To: | E. & J. Gallo Winery (tm.group@ejgallo.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 86634875 - OJO DEL SOL TEQUILA - USNAOJ-002-e |
Sent: | 12/18/2015 10:58:09 AM |
Sent As: | ECOM118@USPTO.GOV |
Attachments: |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 86634875
MARK: OJO DEL SOL TEQUILA
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CORRESPONDENT ADDRESS: |
GENERAL TRADEMARK INFORMATION: http://www.gov.uspto.report/trademarks/index.jsp
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APPLICANT: E. & J. Gallo Winery
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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SUSPENSION NOTICE: NO RESPONSE NEEDED
ISSUE/MAILING DATE: 12/18/2015
This Office action is in response to applicant’s communication filed on 11/23/15.
Prior-Pending Application
The examining attorney has considered the applicant’s argument regarding the prior-pending certification mark application but has found it to be unpersuasive. Marks must be considered in their entireties; therefore, a disclaimer does not remove the disclaimed portion from the mark for the purposes of comparing marks in a likelihood of confusion determination. Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010). The public is generally not aware of disclaimers in trademark applications and registrations that reside only in the USPTO’s records. See In re Nat’l Data Corp., 753 F.2d 1056, 1059, 224 USPQ 749, 751 (Fed. Cir. 1985).
The applicant may wish to consider submitting a substitute drawing from which the informational term TEQUILA has been deleted. This would obviate the potential refusal based on the prior-pending certification mark application.
Substitute Drawing Not Acceptable – Material Alteration
An amendment to a mark will not be accepted if the change would materially alter the mark in the initial application. 37 C.F.R. §2.72; TMEP §807.14. Determining whether a proposed amendment materially alters a mark involves comparing the proposed amended mark with the mark in the drawing filed with the original application. 37 C.F.R. §2.72; TMEP §807.14(d).
The test for material alteration is whether the modified mark retains what is the essence of the original mark; that is, whether the new and old forms create the impression of being essentially the same mark. In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997) (quoting Visa Int’l Serv. Ass’n v. Life Code Sys., Inc., 220 USPQ 740, 743 (TTAB 1983)); see In re Nationwide Indus. Inc., 6 USPQ2d 1882, 1885 (TTAB 1988); TMEP §807.14. For example, if republication of the amended mark would be necessary to provide proper notice of the mark to third parties for opposition purposes, then the mark has been materially altered and the amendment is not permitted. In re Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v. Life Code Sys., Inc., 220 USPQ at 743-44). Also, the addition of an element that would require a further search may be a factor in determining material alteration. In re Guitar Straps Online, LLC, 103 USPQ2d 1745, 1747 (TTAB 2012); In re Who? Vision Sys. Inc., 57 USPQ2d 1211, 1218 (TTAB 2000).
In the present case, the proposed amendment to the mark is refused because it would result in a material alteration of the mark depicted in the original application. TMEP §807.17; see 37 C.F.R. §2.72; In re Who? Vision Sys., Inc., 57 USPQ2d 1211 (holding proposed amendment from “TACILESENSE” to “TACTILESENSE” to be material alteration due to the difference in meaning or connotation between the marks); In re CTB Inc., 52 USPQ2d 1471 (TTAB 1999) (holding proposed amendment of TURBO and design to the typed word TURBO to be a material alteration due to the design being distinctive matter).
Specifically, the proposed amendment would materially alter the mark in the initial application because of the added wording.
Accordingly, the proposed amendment will not be entered; the previous drawing of the mark will remain operative and the initial drawing is still not acceptable. TMEP §807.17.
Suspension
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 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). 78286762
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.
/Ronald McMorrow/
Examining Attorney
Law Office 118
571-272-9306
ronald.mcmorrow@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 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 Trademark Electronic Application System (TEAS) form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.