UNITED STATES PATENT AND TRADEMARK OFFICE
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SERIAL NO: 76/561386
APPLICANT: Lighthouse Brands, LLC
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*76561386* |
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CORRESPONDENT ADDRESS: GEORGE T. MANN ALLMAN SPRY LEGGETT & CRUMPLER, P.A. SUITE 700, 380 KNOLLWOOD STREET WINSTON-SALEM, NC 27103
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RETURN ADDRESS: Commissioner for Trademarks 2900 Crystal Drive Arlington, VA 22202-3514
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MARK: BUENO
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CORRESPONDENT’S REFERENCE/DOCKET NO: N/A
CORRESPONDENT EMAIL ADDRESS: tmann@allmanspry.com |
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 76/561386
The assigned examining attorney has reviewed the referenced application and determined the following.
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 mark in U.S. Registration Nos. 2078393 and 2748166 as to be likely to cause confusion, 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’s mark is BUENO. The registrants’ marks are CASA BUENA and BUENA COSECHA. The marks are very similar. Therefore, the first prong of the likelihood of confusion is met.
The second prong of the likelihood of confusion test is a comparison of the goods and or services. The applicant’s goods are cigarettes. The first registrant’s goods are tobacco; cigar cutters; cigar cases, not of precious metal; humidors; cigarette and cigar lighters not of precious metal; and matches. The second registrant’s goods are tobacco, cigars, cigarettes and cigarillos; cigarette holders not of precious metal, pipes for smoking cigar cutters, cigar cases, tobacco tins not of precious metal, humidors for tobacco, lighters not of precious metal, matches. 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). In this case, the marks are very similar, and the goods are very closely related. Consequently, the second prong of the likelihood of confusion test is met and registration is refused under Section 2(d) of the Trademark Act.
/Inga Ervin/
Trademark Attorney
Law Office 111
703 308-9111x 226
703 746-8111 (fax)
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.
FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.