UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)

OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION

 

 

 

OFFICE ACTION

 

STRICT DEADLINE TO RESPOND TO THIS LETTER

TO AVOID ABANDONMENT OF APPLICANT’S TRADEMARK APPLICATION, THE USPTO MUST RECEIVE APPLICANT’S COMPLETE RESPONSE TO THIS LETTER WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE BELOW.  A RESPONSE TRANSMITTED THROUGH THE TRADEMARK ELECTRONIC APPLICATION SYSTEM (TEAS) MUST BE RECEIVED BEFORE MIDNIGHT EASTERN TIME OF THE LAST DAY OF THE RESPONSE PERIOD.

 

 

ISSUE/MAILING DATE: 7/1/2019

 

TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

 

THIS IS A FINAL ACTION.

 

This final Office action is in response to the applicant’s Response to Office Action filed on June 28, 2019.

 

In the initial Office action of January 3, 2019, the Office issued a Section 2(d) likelihood of confusion, a Section 2(e)(2) primarily geographically descriptive refusal, and required the applicant to provide additional information about its goods.

 

The applicant responded by SATISFYING the additional information requirement and arguing against the Section 2(e)(2) refusal, which is OBVIATED in light of the applicant’s arguments and responses to the requirement.  Though the applicant argued against the Section 2(d) refusal, the Office finds those arguments unpersuasive for the reasons stated below.  Accordingly, the Section 2(d) refusal is MAINTAINED AND MADE FINAL.  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

 

SUMMARY OF ISSUES

 

The applicant must address:

 

• Section 2(d) Refusal – Likelihood of Confusion – MAINTAINED AND MADE FINAL.

 

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION –

MAINTAINED AND MADE FINAL

 

Registration of the applied-for mark is finally refused because of a likelihood of confusion with the mark in U.S. Registration No. 4498988 (previously attached).  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. 

 

Here, the applicant’s mark is VERA CRUZ for alcoholic beverages except beer, and the registrant’s mark is ESTD VERACRUZ 1936 also for alcoholic beverages except beer.

 

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 and differences in the marks.”); TMEP §1207.01.

 

In this case, the following factors are the most relevant: identical goods and similarity of the marks.  See In re Viterra Inc., 671 F.3d 1358, 1361-62, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593, 1595-96 (TTAB 1999); TMEP §§1207.01 et seq.

 

Relatedness of the Goods

 

When analyzing an applicant’s and registrant’s goods for similarity and relatedness, that determination is based on the description of the goods in the application and registration at issue, not on extrinsic evidence of actual use.  See 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)). 

 

In this case, the goods in the application and registration are identical, namely, alcoholic beverages except beer.  Therefore, it is presumed that the channels of trade and class of purchasers are the same for these goods.  See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).  Thus, applicant’s and registrant’s goods are related.  

 

Similarity of the Marks

 

Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

Here, the applicant's standard character mark VERA CRUZ is confusingly similar to the registrant's design mark ESTD VERACRUZ 1936.

 

Specifically, the applicant’s and registrant’s marks are comprised of highly similar and distinctive wording VERA CRUZ (applicant) and VERACRUZ (registrant), which are identical in sound, commercial impression, and meaning, namely, evoking a city in Mexico.  http://www.ahdictionary.com/word/search.html?q=Veracruz; see http://en.wikipedia.org/wiki/Veracruz_(city) (showing that Veracruz was originally Vera Cruz); http://boards.cruisecritic.com/topic/1231251-ecstasy-going-to-veracruz/ (showing consumers misspelling Veracruz). 

 

Regarding the preceding wording, they also are identical except for a slight difference in appearance between the wording in registrant’s mark, which appears as a compound word with no space separating the words, that is, VERACRUZ; and the applicant’s mark, which appears as multiple words with space separating the words, that is, VERA CRUZ.  As such, the marks are identical in sound and virtually identical in appearance, and are thus confusingly similar for the purposes of determining likelihood of confusion.  See, e.g., Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (“[T]he marks ‘SEAGUARD’ and ‘SEA GUARD’ are, in contemplation of law, identical [internal citation omitted].”); In re Best W. Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little doubt that the marks [BEEFMASTER and BEEF MASTER] are practically identical”); Stock Pot, Inc., v. Stockpot Rest., Inc., 220 USPQ 52, 52 (TTAB 1983), aff’d 737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks of the parties [STOCKPOT and STOCK POT] are confusingly similar.  The word marks are phonetically identical and visually almost identical.”). 

 

Though the registrant’s mark includes the wording ESTD and 1936, this addition does not obviate the similarities between the marks because the registrant disclaimed this wording because it is merely informational about the goods, i.e., when the registrant or its goods were established.  See http://www.merriam-webster.com/dictionary/estd (showing that estd is an abbreviation of established).  Disclaimed matter that is merely informational for a party’s goods is typically less significant or less dominant in relation to other wording in a mark.  In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); see Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)); TMEP §1207.01(b)(viii), (c)(ii).  Thus, this wording is less significant in terms of affecting the mark’s commercial impression, and renders the wording VERACRUZ the more dominant element of the mark.

 

Lastly, though the registrant’s mark consists of a design in the form of product packaging, notably, a bottle and a stylized drawing of a plant in the shape of a fleur-de-lis between two crosses, this addition, too, does not obviate the similarities between the marks.  Specifically, the bottle design was not treated as inherently distinctive in light of the applicant’s claim of acquired distinctiveness.  Additionally, the plant/fleur-de-lis/cross design appears in significantly smaller size compared to the larger and, therefore, physically dominant wording VERACRUZ.  Moreover, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, although marks must be compared in their entireties, the word portion is often considered the dominant feature and is accorded greater weight in determining whether marks are confusingly similar, even where the word portion has been disclaimed.  In re Viterra Inc., 671 F.3d at 1366-67, 101 USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1570-71, 218 USPQ2d 390, 395 (Fed. Cir. 1983)).  Therefore, this design is less significant in terms of affecting the mark’s commercial impression, and renders the wording VERACRUZ the more dominant element of the mark.

 

Accordingly, the marks are confusingly similar.

 

Applicant argues that no likelihood of confusion exists because (1) applicant owns a prior registration for an identical mark for similar goods to those in the application, and (2) such registration has co-existed with the cited registration.  Applicant concludes there is no likelihood of confusion between the applied-for mark and registrant’s mark; therefore, the trademark examining attorney should withdraw the Trademark Act Section 2(d) refusal.   

 

However, in In re Strategic Partners, Inc., 102 USPQ2d 1397, 1399-1400 (TTAB 2012), the Trademark Trial and Appeal Board only reversed a Section 2(d) refusal based on an applicant’s prior registration for the following unique set of facts: (1) the marks in applicant’s prior registration and application were virtually identical (“no meaningful difference” existed between them, such that they were “substantially similar”); (2) the goods were identical in part; and (3) the prior registration had co-existed for at least five years with the cited registration (both being more than five years old and thus immune from attack on likelihood of confusion grounds).  See TMEP §1207.01.  The Board acknowledged these facts constituted a “unique situation,” such that an applicant’s prior registration would generally need to fit within these precise parameters to overcome a Section 2(d) refusal.  In re Strategic Partners, Inc., 102 USPQ2d at 1400; see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793-94 (TTAB 2017); TMEP §1207.01.

 

In this case, by contrast, applicant’s prior registration does not correspond to the facts set forth in In re Strategic Partners, Inc.  See TMEP §1207.01.  Specifically, applicant’s prior registration is not for the same goods, that is, the registration covers tequila[1], a particular type of liquor or distilled spirit, whereas the applicant now seeks registration for all alcoholic beverages in Class 33 except beer.  Because the applicant is seeking to broaden the scope of its trademark protection to goods other than tequila, thereby creating an identification that is now identical to the cited registration, applicant’s prior registration does not obviate the Section 2(d) refusal.

 

The applicant also argues that the commercial impression of its mark differs from that the registrant’s mark.  First, the applicant maintains that “there is no clear basis on which to conclude that the VERACRUZ term incorporated with all of the[] additional elements is the dominant feature of the trade dress covered by [the] registration.”  The most distinctive elements in the registrant’s mark is the wording VERACRUZ and the plant/fleur-de-lis/cross design.  The wording ESTD and 1936 was disclaimed as being merely informational, the registrant claim acquired distinctiveness as to the bottle, and the cap, which is depicted in broken lines, was likely deemed functional.  Not only is the wording VERACRUZ displayed in large font size compared to the plant/fleur-de-lis/cross design, but, as discussed above, when evaluating a composite mark consisting of words and a design, the word portion is normally accorded greater weight because it is likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods.  In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(c)(ii).  Thus, the wording VERACRUZ is the most dominant element of the mark and is likely to be perceived as such by consumers.

 

Though the applicant maintains that “ESTD VERACRUZ 1936” creates the commercial impression of “Established in Veracruz in 1936,” the fact that the applicant needed to insert the wording “in” into that statement shows the steps that are necessary to arrive at the impression that the applicant articulates.  Because “ESTD VERACRUZ 1936” is grammatically incorrect, consumers are unlikely to perceive this wording as that which the applicant suggests. 

 

The applicant also alleges that the wording VERACRUZ in the registrant’s mark is primarily geographically descriptive, but Trademark Act Section 7(b), however, provides that a certificate of registration on the Principal Register is prima facie evidence of the validity of a registered mark.  15 U.S.C. §1057(b).  The validity of a cited registration “cannot be challenged in an ex parte proceeding.”  In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1517 (TTAB 2016).  Thus, applicant’s argument is not being considered because to do so would fail to give the cited registered mark the validity to which it is entitled.  In re Fat Boys Water Sports LLC, 118 USPQ2d at 1517 (citing In re Fiesta Palms LLC, 85 USPQ2d 1360, 1363 (TTAB 2007)).

 

Lastly, the applicant argues that its mark “ha[s] distinct meanings within the Spanish language and are thus not likely to be associated with the city, Veracruz, Mexico.”  Although evidence was submitted here to establish that consumers may misspell the Mexican city, even absent such evidence, the wording VERA CRUZ in the applicant’s mark and VERACRUZ in the registrant’s mark are identical in sound.  Similarity in sound alone may be sufficient to support a finding that the marks are confusingly similar.  In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988); see In re 1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); TMEP §1207.01(b)(iv).  Spanish-speaking consumers hearing the parties’ marks will be unable to differentiate whether one is referring to the Mexican city or two separate words.  Additionally, the preceding argument from the applicant is entirely lost on English-speaking consumers who are likely to be unfamiliar with the distinction the applicant makes.

 

Because the goods are identical and, therefore, closely related marks are confusingly similar and the goods are closely related, consumers are likely to be confused as to the source of the goods.  Thus, registration is refused pursuant to Trademark Act Section 2(d). 

 

RESPONSE GUIDELINES

 

Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned.  15 U.S.C. §1062(b); 37 C.F.R. §2.65(a).  Applicant may respond by providing one or both of the following:

 

(1)       a response filed using the Trademark Electronic Application System (TEAS) that resolves the outstanding refusal; and/or

 

(2)       an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.

 

37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.

 

In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues.  TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters).  There is a fee required for filing a petition.  37 C.F.R. §2.6(a)(15).

 

Please call or email the assigned trademark examining attorney with questions about this Office action.  Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal in this Office action.  See TMEP §§705.02, 709.06.  Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record.  See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.

 

/Kevin G. Crennan/

Trademark Examining Attorney

Law Office 113

(571) 272-7949

kevin.crennan@uspto.gov

 

TO RESPOND TO THIS LETTER:  Go to http://www.gov.uspto.report/trademarks/teas/response_forms.jsp.  Please wait 48-72 hours from the issue/mailing date before using the Trademark Electronic Application System (TEAS), to allow for necessary system updates of the application.  For technical assistance with online forms, e-mail TEAS@uspto.gov.  For questions about the Office action itself, please contact the assigned trademark examining attorney.  E-mail communications will not be accepted as responses to Office actions; therefore, do not respond to this Office action by e-mail.

 

All informal e-mail communications relevant to this application will be placed in the official application record.

 

WHO MUST SIGN THE RESPONSE:  It must be personally signed by an individual applicant or someone with legal authority to bind an applicant (i.e., a corporate officer, a general partner, all joint applicants).  If an applicant is represented by an attorney, the attorney must sign the response. 

 

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 TEAS form at http://www.gov.uspto.report/trademarks/teas/correspondence.jsp.