To: | Jack Henry Spirits (seth@dcbip.com) |
Subject: | U.S. Trademark Application Serial No. 88095430 - HOLA - 10000.5 |
Sent: | October 16, 2019 10:37:11 AM |
Sent As: | ecom121@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88095430
Mark: HOLA
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Correspondence Address:
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Applicant: Jack Henry Spirits
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Reference/Docket No. 10000.5
Correspondence Email Address: |
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The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: October 16, 2019
This Office action is supplemental to and supersedes the previous Office action issued on December 19, 2018 in connection with this application. Based on information and/or documentation in applicant’s response, the trademark examining attorney now issues the following new refusal: Section 2(d) refusal for likelihood of confusion for previously cited pending marks that are now registered as of January 15, 2019 and February 12, 2019. See TMEP §§706, 711.02.
In a previous Office action dated December 19, 2018, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirements: translate the foreign wording in the mark and provide additional fee after losing TEAS Plus status.
Based on applicant’s response, the trademark examining attorney notes that the following requirements have been satisfied: translation of foreign wording and additional fee provided. See TMEP §713.02.
The following refusals have also been obviated: Trademark Section 2(d) Refusal against U.S. Registration No. 5033751 for HELLO VODKA. See id.
The following is a SUMMARY OF ISSUES that applicant must address:
• NEW ISSUE: Section 2(d) Refusal- Likelihood of Confusion (U.S. Registration Nos. 5676332 and 5657452)
Applicant must respond to all issues raised in this Office action, within six (6) months of the date of issuance of this Office action. 37 C.F.R. §2.62(a); see TMEP §711.02. If applicant does not respond within this time limit, the application will be abandoned. 37 C.F.R. §2.65(a).
SECTION 2(d) REFUSAL- LIKELIHOOD OF CONFUSION
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
Although not all du Pont factors may be relevant, there are generally two key considerations in any likelihood of confusion analysis: (1) the similarities between the compared marks and (2) the relatedness of the compared goods. See In re i.am.symbolic, llc, 866 F.3d at 1322, 123 USPQ2d at 1747 (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Federated Foods, Inc. v. Fort Howard Paper Co.,544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976) (“The fundamental inquiry mandated by [Section] 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”); TMEP §1207.01.
Here, there is a likelihood of confusion because the marks are similar and the goods are related.
Similarity of the Marks
Additionally, the applicant’s mark and the mark in U.S. Registration No. 5657452 share the term “HOLA”, giving the marks a similar sound, appearance, and connotation, thus creating a similar overall commercial impression.
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). Greater weight is often given to this dominant feature when determining whether marks are confusingly similar. See In re Detroit Athletic Co., 903 F.3d at 1305, 128 USPQ2d at 1050 (citing In re Dixie Rests., 105 F.3d at 1407, 41 USPQ2d at 1533-34). In this case, the shared term, “HOLA”, is the dominant feature of the marks because it is the first word in U.S. Registration No. 5657452 and the only word in the applicant’s mark. Specifically, consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Thus, in this case, consumers are more likely to focus on the word “HOLA” in each of the marks rendering it the dominant feature of the marks.
Moreover, 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). See 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); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, applicant’s mark is entirely incorporated into the mark in U.S. Registration No. 5657452, thus, the marks are identical in part.
Accordingly, consumers are likely to use the similar terms “HOLA” and “HOLA SOL” as the source identifier for applicant’s and registrant’s goods, causing a likelihood of confusion as to the source of the goods.
Similarity of the Goods
Applicant’s goods are “spirits and liqueurs” in International Class 33.
Registrant’s goods in U.S. Registration Nos. 5676332 and 5657452 are “wine” in International Class 33.
Accordingly, the applicant’s mark is similar to the registered marks, and the goods of the parties are related in such a way that there would be a likelihood of confusion as to the source of the goods. Therefore, registration is refused under Trademark Section 2(d).
RESPONSE TO OFFICE ACTION
Response guidelines. For this application to proceed, applicant must explicitly address each refusal in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
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Adebayo, Omolayo
/Omolayo Adebayo/
Examining Attorney
United States Patent and Trademark Office
Law Office 121
Tel: (571) 272-4711
Email: Omolayo.Adebayo@uspto.gov
RESPONSE GUIDANCE