UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE. 

 

 

Serial Number  76/472488

 

This letter responds to the applicant’s communication filed on October 24, 2003.  The applicant 1) claimed ownership of Registration Nos. 2637053, 2640835 and 2644365, and , 2) argued against the refusal under Trademark Act Section 2(d) for likelihood of confusion with Registration No(s). 2232515.  Item No(s). 1 is acceptable.   The refusal under Section 2(d) is maintained and made FINAL.

 

Refusal Maintained

Registration was refused 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 No(s). 2232515 as to be likely to cause confusion, to cause mistake, or to deceive. The examining attorney has considered the applicant’s arguments carefully but has found them unpersuasive.  For the reasons below, the refusal under Section 2(d) is maintained and made FINAL.

 

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 examining attorney must resolve any doubt as to the issue of likelihood of confusion in favor of the registrants 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).

Similarity Of The Marks

 

The registrant’s mark is PALM BEACH. The applicant’s mark is POM BEACH.  The applicant has appropriated the registrant’s mark, altering the spelling of PALM to create it’s own.  The spelling of the first term is the sole difference between the marks.  When a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).  TMEP §1207.01(c)(ii).  Similarly, the sound of the mark, rather than its spelling, is more likely to be impressed upon a purchaser’s memory and to be used in calling for the goods or services.

 

The applicant has argued that the marks have different commercial impressions due to the differences in PALM and POM.   Specifically, the applicant has stated that POM is suggestive of pomegranate, while PALM has a variety of meanings.  The argument is without merit.  The “anti-dissection” rule requires consideration of the marks in their entireties, as discussed by the applicant.  POM BEACH is clear a play-on-words for PALM BEACH.  Both marks refer to the geographic location. See attached evidence from  The Computer Glossary, (7th edition, 1995) establishing the common meaning of PALM BEACH.  POM BEACH is at least suggestive of PALM BEACH.

 

The applicant has also argued that its mark should be registered because the Office has registered other BEACH marks for related goods.  Even a weak mark is entitled to protection against the registration of a similar mark for identical or closely related goods.  In re National Data Corp., 222 USPQ 515 (TTAB 1984), aff'd 224 USPQ 749 (Fed. Cir. 1985); Plus Products v. Physicians Formula Cosmetics, Inc., 198 USPQ 111 (TTAB 1978); In re Textron, Inc., 180 USPQ 341 (TTAB 1973).  The marks at issue have identical commercial impressions that refer to the exact same BEACH location, thus registration of the applicant’s mark must be refused.

 

 

Comparison Of Goods

 

In the present case, the  applicant’s goods are prepared alcoholic cocktails.  The registrant’s goods  are margarita cocktails.  The registrant’s goods are within the scope of the applicant’s goods.    See attached definition from The American Heritage â Dictionary of the English Language, Third Edition copyright ã 1992 establishing the common meaning of “margarita”.  The goods are identical.

 

The goods are closely related, in that they are likely to be sold to the same class of purchaser through the same channels of trade.  In re Sailerbrau Franz Sailer, 23 USPQ2d 1719 (TTAB 1992) (Likelihood of confusion between CHRISTOPHER COLOMBUS for beer and CRISTOBAL COLON & design for sweet wine); Somerset Distilling Inc. v. Speymalt Whisky Distributors Ltd., 14 USPQ2d 1539 (TTAB 1989) (likelihood of confusion between JAS. GORDON and design for scotch whisky and GORDON'S for distilled gin and vodka); Schieffelin & Co. v. Molson Companies Ltd., 9 USPQ2d 2069 (TTAB 1989) (likelihood of confusion between BRAS D'OR for brandy and BRADOR for beer); Bureau National Interprofessionel Du Cognac v. International Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) (likelihood of confusion between trademark COLAGNAC for cola flavored liqueur and certification mark COGNAC for brandy); In re Leslie Hennessy, Jr., 226 USPQ 274 (TTAB 1985) (likelihood of confusion between HENNESSY for cognac brandy and A LESLIE HENNESSY SELECTION for wine); United Rum Merchants Ltd. v. Fregal, Inc., 216 USPQ 217 (TTAB 1982) (likelihood of confusion between TIA LOLA for bottled wine and TIA MARIA for liqueurs); Monarch Wine Co., Inc. v. Hood River Distillers, Inc., 196 USPQ 855 (TTAB 1977) (likelihood of confusion between MONARCH for wine and MONARCH for whisky, rum, brandy, vodka); In re AGE Bodegas Unidas, S.A., 192 USPQ 326 (likelihood of confusion between RIOJA SIGLO for wine and CENTURY for whisky).

 

The applicant takes the position that it’s purchasers are not likely to be confused because they are  sophisticated persons who enjoy pomegranate juice. The record is void of evidence to establish the applicant’s purchasers, or consumers of alcohol, as sophisticated and discriminating.  Moreover, the fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion.  See In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).  TMEP §1207.01(d)(vii).  Lastly, applicant’s patrons are not the only consumers to be considered in the analysis.  Persons unfamiliar with the applicant’s pomegranate juice goods and the POM marks appurtenant thereto, are likely to be confused.

 

For the foregoing reasons, the refusal to register the mark under Section 2(d) of the Trademark Act is continued and made FINAL.

 

Response Guidelines

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. Section 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. Section 2.65(a).

           

Fee increase effective January 1, 2003

Effective January 1, 2003, the fee for filing an application for trademark registration will be increased to $335.00 per International Class.  The USPTO will not accord a filing date to applications that are filed on or after that date that are not accompanied by a minimum of $335.00. 

 

Additionally, the fee for amending an existing application to add an additional class or classes of goods/services will be $335.00 per class for classes added on or after January 1, 2003.

 

 

 

 

 

 

 

/Tracy Whittaker-Brown/

Examining Attorney, Law Office 111

U.S. Patent & Trademark Office

Phone: (703) 308-9111, ext. 468

Fax:  (703) 308-7191

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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.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

Palm Beach

 
Palm Beach

A city of southeast Florida on a barrier beach of the Atlantic Ocean north of Fort Lauderdale. It was developed as a fashionable resort by Henry Flagler in the 1890's. Population, 9,814.[1]

 

 

mar·ga·ri·ta

 
mar·ga·ri·ta (mär´ge-rê¹te) noun

A cocktail made with tequila, an orange-flavored liqueur, and lemon or lime juice, often served with salt encrusted on the rim of the glass.

 [Spanish, from the name Margarita, Margaret.][2]