Response to Office Action

PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

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PTO Form 1957 (Rev 9/2005)

OMB No. 0651-0050 (Exp. 07/31/2017)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 86241540 VANQUISH(Standard Characters, see ) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Examiner has refused Applicant's mark on the basis that the mark is confusingly similar to the same mark for cigars and that the goods are complimentary and emanate from a singular source. Applicant respectfully disagrees. As an initial matter, Applicant notes that wine can be paired with any number of products, including food. For instance, wine is often paired with meat or cheese or chocolate or fruit, etc. However, to say that marks for these goods are confusingly similar reaches beyond the logic of consumer purchasing habits. As the Federal Circuit noted in In re Coors Brewing Co., 343 F.3d 1340 (Fed. Cir. 2003), "[w]hile the evidence produced by the examining attorney shows that some restaurants brew or serve their own private label beer, that evidence does not support the Board's conclusion that consumers are likely to conclude that beer and restaurant services with similar marks emanate from the same source. Coors introduced evidence that there are about 1,450 brewpubs, microbreweries, and regional specialty breweries in the United States, while there are approximately 815,000 restaurants. There was no contrary evidence introduced on those points. That means that even if all brewpubs, microbreweries, and regional specialty breweries featured restaurant services, those establishments would constitute only about 18 one-hundredths of one percent of all restaurants, or fewer than one in 500. While there was evidence that some restaurants sell private label beer, that evidence did not suggest that such restaurants are numerous. And although the Board had before it a few registrations for both restaurant services and beer, the very small number of such dual use registrations does nothing to counter Coors' showing that only a very small percentage of restaurants actually brew their own beer or sell house brands of beer; instead, the small number of such registrations suggests that it is quite uncommon for restaurants and beer to share the same trademark. Thus, the evidence before the Board indicates not that there is a substantial overlap between restaurant services and beer with respect to source, but rather that the degree of overlap between the sources of restaurant services and the sources of beer is de minimis. We therefore disagree with the Board's legal conclusion that Coors' beer and the registrant's restaurant services are sufficiently related to support a finding of a likelihood of confusion. See Elec. Design & Sales v. Elec. Data Sys., 954 F.2d 713, 717 (Fed. Cir. 1992); see also Steve's Ice Cream v. Steve's Famous Hot Dogs, 1987 TTAB LEXIS 53, 3 USPQ2d 1477, 1478 (TTAB 1987). The evidence of overlap between beer and restaurant services is so limited that to uphold the Board's finding of relatedness would effectively overturn the requirement of Jacobs that a finding of relatedness between food and restaurant services requires 'something more' than the fact that restaurants serve food." see also In re Roth Kase U.S.A. Ltd., Serial No. 76479059 (June 8, 2005) (Board finding identical marks for cheese and restaurant services not confusingly similar simply because restaurants serve cheese as Examiner failed to provide evidence of "something more"). There are currently 38,134 trademark registrations in class 33. The Examiner has produced only a handful of registrations for the same mark for both cigars and alcoholic beverages. Thus, even if these goods are consumed together, it is unlikely that a consumer would think that these two products emanate from the same producer as this is definitely the exception, not the norm. This is evidenced by the de minimis number of marks where one finds the same mark registered for both alcohol and cigars. Furthermore, the Examiner has not provided any evidence that there are any marks which are used on both of these products from the same producer, further supporting the conclusion that consumers simply would not expect these goods to emanate from the same party despite their potentially complimentary nature. Applicant therefore respectfully requests that the refusal be withdrawn.

SIGNATURE(S)
Response Signature
Signature: /J. Scott Gerien/     Date: 12/17/2014
Signatory's Name: J. Scott Gerien
Signatory's Position: Attorney of record, California bar member

The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.

        
Serial Number: 86241540
Internet Transmission Date: Wed Dec 17 17:59:52 EST 2014
TEAS Stamp: USPTO/ROA-XXX.X.XX.XX-201412171759522566
66-86241540-50093a079ac21c3e1d62090adef5
45e1ea969962570dc50cfb1f1e47abea31e188a-
N/A-N/A-20141217173911522046