UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

OFFICE ACTION

 

TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE.

 

ISSUE/MAILING DATE: 8/15/2008

 

THIS IS A FINAL ACTION.

 

On January 24, 2007, action on this application was suspended pending the disposition of Application Serial No. 78206145.  The referenced pending application has abandoned and is no longer a bar to the registration of applicant’s mark.

 

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. 2365745.  37 C.F.R. §2.64(a).

 

FINAL REFUSAL – LIKELIHOOD OF CONFUSION

The mark was refused 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, so resembles the mark in U.S. Registration No. 2365745 as to be likely to cause confusion, to cause mistake, or to deceive.  TMEP section 1207.

 

Applicant’s mark is EL CAPITAN for “Brewed malt-based alcoholic beverage in the nature of a beer; Malt liquor” and the registrant’s mark is EL CAPITAN for “Concession stands featuring beverages, snack foods, candies and baked goods; Entertainment services in the nature of live stage productions and other live entertainment in the nature of live instrumental, musical, live comedy and live drama, live musical variety and dance performances.”

As noted in the prior Office action, the marks are identical.  If the marks of the respective parties are identical, the relationship between the goods and/or services of the respective parties need not be as close to support a finding of likelihood of confusion as might apply where differences exist between the marks.  In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); Amcor, Inc. v. Amcor Indus., Inc., 210 USPQ 70, 78 (TTAB 1981); TMEP §1207.01(a).

 

The goods and services of the parties are related since registrant’s beverage concession stands must be presumed to feature the beverages listed in the applicant’s identification.  Consumers are likely to be confused by the use of similar marks on or in connection with goods and with services featuring or related to those goods.  TMEP §1207.01(a)(ii); see In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988) (holding BIGG’S for retail grocery and general merchandise store services likely to be confused with BIGGS for furniture); In re United Serv. Distribs., Inc., 229 USPQ 237 (TTAB 1986) (holding design for distributorship services in the field of health and beauty aids likely to be confused with design for skin cream); In re Phillips-Van Heusen Corp., 228 USPQ 949 (TTAB 1986) (holding 21 CLUB for various items of men’s, boys’, girls’ and women’s clothing likely to be confused with THE “21” CLUB (stylized) for restaurant services and towels); In re U.S. Shoe Corp., 229 USPQ 707 (TTAB 1985) (holding CAREER IMAGE (stylized) for retail women’s clothing store services and clothing likely to be confused with CREST CAREER IMAGES (stylized) for uniforms); Steelcase Inc. v. Steelcare Inc., 219 USPQ 433 (TTAB 1983) (holding STEELCARE INC. for refinishing of furniture, office furniture, and machinery likely to be confused with STEELCASE for office furniture and accessories); Mack Trucks, Inc. v. Huskie Freightways, Inc., 177 USPQ 32 (TTAB 1972) (holding similar marks for trucking services and on motor trucks and buses likely to cause confusion).

 

Applicant argued in its correspondence of December 25, 2006 that “[t]he owner of the registered mark owns and operates the El Capitan Theatre in Hollywood, California” and that “[t]heatres are not commonly associated with the serving of alcohol or more specifically beer.”   Applicant’s argument is not helpful.  The identification does not limit its services to being provided in theatres in California that are not commonly associated with serving alcohol.  A determination of whether there is a likelihood of confusion is made solely on the basis of the services identified in the application and registration, without limitations or restrictions that are not reflected therein.  In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1595 (TTAB 1999); TMEP §1207.01(a)(iii).  If the cited registration describes the goods and/or services broadly and there are no limitations as to their nature, type, channels of trade or classes of purchasers, then it is presumed that the registration encompasses all goods and/or services of the type described, that they move in all normal channels of trade, and that they are available to all potential customers.  In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); TMEP §1207.01(a)(iii). 

 

In the present case, beverage concession stand services encompass the selling of both alcoholic and non-alcoholic beverages, so the cited registration encompasses both.  The examining attorney refers to the attached evidence showing that concession stands, including concession stands at theatres, offer and sell beer.  See attached excerpts from:

 

http://www.mobtownplayers.com/theater.htm,

 

http://www.somervilletheatreonline.com/somerville/theatre/index.php,

 

http://www.sandiegotheatres.org/eventstickets/audienceservices.cfm,

 

http://www.manbitesdogtheater.org/boxoffice/, and

 

http://www.nokiatheatrelalive.com/content.php?section=guestservices&page=guest_services_az.

 

The cited registration does not limit the channels of trade for its beverage concessions stands to theatres, and therefore encompasses all normal channels of trade for concession stands.

 

The attached Internet evidence also shows that those operating concession stands also sell beer under the same marks and these goods and services are of a type that originate from a single source.  See attached evidence from:

 

http://www.parks.sfgov.org/site/recpark_index.asp?id=18977,

http://www.gordonbiersch.com/brewery/about/press_releases/pr_giants.html,

http://www.gordonbiersch.com/brewery/beer/index.html,

 

http://www.atlanta-airport.com/Default.asp?url=sublevels/shops_n_restaurants/shop_page.cfm,

http://www.atlanta-airport.com/Default.asp?url=sublevels/shops_n_restaurants/shop_page.cfm,

http://www.samueladams.com/Default.aspx,

 

http://www.sfbeerfest.com/beer.html,

 

http://sanfrancisco.giants.mlb.com/sf/ballpark/concessions.jsp,

http://budweiser.com/index.aspx,

 

http://www.oaklandairport.com/terminal_map.shtml,

http://www.pyramidbrew.com/beer/beerguide/hefeweizen.php,

 

http://www.bluemoonbrewingcompany.com/, and

http://www.rockymountainnews.com/news/2008/apr/01/the-rockys-guide-to-coors-field-concessions/?printer=1/.

 

It is noted that applicant referred to third party applications and registrations in its correspondence of December 25, 2006.  However, the mere reference to registrations does not make such registrations part of the record.  See, e.g., In re Dos Padres Inc., 49 USPQ2d 1860, 1861 n.2 (TTAB 1998); In re Broadway Chicken Inc., 38 USPQ2d 1559, 1561 n.6 (TTAB 1996). 

 

To make third party registrations part of the record, an applicant must submit copies of registrations from USPTO records only.  E.g., In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925 n.3 (TTAB 2002); In re Carolina Apparel, 48 USPQ2d 1542, 1543 n.2 (TTAB 1998); TBMP §1208.02; TMEP §710.03.

 

Even had applicant made the third party applications and registrations part of the record, it is noted that the prior decisions and actions of other trademark examining attorneys in registering different marks have little evidentiary value and are not binding upon the Office.  TMEP §1207.01(d)(vi).  Each case is decided on its own facts, and each mark stands on its own merits.  See AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Int’l Taste, Inc., 53 USPQ2d 1604, 1606 (TTAB 2000); In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994).

 

Nevertheless, none of applicant’s references are relevant to this proceeding.  Applicant’s reference to other prior applications (Application Serial Nos. 75164017, 78216391 and 78693130) are not relevant because they are not registered marks.  Applicant’s reference to Serial No. 71694212/U.S. Registration No. 0643340 and Serial No. 78206145/U.S. Registration No. 3398357 are not relevant because they are all cancelled/expired marks.

 

Applicant’s reference to Serial No. 74589498/Reg. No. 1928040 is not relevant since it features musical instruments, not beverage concession stands or beer/alcohol.  Third-party registrations for seemingly similar marks featuring goods and/or services dissimilar or unrelated to those in the application and the cited registration are of little probative value in determining the weakness of a mark or portions of a mark.  Weakness or dilution is generally determined in the context of the number and nature of similar marks in use in the marketplace on similar goods and/or services.  See Nat’l Cable Television Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  Moreover, the existence on the register of other seemingly similar marks does not provide a basis for registrability for the applied-for mark.  AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973); In re Total Quality Group, Inc., 51 USPQ2d 1474, 1477 (TTAB 1999).

 

The marks are identical and the goods and services are identical.  Because of the similarities between the marks and the goods and services of the parties, a likelihood of confusion is created.  The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.  See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).  Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant.  TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988).

 

Based on the foregoing, the refusal to register under Trademark Act Section 2(d), 15 U.S.C. §1052(d), is maintained and made FINAL.

 

PROPER RESPONSE TO FINAL ACTION

If applicant does not respond within six months of the mailing date of this final Office action, the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond to this final Office action by: 

 

(1)     Submitting a response that fully satisfies all outstanding requirements, if feasible; 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), 2.64(a); TBMP ch. 1200; TMEP §714.04.

 

In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues.  37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  The petition fee is $100.  37 C.F.R. §2.6(a)(15).

 

ADVISORY – Specialist Attorney Suggested

If applicant wishes to respond to the present Office action, applicant may wish to hire a specialist attorney to assist in prosecuting this application because of the technicalities involved.  The Office cannot aid in the selection of a trademark attorney.  37 C.F.R. §2.11.  Applicant may wish to consult the Yellow Pages for a listing of attorneys specializing in trademark or intellectual property law, or seek guidance from its local Bar Association attorney-referral service.

 

 

TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE:  TEAS Plus applicants should submit the following documents using the Trademark Electronic Application System (TEAS) at http://www.gov.uspto.report/teas/index.html:  (1) written responses to Office actions; (2) preliminary amendments; (3) changes of correspondence address; (4) changes of owner’s address; (5) appointments and revocations of attorney; (6) amendments to allege use; (7) statements of use; (8) requests for extension of time to file a statement of use, and (9) requests to delete a §1(b) basis.  If any of these documents are filed on paper, they must be accompanied by a $50 per class fee.  37 C.F.R. §§2.6(a)(1)(iv) and 2.23(a)(i).  Telephone responses will not incur an additional fee.  NOTE:  In addition to the above, applicant must also continue to accept correspondence from the Office via e-mail throughout the examination process in order to avoid the additional fee.  37 C.F.R. §2.23(a)(2).

 

 

 

 

/Daniel Brody/

Trademark Examining Attorney

Law Office 115

U.S. Patent and Trademark Office

(571) 272-9724

 

 

 

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.gov.uspto.report/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail.  For technical assistance with the form, please e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned examining attorney.  Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses.

 

If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response.  Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451.

 

STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov.  When conducting an online status check, print and maintain a copy of the complete TARR screen.  If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

 

 

 

 

 

                                                                

IMPORTANT NOTICE

USPTO OFFICE ACTION HAS ISSUED ON 8/15/2008 FOR

APPLICATION SERIAL NO. 78787065

 

Please follow the instructions below to continue the prosecution of your application:

  

VIEW OFFICE ACTION: Click on this link http://tmportal.gov.uspto.report/external/portal/tow?DDA=Y&serial_number=78787065&doc_type=OOA&mail_date=20080815 (or copy and paste this URL into the address field of your browser), or visit http://tmportal.gov.uspto.report/external/portal/tow and enter the application serial number to access the Office action.

 

PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification.

 

RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 8/15/2008.

 

Do NOT hit “Reply” to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses.  Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.gov.uspto.report/teas/eTEASpageD.htm.

 

HELP: For technical assistance in accessing the Office action, please e-mail

TDR@uspto.gov.  Please contact the assigned examining attorney with questions about the Office action. 

 

        WARNING

1. The USPTO will NOT send a separate e-mail with the Office action attached.

 

2. Failure to file any required response by the applicable deadline will result in the ABANDONMENT of your application.