Offc Action Outgoing

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

 

EXAMINING ATTORNEY’S APPEAL BRIEF

 

 

The applicant has appealed the trademark examining attorney’s refusal to register the trademark VERVE on the ground that it is confusingly similar with the marks in U.S. Registration Nos. 4588343; 4695229; 4695230; and 4959141 under §2(d) of the Trademark Act, 15 U.S.C.  §1052(d).

 

FACTS

 

Applicant applied to register the mark VERVE in standard characters for bar and cocktail lounge services; bar and restaurant services on 10/26/2015.  The initial refusal to register was made 2/17/2016 based on confusing similarity to Reg. Nos. 4588343 and 4959141 (VERVE COFFEE ROASTERS); 4695229 and 4695230 (VERVE BURRITOS).  Applicant was also made aware of prior-filed applications.  After the prior-filed applications abandoned, an action continuing the refusal to register was issued 2/7/2017.  The refusal was traversed 11/7/2017 with the submission of consent agreements between the applicant and the two different registrants.    A final refusal was issued 11/17/2017.  A request for reconsideration was submitted with new consent agreements and a revised recitation of services on 5/17/2018.   The request for reconsideration was denied on 5/18/2018.  This appeal ensued.

 

ARGUMENT

 

THE MARKS ARE CONFUSINGLY SIMILAR

 

The applicant’s mark is VERVE in standard characters.  The marks in Reg. Nos. 4588343 and 4959141 are VERVE COFFEE ROASTERS (4588343 is in stylized letters; both marks hereafter referred to as the “coffee marks”).  The marks in Reg. Nos. 4695229 and 4695230 are VERVE BURRITOS (4695230 has design elements; both marks hereafter referred to as the “burrito marks”).   COFFEE ROASTERS and BURRITOS are properly disclaimed, leaving VERVE as the sole distinctive word in the cited marks.  Disclaimed matter that is descriptive of or generic for a party’s services is typically less significant or less dominant when comparing marks.  In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). 

Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d).  Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar).  VERVE is the sole, distinctive and dominant term in the marks at issue.  The marks being confusingly similar, the inquiry must move to a consideration of the relatedness of the services.

 

THE SERVICES ARE ESSENTIALLY THE SAME

 

When analyzing the applicant’s and registrants’ services for similarity and relatedness, the determination is based on the description of the services stated in the application and registrations at issue, not on extrinsic evidence of actual use.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1323, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys. Inc. v. Hous. Computers Servs. Inc., 918 F.2d 937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)). 

 

Applicant’s services are identified as “bar and cocktail lounge services; bar and restaurant services, excluding the service of ‘burritos’ and excluding take-out restaurant services, and all such services with coffee not being a prominently featured item.”  The services of the coffee marks are identified as “restaurant and café services, namely, preparation of food and drink for consumption and supplying coffee to restaurant and café facilities.”   The services of the burrito marks are identified as “restaurant and take-out restaurant services.”  “Restaurant services” are common to all the marks at issue.  None of the service recitations limits the services to a particular type, so they must be considered identical, at least as to “restaurant services.”  In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)).  As such, restaurant patrons would likely think the applicant’s VERVE restaurant services are from the same source as VERVE COFFEE ROASTERS or VERVE BURRITOS, or believe that the COFFEE ROASTERS and BURRITOS services are a natural expansion of the applicant’s restaurant services.  “VERVE” is distinctive for restaurant services, as it is a strong mark that has no descriptive or suggestive meaning in relation to these services.  Further, the addition of aptly descriptive or generic wording fails to distinguish the marks in the context of the same restaurant services.  Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671 (Fed. Cir. 2015).

 

Absent restrictions in an application or registration, the identified services are presumed to travel in the same channels of trade to the same class of purchasers.  In re Viterra Inc., supra.  In this case, the identifications set forth in the application and registrations are both identical and closely related, and have no restrictions as to nature, type, channels of trade or classes of purchasers.  Therefore, it is presumed that these services travel in all normal channels of trade, and are available to the same class of purchasers.  See Midwestern Pet Foods, Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 1053, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012).  Accordingly, the restaurant services of applicant and the registrants are considered related for purposes of this likelihood of confusion analysis.  The similarities of the marks and identical and closely related services results in a likelihood of confusion as to the source of the services.

 

CONSENT AGREEMENTS FAIL TO OBVIATE LIKELIHOOD OF CONFUSION

 

“[T]here is no per se rule that a consent, whatever its terms, will always tip the balance to finding no likelihood of confusion, and it therefore follows that the content of each agreement must be examined. Few may be found lacking, but it is not a foregone conclusion that all will be determinative.” In re Bay State Brewing Co., 117 USPQ2d 1958, at 1963 (TTAB 2016).  The Federal Circuit in In re Mastic, Inc., 829 F.2d 1114 at 1116, 4 USPQ2d 1292 at 1294 (Fed. Cir. 1987), has also instructed that the role of a consent agreement in the likelihood of confusion analysis is not always the answer in avoiding confusion:

[T]he DuPont case does not make it a “given” that experienced businessmen, in all cases, make an agreement countenancing each other’s concurrent use of the same or similar marks only in recognition of no likelihood of confusion of the public. One must look at all of the surrounding circumstances, as in DuPont, to determine if the consent reflects the reality of no likelihood of confusion in the marketplace, or if the parties struck a bargain that may be beneficial to their own interests, regardless of confusion of the public. For example, the parties may prefer the simplicity of a consent to the encumbrances of a valid trademark license. However, if the goods of the parties are likely to be attributed to the same source because of the use of the same or a similar mark, a license (not merely a consent) is necessary to cure the conflict. See 1 J. McCarthy, Trademarks and Unfair Competition § 18:25, at 866 (2d ed. 1984).

 

With the above in mind, we now analyze the consent agreements before us and what significance they have with respect to the likelihood of confusion analysis.

 

Applicant submitted a total of six consent agreements between the parties during the course of prosecution of this application, three consent agreements between each of the two Registrants.  A consent agreement between each of the two Registrants was submitted with the 11/7/2017 response (the “original” consents), two more with the 5/17/2018 Request for Reconsideration (the “revised consents”), and two more were attached to the applicant’s appeal brief.  These last two consent agreements that were submitted with the applicant’s appeal brief should not be considered by the Board in this proceeding as Trademark Rule 2.142(d) mandates that the record be complete prior to appeal.  “The record in an appeal should be complete prior to the filing of an appeal, and evidence filed after the appeal will ordinarily not be considered by the Board.”  In re Jeep Corp., 222 USPQ 333, 336 note 3 (TTAB 1984).

 

As to the revised consent agreements, the consent agreement between applicant and Verve, Inc. (the “Burrito registrations”), was neither dated nor signed by either party.  Consequently, it cannot be considered as a consent between the parties in this proceeding.  The discussion of the consent agreements should therefore focus on the “revised consent” between applicant and Verve, LLC (coffee registrations) submitted 5/17/2018, and the “original” consent between applicant and Verve, Inc. (burrito registrations) submitted 11/7/2017.

 

Both consent agreements contain a contingency clause indicating that the agreement between the parties is contingent upon the USPTO withdrawing the Section 2(d) refusal of record; should the USPTO not withdraw the refusals, the agreement is null and void.  It is noted that the USPTO has not withdrawn the refusals. 

 

Factors to be considered in weighing a consent agreement include the following: (1) whether the consent shows an agreement between both parties; (2) whether the agreement includes a clear indication that the services travel in separate trade channels; (3) whether the parties agree to restrict their fields of use; (4) whether the parties will make efforts to prevent confusion, and cooperate and take steps to avoid any confusion that may arise in the future; and (5) whether the marks have been used for a period of time without evidence of actual confusion. See In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed. Cir. 1993), and cases cited therein; In re Mastic Inc., supra; In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). In the seminal case on consent agreements, du Pont cautioned that while “a naked ‘consent’ may carry little weight,” “substantial” weight should be conferred to “more detailed agreements.” Id. at 568.

 

In this case, the agreements note the differences in the marks and differences in how the parties offer their services.  However, as discussed above, determining relatedness of services is based on the description of the services stated in the application and registrations at issue, not on evidence of actual use.  Pursuant to the consent agreements, applicant has amended its recitation of services to: “Bar and cocktail lounge services; Bar and restaurant services, excluding the service of ‘burritos’ and excluding "take-out restaurant services, and all such services with coffee not being a prominently featured item.”   The problem here is twofold.  First, the recitation of services in the cited registrations is in no way limited.  They both remain essentially “restaurant services,” which logically encompasses applicant’s amended recitation of services.    Second, the exclusion of the “service of ‘burritos’” would not eliminate likelihood of confusion between similar marks used in connection with restaurants offering enchiladas, tacos, tamales, etc.  The unrestricted restaurant services of the parties mean that restaurant patrons are likely to think the Verve restaurants represent a single source, or related parties.

 

The agreements further note that the parties have contemporaneously used their respective marks for 10 and 12 years, and that the parties have not “encountered an instance of consumer or wholesaler confusion, mistake or deception in interstate commerce or otherwise.”  Clause “2.” (following clauses A through F).  This is nowhere near the over 70 years of contemporaneous use found in Four Seasons Hotels, supra, or the over 60 years of contemporaneous use found in Amalgamated Bank of New York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6 USPQ2d 1305 (Fed. Cir 1988).

 

In sum, while the Office unmistakably recognizes the Federal Circuit’s instruction that consent agreements are frequently entitled to great weight, we find that the specific consent agreements in this case are outweighed by the other relevant likelihood of confusion factors, namely, that the marks are virtually identical, and the services, trade channels and purchasers are virtually identical. Notwithstanding the consent agreements, we are persuaded that contemporaneous use of these marks will result in a likelihood of confusion even when these marks are used within the constraints set forth in the consent agreements.  The consents simply fail to obviate the great likelihood of confusion that exists with use of VERVE for the same and closely related restaurant services.

 

CONCLUSION

 

The Office has carefully considered all of the evidence made of record pertaining to the issue of likelihood of confusion, as well as all of the arguments related thereto.  We find that consumers are likely to be confused upon encountering the marks VERVE, VERVE COFFE ROASTERS and VERVE BURRITOS, even when used in accordance with the consent agreements.  To reiterate, we are fully cognizant of the importance of consent agreements entered into by business people and the significant role that they can play in determining likelihood of confusion issues.  After careful consideration of all factors expressed above, we find that the agreements are not the type that are properly crafted to avoid confusion, and do not fully contemplate all reasonable circumstances in which the marks may be used by consumers calling for the services.   For the foregoing reasons, the refusal to register due to likelihood of confusion with the cited registrations should be affirmed.

 

 

 

 

                                                                        Respectfully submitted,

 

 

Ira Goodsaid

/Ira Goodsaid/

Trademark Examining Attorney

Law Office 101

571-272-9166

ira.goodsaid@uspto.gov        

 

 

Ronald R. Sussman

Managing Attorney

Law Office 101

 

 

 

 

UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

 

 

IMPORTANT NOTICE REGARDING YOUR

U.S. TRADEMARK APPLICATION

 

USPTO EXAMINING ATTORNEY’S APPEAL BRIEF

HAS ISSUED ON 8/27/2018 FOR U.S. APPLICATION SERIAL NO. 86799478

 

Please follow the instructions below:

 

(1)  TO READ THE APPEAL BRIEF:  Click on this link or go to http://tsdr.gov.uspto.report/, enter the U.S. application serial number, and click on “Documents.”

 

The Examining Attorney’s Appeal Brief may not be immediately viewable, to allow for necessary system updates of the application, but will be available within 24 hours of this e-mail notification.

 

(2)  FILING A REPLY BRIEF:  You may file a reply brief within twenty (20) days of 8/27/2018, the date from which the Examining Attorney’s Appeal Brief issued. 

 

Do NOT hit “Reply” to this e-mail notification, or otherwise e-mail a reply brief because this mailbox is not monitored.  Instead, the Trademark Trial and Appeal Board requires that you file a reply brief online using the Electronic System for Trademark Trials and Appeals (ESTTA) located at http://estta.uspto.gov.  A reply brief transmitted through ESTTA must be received before midnight Eastern Time of the last day of the reply period.

 

(3)  QUESTIONS:  For technical assistance in accessing or viewing the appeal brief in the Trademark Status and Document Retrieval (TSDR) system, please e-mail TSDR@uspto.gov.