UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/437037
APPLICANT: Scottish & Newcastle plc
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CORRESPONDENT ADDRESS: B. PARKER LIVINGSTON, JR. BURNS, DOANE, SWECKER & MATHIS, L.L.P. POST OFFICE BOX 1404 ALEXANDRIA, VIRGINIA 22313-1404
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3513 ecom109@uspto.gov
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MARK: THE ONE AND ONLY
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CORRESPONDENT’S REFERENCE/DOCKET NO: 031006-019
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 76/437037
The assigned examining attorney has reviewed the referenced application and determined the following:
LIKELIHOOD OF CONFUSION –Similar Marks Found
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods, so resembles the marks in U.S. Registration Nos. 2072208 and 2066456 as to be likely to cause confusion, or to cause mistake, or to deceive. TMEP section 1207. 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 (CCPA 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).
The applicant applied to register the mark THE ONE AND ONLY, in typed form, for Clothing; footwear; headgear, in Class 25; and Beer; ale; bitter; mild; lager; stout; porter; shandy; mineral water; aerated water; non-alcoholic drinks; fruit flavored drinks; fruit juices; vegetable flavored drinks; vegetable juices; mixtures containing any of the aforesaid; preparations for making any of the aforesaid, in Class 32.
The registered marks are THE ONE AND ONLY DIAMOND VODKA and design, for vodka, in Class 33 and UNICO ONE & ONLY, in typed form, for olive oil, canned tomato products, salad and cooking oils, canned beans, sun-dried tomatoes, antipasto comprising processed meats, fish, shellfish and seafood, cheeses, fruits and vegetables, processed olives, marinated onions and gherkins, processed artichokes, and soups, in Class 29; pasta sauces, salsas, espresso coffee, vinegar, rice mixes, pasta, noodles and biscuits, in Class 39.
The marks are very similar. The marks share the dominant literal term ONE AND ONLY. Therefore the marks are very similar in sound, appearance and meaning. Because the applicant’s mark shares the same dominant literal term with registrant’s marks, consumers could conclude that registrant’s mark is a house mark and applicant’s mark is associated therewith.
When the applicant's mark is compared to a registered mark, "the points of similarity are of greater importance than the points of difference." Esso Standard Oil Co. v. Sun Oil Co., 229 F.2d 37, 108 USPQ 161 (D.C. Cir.), cert. denied, 351 U.S. 973, 109 USPQ 517 (1956).
The goods are very similar. Applicant identifies its goods as various non alcoholic and alcoholic beverages. Registrants goods’ are espresso coffee and vodka. Both of these goods are consumed as beverages. It is well settled that the issue of likelihood of confusion between marks must be determined on the basis of the goods or services as they are identified in the application and the registration. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987); Paula Payne Products Co. v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973). Since the identification of the applicant’s goods are very broad, it is presumed that the application encompasses all goods of the type described, including those in the registrants’ more specific identifications, that they move in all normal channels of trade and that they are available for all potential customers. TMEP §1207.01(a)(iii).
Therefore, the applicant’s goods are so sufficiently related that consumers would conclude that they emanated from the same source as either registrant. Thus, the likelihood of confusion exists.
The examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrant and against the applicant, who has a legal duty to select a mark, which is totally dissimilar to trademarks already being used. Burroughs Wellcome Co. v. Warner‑Lambert Co., 203 USPQ 191 (TTAB 1979).
Consequently, the applicant’s mark is refused registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on or in connection with the identified goods so resembles the registered marks herein as to be likely to cause confusion, to cause mistake, or to deceive.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following:
The wording "Clothing" in the identification of goods is unacceptable as indefinite. The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP section 804. The applicant may amend this wording to "Clothing, namely, [SPECIFY e.g. pants, shirts, t-shirts, sweatshirts, shorts, etc.]", if accurate. TMEP section 804.
The wording "headgear" in the identification of goods is too broad because it could include items classified in other classes. The applicant may amend the identification to substitute the following wording, if accurate: headwear, in Class 25. TMEP sections 804 and 804.
The wording “bitter” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “alcoholic bitters, in Class 33,” if accurate. TMEP §1402.01.
The wording "mild" in the identification of goods is unacceptable as indefinite and over broad as it can include goods from several international classes. The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. TMEP section 804.
The wording "non-alcoholic drinks" in the identification of goods is unacceptable as indefinite and over broad as it can include goods from several international classes. The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. The applicant may amend this wording to “non-alcoholic drinks, namely, [SPECIFY items, e.g., fruit-flavored drinks, fruit juices, etc.],” if accurate. TMEP section 804.
The wording “vegetable flavored” in the identification of goods is unacceptable as indefinite. The applicant may amend this wording to “Vegetable-based food beverages, in Class 29,” or Vegetable juice beverage, in Class 32,” if accurate. TMEP §1402.01.
The wording "mixtures containing the aforesaid" in the identification of goods is unacceptable as indefinite and over broad as it can include goods from several international classes. The applicant must amend the identification to specify the commercial name of the goods. If there is no common commercial name for the product, the applicant must describe the product and its intended uses. The applicant may amend this wording to “beverages, namely, [SPECIFY items, e.g., fruit-flavored drinks, fruit juices, etc.]; Nutritionally fortified beverages, in Class 5” if accurate. TMEP section 804.
The identification of goods is unacceptable as indefinite. The applicant may adopt the following identification, if accurate:
Clothing, namely, pants, shirts, t-shirts, sweatshirts, shorts, in Class 25;
Vegetable-based food beverages, in Class 29;
Beer; ale; mild lager; lager; stout; porter; shandy; mineral water; aerated water; non-alcoholic drinks, namely, fruit flavored drinks; fruit juices; vegetable juices; preparations for making any of the aforesaid, in Class 32; and
Alcoholic bitters, in Class 33.
TMEP section 804.
Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted. 37 C.F.R. Section 2.71(b); TMEP section 804.09. Therefore, the applicant may not amend to include any goods that are not within the scope of goods set forth in the present identification.
Applicant is strongly encouraged to consult the Acceptable Identification of Goods and Services Manual available at http://www.gov.uspto.report/web/offices/tac/doc/gsmanual/ to ensure the appropriate specificity of goods and services.
The application identifies goods that may be classified in classes other then those for which a fee has already been paid. Therefore, the applicant must either: (1) restrict the application to the number of class(es) covered by the fee already paid, or (2) pay the required fee for each additional class(es). 37 C.F.R. §2.86(a)(2); TMEP §§810.01, 1401.04, 1401.04(b) and 1403.01.
Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date. 37 C.F.R. §2.6(a)(1).
If the applicant adds additional classes, the applicant must comply with each of the following.
(1) The applicant must list the goods/services by international class with the classes listed in ascending numerical order. TMEP §1403.01.
(2) The applicant must submit a filing fee for each international class of goods/services not covered by the fee already paid. 37 C.F.R. §§2.6(a)(1) and 2.86(a); TMEP §§810.01 and 1403.01. Effective January 1, 2003, the fee for filing a trademark application is $335 for each class. This applies to classes added to pending applications as well as to new applications filed on or after that date.
Declaration Required
The application must be signed, and verified or supported by a declaration under 37 C.F.R. §2.20. 37 C.F.R. §2.33. No signed verification or declaration was provided. Therefore, the applicant must provide a signed verification or signed declaration attesting to the facts set forth in the application.
If the application is based on use in commerce under Trademark Act Section 1(a), 15 U.S.C. §1051(a), the verified statement must include an allegation that the mark is in use in commerce and was in use in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. §2.34(a)(1)(i); TMEP §§804.02, 806.01(a) and 901.
If the application is based on Trademark Act Section 1(b) or 44, 15 U.S.C. §1051(b) or 1126, the verified statement must include an allegation that the applicant had a bona fide intention to use the mark in commerce on or in connection with the goods or services listed in the application as of the application filing date. 37 C.F.R. §§2.34(a)(2)(i), 2.34(a)(3)(i) and 2.34(a)(4)(ii); TMEP §§804.02, 806.01(b), 806.01(c), 806.01(d) and 1101.
Please Note: The examining attorney also encloses information regarding pending Application Serial No. 76032709. C.F.R. Section 2.83. There may be a likelihood of confusion between the applicant's mark and the mark in the above noted application under Section 2(d) of the Act. The filing date of the referenced application proceeds the applicant's filing date. If the earlier‑filed application matures into a registration, the examining attorney may refuse registration under Section 2(d).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
/Shari L. Sheffield/
Shari Sheffield
Trademark Attorney
Law Office 109
703-308-9109 ext. 206
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.