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  76/531114

 

The assigned examining attorney has reviewed the referenced application and determined the following.

 

SECTION 2(d) REFUSAL

 

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 mark in U.S. Registration No. 2,237,449 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP §§1207.01 et seq.  See the enclosed registration.

 

THE MARKS

 

The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation.  In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973).  Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).  TMEP §§1207.01(b) et seq. 

 

The applicant’s mark, BAVARIA HOLLAND, is confusingly similar to the registrant’s mark, BAVARIA HOLLAND BEER ANNO 1719.The marks share the same commercial impression.

 

The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side‑by‑side comparison.  The issue is whether the marks create the same overall impression. Visual Information Institute, Inc. v. Vicon Industries Inc., 209 USPQ 179 (TTAB 1980).  The focus is on the recollection of the average purchaser who normally retains a general rather than specific impression of trademarks.  Chemetron Corp. v. Morris Coupling & Clamp Co., 203 USPQ 537 (TTAB 1979); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

 

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).  TMEP §1207.01(b). 

 

THE GOODS

 

The goods of the parties need not be identical or directly competitive to find a likelihood of confusion.  They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source.  In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).  TMEP §1207.01(a)(i). 

 

The goods of the parties are identical.

 

Accordingly, likelihood of confusion exists and registration is refused.

 

The applicant should also note the following additional ground for refusal.

 

SECTION 2(e)(3) REFUSAL

 

Registration is refused because the proposed mark consists of or comprises geographically deceptively misdescriptive matter in relation to the identified goods.  Trademark Act Section 2(e)(3), 15 U.S.C. §1052(e)(3); In re Les Halles De Paris J.V., 334 F.3d 1371, 67 USPQ2d 1539 (Fed. Cir. 2003); In re California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853 (Fed. Cir. 2003); See In re Budge Mfg. Co., 857 F.2d 773, 8 USPQ2d 1259 (Fed. Cir. 1988); In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989); In re Shapely, Inc., 231 USPQ 72 (TTAB 1986).

 

The primary significance of the term “BAVARIA HOLLAND” is geographic.  The public is likely to believe that applicant’s goods come from Bavaria and/or Holland because Bavaria and Holland are known worldwide for their beer products. See attached evidence demonstrating the geographic descriptiveness of the mark as applied to the goods.  Furthermore, this belief would materially influence consumers to purchase the goods because presumably this imported beer is more desirable to some than the American beers.  See In re House of Windsor, Inc., 221 USPQ 53 (TTAB 1983), recon. denied, 223 USPQ 191 (TTAB 1984).

 

A mark is geographically deceptively misdescriptive if:

 

• the mark contains a geographic term and the goods or services for which applicant seeks registration neither have their origin in nor have any other connection with that geographic location;
• purchasers are likely to believe, erroneously, that the goods or services in question originate in or are somehow connected with the geographic place named in the mark; and
• that erroneous belief as to geographic origin would materially affect the purchaser’s decision to buy the goods or services in question.

 

In re Les Halles De Paris J.V., 334 F.3d 1371, 1373, 67 USPQ2d 1539, 1541 (Fed. Cir. 2003); In re California Innovations Inc., 329 F.3d 1334, 1341, 66 USPQ2d 1853, 1859 (Fed. Cir. 2003); See In re Perry Mfg. Co., 12 USPQ2d 1751 (TTAB 1989).

 

The attached dictionary evidence demonstrates the geographic significance of the terms Holland and Bavaria. The fact that the mark consists of two geographic terms does not diminish its geographic significance.  Consumers will still regard the mark as referring to the two countries. There is nothing incongruous or odd in the combination of these two terms as applied to the goods.  See In re London & Edinburgh Insurance Group Limited, 36 USPQ2d  1367 (TTAB 1995).

 

The record indicates that applicant is located in Texas, which is not the geographic place named in applicant’s proposed mark.  Applicant must specifically state whether its goods are manufactured or produced in, or have any other connection with, the geographic place named in the mark.  37 C.F.R. §2.61(b).

 

In the alternative, if the goods do originate in Holland and/or Bavaria, the following descriptive refusal is issued.

 

SECTION 2(e)(2) REFUSAL

 

The examining attorney refuses registration on the Principal Register because the mark is primarily geographically descriptive of the applicant’s goods.  Trademark Act Section 2(e)(2), 15 U.S.C. §1052(e)(2); TMEP §§1210.01(a) and 1210.04(b). 

 

A two-part test is applied to determine whether a mark or term is geographically descriptive.  First the term must be the name of a place known generally to the public.  Second, the public must be likely to make a goods-place or services-place association, i.e., believe that the goods or services originate from that location.  In re California Pizza Kitchen, 10 USPQ2d 1704, 1705 (TTAB 1989) (goods); In re MCO Properties, Inc., 38 USPQ2d 1154, 1155 (TTAB 1995) (services).

 

The attached evidence from the Google search engine and geographic dictionary show that the primary significance of the terms “BAVARIA and HOLLAND” is the name of a geographic location that the public generally knows.  The public is likely to believe the goods originate from that place because the countries are well known and beer is produced in both areas.  Thus there is a presumed goods/ place association.  In re JT Tobacconists, 59 USPQ2d 1080 (TTAB 2001); In re U.S. Cargo, Inc., 49 USPQ2d 1702 (TTAB 1998); In re Carolina Apparel, 48 USPQ2d 1542 (TTAB 1998); In re Chalk’s International Airlines Inc., 21 USPQ2d 1637 (TTAB 1991); In re California Pizza Kitchen, 10 USPQ2d 1704 (TTAB 1989); In re Handler Fenton Westerns, Inc., 214 USPQ 848 (TTAB 1982); TMEP §1210.04(b).

 

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.

 

 

 

/Lesley LaMothe/

Trademark Attorney

Law Office 103

703-308-9103 ext 487

e-mail- lesley.lamothe@uspto.gov

fax- 703-746-8103

 

 

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.