UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/134491
APPLICANT: CAVIT CANTINA VITICOLTORI CONSOR2IO CANT ETC.
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CORRESPONDENT ADDRESS: ANTHONY P. VENTURINO STEVENS DAVIS MILLER & MOSHER LL P 1615 L ST NW STE 850 WASHINGTON DC 20036-5622
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom111@uspto.gov
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MARK: BOTTEGA VINAIA ESTATE BOTTLED
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CORRESPONDENT’S REFERENCE/DOCKET NO: APV 72181
CORRESPONDENT EMAIL ADDRESS:
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Please provide in all correspondence:
1. Filing date, serial number, mark and applicant's name. 2. Date of this Office Action. 3. Examining Attorney's name and Law Office number. 4. Your telephone number and e-mail address.
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Serial Number 76/134491
This letter responds to the applicant’s communication filed on March 18, 2003. The applicant argued against the refusal to accept the substitute drawing based on the fact that the new drawing is a material alteration. The examining attorney has considered the applicant’s argument, but finds it unpersuasive. As such, the refusal to register the mark is maintained and made FINAL.
Material Alteration
The proposed amendment of the drawing is unacceptable because it would materially alter the character of the mark. 37 C.F.R. §2.72; TMEP §§807.14, 807.14(a) and 807.14(a)(i). See In re Wine Society of America, Inc., 12 USPQ2d 1139 (TTAB 1989); In re Nationwide Industries Inc., 6 USPQ2d 1883 (TTAB 1988); In re Pierce Foods Corp., 230 USPQ 307 (TTAB 1986).
The applicant has argued that the amended drawing is not a material alteration because the wording that was deleted was descriptive and should have been disclaimed. This is not a valid argument. The test of whether an amendment to a drawing constitutes a material alteration is whether the amended drawing creates a new commercial impression. In the original drawing, the mark is BOTTEGA VINAIA 1999 TRENTINO DENOMINAZIONE DI ORIGINE CONTROLLATA and design. The amended drawing is BOTETEGA VINAIA and design. In this case, the deletion of the additional wording creates a very different commercial impression.
Conclusion
The applicant has failed to show that the amended drawing does not constitute a material alteration. As such, the refusal to register the mark is maintained and made FINAL.
Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the Trademark Trial and Appeal Board. 37 C.F.R. §2.64(a). If the applicant fails to respond within six months of the mailing date of this refusal, this Office will declare the application abandoned. 37 C.F.R. §2.65(a).
Inga Ervin
Trademark Attorney
Law Office 111
703 308-9111x 226
ecom111@uspto.gov
How to respond to this Office Action:
To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.
To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.
To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.