UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
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U.S. APPLICATION SERIAL NO. 86241540
MARK: VANQUISH
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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: Sutter Home Winery, Inc.
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 1/6/2015
THIS IS A FINAL ACTION.
This Office action is in response to applicant’s communication filed on December 17, 2014 where applicant argued against the Section 2(d) Likelihood of Confusion Refusal.
The examining attorney has reviewed applicant’s response and determined the following:
The examining attorney has carefully considered applicant’s arguments against the Section 2(d) Likelihood of Confusion Refusal and found them unpersuasive. Therefore, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 4492023. See 15 U.S.C. §1052(d); 37 C.F.R. §2.64(a).
SUMMARY OF ISSUES that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is finally refused because of a likelihood of confusion with the mark in U.S. Registration No. 4492023. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See registration enclosed in first Office action.
The applicant has applied to register VANQUISH for “Alcoholic beverages except beers” in International Class 33.
The registered mark is VANQUISH for “cigars” in International Class 34.
Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential 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). In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
In this case, the following factors are the most relevant: similarity of the marks, similarity and nature of the goods, and similarity of the trade channels of the goods. See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.
Comparison of the Marks
In the present case, the applied-for mark is VANQUISH and the registered mark is VANQUISH. Thus, the marks are identical in terms of appearance and sound. According to the Collins American English Dictionary, “vanquish” is defined as “to defeat or conquer in battle; subjugate.” See evidence attached to first Office action. The term VANQUISH has no literal connection to applicant’s or registrant’s goods, and thus has an equally arbitrary connotation and commercial impression.
Thus, when looking at the various goods identified in the marks, a consumer would be confused as to the source of the goods because of the use of the identical word VANQUISH.
Comparison of the Goods
The respective goods need only be “related in some manner and/or if the circumstances surrounding their marketing [be] 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).
Applicant’s alcohol beverages are related to the registrant’s cigars because alcoholic beverages and cigars are commonly used together. In an article in Cigar World it states that “Few things are more satisfying, from a palate pleasing point of view, than pairing your favorite cigar with a suitable libation. Some classic pairings with cigars are cognac, single malt whisky, bourbon, rum, rye, and port.” See evidence attached to first Office action. The Best Cigar Blog published an article titled “Top 10 Alcoholic Beverage Pairings for Cigars” where eight of the ten beverages were non-beer alcoholic beverages that paired well with cigars. See evidence attached to first Office action. Cigar Aficionado published an article discussing various alcoholic beverages pairings with cigars and which is best, stating that “each of the classic cigar-pairing spirits -- rum, Cognac, Scotch and Bourbon -- has its own grounds on which it might claim drinking hegemony.” See evidence attached to first Office action. Will Lyons wrote an article in the Wall Street Journal stating that “As a wine writer, over the years I have sampled all sorts of cigar combinations, from sparkling wine to vintage port and Californian Merlot. All have enhanced the enjoyment of the cigar in some way.” See evidence attached to first Office action. The Famous Smoke Shop sells “Cigar and Wine Pairings Cigars” which are a specially selected package of cigars to pair with white wine. See evidence attached to first Office action. Paste Magazine published an article “Whiskey Sticks: Pairing Whiskey with Cigars” that states that “the perfect accompaniment for a good stogie is a great whiskey.” See attached evidence. “Like two peas in a pod of the luxury world, cigars and whiskey can often be found together. Both known as two of the finer things in life, when used jointly, they work to enhance the drinking and smoking experience.” See attached evidence from savoeachglass.com. The website Sip Smoke Savor is devoted to exploring cigar and scotch pairings. See attached evidence. IntoWine features port and cigar pairings. See attached evidence.
The above evidence demonstrates that cigars and alcoholic beverages are commonly paired and consumed together. 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 Hester Indus., Inc., 231 USPQ 881, 882-83 (TTAB 1986) (holding bread and frozen chicken parts to be related because they are complementary goods that are appropriate for use together in sandwiches and may otherwise be sold to the same purchasers for use in a single meal); In re Vienna Sausage Mfg. Co., 230 USPQ 799, 799-800 (TTAB 1986) (holding sausage and cheese to be related because they are complementary goods that may be used together in recipes, sandwiches, and hors d’oeuvres). As cigars and alcoholic beverages are commonly paired and consumed together by the same purchaser, confusion between the identical marks is likely to occur.
Furthermore, in an article entitled “Drinks to Pair with a Cigar” it states that “More than likely, your local liquor store will have a decent selection of quality cigars, and someone on staff should be able to direct you to something of your liking.” See evidence attached to first Office action. For example, ABC Fine Wines and Spirits, Cedar Mill Liquor, The Grog Shop, Mr. Liquor & Cigars, Incline Spirits & Cigars, Five Points Bottle Shop, Hood River Liquor Store, BlueFish Liquor & Cigars, Sherlock’s, Total Wine & More, and Village West Discount Liquors are specialty alcoholic beverage and cigar stores that sell a wide range of alcoholic beverages and cigars. See attached evidence and evidence attached to first Office action. This evidence establishes that the relevant goods are sold through the same trade channels and used by the same classes of consumers in the same fields of use and that the goods are complementary in terms 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).
The trademark examining attorney has also attached evidence to the record from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods as those of both applicant and registrant in this case. See evidence attached to first Office action. This evidence shows that the goods listed therein, namely cigars and alcoholic beverages except beer, are of a kind that may emanate from a single source under a single mark. See In re Anderson, 101 USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); TMEP §1207.01(d)(iii).
As discussed above, the marks are identical. Where the marks of the respective parties are identical, the relationship between the relevant goods need not be as close to support a finding of likelihood of confusion. See In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634, 1636 (TTAB 2009); TMEP §1207.01(a). As the marks are identical, the relationship between the relevant goods need not be as close to support a finding of likelihood of confusion.
Applicant argues that wine can be paired with other goods such as food, but provided no evidence to support this assertion. Instead, applicant cited to several legal cases where marks for restaurant services were compared to marks for wine, beer, or cheese. These cases are not relevant to the relatedness of the goods in this application as the application and cited registration identify goods and neither identifies restaurant services. Whether or not goods are related to restaurant services is irrelevant. Even if applicant is correct that wine is commonly paired with other goods such as food, this does not disprove that cigar and alcoholic beverages are commonly paired together. The fact that consumers commonly pair alcoholic beverages with food or other goods would support the conclusion that consumers would commonly associate alcoholic beverages with goods that those beverages are paired with and consumers would be likely to confuse identical marks for those goods that are commonly paired together. Applicant’s has not convincingly established that cigar and alcoholic beverages are not commonly paired together. As discussed above, the evidence of record demonstrates that cigars and alcoholic beverages are commonly paired and consumed together by the same purchaser causing a likelihood that that consumer would be confused by identical marks for cigars and alcoholic beverages.
Applicant also argues that the examining attorney has provided minimal evidence to establish that producers of cigars also manufacture alcoholic beverages. In the first Office action, the examining attorney cited to five third-party registrations that identify cigars and alcoholic beverages except beer to establish that those goods are of a kind that may emanate from a single source under a single mark. Applicant argues that the small number of third-party registrations does not establish that consumers would expect these goods to emanate from the same provider. The cited registrations are intended only as a representative sample and not a definite listing of all third-party registrations citing these goods.
Even if applicant is correct that manufacturers of cigars do not commonly manufacture alcoholic beverages, as explained above a likelihood of confusion exists because the goods have complementary uses and because the relevant goods are sold through the same specialty trade channels and used by the same classes of consumers in the same fields of use. These reasons alone justify a finding of a likelihood of confusion absent any evidence that the same manufacturers provide both products.
Thus, when confronted by applicant’s and registrant’s goods, consumers would likely be confused as to the source of the goods because they are commonly used together and commonly sold together in the same specialty trade channels. Therefore, the goods are closely related.
Since the marks are similar and the goods are related, there is a likelihood of confusion as to the source of applicant’s goods. Therefore, registration is finally refused pursuant to Section 2(d) of the Trademark Act.
PROPER RESPONSE TO A FINAL ACTION
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:
(1) A response that fully satisfies all outstanding requirements and/or resolves all outstanding refusals.
(2) An appeal to the Trademark Trial and Appeal Board, with the appeal fee of $100 per class.
37 C.F.R. §2.64(a); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review 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).
ASSISTANCE
TEAS PLUS APPLICANTS – TO MAINTAIN REDUCED FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE: Applicants who filed their application online using the lower-fee TEAS Plus application form must (1) continue to submit certain documents online using TEAS, including responses to Office actions (see TMEP §819.02(b) for a complete list of these documents); (2) accept correspondence from the USPTO via e-mail throughout the examination process; and (3) maintain a valid e-mail address. See 37 C.F.R. §2.23(a)(1), (a)(2); TMEP §§819, 819.02(a). TEAS Plus applicants who do not meet these three requirements must submit an additional fee of $50 per international class of goods. 37 C.F.R. §2.6(a)(1)(iv); TMEP §819.04. However, in certain situations, authorizing an examiner’s amendment by telephone will not incur this additional fee.
/Timothy Schimpf/
Examining Attorney
Law Office 113
(571) 272-9072
timothy.schimpf@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.
