To: | Bull Falls Brewery, LLC (jbyrne@boardmanlawfirm.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85349080 - FIVE STAR - 28520-4 |
Sent: | 4/11/2012 3:36:20 PM |
Sent As: | ECOM108@USPTO.GOV |
Attachments: | Attachment - 1 Attachment - 2 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
APPLICATION SERIAL NO. 85349080
MARK: FIVE STAR
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: Bull Falls Brewery, LLC
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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ISSUE/MAILING DATE: 4/11/2012
The trademark examining attorney is suspending action on the application for the reason(s) stated below. See 37 C.F.R. §2.67; TMEP §§716 et seq.
The USPTO will periodically conduct a status check of the application to determine whether suspension remains appropriate, and the trademark examining attorney will issue as needed an inquiry letter to applicant regarding the status of the matter on which suspension is based. TMEP §§716.04, 716.05. Applicant will be notified when suspension is no longer appropriate. See TMEP §716.04.
No response to this notice is necessary; however, if applicant wants to respond, applicant should use the “Response to Suspension Inquiry or Letter of Suspension” form online at http://teasroa.gov.uspto.report/rsi/rsi.
The effective filing date of the pending application(s) identified below precedes the filing date of applicant’s application. If the mark in the referenced application(s) registers, applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion with that registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, action on this application is suspended until the earlier-filed referenced application(s) is either registered or abandoned. 37 C.F.R. §2.83(c). A copy of information relevant to this referenced application(s) was sent previously.
- Application Serial No(s). 77712012
REFUSAL(S)/REQUIREMENT(S) CONTINUED AND MAINTAINED: The following refusal(s)/requirement(s) is/are continued and maintained:
Likelihood of Confusion – Section 2(d) Refusal
Similarity of Marks
Applicant’s mark is the wording “FIVE STAR” in standard characters.
Registrant’s mark is the wording “FIVE STAR” in the center of a circle design with the wording “THE CULINARY INSTITUTE” appearing at the top and bottom edges of the circle in a smaller font; in addition, there are five stars that appear above the wording “FIVE STAR” in the circular design.
The marks are similar because they both contain or are entirely comprised of the wording “FIVE STAR”.
Despite the prominence of the wording “FIVE STAR” in registrant’s mark, applicant argues that the examining attorney has improperly dissected the registrant’s mark and ignored the additional wording/design therein in order to find that the marks are confusingly similar to one another. The examining attorney respectfully disagrees with this analysis.
The marks are compared in their entireties under a Trademark Act Section 2(d) analysis. See TMEP §1207.01(b). Nevertheless, one feature of a mark may be recognized as more significant in creating a commercial impression. Greater weight is given to that dominant feature in determining whether there is a likelihood of confusion. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (C.C.P.A. 1976); In re J.M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987); see TMEP §1207.01(b)(viii), (c)(ii).
In this case, the term “FIVE STAR” is the only wording/element in applicant’s mark and, as such is the dominant wording/element therein. In registrant’s mark, although there are other elements/wording, the wording “FIVE STAR” is the most significant element in creating a commercial impression and will be the primary wording/element impressed upon a purchaser's memory when calling for the goods. This dominance is due to the larger font of this wording versus all other wording/elements in the mark and because the star design element merely serves to reinforce the dominant nature of the wording (i.e. because there are five stars in the design).
Finally, please note that, if the goods of the respective parties are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as would be required with diverse goods. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987); see Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1242, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); TMEP §1207.01(b). Please see Similarity of Goods section below evidencing the identical/overlapping nature of applicant’s and registrant’s goods in this case.
Accordingly, the relevant marks are sufficiently similar to support a finding of likelihood of confusion.
Similarity of Goods
Applicant’s goods are “Beer; ale; and brewed malt-based alcoholic beverage in the nature of a beer.”
Registrant’s relevant goods are “beers”.
The goods are, therefore, identical in the case of beer and overlapping in the case of applicant’s ale versus registrant’s beer. See attached dictionary definition of ale, which is “a general name for beer made with a top fermenting yeast”.
Accordingly, based on the similarity of the marks and the relationship of the goods, registration of the applicant’s mark is refused under Section 2(d) of the Trademark Act.
/Meghan Reinhart/
Trademark Examining Attorney
Law Office 108
Phone - (571) 272-2943
meghan.reinhart@uspto.gov
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 Trademark Applications and Registrations Retrieval (TARR) at http://tarr.gov.uspto.report/. Please keep a copy of the complete TARR screen. If TARR shows no change for more than six months, 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.