| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 79225309 |
| LAW OFFICE ASSIGNED | LAW OFFICE 122 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/79225309/mark.png |
| LITERAL ELEMENT | AVOCET |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| OWNER SECTION (current) | |
| NAME | Avocet Infinite Plc |
| INTERNAL ADDRESS | 25 Palace Street, |
| STREET | Berwick Upon Tweed; Northumberland TD151HN |
| COUNTRY | United Kingdom |
| OWNER SECTION (proposed) | |
| NAME | Avocet Infinite Plc |
| INTERNAL ADDRESS | 25 Palace Street |
| STREET | Berwick Upon Tweed; Northumberland TD151HN |
| COUNTRY | United Kingdom |
| LEGAL ENTITY SECTION (current) | |
| TYPE | Limited Company United Kingdom |
| STATE/COUNTRY WHERE LEGALLY ORGANIZED | United Kingdom |
| LEGAL ENTITY SECTION (proposed) | |
| TYPE | public limited company (plc) |
| STATE/COUNTRY WHERE LEGALLY ORGANIZED | United Kingdom |
| ARGUMENT(S) | |
|
Registration of Applicant's mark AVOCET for "chees; cheese products; dairy products" in International Class 029 is refused because of a likelihood of confusion with the mark AVOCET in US Registration No. 4,430,054 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. Reconsideration is solicited. It is respectfully submitted that although the marks are similar, the respective goods are not. In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). Although the marks may be similar, "the identity of the marks alone is not sufficient to establish likelihood of confusion in the absence of probative evidence that the goods are related." In re Thor Tech, Inc., Serial No. 85667188, Trademark Trial and Appeal Board, January 26, 2015, page 2. Although the examples of record show that wine and cheese can be paired together, there is no evidence of record that demonstrates that wine and cheese emanate from the same source. Rather, the evidence of record shows that certain purveyors of wine and cheese may bring the two products together. However, the respective products themselves are different enough that they do not overlap, which weighs against any finding of likelihood of confusion. The mere fact that wine and cheese can be paired together does not establish that there is any overlap between the different goods. The goods here are different. They are produced differently by different entities. In most cases, wine will be presented in one part of a store, while cheese is presented in a different part. It is respectfully submitted that consumers will not assume a common source for the goods despite any complementary nature. Thus, with respect to the similarity of the goods, it is submitted that this factor weighs against likelihood of confusion. The consumers of wine and cheese, particularly when it comes to wine and cheese pairing, will be sophisticated and exercise a high degree of care in making their purchasing decisions. They are "special purchases made only after a good deal of though and consideration." A consumer has to "pay particular attention to such purchases, and indeed would likely make a careful examination of the item before buying." Id at 11. "These types of products, at these prices, are not the kinds of products which we think reasonably prudent purchasers would buy, or without researching the product to some degree. Rather, these are items that will be purchased with care and deliberation." Id. at 12. See Tiffany & Co. v. Classic Motor Carriages Inc., 10 USPQ2d 1835, 1841 (TTAB 1989). It is submitted that the purchasing and pairing of wine and cheese will be made by those who have a good deal of experience and training with wine and cheese. These consumers or purchasers in these industries are sophisticated purchasers and will know or appreciate who the respective players are. While it may not be uncommon for cheese to be paired with wine, or for wine tastings to include cheese, there is no evidence to support that the respective products would emanate from the same source. Rather, the evidence of record merely demonstrates that there are services and stores where wines and cheeses are paired together. However, an expert is putting these pairings together after significant research and this expert will certainly come to know and understand the producers of the respective products. One does not merely select a bottle of wine and a package of cheese and say that the two go together. Rather, as is clear from the evidence of record, the process of pairing wine and cheese is complex and requires a good deal of sophistication and knowledge about the respective products. There are large numbers of wine producers and cheese producers, both within the United States and outside of the United States. For example, referring to Exhibit 1, taken fromhttp://www.statista.com/statistics/259395/number-of-wineries-in-the-us-by-production-size/, the total number of US wineries was 9,654. Further, with respect to gourmet cheeses, which is generally the type to be paired with wines, such cheesemakers number in the hundreds. See Exhibit 2 taken from http://www.gourmetcheesedetective.com/American-artisanal-cheeses.html. Due to these large numbers, a significant amount of research of work needs to go into understanding how different wines are made, where they are made and by whom. The same can be said for cheese. These numbers clearly indicate that the pairings of wine and cheese are not by impulse, but rather by education, training and research. Thus, the expert in cheese or wine will not be confused as to source. The evidence of record supports the sophisticated nature of the consumers. In each of the evidence attached to the Office Action, various wine and cheese tasting events are described. The venues themselves include wineries and specialty shops. It is clear from this evidence that the wine and cheese pairing business is not for the uneducated, but rather those who have been trained in food and wine. These people are experts in their fields, understand the respective producers of wine and cheese, and will not be confused as to source between a wine and a cheese, even though the marks are similar. Thus, it is submitted that the degree of consumer care weighs against a likelihood of confusion. It is submitted that wine and cheese do not move in the same channels of trade. While wine and cheese may be paired, and even may be sold in the same venue, their marketing and display will be quite different. Winemaking and cheese making are very different industries and processes. The process of producing a bottle of wine or a brick of cheese is complex, requires a certain degree of skill and takes a significant amount of time. Each process also requires sophisticated resources, particularly if the product is to be manufactured and sold on a larger scale. While the end result of each process may be paired together for tasting purposes, those of skill in the respective arts will readily appreciate the differences. As suggested by the evidence of record, bottles of wine would typically be in an open air display. Cheese and dairy products are food products, and its presentation and storage will be subject to regulations that are different from those pertaining to bottles of wine. Thus, it is submitted that cheese and dairy products will be presented in a refrigerated display or a cooler area of the venue. These will be different areas of the venue, even if there is such a pairing suggestion. When pairing, such entities are not the manufacturers of the respective products. The evidence of record merely shows that certain retailers such as wine shops and cheese shops, or wine and cheese shops will pair wines and cheese. However, it is submitted that the respective products are "noncompetitive, differ completely in utility, have nothing in common with respect to their essential characteristics or sales appeal." Id. at 10. Thus, although the two marks may be similar, when balancing the likelihood of confusion factors as a whole, the channels of trade and high degree of consumer care likely to be exercised by the relevant consumers supports a conclusion that Applicant's AVOCET mark will not cause confusion with Registrant's AVOCET mark. The respective goods do not overlap and the consumers of the respective products will be sophisticated and make purchasing decisions with a degree of care that factors away from any likelihood of confusion. There is no evidence to show that wine and cheese emanate from the same producer. Rather sophisticated parties and shops may put together wine and cheese pairings. However, given their sophistication in these fields, they will know that the respective products do not emanate from the same source. Exhibits 3-6 illustrate examples of similar marks used for both wine and cheese, where the respective marks are owned by different entities. Thus, it is submitted that there is no likelihood of confusion and it is request that the mark be approved for publication. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_243863194-20180807091717182131_._Exhibit_1.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\792\253\79225309\xml8\ROA0002.JPG |
| ORIGINAL PDF FILE | evi_243863194-20180807091717182131_._Exhibit_2.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\792\253\79225309\xml8\ROA0003.JPG |
| ORIGINAL PDF FILE | evi_243863194-20180807091717182131_._Exhibit_3_ZOLO_033_85003077.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\792\253\79225309\xml8\ROA0004.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\792\253\79225309\xml8\ROA0005.JPG | |
| ORIGINAL PDF FILE | evi_243863194-20180807091717182131_._Exhibit_4_ZOLA_029_78694626.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\792\253\79225309\xml8\ROA0006.JPG |
| ORIGINAL PDF FILE | evi_243863194-20180807091717182131_._Exhibit_5_GOLD_VALLEY_033_73348266.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\792\253\79225309\xml8\ROA0007.JPG |
| ORIGINAL PDF FILE | evi_243863194-20180807091717182131_._Exhibit_6_GOLDEN_VALLEY_029_77920287.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\792\253\79225309\xml8\ROA0008.JPG |
| DESCRIPTION OF EVIDENCE FILE | Web page screen shots showing statistics related to wine and cheese. Copies of trademark registration illustrating where similar marks owned by different parties are used for goods in both class 029 and 033. |
| GOODS AND/OR SERVICES SECTION (001)(current) | |
| INTERNATIONAL CLASS | 001 |
| DESCRIPTION | |
| Preservatives for animal feeds [chemical]; additives [chemical] for use in the preparation of animal foodstuffs; additives [chemical] for use in the manufacture of animal foodstuffs; mixtures of chemicals and microorganisms for increasing the nutritional value of animal fodder [other than for veterinary use] | |
| GOODS AND/OR SERVICES SECTION (001)(proposed) | |
| INTERNATIONAL CLASS | 001 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | |
| Chemical Ppreservatives for animal feeds [chemical]; chemical additives [chemical] for use in the preparation of animal foodstuffs; chemical additives [chemical] 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.] | |
| GOODS AND/OR SERVICES SECTION (029)(current) | |
| INTERNATIONAL CLASS | 029 |
| DESCRIPTION | |
| Beef; milk; milk based beverages [milk predominating]; cream; cheese; cheese products; dairy products | |
| GOODS AND/OR SERVICES SECTION (029)(proposed) | |
| INTERNATIONAL CLASS | 029 |
| TRACKED TEXT DESCRIPTION | |
| Beef; milk; |
|
| FINAL DESCRIPTION | |
| 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. | |
| GOODS AND/OR SERVICES SECTION (031)(current) | |
| INTERNATIONAL CLASS | 031 |
| DESCRIPTION | |
| Animal feed; animal feed preparations; mixed animal feed; synthetic animal feed; preserved crops for animal feeds; fodder; foodstuffs and fodder for animals | |
| GOODS AND/OR SERVICES SECTION (031)(proposed) | |
| INTERNATIONAL CLASS | 031 |
| TRACKED TEXT DESCRIPTION | |
| Animal feed; |
|
| FINAL DESCRIPTION | |
| Animal feed; animal feed preparations, namely synthetic animaly feed; mixed animal feed; synthetic animal feed; preserved crops for animal feeds; fodder; foodstuffs and fodder for animals. | |
| ADDITIONAL STATEMENTS SECTION | |
| SIGNIFICANCE OF MARK | AVOCET appearing in the mark has no significance nor is it a term of art in the relevant trade or industry or as used in connection with the goods/services/collective membership organization listed in the application, or any geographical significance. |
| NEW ATTORNEY SECTION | |
| NAME | Geza C. Ziegler Jr. |
| FIRM NAME | Ziegler IP Law Group LLC |
| INDIVIDUAL ATTORNEY DOCKET/REFERENCE NUMBER |
BSKAFS5022 |
| OTHER APPOINTED ATTORNEY | Joseph V. Gamberdell Jr. |
| STREET | 55 Greens Farms Road |
| CITY | Westport |
| STATE | Connecticut |
| ZIP/POSTAL CODE | 06880 |
| COUNTRY | United States |
| PHONE | 2036590388 |
| FAX | 2032225299 |
| ptomail@gziplaw.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| CORRESPONDENCE SECTION | |
| ORIGINAL ADDRESS | Christian Bunke, Basck Limited 16 Saxon Road Cambridge CB5 8HS GB |
| NEW CORRESPONDENCE SECTION | |
| NAME | Geza C. Ziegler Jr. |
| FIRM NAME | Ziegler IP Law Group LLC |
| DOCKET/REFERENCE NUMBER | BSKAFS5022 |
| STREET | 55 Greens Farms Road |
| CITY | Westport |
| STATE | Connecticut |
| ZIP/POSTAL CODE | 06880 |
| COUNTRY | United States |
| PHONE | 2036590388 |
| FAX | 2032225299 |
| ptomail@gziplaw.com;ziplaw@gziplaw.com | |
| AUTHORIZED EMAIL COMMUNICATION | Yes |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /gcz44004/ |
| SIGNATORY'S NAME | Geza C. Ziegler Jr. |
| SIGNATORY'S POSITION | Attorney of Record |
| SIGNATORY'S PHONE NUMBER | 2036590388 |
| DATE SIGNED | 08/07/2018 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Tue Aug 07 09:27:12 EDT 2018 |
| TEAS STAMP | USPTO/ROA-XX.XX.XX.XXX-20 180807092712734283-792253 09-6101980caee924c8eb5bf6 fc941e21078b32e7e48bc4b2f 1186c35799d42ecbf3d-N/A-N /A-20180807091717182131 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
Registration of Applicant's mark AVOCET for "chees; cheese products; dairy products" in International Class 029 is refused because of a likelihood of confusion with the mark AVOCET in US Registration No. 4,430,054 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. Reconsideration is solicited.
It is respectfully submitted that although the marks are similar, the respective goods are not. In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). Although the marks may be similar, "the identity of the marks alone is not sufficient to establish likelihood of confusion in the absence of probative evidence that the goods are related." In re Thor Tech, Inc., Serial No. 85667188, Trademark Trial and Appeal Board, January 26, 2015, page 2. Although the examples of record show that wine and cheese can be paired together, there is no evidence of record that demonstrates that wine and cheese emanate from the same source. Rather, the evidence of record shows that certain purveyors of wine and cheese may bring the two products together. However, the respective products themselves are different enough that they do not overlap, which weighs against any finding of likelihood of confusion.
The mere fact that wine and cheese can be paired together does not establish that there is any overlap between the different goods. The goods here are different. They are produced differently by different entities. In most cases, wine will be presented in one part of a store, while cheese is presented in a different part. It is respectfully submitted that consumers will not assume a common source for the goods despite any complementary nature. Thus, with respect to the similarity of the goods, it is submitted that this factor weighs against likelihood of confusion.
The consumers of wine and cheese, particularly when it comes to wine and cheese pairing, will be sophisticated and exercise a high degree of care in making their purchasing decisions. They are "special purchases made only after a good deal of though and consideration." A consumer has to "pay particular attention to such purchases, and indeed would likely make a careful examination of the item before buying." Id at 11. "These types of products, at these prices, are not the kinds of products which we think reasonably prudent purchasers would buy, or without researching the product to some degree. Rather, these are items that will be purchased with care and deliberation." Id. at 12. See Tiffany & Co. v. Classic Motor Carriages Inc., 10 USPQ2d 1835, 1841 (TTAB 1989).
It is submitted that the purchasing and pairing of wine and cheese will be made by those who have a good deal of experience and training with wine and cheese. These consumers or purchasers in these industries are sophisticated purchasers and will know or appreciate who the respective players are.
While it may not be uncommon for cheese to be paired with wine, or for wine tastings to include cheese, there is no evidence to support that the respective products would emanate from the same source. Rather, the evidence of record merely demonstrates that there are services and stores where wines and cheeses are paired together. However, an expert is putting these pairings together after significant research and this expert will certainly come to know and understand the producers of the respective products. One does not merely select a bottle of wine and a package of cheese and say that the two go together. Rather, as is clear from the evidence of record, the process of pairing wine and cheese is complex and requires a good deal of sophistication and knowledge about the respective products.
There are large numbers of wine producers and cheese producers, both within the United States and outside of the United States. For example, referring to Exhibit 1, taken fromhttp://www.statista.com/statistics/259395/number-of-wineries-in-the-us-by-production-size/, the total number of US wineries was 9,654. Further, with respect to gourmet cheeses, which is generally the type to be paired with wines, such cheesemakers number in the hundreds. See Exhibit 2 taken from http://www.gourmetcheesedetective.com/American-artisanal-cheeses.html. Due to these large numbers, a significant amount of research of work needs to go into understanding how different wines are made, where they are made and by whom. The same can be said for cheese. These numbers clearly indicate that the pairings of wine and cheese are not by impulse, but rather by education, training and research. Thus, the expert in cheese or wine will not be confused as to source.
The evidence of record supports the sophisticated nature of the consumers. In each of the evidence attached to the Office Action, various wine and cheese tasting events are described. The venues themselves include wineries and specialty shops. It is clear from this evidence that the wine and cheese pairing business is not for the uneducated, but rather those who have been trained in food and wine. These people are experts in their fields, understand the respective producers of wine and cheese, and will not be confused as to source between a wine and a cheese, even though the marks are similar.
Thus, it is submitted that the degree of consumer care weighs against a likelihood of confusion.
It is submitted that wine and cheese do not move in the same channels of trade. While wine and cheese may be paired, and even may be sold in the same venue, their marketing and display will be quite different.
Winemaking and cheese making are very different industries and processes. The process of producing a bottle of wine or a brick of cheese is complex, requires a certain degree of skill and takes a significant amount of time. Each process also requires sophisticated resources, particularly if the product is to be manufactured and sold on a larger scale. While the end result of each process may be paired together for tasting purposes, those of skill in the respective arts will readily appreciate the differences.
As suggested by the evidence of record, bottles of wine would typically be in an open air display. Cheese and dairy products are food products, and its presentation and storage will be subject to regulations that are different from those pertaining to bottles of wine. Thus, it is submitted that cheese and dairy products will be presented in a refrigerated display or a cooler area of the venue. These will be different areas of the venue, even if there is such a pairing suggestion.
When pairing, such entities are not the manufacturers of the respective products. The evidence of record merely shows that certain retailers such as wine shops and cheese shops, or wine and cheese shops will pair wines and cheese. However, it is submitted that the respective products are "noncompetitive, differ completely in utility, have nothing in common with respect to their essential characteristics or sales appeal." Id. at 10.
Thus, although the two marks may be similar, when balancing the likelihood of confusion factors as a whole, the channels of trade and high degree of consumer care likely to be exercised by the relevant consumers supports a conclusion that Applicant's AVOCET mark will not cause confusion with Registrant's AVOCET mark. The respective goods do not overlap and the consumers of the respective products will be sophisticated and make purchasing decisions with a degree of care that factors away from any likelihood of confusion. There is no evidence to show that wine and cheese emanate from the same producer. Rather sophisticated parties and shops may put together wine and cheese pairings. However, given their sophistication in these fields, they will know that the respective products do not emanate from the same source.
Exhibits 3-6 illustrate examples of similar marks used for both wine and cheese, where the respective marks are owned by different entities. Thus, it is submitted that there is no likelihood of confusion and it is request that the mark be approved for publication.
