
`word, the cited registration is “PRO (hyphen) BELLY (hyphen) OTIC.” The hyphens in the
`cited registration create a distinct visual separation that compartmentalizes the cited mark into
`three parts. Applicant’s mark is not separated into multiple parts, nor does it include hyphens.
`Under a likelihood of confilsion analysis, marks are to be compared in their entireties. To ignore
`the presence and impact that the hyphens have on the cited mark would be a failure to review the
`marks in their entirety. See Exhibit A. Another key difference is that Applicant’s mark is absent
`the word “PRO.” Furthermore, Applicant’s mark uses the three syllable term “BIOTIC,” which
`is different than the term “OTIC,” which is found in the cited registered mark.
`
`C) THE USE OF THE MARKS ON THE RESPECTIVE GOODS ALSO APPEAR
`DIFFERENTLY
`
`The use of Applicant’s mark on Applicant’s goods appears differently from the use of the
`Registrant’s mark on the Registrant’s goods. The Applicant’s mark is used with imagery
`associated with infants, the cited registered mark is not. See Exhibit C. Furthermore, the label
`reflects “BELLYBIOTIC” with a unique style of capitalization and without any additional spacing
`between the words.
`
`The Registrant’s mark appears in a unique stylized-font and appears as “pro-belly-otic,” in lower
`case. The Registrant’s mark is also surrounded by additional language and the company’s trade
`name in similar font and style. See Exhibit A.
`
`In conclusion, when comparing the marks side-by-side, they do not appear confilsingly similar
`for purposes of a likelihood of COIlfilS10I1 analysis. Therefore, this factor weighs in Applicant’s
`favor.
`
`(2) Similarity or Dissimilarity and the Nature of the Goods or Services
`
`The second factor is the similarity or dissimilarity and the nature of the goods or services as
`described in an application or registration or in connection with a prior use of the mark. In re E.
`I. du Pont de Nemours & C0,, 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).
`Where the goods of the Applicant and Registrant are different, the Examining Attorney bears the
`burden of showing that different goods would commonly be provided by the same source. See
`
`

`

`e.g., In re Shipp, 4 U.S.P.Q.2d 1174, 1176 (TTAB 1987) (Examining Attorney's refusal reversed
`because Applicant's use of PURITAN in connection with dry cleaning services and Registrants‘
`uses of PURITAN in connection with dry cleaning equipment and dry cleaning chemicals lack of
`proof of trade practices and fail to show likelihood, rather than possibility, of confusion).
`
`The issue is not whether the goods will be COI1filS6d with each other, but rather whether the
`public will be confused about their source. See Safety—Kleen Corp. v. Dresser Indus, Inc., 518
`F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975). Ifthe goods or services in question are
`not related or marketed in such a way that they would be encountered by the same persons in
`situations that would create the incorrect assumption that they originate from the same source,
`then, even if the marks are identical, confusion is not likely. See, e. g., Shen Manufacturing Co. v.
`Ritz Hotel Ltd, 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004); Quartz Radiation Corp. v.
`Comm/Scope Ca, 1 USPQ2d 1668 (TTAB 1986).
`
`In the present case, the Examining Attorney makes no statement as to the relatedness or
`marketing of the goods and services of the marks.
`It is not enough to suggest that products are
`related because they both contain probiotics. The Examining Attorney must show that the public
`will be confilsed as to the source of the Applicant’s services. See Paula Payne Prods. Co. v.
`Johnson ’s Pub ’g Co., 473 F.2d 901, 902, 177 USPQ 76, 77 (C.C.P.A. 1973) (“[T]he question is
`not Whether people will confuse the marks, but rather Whether the marks will confuse people into
`believing that the goods they identify emanate from the same source”), In re White Rock
`Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (failing to establish that Wine and vodka
`infilsed with caffeine are related goods because there was no evidence that vodka and wine
`emanate from a single source under a single mark or that such goods are complementary
`products that would be bought and used together).
`
`Here, there is no evidence provided by the Examining Attorney that the Registrant provides a
`probiotic liquid used for treating antibiotic associated diarrhea in infants and children. Further
`review of the Registrant’s website shows a fermented probiotic drink for general use. See
`Exhibit B. Therefore, it is not likely that the public would be confilsed by the source of the
`Applicant’s and the Registrant’s goods.
`
`A) THE GOODS AS THEY ARE SOLD APPEAR DISTINCTLY DIFFERENT
`
`The Applicant’s goods are easily distinguished from the Registrant’s goods by its unique
`commercial impression. The Applicant’s probiotic solution comes in a small dark 10ml tamper
`proof bottle. It is marketed as a digestive relief treatment for infants. See Exhibit C.
`
`The Registrant’s goods are packaged in clear plastic 500mL bottles that resemble a standard
`plastic drinking bottle. Registrant’s goods come in three colorful flavors, namely, grapefruit,
`lime mint, and great plains. On the face of the packaging, the Registrant markets its goods as a
`“botanical liquid supplement.” The impression created by the Registrant’ s packaging is that of a
`refreshing beverage enriched with probiotics and other nutritional supplements. See Exhibit D.
`
`

`

`B) THE CONSUMERS OF THE GOODS DIFFER THEREFORE THE
`CO1\/INIERCIAL IMPRESSION DIFFERS
`
`The Applicant’s goods are marketed for “digestive support,” specifically to be consumed by
`infants. Therefore, the ordinary purchasers of Applicant’s goods will be parents seeking to
`manage acute and chronic gastrointestinal disorders for their children. The Applicant markets
`BELLYBIOTIC as a five day course of therapy for infant and child health disorders. The
`specific purpose for the Applicant’s goods further creates a unique commercial impression that is
`distinctive and unrelated to the Registrant’s use. See Exhibit E.
`
`The Registrant manufactures a beverage that acts as a vehicle to deliver a combination of
`probiotics, enzymes, amino acids, anti-oxidents, and vitamins. The purchasers of the
`Registrant’s goods are also generally the consumers, unlike the Applicant’s goods. The
`Registrant does not identify its product as a treatment for any specific ailment, rather it appears
`to be a “botanical liquid supplement.” This fiarther distinguishes the Registrant’s mark from the
`Applicant’s mark. See Exhibit B.
`
`The similarities between the Applicant’s and Registrant’s trademarks are insufficient to support a
`finding of likelihood of confusion. Further, there is no evidence that the Applicant’s and the
`Registrant’s goods are used together or by the sa.rne purchasers. Applicant respectfully asserts
`that its goods are not related nor marketed in a way that would suggest they emanate from the
`same source. Therefore, this factor weighs strongly against finding likelihood of confusion.
`
`(3) Similarity or Dissimilarity ofEstablished Likely to Continue Trade Channels
`
`The third factor is the similarity or dissimilarity of established, likely-to-continue trade channels. In
`re E. 1. Lin Pant de Nemours & Ca, 476 F.2d at 1361, 177 USPQ at 567. This factor heavily weighs
`against a finding of a likelihood of confusion. Even where two marks are identical, courts and the
`TTAB routinely hold that there is no likelihood of confusion “if the goods or services in question
`are not related in such a way that they would be encountered by the same persons in situations
`that would create the incorrect assumption that they originate from the same source.” T.M.E.P. §
`1207.1(a)(1) (citing Local Trademarks, Inc. v. Handy Boys, Inc., 16 U.S.P.Q.2d 1156 (T.T.A.B.
`1990) (LITTLE PLUMBER for drain opener not confusingly similar to LITTLE PLUMBER and
`Design for advertising services).
`
`Registrant’s trade channels appear to be driven by online retail sales through its website. See
`Exhibit C. The trade channels for the Registrant’s bottled fermented drink are clearly defined for
`a specific market. Consumers would likely identify the Registrant’s trademark only for bottled
`drinks fortified with probiotics for general use. Registrant’s consumers would undoubtedly
`recognize this mark among the other similar products sold by the Registrant, namely “pro—daily—
`otic” and “pro-arnino-otic.”
`
`Applicant asserts that its customers are not in the normal channels, rather they are parents
`seeking a probiotic liquimix to help treat antibiotic associated diarrhea in infants and children
`between the ages of 6 months to 12 years. See Exhibit D. Applicant’s goods are promoted and
`
`

`

`sold exclusively through their website.) The goods move through very discrete trade channels
`based on their target consumers.
`
`Therefore, this factor weighs against the existence of likelihood ofconfu.sion and in favor of the
`Applicant.
`
`(4) Conditions Upon Sales Are illade
`
`The fourth factor is the conditions under which and buyers to whom sales are made (i.e. impulse
`v. careful). In re E. I. dz: Ponf de Nen702,rr.s' & Co., 476 F.2d at 1361, 177 USPQ at 567. Consumers
`interested in Applicant’s goods will be sophisticated consumers searching for probiotic
`supplements for infants. Therefore, consumers will carefully identify BELLYBIOTIC when
`searching for the Applicant's goods. It is well-settled that the likelihood of confusion is reduced
`where purchasers and potential purchasers of the services at issue are sophisticated. See
`Elecrronic [)e.s'ign & Sales, Inc. v. Electronic Dara Sys. Corp, 954 F.2d 713, 718 (Fed. Cir.
`1992) (no confusion between identical marks where, infer alfa. both parties’ goods and services
`“are usually purchased after careful consideration by persons who are highly knowledgeable
`about the goods or services and their source”); see also T.M.E.P. § 1207.01 (d)(vii) (care in
`purchasing tends to minimize likelihood of confusion).
`
`The Applicant’s customers are likely to be parents of infants or young children seeking a
`treatment for acute and chronic gastrointestinal disorders. As such, Applicant’s customers are
`likely to exercise a high "level of care and are not likely to be confused into thinking Registrant’s
`product originates from, or is sponsored by, Applicant or vice versa. This factor weighs heavily
`against a likelihood of confu.sion between these two marks.
`
`(5) Ftime of the Prior .Mark
`
`The fifth factor is the fame of the prior mark (e.g.. sales, advertising, length of use, era). Id.
`There is no evidence that the prior mark is famous. This factor weighs against a likelihood of
`confusion.
`
`(6) Number and Nature ofSin1ilar fllarks in Use on Similar Goods
`
`The sixth factor is the number and nature of similar marks in use in connection with similar
`
`goods. Id. In this case, the USPTO has not made any assertions as to the number and nature of
`marks used in connection with probiotic liquids. However, if the Applicant’s provides evidence
`that establishes that the consuming public is exposed to third-party use of similar marks on
`similar goods, this evidence "is relevant to show that a mark is relatively weak and entitled to
`only a narrow scope ofprotection." See Palm Bay Irnporm, Inc. V. Veuve C/icqn01‘P0nsardin
`M'a1'.s'0n Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 16.93 (Fed. Cir. 2005).
`
`Applicant is aware of three registered trademarks that are for similar marks on similar goods.
`The marks GOODBELLY (Reg. No. 3951856). GOODBELLY KIDS (Reg. No. 3876248), and
`
`roduct& roduct
`
`id=81
`
`

`

`GOODBELLY TO GO (Reg. No. 3949975) share the Registrant’s use of the term “Belly” and
`are for nearly identical products. Therefore, Registrant’s mark is entitled to only a narrow scope
`of protection. See Exhibit F.
`
`Applicant asserts that this factor weighs against finding a likelihood of COI}.fi1Sl0I1.
`
`(7) Nature and Extent ofAny Actual Confusion
`
`The seventh factor concerns the nature and extent of any actual confusion. Id. No evidence exists
`that any consumer has been confilsed by the use of these two marks. Applicant asserts that this
`factor weighs against finding a likelihood of confusion.
`
`(8) Length of Time During and Conditions under which There Has Been Concurrent Use
`Without Evidence ofActual Confusion
`
`The eighth factor is the length of time during and conditions under which there has been
`concurrent use without evidence of actual COI1fi.1Sl0I1. Id Applicant’s mark has been in use since
`September 30, 2012. Registrant’s mark has been in use since July 27, 2010. Therefore, there has
`been concurrent use of the mark for two years without evidence of actual confusion. This factor
`also weighs in the Applicant’s favor.
`
`(9) Variety of Goods on which a Mark Is or Is Not Used
`
`The ninth factor is the variety of goods on which a mark is or is not used (house mark, “family”
`mark, product mark). In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361, 177 USPQ at 567.
`The Cited Registration is part of a family of marks, but they do not share the word “belly” in
`their names. Consequently, this factor weighs against a likelihood of confusion.
`
`(10) Market Interface Between Applicant and the Owner of a Prior Mark
`
`The tenth factor is the market interface between Applicant and the owner of a valid, prior mark.
`Id.
`In this case, there has been no interface between the Applicant and the Registrant, and
`therefore this factor is also in the Applicant’s favor.
`
`(1I) Extent to which Applicant has a Right to Exclude Others from Use of its Mark on its
`Goods
`
`The eleventh factor is the extent to which Applicant has a right to exclude others from use of its
`mark on its goods. Id. The Applicant cannot claim rights to exclusive use apart from common
`law usage of the mark since 2012. This factor is also in the Applicant’s favor.
`
`(12) Extent ofPotential Confusion
`
`The twelfth factor is the extent of potential confusion, i.e., whether de minimis or substantial. Id.
`Registrant’s use of the trademark does not involve substantial use of the mark in all fifty states.
`Since the Registrant’s mark is used in specific industries for specific clients, the potential for
`confilsion is not likely to extend across the country through all economic classes. Therefore, the
`
`

`

`potential for confusion is de minimis and weighs heavily against a likelihood of confusion.
`
`(13) Whether There Are any Other Established Facts Probative ofthe Eflect of Use
`
`The thirteenth factor looks to whether there are any other established facts probative of the effect
`of use. Applicant reserves all rights to provide a detailed and more descriptive response on this
`factor if the USPTO should raise a Section 2(d) refusal in a subsequent Office Action.
`
`Conclusion
`
`When determining whether an Applicant’s mark creates a likelihood of confusion, with marks
`covered by cited registrations " [a] showing of mere possibility of confiision is not enough; a
`substantial likelihood that the public will be COIlfi1S6(l must be shown." Omaha Natl. Bank, 633
`F. Supp. at 234, 229 U.S.P.Q. at 52. Applicant’s trademark is dissimilar to the Registrant’s
`trademark visually, in sound, and in commercial impression. Applicant offers goods that are not
`related to Registrant’s goods. Finally, Applicant’s trade channels do not overlap with the
`Registrant. Applying the factors set forth in DuPont, and absent “substantial doubt,” In re Mars,
`Inc., 741 F. 2d 395, 396 222 U.S.P.Q. 938 (Fed. Cir. 1984), registration ofApplicant’s mark is
`appropriate.
`
`For these reasons and others, the majority of these factors weigh against a finding of a likelihood
`of confusion. Applicant respectfully submits that the mark for BELLYOTIC does not create a
`likelihood of confusion with Registration Number 3986965 for PRO-BELLY-OTIC.
`
`Potential Section 2 e 1 Refusal
`
`Applicant responds to the refusal by amending the application to seek registration on the
`
`Supplemental Register.
`
`Reguirement to Provide Information and Documentation
`
`The Examining Attorney has requested the following additional information:
`
`1.
`
`Information relating to the goods and wording appearing in the mark
`
`See Exhibit C and Exhibit E
`
`.
`
`Is the wording “biotic” or “biotics” commonly used in applicant’s industry to refer to
`
`a supplement which contains living organisms, i.e. probiotics, etc.
`
`The wording “biotic” and “biotics” are commonly used in applicant’s industry to refer
`
`to probiotics.
`
`

`

`Exhibit A
`
`Agglicanfls Goods
`
`CH-ecuun for use
`. Turn in Illa
`direction M the
`arrow mark
`. Shake well
`.Opu-
`
`

`

`Exhibit B
`
`Our fermented probiotic foods
`
`pro-bellywtic probiotic driilts
`
`The cleaners and scrubb-an
`
`These powerful pmbiotic liquids are rich in
`enzymes, amino acids, antiaxida nts, minerals and B
`viiamins.They are the cleanersand scrubbers that
`clean out the bad bacteria. while repopulating with
`thegood bacteria and live enzymes by remodel-
`ing 1:he fining of your stomach. This sets up a solid
`foundation for nutrients to be absorbed. All our
`
`fiquids aid in decreasing sugar and carb crafings
`and naturally detoxify.
`
`Avalable It 3 flaimls: GIIAPEFIILIT, LIME-Milli’ and GREAT
`CRMNS
`
`~1'aliel In4nzdaliy_DrinkitalonenraddtoyourfauoIitebeverage, smoothleorproteinclrlnlr.
`+Wedsosugges1add|rrglt1Joourpcuu!ersasane:tbabenefit
`Jtartuffsinwandralnp opt
`
`GIAPEFIIIIT Ingredients: flenlharlorpnic hgreilams. Barley Malt. Blue Agave. Mother Cultureai‘ lactobacllus strahs and
`other Prubioflc lIHZl'CI)i§fl‘Il5l'I'|§§ Grapefruit lice‘, Mung Beat, Brcmn Rte, liled Lentil, Chldcpea, Flax Seed, Alfflla, Illllet and
`Qulnoa. ‘All natural.
`
`I.flE-MId'l'h1yed|u|t::Cerilhed0rgulc llrgrudhnia. Barley Malt. Blue Agave. Mod|erCLIltureol lactobacllhs sualnsand
`other Pmbintic hiicm-organisms, Ginger lion: Mung Bean. Rice, lentl. Ciniclcpea. Lime Juice‘. Flax Seed. Australian Mint. Alfalfa.
`hllletandfiulnoa. ‘AI natural
`
`GIIEKI fllllli-Irqraflalllszifulllad Oruprllc hyedluufiarleyflalt, Bheiiga-re. Mather Culture ofLacmbacIus strains and
`other Pmbic-Iic Microorganisms. Grapefmit .Irlm',Ginger Rout. Oat grnaiis inhale I.'xain,-I.'_nrn Whole -Grin, Alfalfa. limwn lilce,
`Pearl Barleyfirain. FlaxSeec|.Mr.|ng liean. flyE'Pfl'udeCi'iil1.Wl'ieatlM'IDE Csrah. Millet Wholefiralnand Buclmiieat. ‘AI natural
`
`..%.@©®
`
`How to best enjoy our foods
`
`Our products are highly concentrated with amino acids, antimtidants, enzymes, pmbiotics and vitamins
`from raw, organic food sources. We ferment our ingredients to maintain all the nutrients. The fermenta-
`tion enables them to be delivered into your bodyfor immediate absorption and assimilation.
`
`

`

`Exhibit C
`
`Bacillus clausii
`
`Bellybiotic contains Bacillus clausii, a trusted probiotic which has been used over 40
`years around the world in the management of antibiotic associated diarrhea and to
`provide digestive support to infants, children and adults.
`
`Bellybiotic is clinically proven to be effective in the treatment of antibiotic associated
`diarrhea in infants and children between the ages of 6 months to 12 years.
`
`Each 10 ml of Bellybiotic contains Bacillus clausii 4 billion spores and can be used as a
`single dose.
`
`Bellybiotic is available in a package of 5 vials per box.
`
`For further information please visit: www.bellybiotic.com
`
`Pha.rmv“i’sta
`
`Superior Duality
`
`intelligent Economics
`
`For licensing opportunities please contact: info@pharmvista.c0m
`
`