To: | Fantasia Distribution, Inc. (uspto@caliberip.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 85367937 - BLACK MAGIC - Fantasia: Bl |
Sent: | 5/15/2012 11:48:52 AM |
Sent As: | ECOM107@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. 85367937
MARK: BLACK MAGIC
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Fantasia Distribution, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.
ISSUE/MAILING DATE: 5/15/2012
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on April 30, 2012.
The trademark examining attorney has considered applicant’s arguments carefully and found them unpersuasive. For the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 1838062. See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a). All previous arguments and evidence are incorporated herein by reference.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark, “Black Magic”, is refused because of a likelihood of confusion with the mark “Rigoletto Black Magic” in U.S. Registration No. 1838062. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration.
In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods and/or services, and similarity of trade channels of the goods and/or services. See In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); TMEP §§1207.01 et seq.
The applicant’s proposed mark, “Black Magic”, is likely to be confused with the registered mark, “Rigoletto Black Magic”. The applicant’s mark is included in its entirety within the registered mark. The only difference is the registrant’s use of the house mark “Rigoletto” before the wording “Back Magic”. See generally, Dictionary.com, search of “black magic”, http://dictionary.reference.com/browse/black+magic (October 31, 2011) (attached to Office Action dated October 31, 2011). The mere deletion of wording from a registered mark may not be sufficient to overcome a likelihood of confusion. See In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977); TMEP §1207.01(b)(ii)-(iii). Applicant’s mark does not create a distinct commercial impression because it contains the same common wording as registrant’s mark, and there is no other wording to distinguish it from registrant’s mark. The applicant’s mark is highly similar in sound, appearance, and meaning from the registered mark, and as a result, source confusion is likely.
Comparing the Goods
The applicant’s amended goods are “hookah tobacco; molasses tobacco; smoking tobacco”, in Class 34. See application. The registrant’s goods are “cigars”, also in Class 34. See attached registration. A “cigar” is “a more or less cylindrical roll of tobacco cured for smoking, of any of various lengths, thicknesses, degrees of straightness, etc., usually wrapped in a tobacco leaf”. Dictionary.com, search of “cigar”, http://dictionary.reference.com/browse/cigar (October 31, 2011) (attached to Office Action dated October 31, 2011). The term “tobacco” describes “any product or products made from [tobacco] leaves”. Dictionary.com, search of “tobacco”, http://dictionary.reference.com/browse/tobacco (October 31, 2011) (attached to Office Action dated October 31, 2011). Since cigars contain tobacco and the applicant’s goods are different types of tobacco, the applicant’s mark would be used in a related manner, with very closely related goods, and in the same channels of trade as the registrant’s goods. Consequently, source confusion is likely.
The Trademark Trial and Appeal Board previously addressed the issue of relatedness between tobacco and cigars.
Cigars, chewing tobacco and smoking tobacco are all tobacco products sold in the same retail outlets to the general purchasing public. Although neither of the parties presently include in their line of products the goods of the other, the record indicates that other companies carry such products as part of their line. There is no doubt that if cigars and chewing tobacco or smoking tobacco were sold under the same or similar marks, the purchasing public would readily assume that the products originate with a single producer or seller.
Consolidated Cigar Corp. v. Liggett & Myers Tobacco Co., 137 USPQ 483, 484 (TTAB 1963). This decision was relied upon in 2006 when the goods at issue again were tobacco and cigars. In re Medi Plus Tec Medizinisch-Technische Handelsgessellschaft mbH, Serial No. 78283332, p. 8-9 (TTAB 2006). The Trademark Trial and Appeal Board has stated that decisions designated as not precedential are not binding upon the Board but may be cited for whatever persuasive value they might have. TBMP §101.03; TMEP §705.05. As in these cases, the applicant’s tobacco products are very closely related to the registrant’s cigars, which would result in a likelihood of confusion for the purchasing public.
Further, the previously attached Internet evidence consists of the websites of five cigar and tobacco retailers. PipesandCigars.com, http://www.pipesandcigars.com/ (accessed: October 31, 2011); JR Cigars, Cigars, http://www.jrcigars.com/jr/index.cfm/hurl/evt=cigars (accessed: October 31, 2011); JR Cigars, Tobacco, http://www.jrcigars.com/jr/index.cfm/hurl/evt=itemlist/catid=688/pipes.html (accessed: October 31, 2011); Tobacco Field, http://www.tobaccofieldcigars.com/ (access: October 31, 2011) (all attached to Office Action dated October 31, 2011). This evidence establishes that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Therefore, 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).
Evidence obtained from the Internet may be used to support a determination under Section 2(d) that goods and/or services are related. See, e.g., In re G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1371 (TTAB 2009); In re Paper Doll Promotions, Inc., 84 USPQ2d 1660, 1668 (TTAB 2007).
Applicant’s Arguments
The applicant did not present any arguments addressing the similarities between the marks. All of the applicant’s arguments deal with the likelihood of confusion between the goods. Response to Office Action, p. 1 (April 30, 2012).
The applicant argues that its goods and the registrant’s goods will never actually be confused in the marketplace. Response to Office Action, p. 1 (April 30, 2012). The test under Trademark Act Section 2(d) is whether there is a likelihood of confusion. It is unnecessary to show actual confusion in establishing likelihood of confusion. TMEP §1207.01(d)(ii); e.g., Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 1549, 14 USPQ2d 1840, 1842-43 (Fed. Cir. 1990). The Trademark Trial and Appeal Board stated as follows:
[A]pplicant’s assertion that it is unaware of any actual confusion occurring as a result of the contemporaneous use of the marks of applicant and registrant is of little probative value in an ex parte proceeding such as this where we have no evidence pertaining to the nature and extent of the use by applicant and registrant (and thus cannot ascertain whether there has been ample opportunity for confusion to arise, if it were going to); and the registrant has no chance to be heard from (at least in the absence of a consent agreement, which applicant has not submitted in this case).
In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
The applicant states that “it is hard to contemplate a customer being confused such that he mistakenly selects and purchases a can of hookah tobacco instead of a cigar”. Response to Office Action, p. 1 (April 30, 2012). While this is probably true, the standard is not confusion as to the goods themselves, but to the source of the goods. See 15 U.S.C. §1052(d). It is entirely likely that cigars, smoking tobacco, and other tobacco goods originate from the same source. Consolidated Cigar Corp. v. Liggett & Myers Tobacco Co., 137 USPQ 483, 484 (TTAB 1963). That is why confusion between the marks “Black Magic” and “Rigoletto Black Magic” is likely.
Applicant provides websites to support its contention that the channels of trade between cigars and hookah tobacco are different, but did not provide screenshots of the websites themselves for examination. Response to Office Action, p. 1 (April 30, 2012). Applicant is responsible for ensuring that attachments are in fact submitted and for providing attachments in a format acceptable to the Office. See, e.g., TMEP §§301, 804.05 (regarding requirements for attachments for electronic filing).
To make the attachments a part of the application record, applicant must resubmit them. Applicant is encouraged to do so using TEAS; alternatively applicant may use regular mail. If the attachment consisted of a specimen, applicant must also include a statement from the person who transmitted the original document through TEAS that the specimen being submitted is in fact a true copy of the specimen originally filed. TMEP §904.02(a).
The applicant’s final argument is that cigar purchasers are more sophisticated than hookah tobacco purchasers. The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see In re Cynosure, Inc., 90 USPQ2d 1644 (TTAB 2009); In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983).
Accordingly, the applicant’s proposed mark, “Black Magic”, is refused for likelihood of confusion under Trademark Act Section 2(d).
RESPONSE TO FINAL OFFICE ACTION
(1) Submitting a response that fully satisfies all outstanding requirements, if feasible; and/or
(2) Filing an appeal to the Trademark Trial and Appeal Board, with an appeal fee of $100 per class.
37 C.F.R. §§2.6(a)(18), 2.64(a); TBMP ch. 1200; TMEP §714.04.
In certain rare circumstances, a petition to the Director may be filed pursuant to 37 C.F.R. §2.63(b)(2) to review a final Office action that is limited to procedural issues. 37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). The petition fee is $100. 37 C.F.R. §2.6(a)(15).
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. §2.191; TMEP §§709.04-.05. Further, although the trademark examining attorney may provide additional explanation pertaining to the refusal(s) and/or requirement(s) 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.
TEAS PLUS APPLICANTS MUST SUBMIT DOCUMENTS ELECTRONICALLY OR SUBMIT FEE: Applicants who filed their application online using the reduced-fee TEAS Plus application must continue to submit certain documents online using TEAS, including responses to Office actions. See 37 C.F.R. §2.23(a)(1). For a complete list of these documents, see TMEP §819.02(b). In addition, such applicants must accept correspondence from the Office via e-mail throughout the examination process and must maintain a valid e-mail address. 37 C.F.R. §2.23(a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these requirements must submit an additional fee of $50 per international class of goods and/or services. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. In appropriate situations and where all issues can be resolved by amendment, responding by telephone to authorize an examiner’s amendment will not incur this additional fee.
/Alyssa Steel/
Alyssa Paladino Steel
Trademark Examining Attorney
Law Office 107
Phone: (571) 272-8808
E-mail: alyssa.steel@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 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 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/teas/eTEASpageE.htm.