UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

 

FIRST OFFICE ACTION

 

RESPONSE TIME LIMIT:  TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE MAILING OR E-MAILING DATE. 

 

 

Serial Number  79/011401

 

INTERNATIONAL REGISTRATION NO. 0654829  

 

This is a PROVISIONAL FULL REFUSAL of the trademark and/or service mark in the above-referenced U.S. application.  15 U.S.C. §1141h(c).

 

APPLICANT OR ATTORNEY CAN RESPOND TO PROVISIONAL REFUSAL:

 

Applicant may respond directly to this provisional refusal Office action, or applicant’s attorney may respond on applicant’s behalf. 

 

NOTE:  Attorneys hired to represent an applicant in a trademark matter before the Office must be eligible under 37 C.F.R. §10.14:

 

(1)     Attorneys who are in good standing with the bar of any United States court or the highest court of any state, may practice before the Office in trademark matters.

(2)     A foreign attorney not residing in the United States who is in good standing before the patent or trademark office of the country in which he or she resides, may practice before the Office in trademark matters only in cases where the patent and trademark office of that foreign country allows substantially reciprocal privileges to those permitted to practice before the Office.  Currently, Canadian attorneys are the only foreign attorneys recognized as meeting this criterion.  A foreign attorney who meets the requirements of 37 C.F.R. §10.14(c) can only represent parties located in the country in which the foreign attorney resides and practices.  TMEP §602.

 

The Office cannot aid in the selection of an attorney.  37 C.F.R. §2.11.

 

If applicant is not represented by an attorney, applicant may appoint a domestic representative who would receive correspondence from the Office and be served process or notice of proceedings affecting the application.  15 U.S.C. §1141h(d); 37 C.F.R. §2.24.

 

THE APPLICATION HAS BEEN PROVISIONALLY REFUSED AS FOLLOWS:

 

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

 

REFUSAL

 

Likelihood of Confusion - Section 2(d)

Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 0396222.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); TMEP §§1207.01 et seq.  See the enclosed registration.

Taking into account the relevant DuPont factors, a likelihood of confusion determination in this case involves a two-part analysis.  First, the marks are compared 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 goods or services are compared to determine whether they are similar or related or whether the activities surrounding their marketing are such that confusion as to origin is likely.  In re National Novice Hockey League, Inc., 222 USPQ 638 (TTAB 1984); In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re Int’l Tel. and Tel. Corp., 197 USPQ 910 (TTAB 1978); Guardian Prods. Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); TMEP §§1207.01 et seq.

Here, the applicant applied to register the mark ALTUS for alcoholic beverages (except beers) in International Class 33.

The registered mark is ALTES for beer in International Class 32.

Similarity Of The Marks

In the instant case, the marks are essentially phonetic equivalents.  The only distinguishing characteristic of the applicant’s mark from the registered mark is that the applicant’s mark is spelled with a “U” rather than “E.”

Regarding the issue of likelihood of confusion, the question is not whether people will confuse the marks, but whether the marks will confuse people into believing that the goods they identify come from the same source.  In re West Point-Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (C.C.P.A. 1972).  For that reason, the test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison.  The question is whether the marks create the same overall impression.  Recot, Inc. v. M.C. Becton, 214 F.2d 1322, 54 USPQ2d 1894, 1890 (Fed. Cir. 2000); Visual Information Inst., Inc. v. Vicon Indus. 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).

 

Accordingly, since the marks are so similar in sound, appearance, and overall commercial impression, confusion as to source is likely.

Relationship Between The Goods

Here, the applicant’s goods, and the registrant’s goods are highly related.  The applicant’s goods are  alcoholic beverages (except beers), and the registrant’s goods are beer.  The goods would be found in the same channels of trade and would be available to the same potential consumers.

The goods and/or services of the parties need not be identical or directly competitive to find a likelihood of confusion.  Instead, 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 and/or services come from a common source.  On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Prods. Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re Int’l Tel. & Tel. Corp., 197 USPQ 910 (TTAB 1978); TMEP §1207.01(a)(i).

 

Moreover, various alcoholic beverages have been shown to be related goods for purposes of 2(d) analysis.  In re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (likelihood of confusion between GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila); 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).

 

 

 

Accordingly, since there is no overriding factor to distinguish applicant's mark from the mark already registered, registration must be refused because the average purchaser would be likely to conclude that applicant's goods and those cited in U.S. Registration No.  0396222 emanate from a common source of origin.

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.

 

 

Informalities

If the applicant chooses to respond to the refusal to register, the applicant must also respond to the following.

Entity And Citizenship Omitted

Applicant must specify its entity type and citizenship.  For example, an applicant can apply as an individual, a partnership, a corporation or a joint venture.  37 C.F.R. §2.32(a)(3); TMEP §§803.03 et seq.  If applicant is an individual, then applicant must indicate his or her national citizenship for the record.  37 C.F.R. §2.32(a)(3)(i).  If applicant is a corporation or association, then applicant must set forth the U.S. state or country (for foreign applicants only) under whose laws applicant is organized.  37 C.F.R. §2.32(a)(3)(ii).  If applicant is a partnership or joint venture, then applicant must list the names and the national citizenship or the U.S. state or country (for foreign applicants only) of organization or incorporation of all the general partners or joint venturers, as well as specify the state or country under whose laws the partnership or joint venture is organized.  37 C.F.R. §§2.32(a)(3)(ii) and (iii).

Unacceptable Identification Of Goods

The identification of goods needs clarification because alcoholic beverages could include a wide variety of goods, and the identification must be specific and definite.  Applicant may adopt the following identification of goods, if accurate:  Alcoholic beverages, excluding beer; namely wines, liqueurs, brandies, distilled spirits, and potable spirits.  TMEP § 1402.01.

 

Additions To Identification Not Permitted

Please note that, while the identification of goods and/or services may be amended to clarify or limit the goods and/or services, adding to the goods and/or services or broadening the scope of the goods and/or services is not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, applicant may not amend the identification to include goods and/or services that are not within the scope of the goods and/or services set forth in the present identification.

 

For assistance with identifying goods and/or services in trademark applications, please see the online searchable Manual of Acceptable Identifications of Goods and Services at http://tess2.gov.uspto.report/netahtml/tidm.html.

Advisory – Classification For Goods/Services Cannot Be Changed

The international classification of goods and/or services in applications filed under Trademark Act Section 66(a) cannot be changed from the classification given to the goods and/or services by the International Bureau of the World Intellectual Property Organization in the corresponding international registration.  TMEP §§1401.03(d), 1401.04 and 1904.02(b). 

If applicant has questions about its application or needs assistance in responding to this Office action, please telephone the assigned trademark examining attorney directly at the number below.

 

 

 

 

/Andrea Koyner Nadelman/

Andrea Koyner Nadelman

Trademark Attorney

Law Office 110

(571) 272-9370

 

 

 

HOW TO RESPOND TO THIS OFFICE ACTION:

• ONLINE RESPONSE:  You may respond formally using the Office’s Trademark Electronic Application System (TEAS) Response to Office Action form (visit http://www.gov.uspto.report/teas/index.html and follow the instructions, but if the Office Action has been issued via email, you must wait 72 hours after receipt of the Office Action to respond via TEAS).
• REGULAR MAIL RESPONSE:  To respond by regular mail, your response should be sent to the mailing return address above and include the serial number, law office number and examining attorney’s name in your response.

 

STATUS OF APPLICATION: To check the status of your application, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.uspto.gov.

 

VIEW APPLICATION DOCUMENTS ONLINE: Documents in the electronic file for pending applications can be viewed and downloaded online at http://portal.gov.uspto.report/external/portal/tow.

 

GENERAL TRADEMARK INFORMATION: For general information about trademarks, please visit the Office’s website at http://www.gov.uspto.report/main/trademarks.htm

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY SPECIFIED ABOVE.