Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

INTERNATIONAL REGISTRATION NO. 1385443

 

STRICT DEADLINE TO RESPOND TO THIS NOTIFICATION:  TO AVOID ABANDONMENT OF THE REQUEST FOR EXTENSION OF PROTECTION OF THE INTERNATIONAL REGISTRATION, THE USPTO MUST RECEIVE A COMPLETE RESPONSE TO THIS PROVISIONAL FULL REFUSAL NOTIFICATION WITHIN 6 MONTHS OF THE “DATE ON WHICH THE NOTIFICATION WAS SENT TO WIPO (MAILING DATE)” LOCATED ON THE WIPO COVER LETTER ACCOMPANYING THIS NOTIFICATION.

 

In addition to the Mailing Date appearing on the WIPO cover letter, a holder (hereafter “applicant”) may confirm this Mailing Date using the USPTO’s Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  To do so, enter the U.S. application serial number for this application and then select “Documents.”  The Mailing Date used to calculate the response deadline for this provisional full refusal is the “Create/Mail Date” of the “IB-1rst Refusal Note.”

 

This is a PROVISIONAL FULL REFUSAL of the request for extension of protection of the mark in the above-referenced U.S. application.  See 15 U.S.C. §1141h(c).  See below in this notification (hereafter “Office action”) for details regarding the provisional full refusal.

 

The referenced application has been reviewed by the assigned trademark examining attorney.  Applicant must respond timely and completely to the issues below.  15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.

 

SUMMARY OF THE ISSUES:

 

• Section 2(d) Likelihood of Confusion – Partial Refusal
• Identification of the Goods – Clarification Required
• Explanation of the Mark’s Significance Required
• Legal Entity Type –  Clarification Required

 

SECTION 2(d) LIKELIHOOD OF CONFUSION – PARTIAL REFUSAL

 

This refusal is limited to the following of Applicant’s goods: “cheese; cheese products; dairy products” in International Class 029.

 

Applicant seeks registration of the mark AVOCET. Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 4430054.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the attached registration.

 

Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely a consumer would be confused, mistaken, or deceived as to the source of the goods of the applicant and registrant. See 15 U.S.C. §1052(d).  Determining likelihood of confusion is made on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  However, “[n]ot all of the [du Pont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1366, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf Tea, 601. F.3d 1342, 1346, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).  The USPTO may focus its analysis “on dispositive factors, such as similarity of the marks and relatedness of the goods.”  In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); see TMEP §1207.01. 

 

Applicant seeks registration of the mark AVOCET for “cheese; cheese products; dairy products” in International Class 029, among other goods that are irrelevant to this discussion.

 

The registered mark is AVOCET for “Aperitif wines; aperitifs with a wine base; cooking wine; fortified wines; fruit wine; grape wine; honey wine; kits for making wine; Korean traditional rice wine (makgeoli); natural sparkling wines; port wines; prepared wine cocktails; red wine; red wines; rose wine; sparkling fruit wine; sparkling grape wine; sparkling wines; still wines; strawberry wine; sweet wines; table wines; tonic sweet grape wine containing extracts from ginseng and conchona bark (ninjin-kinatetsu wine); white wine; wine; wine coolers; wine punch; wine punches; wine-based beverage, namely, piquette; wine-based drinks; wines; wines and fortified wines; wines and liqueurs; wines and sparkling wines; wines derived from grapes grown in California, labeled and advertised in compliance with California laws for wine” in International Class 033.

 

Similarity of the Marks

 

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

 

In the present case, Applicant’s mark is AVOCET and Registrant’s mark is AVOCET.  These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.”  In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).  Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with Applicant’s and Registrant’s respective goods.  Id.

 

Therefore, the marks are confusingly similar. 

 

Relatedness of the Goods

 

The compared goods need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

 

Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on evidence of actual use.  See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks.  See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1272 (TTAB 2009) (holding medical MRI diagnostic apparatus and medical ultrasound devices to be related, based in part on the fact that such goods have complementary purposes because they may be used by the same medical personnel on the same patients to treat the same disease). 

 

As stated above, Applicant seeks registration of the mark AVOCET for “cheese; cheese products; dairy products” in International Class 029. The registered mark is AVOCET for “Aperitif wines; aperitifs with a wine base; cooking wine; fortified wines; fruit wine; grape wine; honey wine; kits for making wine; Korean traditional rice wine (makgeoli); natural sparkling wines; port wines; prepared wine cocktails; red wine; red wines; rose wine; sparkling fruit wine; sparkling grape wine; sparkling wines; still wines; strawberry wine; sweet wines; table wines; tonic sweet grape wine containing extracts from ginseng and conchona bark (ninjin-kinatetsu wine); white wine; wine; wine coolers; wine punch; wine punches; wine-based beverage, namely, piquette; wine-based drinks; wines; wines and fortified wines; wines and liqueurs; wines and sparkling wines; wines derived from grapes grown in California, labeled and advertised in compliance with California laws for wine” in International Class 033.

 

In the present case, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). 

 

Further, Applicant’s goods are related to Registrant’s goods based on complementary use, as demonstrated by the attached evidence. The attached Internet evidence, consisting of screenshots of the webpages of entities similar to Applicant and Registrant, establishes that wine and cheese are commonly used together, and that wine and cheese are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. 

 

Specifically, the attached articles discuss the complementary nature of wine and cheese: See:

 

-       http://www.gourmetsleuth.com/features/wine-cheese-pairing-guide (“Wine and Cheese Pairing Guide”)

-       http://www.hidesertstar.com/the_desert_trail/news/article_9ddddd50-1f94-11e7-97f5-b71117a11bc6.html (“History celebrated with wine and cheese event”)

-       http://spoilednyc.com/wine-and-dine-giveaway-brooklyn-crush/ (“Have you ever wanted to host a wine and cheese tasting for your friends?”)

 

Likewise, the additional attached evidence consists of screenshots of the webpages of entities, such as wineries and specialty shops, that provide both wine and cheese. See:

 

-       http://www.chaddsford.com/pages/wine-cheese-weekends (“Taste and tour your way through six delectable wine and cheese stations at Chaddsford Winery!”)

-       http://www.wilsoncreekwinery.com/Event/Group-Wine-Tasting.aspx (“Add a gourmet cheese tray to any tasting…”)

-       http://www.cheeseandwinestore.com/ (“Each month you will receive a package that includes a different seasonally or theme curated cheese & wine pairing hand-selected to enhance the flavor and complexity of each.”)

 

Thus, Applicant’s and Registrant’s goods are considered related for likelihood of confusion purposes.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).

 

Because Applicant's and Registrant's marks are similar and because the goods are related, Applicant's mark must be refused registration pursuant to Section 2(d) of the Lanham Act, as to the following of Applicant’s goods: “cheese; cheese products; dairy products” in International Class 029.

 

Although Applicant's mark has been refused registration, Applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if Applicant responds to the refusal, Applicant must also respond to the requirements set forth below.

 

IDENTIFICATION OF THE GOODS – CLARIFICATION REQUIRED

 

Applicant’s current identification of the goods is not acceptable and requires clarification.

 

As a preliminary matter, the USPTO has the discretion to determine the degree of particularity needed to clearly identify goods and services covered by a mark. In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1597 (TTAB 2014) (citing In re Omega SA, 494 F.3d 1362, 1365, 83 USPQ2d 1541, 1543-44 (Fed. Cir. 2007)). Accordingly, the USPTO requires the description of goods and services in a U.S. application to be specific, definite, clear, accurate, and concise. TMEP §1402.01; see In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d at 1597-98; Cal. Spray-Chem. Corp. v. Osmose Wood Pres. Co. of Am., 102 USPQ 321, 322 (Comm’r Pats. 1954). 

 

Further, the identification of goods contains brackets. Generally, applicants should not use parentheses and brackets in identifications in their applications so as to avoid confusion with the USPTO’s practice of using parentheses and brackets in registrations to indicate goods and services that have been deleted from registrations or in an affidavit of incontestability to indicate goods and services not claimed. See TMEP §1402.12. The only exception is that parenthetical information is permitted in identifications in an application if it serves to explain or translate the matter immediately preceding the parenthetical phrase in such a way that it does not affect the clarity or scope of the identification, e.g., “fried tofu pieces (abura-age).” Id. Therefore, Applicant must remove the brackets from the identification and incorporate any bracketed information into the description of the goods.

 

Applicant must amend the identification as follows:

 

International Class 001

 

First, Applicant must remove the brackets in “Preservatives for animal feeds [chemical]”, “additives [chemical] for use in the preparation of animal foodstuffs”, and “additives [chemical] for use in the manufacture of animal foodstuffs” and incorporate any bracketed information into the description of the goods.

 

Second, the wording “mixtures of chemicals and microorganisms for increasing the nutritional value of animal fodder [other than for veterinary use]” in the identification of goods is indefinite and must be clarified because it does not make clear the nature of the goods.  See 37 C.F.R. §2.32(a)(6); TMEP §1402.01. Applicant must amend this wording to specify the common commercial or generic name of the goods.  See TMEP §1402.01.  If the goods have no common commercial or generic name, Applicant must describe the product, its main purpose, and its intended uses.  See id.

 

International Class 029

 

Applicant must remove the brackets in “milk based beverages [milk predominating]” and incorporate any bracketed information into the description of the goods.

 

Second, the wording “cheese products” and “dairy products” must be clarified because it is too broad and could identify goods in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03.  For example, “Cheese graters” are classified in International Class 021; “Cheese sauce” is classified in International Class 030; and “Cream cheese” is classified in International Class 029. Therefore, Applicant must amend this wording to specify either the common generic name of each product or describe the nature, purpose, and/or intended use of each product.  See TMEP §§1402.01, 1402.03. 

 

International Class 031

 

First, the wording “animal feed preparations” is indefinite and too broad.  This wording must be clarified because it is not clear what the goods are and could identify goods and/or services in more than one international class.  See 37 C.F.R. §2.32(a)(6); TMEP §§1402.01, 1402.03, 1904.02(c), (c)(ii).  For example, “Probiotic animal feed” are in International Class 005 and “Synthetic animal feed” are in International Class 031. 

 

In an application filed under Trademark Act Section 66(a), an applicant may not change the classification of goods from that assigned by the International Bureau of the World Intellectual Property Organization in the corresponding international registration.  37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Therefore, although the goods may be classified in several international classes, any modification to this wording must identify goods in International Class 031 only, the class specified in the application for these goods.  See TMEP §1904.02(c), (c)(ii).

 

Classification Advisory

 

Please note that in a Trademark Act Section 66(a) application, classification of goods may not be changed from that assigned by the International Bureau of the World Intellectual Property Organization. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Additionally, classes may not be added or goods transferred from one class to another in a multiple-class Section 66(a) application.  37 C.F.R. §2.85(d); TMEP §1401.03(d). 

 

Suggested Identification

 

Applicant may substitute the following wording, if accurate: 

 

“Chemical preservatives for animal feeds; chemical additives for use in the preparation of animal foodstuffs; chemical additives for use in the manufacture of animal foodstuffs; chemical additives in the nature of mixtures of chemicals and microorganisms for increasing the nutritional value of animal fodder, other than for medical or veterinary use” in International Class 001

 

“Beef; milk; milk based beverages, milk predominating; cream; cheese; cheese products, namely, cheese food; dairy products, namely, dairy-based food beverages and dairy-based beverages” in International Class 029

 

“Animal feed; animal feed preparations, namely, synthetic animal feed; mixed animal feed; synthetic animal feed; preserved crops for animal feeds; fodder; foodstuffs and fodder for animals” in International Class 031

 

Amendment Guidelines

 

Applicant may amend the identification to clarify or limit the goods and services, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Generally, any deleted goods may not later be reinserted.  See TMEP §1402.07(e).  Additionally, for applications filed under Trademark Act Section 66(a), the scope of the identification for purposes of permissible amendments is limited by the international class assigned by the International Bureau of the World Intellectual Property Organization (International Bureau); and the classification of goods may not be changed from that assigned by the International Bureau. 37 C.F.R. §2.85(d); TMEP §§1401.03(d), 1904.02(b). Further, in a multiple-class Section 66(a) application, classes may not be added or goods transferred from one existing class to another. 37 C.F.R. §2.85(d); TMEP §1401.03(d).

 

For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual.  See TMEP §1402.04.

 

EXPLANATION OF THE MARK’S SIGNIFICANCE REQUIRED

 

To permit proper examination of the application, applicant must explain whether the wording in the mark “AVOCET” has any significance in Applicant’s trade or industry or as applied to Applicant’s goods, or if such wording is a “term of art” within applicant’s industry.  See 37 C.F.R. §2.61(b); TMEP §814.  Failure to comply with a request for information is grounds for refusing registration.  In re Harley, 119 USPQ2d 1755, 1757-58 (TTAB 2016); TMEP §814.

 

LEGAL ENTITY TYPE – CLARIFICATION REQUIRED

 

Applicant’s business name includes the foreign business designation “Plc”; however, Applicant set forth “limited company” as the legal entity in the application. This business designation is generally considered the equivalent of a “public limited company.”  See TMEP app. D.  Therefore, Applicant must clarify the entity type in the application.  See 37 C.F.R. §§2.32(a)(3), 2.61(b); TMEP §803.03(i).  Applicant may satisfy this requirement by amending the legal entity to one of those immediately listed above from Appendix D of the Trademark Manual of Examining Procedure (TMEP) for this business designation, as appropriate.  See TMEP §803.03(i). 

 

Alternatively, if Applicant maintains that the legal entity in the application properly identifies Applicant’s entity type, Applicant must provide an explanation as to why the identified entity type is more similar to a “limited company” in this instance than to a “public limited company”.

 

If, in response to the above request, Applicant provides information indicating that it is not the owner of the mark, registration will be refused because the application was void as filed.  See 37 C.F.R. §2.71(d); TMEP §§803.06, 1201.02(b).  An application must be filed by the party who owns or is entitled to use the mark as of the application filing date.  See 37 C.F.R. §2.71(d); TMEP §1201.02(b).

 

ASSISTANCE

 

If Applicant has questions regarding this Office action, please telephone or e-mail the assigned trademark examining attorney.  All relevant e-mail communications will be placed in the official application record; however, an e-mail communication will not be accepted as a response to this Office action and will not extend the deadline for filing a proper response.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.  Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal and requirements in this Office action, the trademark examining attorney may not provide legal advice or statements about Applicant’s rights.  See TMEP §§705.02, 709.06.

 

WHO IS PERMITTED TO RESPOND TO THIS PROVISIONAL FULL REFUSAL:  Any response to this provisional refusal must be personally signed by an individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant (e.g., a corporate officer or general partner).  37 C.F.R. §§2.62(b), 2.193(e)(2)(ii); TMEP §712.01.  If applicant hires a qualified U.S. attorney to respond on his or her behalf, then the attorney must sign the response.  37 C.F.R. §§2.193(e)(2)(i), 11.18(a); TMEP §§611.03(b), 712.01.  Qualified U.S. attorneys include those in good standing with a bar of the highest court of any U.S. state, the District of Columbia, Puerto Rico, and other U.S. commonwealths or U.S. territories.  See 37 C.F.R. §§2.17(a), 2.62(b), 11.1, 11.14(a); TMEP §§602, 712.01.  Additionally, for all responses, the proper signatory must personally sign the document or personally enter his or her electronic signature on the electronic filing.  See 37 C.F.R. §2.193(a); TMEP §§611.01(b), 611.02.  The name of the signatory must also be printed or typed immediately below or adjacent to the signature, or identified elsewhere in the filing.  37 C.F.R. §2.193(d); TMEP §611.01(b).

 

In general, foreign attorneys are not permitted to represent applicants before the USPTO (e.g., file written communications, authorize an amendment to an application, or submit legal arguments in response to a requirement or refusal).  See 37 C.F.R. §11.14(c), (e); TMEP §§602.03-.03(b), 608.01. 

 

DESIGNATION OF DOMESTIC REPRESENTATIVE:  The USPTO encourages applicants who do not reside in the United States to designate a domestic representative upon whom any notice or process may be served.  TMEP §610; see 15 U.S.C. §§1051(e), 1141h(d); 37 C.F.R. §2.24(a)(1)-(2).  Such designations may be filed online at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp. 

 

 

 

 

/Xheneta Ademi/

Examining Attorney

Law Office 122

(571) 272-7151

xheneta.ademi@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

PERIODICALLY CHECK THE STATUS OF THE APPLICATION:  To ensure that applicant does not miss crucial deadlines or official notices, check the status of the application every three to four months using the Trademark Status and Document Retrieval (TSDR) system at http://tsdr.gov.uspto.report/.  Please keep a copy of the TSDR status screen.  If the status shows no change for more than six months, contact the Trademark Assistance Center by e-mail at TrademarkAssistanceCenter@uspto.gov or call 1-800-786-9199.  For more information on checking status, see http://www.gov.uspto.report/trademarks/process/status/.

 

TO UPDATE CORRESPONDENCE/E-MAIL ADDRESS:  Use the TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.