| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
| Input Field |
Entered |
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| SERIAL NUMBER | 78787065 | ||||||
| LAW OFFICE ASSIGNED | LAW OFFICE 115 | ||||||
| MARK SECTION (no change) | |||||||
| ARGUMENT(S) | |||||||
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The applicant acknowledges receipt of an office action dated June 27, 2006 in response to our application to register EL CAPITAN in Class 032 citing U.S. Registration No. 2365745 and pending application Serial No. 78206145 as potential conflicts to our proposed mark.
The applicant respectfully requests to argue the merits of registration and submits evidence in favor of our proposed mark with respect to U.S. Registration No. 2365745 (also referred to as the “cited mark” or “registered mark” herein).
REBUTTAL – Likelihood of Confusion Under Section 2(d) & Goods and Services Related
The existing U.S. Registration No. 2365745 cited by the USPTO examiner is:
The owner of the registered mark owns and operates the El Capitan Theatre in Hollywood, California. Theatres are not commonly associated with the serving of alcohol or more specifically beer. In fact, a search of the State of California Alcoholic Beverage Control (www.abc.ca.gov) confirms that the El Capitan Theatre does not have a liquor license and does not serve alcoholic beverages to the public. The registration of our mark would not create confusion with the registered mark, as there is no expectation of alcohol or beer associated with theatres in general and specifically, the El Capitan Theatre. Consumers are not likely to be confused by the use of these similar marks on or in connection with goods and services as their markets are very distinctive and do not overlap.
In addition, the owners of the registered mark (U.S. Registration No. Serial No. 78206145) filed its application on August 28, 1998 when EL CAPITAN ESPECIAL (Serial No. 75164017) had recently been published for opposition in IC 032 for Beer by the USPTO. Therefore, the owners did not have any expectation of restricting use in IC 032 for Beer under a mark based on EL CAPITAN.
REBUTTAL – Marks Identical
The applicant agrees that our proposed mark and the registered mark are identical but that there is a history of identical marks for El Capitan being registered (even) with overlapping uses. The USPTO has not extended broad protection to marks using El Capitan.
The USPTO did not find Serial No. 78693130 for EL CAPITAN in IC 034 for Cigars to conflict with the registered mark (U.S. Registration No. 2365745). Cigars would be more likely associated with a theatre concession stand than beer and Cigars are not as tightly regulated as alcohol, which has strict licensing requirements in all 50 states. The USPTO interpretation that cigars would be confused as products found in a theatre concession stand has been consistent. The USPTO had previously not found any conflict with a prior application in IC 034 for cigars in “EL CAPITAN MADURO” Serial No. 78216391.
At the time of the filing and subsequent approval of the application which became the cited mark (U.S. Registration No. 2365745) were two existing federal registrations that have potentially overlapping uses:
(a) U.S. Registration No. 74589498 in IC 015 for EL CAPITAN stringed musical instruments, namely acoustic bass guitars. Clearly an EL CAPITAN musical instrument could be used in the El Capitan Theatre where 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 occur and could create confusion with consumers. The existence of this prior registration did not prevent the registration of the cited mark (U.S. Registration No. 74589498).
(b) U.S. Registration 71694212 in IC 029 for EL CAPITAN roasted peanuts could be sold in the El Capitan Theatre Concession stands featuring beverages, snack foods, candies and baked goods creating confusion with consumers. The existence of this prior registration did not prevent the registration of the cited mark (U.S. Registration No. 74589498).
So in the history of the El Capitan as a trademark in many different classes over many years, a clear and obvious conflict has been required to prevent a new registration. We don’t believe a clear and obvious conflict exists between our proposed mark and the registered mark.
Furthermore, a very common definition of “El Capitan” according to Wikipedia is “El Capitan is a 3,000 foot vertical rock formation in Yosemite Valley and Yosemite National Park. It is one of the most popular monoliths with rock climbers in the world.” Other sources claim that “El Capitan” was a name given to this landmark by the Mission Indians who had borrowed it from the Spanish Padres. In fact, the first federal registration using EL CAPITAN was U.S. Registration No. 0107062 for Coffee in 1915 before the El Capitan theatre was built in 1926. The cited mark (U.S. Registration No. 2365745) has not achieved the required unique distinctiveness for the mark “EL CAPITAN” that is also commonly attributed to a geographic feature in Yosemite National Park to prevent the registration of identical marks in unrelated classes.
REBUTTAL - Prior Pending Application
The other potential conflict to our application was the pending application Serial No. 78206145 for CAPITAN is currently being contested in a TTAB proceeding. The applicant requests that if the USPTO agrees that U.S. Registration No. 2365745 should not be cited against our application that further proceedings would be suspended until Serial No. 78206145 is resolved. The applicant would like to reserve the right to argue the merits against this potential mark, at a later date, should the pending application become a registered trademark at the conclusion of the TTAB proceeding.
Respectfully submitted on behalf of Golden West Brewing Company,
John Power President
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| SIGNATURE SECTION | |||||||
| RESPONSE SIGNATURE | /john c. power/ | ||||||
| SIGNATORY'S NAME | John C. Power | ||||||
| SIGNATORY'S POSITION | President | ||||||
| DATE SIGNED | 12/25/2006 | ||||||
| AUTHORIZED SIGNATORY | YES | ||||||
| FILING INFORMATION SECTION | |||||||
| SUBMIT DATE | Mon Dec 25 15:44:04 EST 2006 | ||||||
| TEAS STAMP | USPTO/ROA-XXX.XX.XXX.XXX- 20061225154404253476-7878 7065-36080e042f1c069a8d91 ede43a9b95238e-N/A-N/A-20 061225153548030177 |
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| PTO Form 1957 (Rev 9/2005) |
| OMB No. 0651-0050 (Exp. 04/2009) |
The applicant acknowledges receipt of an office action dated June 27, 2006 in response
to our application to register EL CAPITAN in Class 032 citing U.S. Registration No. 2365745 and pending application Serial No. 78206145 as potential conflicts to our proposed mark.
The applicant respectfully requests to argue the merits of registration and submits evidence in favor of our proposed mark with respect to U.S. Registration No. 2365745 (also referred to as the “cited mark” or “registered mark” herein).
REBUTTAL – Likelihood of Confusion Under Section 2(d) & Goods and Services Related
The existing U.S. Registration No. 2365745 cited by the USPTO examiner is:
|
Word Mark |
EL CAPITAN |
|
Translations |
The English translation of "EL CAPITAN" is "The Captain". |
|
Goods and Services |
IC 041. US 100 101 107. G & S: 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. FIRST USE: 19910630. FIRST USE IN COMMERCE: 19910630 IC 035. US 100 101 102. G & S: Concession stands featuring beverages, snack foods, candies and baked goods. FIRST USE: 19910630. FIRST USE IN COMMERCE: 19910630 |
The owner of the registered mark owns and operates the El Capitan Theatre in Hollywood, California. Theatres are not commonly associated with the serving of alcohol or more specifically beer. In fact, a search of the State of California Alcoholic Beverage Control (www.abc.ca.gov) confirms that the El Capitan Theatre does not have a liquor license and does not serve alcoholic beverages to the public. The registration of our mark would not create confusion with the registered mark, as there is no expectation of alcohol or beer associated with theatres in general and specifically, the El Capitan Theatre. Consumers are not likely to be confused by the use of these similar marks on or in connection with goods and services as their markets are very distinctive and do not overlap.
In addition, the owners of the registered mark (U.S. Registration No. Serial No. 78206145) filed its application on August 28, 1998 when EL CAPITAN ESPECIAL (Serial No. 75164017) had recently been published for opposition in IC 032 for Beer by the USPTO. Therefore, the owners did not have any expectation of restricting use in IC 032 for Beer under a mark based on EL CAPITAN.
REBUTTAL – Marks Identical
The applicant agrees that our proposed mark and the registered mark are identical but that there is a history of identical marks for El Capitan being registered (even) with overlapping uses. The USPTO has not extended broad protection to marks using El Capitan.
The USPTO did not find Serial No. 78693130 for EL CAPITAN in IC 034 for Cigars to conflict with the registered mark (U.S. Registration No. 2365745). Cigars would be more likely associated with a theatre concession stand than beer and Cigars are not as tightly regulated as alcohol, which has strict licensing requirements in all 50 states. The USPTO interpretation that cigars would be confused as products found in a theatre concession stand has been consistent. The USPTO had previously not found any conflict with a prior application in IC 034 for cigars in “EL CAPITAN MADURO” Serial No. 78216391.
At the time of the filing and subsequent approval of the application which became the cited mark (U.S. Registration No. 2365745) were two existing federal registrations that have potentially overlapping uses:
(a) U.S. Registration No. 74589498 in IC 015 for EL CAPITAN stringed musical instruments, namely acoustic bass guitars. Clearly an EL CAPITAN musical instrument could be used in the El Capitan Theatre where 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 occur and could create confusion with consumers. The existence of this prior registration did not prevent the registration of the cited mark (U.S. Registration No. 74589498).
(b) U.S. Registration 71694212 in IC 029 for EL CAPITAN roasted peanuts could be sold in the El Capitan Theatre Concession stands featuring beverages, snack foods, candies and baked goods creating confusion with consumers. The existence of this prior registration did not prevent the registration of the cited mark (U.S. Registration No. 74589498).
So in the history of the El Capitan as a trademark in many different classes over many years, a clear and obvious conflict has been required to prevent a new registration. We don’t believe a clear and obvious conflict exists between our proposed mark and the registered mark.
Furthermore, a very common definition of “El Capitan” according to Wikipedia is “El Capitan is a 3,000 foot vertical rock formation in Yosemite Valley and Yosemite National Park. It is one of the most popular monoliths with rock climbers in the world.” Other sources claim that “El Capitan” was a name given to this landmark by the Mission Indians who had borrowed it from the Spanish Padres. In fact, the first federal registration using EL CAPITAN was U.S. Registration No. 0107062 for Coffee in 1915 before the El Capitan theatre was built in 1926. The cited mark (U.S. Registration No. 2365745) has not achieved the required unique distinctiveness for the mark “EL CAPITAN” that is also commonly attributed to a geographic feature in Yosemite National Park to prevent the registration of identical marks in unrelated classes.
The other potential conflict to our application was the pending application Serial No. 78206145 for CAPITAN is currently being contested in a TTAB proceeding. The applicant requests that if the USPTO agrees that U.S. Registration No. 2365745 should not be cited against our application that further proceedings would be suspended until Serial No. 78206145 is resolved. The applicant would like to reserve the right to argue the merits against this potential mark, at a later date, should the pending application become a registered trademark at the conclusion of the TTAB proceeding.
Respectfully submitted on behalf of Golden West Brewing Company,
John Power
President