| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88035296 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88035296/mark.png |
| LITERAL ELEMENT | 414 |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
|
RESPONSE TO OFFICE ACTION In the November 5, 2018 Office Action, the Examining Attorney has rejected the present application for 414 for “beer” in Class 2, asserting that Applicant’s mark (1) bears a likelihood of confusion with the mark “PODERE414” subject to U.S. Trademark Reg. No. 5,006,890; (2) bears a potential likelihood of confusion with the mark “ROOM 414” subject to prior pending U.S. Application Serial No. 87/913,495; and, (3) requires amended classification clarification to the identification of goods. Rejection under Section 2(d)
In the Office Action, the Examining Attorney has cited the ‘890 registration for PODERE414 as presenting a likelihood of confusion against the Applicant’s applied for 414 trademark for use with beer. Despite the Examining Attorney’s assertion, Applicant maintains that no likelihood of confusion exists, as the du Pont factors clearly favor the Applicant and a finding of no likelihood of confusion with the ‘890 registration.
Before addressing the merits of the current 2(d) rejection, it is worth noting that additional food and beverage related registrations have been granted, including U.S. Trademark Reg. No. 4,187,702 to the mark DRINK414 for use with “bottled drinking water” and U.S. Trademark Reg. No. 0,762,817 to the mark C-414 for use with “sweet chocolate and coconut oil coating for ice cream and other frozen desserts.” While it is true that prior decisions and actions of other trademark examining attorneys in registering different marks may have little evidentiary value, and are not binding on the Office, they nonetheless are the actions which create the state of the Trademark Register. And, the co-existence of marks on the Trademark Register does have an impact on the scope of protection that can be afforded any individual mark which is registered thereon. E.I. DuPont DeNemours & Co., 177 USPQ 563 (CCPA 1973). Hence, the development of the case law concerns the strength of widely used components of marks. So, while the prior decisions may not be binding on the present situation, the current state of the co-existing marks on the Trademark Register cannot simply be ignored. To this end, Applicant respectfully contends that while prior food and beverage related registrations including the numbers “414” have been allowed to coexist on the principal register, so too should the instant application.
Dissimilarity of the Marks
Turning now to the cited 2(d) refusal, Applicant’s applied for 414 mark is clearly both visually and auditorily different from the PODERE414 mark. The instant application comprises only three characters and each of those characters is a numeral. Which is to say that the instant application contains no textual element. In contrast, the cited ‘890 registration is to a compound mark that includes both the numerical portion 414, which applicant understands is similar to the applied for mark, and also a text component. The text component “PODERE” is entirely absent in the applied for mark, as is any text component of any kind. Additionally, the text component “PODERE” of the cited mark is positioned before to the numerical component, whereby it is notably the first portion of the trademark encountered by the consumer, granting it a greater significance than the numbers that subsequently follow.
Not only does the presence of the text component “PODERE” clearly render the respective marks to be dissimilar, but it is noted that the term “PODERE” has not been disclaimed. Had such a disclaimer been entered, the PODERE414 mark would have diminished its rights within the text term “PODERE” and relied more heavily on its numerical component. But as that has not occurred, the PODERE414 mark relies heavily on the presence of its text component; which, again is entirely absent and distinguishable from the instant application.
Still further, the textual component “PODERE”, as the Office Action identifies at page 3, is also distinguishable by its unique inclusion of foreign language. Specifically, the textual component “PODERE” is Italian for “farm.” The inclusion of a foreign language textual component further emphasizes the role of the term “PODERE.”
Pursuant to TMEP 1207.0i(b)(viii), “[w]hen assessing the likelihood of confusion between compound word marks, although each mark must be considered as a whole, it is appropriate to consider whether a portion of the mark is dominant in creating the mark’s commercial impression.” In making the determination as to the dominant portion of the mark, the Federal Circuit indicates that “to select a ‘dominant’ element of a compound word mark, consumers would be more likely to perceive a fanciful or arbitrary term, rather than a descriptive or generic term, as the source-indicating feature of the mark. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997).
With this guidance from the Federal Circuit in mind, it is clear that on its face the applicant’s mark is a mere series of three numerical characters, while the ‘890 registration is directed to a compound mark that includes both a unique leading text component followed by the numerical component. As “each mark must be considered as a whole,” the presence of the “PODERE” text component alone is sufficient to find the mark visually and auditorily dissimilar under the first prong of the du Pont test. Moreover, if further consideration were to be given to the ‘890 registration, which Applicant contends is unwarranted, it is clear that the leading foreign language textual element “PODERE” mark is obviously the dominant portion of the PODERE414 mark, when properly considered in its entirety. Accordingly, given that applied for mark and the cited mark have dissimilar dominant features and the marks, when viewed in their entireties, create dissimilar overall commercial impressions, a finding of confusion under section 2(d) is unlikely and not supporting under the first prong of the du Pont test.
Dissimilarity of Applicant’s Goods and Registrant’s Goods Currently, Applicant’s description of goods recites only “beer” and as indicated by the Examining Attorney at pages 3-4 of the Office Action, is properly classified in International Class 32. As opposed to the instant application, the goods identified in cited ‘890 registration to PODERE414 are “alcoholic beverages containing fruit; Alcoholic beverages except beers; Alcoholic essences; Alcoholic extracts; Aperitifs; Brandy; Liqueurs; Spirits; Wine; Wine-based beverage, namely, piquette” which are classified in International Class 33.
The distinction between the Applicant’s goods and the Registrant’s goods are noticeably apparent, because the Registrant has expressly omitted beer from its listing of goods. That is to say that Applicant’s only goods are “beer” and Registrant’s are “…alcoholic beverages except beers…”
Additionally, this distinction becomes further clarified by the fact that Applicant’s goods are the subject of International Class 32, while the ‘890 Registration is directed to goods in International Class 33, which by definition does not include beer.
In summary, Applicant’s identification of goods is narrowly defined as only “beer,” and is not directed to any alcoholic beverages in International Class 33. And to the extent that the ’890 registration is directed to alcoholic beverages in International Class 33, it expressly and intentionally omits the use of the distinguishable PODERE414 mark from any use on beer. While the Office Action suggests that other third-parties may offer for sale both beer and other alcoholic beverages under the same mark, this generalization is not currently applicable. Applicant does not offer any alcoholic beverages of any kind under its 414 mark in class 33 as indicated by the current identification of goods that expressly states “beer” and only “beer.” Similarly, the ‘890 registration is inherently limited, as its use of the distinguishable PODERE414 mark is limited by its identification of goods to “…alcoholic beverages except beer…” and specifically those in different international class 33. Accordingly, as both the Applicant’s use of the applied-for mark and the ‘890 Registrations use of PODERE414 are clearly defined in the distinguishable and non-overlapping scope of their usage, such cited but generally unrelated third-party usage is generally irrelevant. Accordingly, the dissimilarity of Applicant’s goods and Registrant’s goods does not support the outstanding 2(d) rejection. Dissimilarity of Established Channels of Trade and Purchaser Sophistication
The obvious distinction between the Applicant’s “beer,” and the Registrant’s “alcoholic beverages containing fruit; Alcoholic beverages except beers; Alcoholic essences; Alcoholic extracts; Aperitifs; Brandy; Liqueurs; Spirits; Wine; Wine-based beverage, namely, piquette,” also influences the remaining du Pont factors in favor of finding no likelihood of confusion. That is to say, while there may be some potential for Applicant’s products to be sold in the same retail establishment as those of the ‘890 registration, consumers are sufficiently sophisticated as to distinguish Applicant’s “beer” from Registrant’s “Alcoholic essences; Alcoholic extracts; Aperitifs; Brandy; Liqueurs; Spirits; Wine; Wine-based beverage, namely, piquette,” which are inherently sold in different price points, shelving locations, packages, i.e., bottles, and quantity, multi-bottle package beer vs. single bottled aperitifs, brandy, liqueurs, spirits, wine etc.
Due to the marks’ respectively narrow identification of goods, and the distinction through which these narrowly identified goods are sold and offered for sale in commerce, no significant channel of trade overlap would suggest a finding of a likelihood of confusion as could support the current 2(d) refusal.
Furthermore, purchasers of these products must be of a legal purchasing age for alcoholic beverages, i.e., 21 years of age or older, such that they are inherently more sophisticated than an average consumer, which may otherwise include those younger than 21. Additionally, the Applicant’s “beer” and Registrant’s “Alcoholic essences, Alcoholic extracts, Aperitifs, Brandy, Liqueurs, Spirits, Wine, piquette,” are both products in which purchasers often consider themselves to have discerning tastes, i.e. connoisseurs, or often consult with experts before making purchase decisions. See generally http://www.winespectator.com/wineratings; http://www.beeradvocate.com; etc.
The care exhibited by such sophisticated purchasers and lack of impulsive purchases when making such decisions further minimizes any potential likelihood of confusion with the cited registration. See TMEP § 1207.01(d)(vii).
In summary, Applicant contends that the applied for mark and the cited PODERE414 mark in their entireties are both visually and auditorily dissimilar, expressly
dissimilar in their respective identified goods, classified differently, do not exhibit significant overlap in channels of trade and are sold to sufficiently discerning and sophisticated consumers as
to fail to support the current 2(d) rejection. Accordingly, Applicant respectfully requests that such rejection be withdrawn. Prior Pending Application
In the Office Action, the Examining Attorney has indicated that the filing date of pending U.S. Application Serial No. 87/913,495 to ROOM 414 precedes the filing date of the instant application. The Examining Attorney further indicated that were the cited ROOM 414 trademark application to proceed to registration, Applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion between the two marks.
Since the mailing of the November 5, 2018 Office Action, U.S. Application Serial No. 87/913,495 to ROOM 414 has become abandoned, effective February 14, 2019 by result of expiration of the response period to its Office Action. Resultantly, the potential refusal under Section 2(d) has been resolved and applicant respectfully requests that the said potential grounds for rejection be withdrawn.
Classification of Goods Requires Amendment
In the Office Action, the Examining Attorney has requested that the classification of the instant application be amended to International Class 32. Applicant has amended the classification as requested and asks that the outstanding rejection on the basis of the classification of goods be withdrawn accordingly.
Conclusion
As a result of this amendment and the above remarks the Applicant respectfully requests that the cited 2(d) refusal, prior pending application, and classification amendment requests be withdrawn. In light of the above remarks and the amendments submitted herewith, it is respectfully submitted that the present application is in condition for allowance and publication. The Examining Attorney is urged to contact the submitting attorney if any questions remain.
|
|
| GOODS AND/OR SERVICES SECTION (class deleted) | |
| GOODS AND/OR SERVICES SECTION (class added) Original Class (002) | |
| INTERNATIONAL CLASS | 032 |
| DESCRIPTION | Beer |
| FILING BASIS | Section 1(b) |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Kyle M. Costello/ |
| SIGNATORY'S NAME | Kyle M. Costello |
| SIGNATORY'S POSITION | Attorney of record, Wisconsin bar member |
| DATE SIGNED | 05/06/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon May 06 17:19:51 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XX.XX-20 190506171951542265-880352 96-6206595d3a41767e5bffb7 e54e5c51755cea4f2ddff28f1 48be45df3f4fa3bc95-N/A-N/ A-20190506171729571752 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
RESPONSE TO OFFICE ACTION
In the November 5, 2018 Office Action, the Examining Attorney has rejected the present application for 414 for “beer” in Class 2, asserting that Applicant’s mark (1) bears a likelihood of confusion with the mark “PODERE414” subject to U.S. Trademark Reg. No. 5,006,890; (2) bears a potential likelihood of confusion with the mark “ROOM 414” subject to prior pending U.S. Application Serial No. 87/913,495; and, (3) requires amended classification clarification to the identification of goods.
Rejection under Section 2(d)
In the Office Action, the Examining Attorney has cited the ‘890 registration for PODERE414 as presenting a likelihood of confusion against the Applicant’s applied for 414 trademark for use with beer. Despite the Examining Attorney’s assertion, Applicant maintains that no likelihood of confusion exists, as the du Pont factors clearly favor the Applicant and a finding of no likelihood of confusion with the ‘890 registration.
Before addressing the merits of the current 2(d) rejection, it is worth noting that additional food and beverage related registrations have been granted, including U.S. Trademark Reg. No. 4,187,702 to the mark DRINK414 for use with “bottled drinking water” and U.S. Trademark Reg. No. 0,762,817 to the mark C-414 for use with “sweet chocolate and coconut oil coating for ice cream and other frozen desserts.” While it is true that prior decisions and actions of other trademark examining attorneys in registering different marks may have little evidentiary value, and are not binding on the Office, they nonetheless are the actions which create the state of the Trademark Register. And, the co-existence of marks on the Trademark Register does have an impact on the scope of protection that can be afforded any individual mark which is registered thereon. E.I. DuPont DeNemours & Co., 177 USPQ 563 (CCPA 1973). Hence, the development of the case law concerns the strength of widely used components of marks. So, while the prior decisions may not be binding on the present situation, the current state of the co-existing marks on the Trademark Register cannot simply be ignored. To this end, Applicant respectfully contends that while prior food and beverage related registrations including the numbers “414” have been allowed to coexist on the principal register, so too should the instant application.
Dissimilarity of the Marks
Turning now to the cited 2(d) refusal, Applicant’s applied for 414 mark is clearly both visually and auditorily different from the PODERE414 mark. The instant application comprises only three characters and each of those characters is a numeral. Which is to say that the instant application contains no textual element. In contrast, the cited ‘890 registration is to a compound mark that includes both the numerical portion 414, which applicant understands is similar to the applied for mark, and also a text component. The text component “PODERE” is entirely absent in the applied for mark, as is any text component of any kind. Additionally, the text component “PODERE” of the cited mark is positioned before to the numerical component, whereby it is notably the first portion of the trademark encountered by the consumer, granting it a greater significance than the numbers that subsequently follow.
Not only does the presence of the text component “PODERE” clearly render the respective marks to be dissimilar, but it is noted that the term “PODERE” has not been disclaimed. Had such a disclaimer been entered, the PODERE414 mark would have diminished its rights within the text term “PODERE” and relied more heavily on its numerical component. But as that has not occurred, the PODERE414 mark relies heavily on the presence of its text component; which, again is entirely absent and distinguishable from the instant application.
Still further, the textual component “PODERE”, as the Office Action identifies at page 3, is also distinguishable by its unique inclusion of foreign language. Specifically, the textual component “PODERE” is Italian for “farm.” The inclusion of a foreign language textual component further emphasizes the role of the term “PODERE.”
Pursuant to TMEP 1207.0i(b)(viii), “[w]hen assessing the likelihood of confusion between compound word marks, although each mark must be considered as a whole, it is appropriate to consider whether a portion of the mark is dominant in creating the mark’s commercial impression.” In making the determination as to the dominant portion of the mark, the Federal Circuit indicates that “to select a ‘dominant’ element of a compound word mark, consumers would be more likely to perceive a fanciful or arbitrary term, rather than a descriptive or generic term, as the source-indicating feature of the mark. See, e.g., In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997).
With this guidance from the Federal Circuit in mind, it is clear that on its face the applicant’s mark is a mere series of three numerical characters, while the ‘890 registration is directed to a compound mark that includes both a unique leading text component followed by the numerical component. As “each mark must be considered as a whole,” the presence of the “PODERE” text component alone is sufficient to find the mark visually and auditorily dissimilar under the first prong of the du Pont test. Moreover, if further consideration were to be given to the ‘890 registration, which Applicant contends is unwarranted, it is clear that the leading foreign language textual element “PODERE” mark is obviously the dominant portion of the PODERE414 mark, when properly considered in its entirety. Accordingly, given that applied for mark and the cited mark have dissimilar dominant features and the marks, when viewed in their entireties, create dissimilar overall commercial impressions, a finding of confusion under section 2(d) is unlikely and not supporting under the first prong of the du Pont test.
Dissimilarity of Applicant’s Goods and Registrant’s Goods
Currently, Applicant’s description of goods recites only “beer” and as indicated by the Examining Attorney at pages 3-4 of the Office Action, is properly classified in International Class 32. As opposed to the instant application, the goods identified in cited ‘890 registration to PODERE414 are “alcoholic beverages containing fruit; Alcoholic beverages except beers; Alcoholic essences; Alcoholic extracts; Aperitifs; Brandy; Liqueurs; Spirits; Wine; Wine-based beverage, namely, piquette” which are classified in International Class 33.
The distinction between the Applicant’s goods and the Registrant’s goods are noticeably apparent, because the Registrant has expressly omitted beer from its listing of goods. That is to say that Applicant’s only goods are “beer” and Registrant’s are “…alcoholic beverages except beers…”
Additionally, this distinction becomes further clarified by the fact that Applicant’s goods are the subject of International Class 32, while the ‘890 Registration is directed to goods in International Class 33, which by definition does not include beer.
In summary, Applicant’s identification of goods is narrowly defined as only “beer,” and is not directed to any alcoholic beverages in International Class 33. And to the extent that the ’890 registration is directed to alcoholic beverages in International Class 33, it expressly and intentionally omits the use of the distinguishable PODERE414 mark from any use on beer.
While the Office Action suggests that other third-parties may offer for sale both beer and other alcoholic beverages under the same mark, this generalization is not currently applicable. Applicant does not offer any alcoholic beverages of any kind under its 414 mark in class 33 as indicated by the current identification of goods that expressly states “beer” and only “beer.” Similarly, the ‘890 registration is inherently limited, as its use of the distinguishable PODERE414 mark is limited by its identification of goods to “…alcoholic beverages except beer…” and specifically those in different international class 33.
Accordingly, as both the Applicant’s use of the applied-for mark and the ‘890 Registrations use of PODERE414 are clearly defined in the distinguishable and non-overlapping scope of their usage, such cited but generally unrelated third-party usage is generally irrelevant. Accordingly, the dissimilarity of Applicant’s goods and Registrant’s goods does not support the outstanding 2(d) rejection.
Dissimilarity of Established Channels of Trade and Purchaser Sophistication
The obvious distinction between the Applicant’s “beer,” and the Registrant’s “alcoholic beverages containing fruit; Alcoholic beverages except beers; Alcoholic essences; Alcoholic extracts; Aperitifs; Brandy; Liqueurs; Spirits; Wine; Wine-based beverage, namely, piquette,” also influences the remaining du Pont factors in favor of finding no likelihood of confusion. That is to say, while there may be some potential for Applicant’s products to be sold in the same retail establishment as those of the ‘890 registration, consumers are sufficiently sophisticated as to distinguish Applicant’s “beer” from Registrant’s “Alcoholic essences; Alcoholic extracts; Aperitifs; Brandy; Liqueurs; Spirits; Wine; Wine-based beverage, namely, piquette,” which are inherently sold in different price points, shelving locations, packages, i.e., bottles, and quantity, multi-bottle package beer vs. single bottled aperitifs, brandy, liqueurs, spirits, wine etc.
Due to the marks’ respectively narrow identification of goods, and the distinction through which these narrowly identified goods are sold and offered for sale in commerce, no significant channel of trade overlap would suggest a finding of a likelihood of confusion as could support the current 2(d) refusal.
Furthermore, purchasers of these products must be of a legal purchasing age for alcoholic beverages, i.e., 21 years of age or older, such that they are inherently more sophisticated than an average consumer, which may otherwise include those younger than 21. Additionally, the Applicant’s “beer” and Registrant’s “Alcoholic essences, Alcoholic extracts, Aperitifs, Brandy, Liqueurs, Spirits, Wine, piquette,” are both products in which purchasers often consider themselves to have discerning tastes, i.e. connoisseurs, or often consult with experts before making purchase decisions. See generally http://www.winespectator.com/wineratings; http://www.beeradvocate.com; etc.
The care exhibited by such sophisticated purchasers and lack of impulsive purchases when making such decisions further minimizes any potential likelihood of confusion with the cited registration. See TMEP § 1207.01(d)(vii).
In summary, Applicant contends that the applied for mark and the cited PODERE414 mark in their entireties are both visually and auditorily dissimilar, expressly
dissimilar in their respective identified goods, classified differently, do not exhibit significant overlap in channels of trade and are sold to sufficiently discerning and sophisticated consumers as
to fail to support the current 2(d) rejection. Accordingly, Applicant respectfully requests that such rejection be withdrawn.
Prior Pending Application
In the Office Action, the Examining Attorney has indicated that the filing date of pending U.S. Application Serial No. 87/913,495 to ROOM 414 precedes the filing date of the instant application. The Examining Attorney further indicated that were the cited ROOM 414 trademark application to proceed to registration, Applicant’s mark may be refused registration under Section 2(d) because of a likelihood of confusion between the two marks.
Since the mailing of the November 5, 2018 Office Action, U.S. Application Serial No. 87/913,495 to ROOM 414 has become abandoned, effective February 14, 2019 by result of expiration of the response period to its Office Action. Resultantly, the potential refusal under Section 2(d) has been resolved and applicant respectfully requests that the said potential grounds for rejection be withdrawn.
Classification of Goods Requires Amendment
In the Office Action, the Examining Attorney has requested that the classification of the instant application be amended to International Class 32. Applicant has amended the classification as requested and asks that the outstanding rejection on the basis of the classification of goods be withdrawn accordingly.
Conclusion
As a result of this amendment and the above remarks the Applicant respectfully requests that the cited 2(d) refusal, prior pending application, and classification amendment requests be withdrawn. In light of the above remarks and the amendments submitted herewith, it is respectfully submitted that the present application is in condition for allowance and publication. The Examining Attorney is urged to contact the submitting attorney if any questions remain.