UNITED STATES PATENT AND TRADEMARK OFFICE
SERIAL NO: 76/289791
APPLICANT: Karlsbrau France
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CORRESPONDENT ADDRESS: WILLIAM P. BERRIDGE OLIFF & BERRIDGE, PLC PO BOX 19928 ALEXANDRIA VA 22320-0928
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514 ecom111@uspto.gov
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MARK: BEETHOVEN
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CORRESPONDENT’S REFERENCE/DOCKET NO: 110200
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 76/289791
On September 25, 2001, action on this application was suspended pending the disposition of Application Serial Nos. 75665129 and 75/566489. The referenced applications have matured into registrations. Therefore, registration is refused as follows.
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. §1052(d), because the applicant’s mark, when used on or in connection with the identified goods/services, so resembles the marks in U.S. Registration Nos. 2505082 and 2628553 as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP §§1207.01 et seq. See the enclosed registrations.
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973). Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978). TMEP §§1207.01 et seq.
In this case, applicant’s proposed mark and the cited registrations share the identical highly distinctive term Beethoven. Further, the goods represented by the marks are for closely related alcoholic beverages. These goods are sold in the same stores and operate in the same channels of trade. Therefore, confusion as to source is likely.
The Office has reassigned this application to the undersigned examining attorney.
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Mark T. Mullen/
Examining Attorney
Law Office 111
(703) 308-9111 ext.418
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.