Offc Action Outgoing

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  76/493369

 

This responds to  the letter received March 3,3004. The description of the mark  is accepted. However, after careful consideration of the arguments for allowance, the following action is taken:

 

For the reasons set forth below, the refusal under Trademark Act Section 2(d), 15 U.S.C. §1052(d), is now made FINAL with respect to U.S. Registration No(s). 2,255,988.  In addition, the following requirement(s) isnow made FINAL:  (1) Proper and complete translation of the foreign wording appearing in the mark.  37 C.F.R. §2.64(a).

 

 

                        REQUIREMENT FOR A CORRECT  TRANSLATION OF WORDING

 

The examining attorney made a requirement for a correct tranlation of the foreign wording LE REVE appearing in the mark. 37 C.F. R. 2.61(b)

 

The applicant has provided a translation for this term as : DREAM or PERFECT or PERFECT DREAM. However, a reference to Cassell’s French English dictionary ( see enclosed material) shows that the given English translation for this term is “dream, daydream or illusion”. “Perfect” or “perfect dream” is not considered the meaning of the term “reve” alone, unless appearing as part of a phrase, “ C’est le reve”, translated as “it’s perfect”.

 

For this reason, the applicant is required to provide the correct translation of the term “le reve” or provide any materials which demonstrate that the word also translates in English as “dream” or “perfect dream”.

 

 

                                                LIKELIHOOD OF CONFUSION ISSUE

 

 

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. 

 

The cited registration is for the French term La Reve for wines and sparkling wines; applicant’s mark also consists of the identical wording “le reve” and a design element for bottled water, soft drinks, lemonade, iced tea, fruit drinks and beer.

 

The literal portions are the dominant and most significant features of marks because consumers will call for the goods or services in the marketplace by that portion.  In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); In re Drug Research Reports, Inc., 200 USPQ 554 (TTAB 1978).  For this reason, greater weight is given to the literal portions of the marks in determining whether there is a likelihood of confusion.  TMEP §1207.01(c)(ii).

 

Since the literal portions of both marks are almost identical, an identical commercial impression is created by use of the terminology in each mark.

 

Applicant argues that the goods are different, classified in different international classes, and travel in different trade channels to different consumers.

 

The fact that the United States Patent and Trademark Office classifies goods or services in different classes does not establish that the goods and services are unrelated under Trademark Act Section 2(d), 15 U.S.C. §1052(d).  The determination concerning the proper classification of goods or services is a purely administrative determination unrelated to the determination of likelihood of confusion.  Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771 (Fed. Cir. 1993); National Football League v. Jasper Alliance Corp., 16 USPQ2d 1212, 1216 n.5 (TTAB 1990); TMEP §1207.01(d)(v).

 

Therefore classification is not dispositive regarding common trade channels or types of purchasers.

 

The wine and beer products are common alcoholic beverages which, while different, would travel in the same trade channels, as related goods. Various alcoholic beverages have been shown to be related goods for purposes of 2(d) analysis.  In re Majestic Distilling Co., 65 USPQ2d 1201 (Fed. Cir. 2003) (likelihood of confusion between RED BULL for tequila and RED BULL for malt liquor); In re Salierbrau Franz Sailer, 23 USPQ2d 1719 (TTAB 1992) (likelihood of confusion between CHRISTOPHER COLUMBUS for beer and CRISTOBEL COLON & design for sweet wine); Somerset Distilling Inc. v. Speymalt Whiskey Distributors Ltd., 14 USPQ2d 1539 (TTAB 1989) (likelihood of confusion between JAS. GORDON and design for scotch whiskey 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 Hennessy, 226 USPQ 274 (TTAB 1985) (likelihood of confusion between HENNESSY for cognac brandy and A LESLIE HENNESSY SELECTION for wine).

 

Moreover, the same can be said for various non-alcoholic beverages. Material is made of record clearly showing that various beverage manufacturers and distributors handle both alcoholic beverages ( including beers and wines) and various types of non-alcoholic beverages, such as fruit drinks, lemonade beverages, soft drinks and other non alcoholic beverages listed by  the applicant  in its identification clause, marketed under the identical or highly similar marks. (see enclosed material )

 

Moreover, commercial sellers of beverages, and restaurants and “brew pubs” also market non-alcoholic beverages along with beer, spirts and wine, as seen by the Bev MO.com advertisement, the advertisements for Water’s Edge Bar and Grill, the Birkenhead estate, and other eating establishments. Finally, distributors of alcoholic beverages are also entering the market for non- alcoholic drinks, especially bottled andspring water ( see enclosed material). As such, itwould appear that a common market and channels of trade exist  for the goods of the registrant and those of the applicant , both alcoholic and non alcoholic in nature.

 

Likelihood of confusion is 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., Inc., 473 F.2d 901, 177 USPQ 76 (C.C.P.A. 1973).  Since the identification of the registrant’s goods and/or services is very broad, it is presumed that the registration encompasses all goods and/or services of the type described, including those in the applicant’s more specific identification, that they move in all normal channels of trade and that they are available to all potential customers.  In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re Optica International, 196 USPQ 775 (TTAB 1977); TMEP §1207.01(a)(iii).

 

Neither identification clause contains any type of limiting language as to the channels of trade of such goods or the methods of purchasing these items. As such, it is presumed that the items would travel in all normal trade channels offered to both alcoholicand non- alcoholic beverages.

 

For these reasons likelihood of confusion under Section 29d) would arise among related alcoholicand non alcoholic beverages using the identical verbal mark.

 

If applicant fails to respond to this final action within six months of the mailing date, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final action by: 

 

(1)   submitting a response that fully satisfies all outstanding requirements, if feasible (37 C.F.R. §2.64(a)); and/or

(2)   filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class (37 C.F.R. §§2.6(a)(18) and 2.64(a); TMEP §§715.01 and 1501 et seq.; TBMP Chapter 1200).

 

In certain circumstances, a petition to the Director may be filed to review a final action that is limited to procedural issues, pursuant to 37 C.F.R. §2.63(b)(2).  37 C.F.R. §2.64(a).  See 37 C.F.R. §2.146(b), TMEP §1704, and TBMP Chapter 1201.05 for an explanation of petitionable matter.  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

 

 

 

 

NOTICE:  TRADEMARK OPERATION RELOCATING OCTOBER AND NOVEMBER  2004

 

The Trademark Operation is relocating to Alexandria, Virginia, in October and November 2004.  Effective October 4, 2004, all Trademark-related paper mail (except documents sent to the Assignment Services Division for recordation, certain documents filed under the Madrid Protocol, and requests for copies of trademark documents) must be sent to:

 

Commissioner for Trademarks

P.O. Box 1451

Alexandria, VA  22313-1451

 

Applicants, registration owners, attorneys and other Trademark customers are strongly encouraged to correspond with the USPTO online via the Trademark Electronic Application System (TEAS), at www.uspto.gov.

 

 

 

 

/Henry S. Zak/

Examining Attorney

Law Office 108

(703)308-9108 x 149

 

 

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 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.