To: | Standard Candy Company, LLC (docket@iplawgroup.com) |
Subject: | U.S. Trademark Application Serial No. 88221583 - GOO GOO - 11545-019981 |
Sent: | May 11, 2020 09:46:20 PM |
Sent As: | ecom118@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 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88221583
Mark: GOO GOO
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Correspondence Address: PATTERSON INTELLECTUAL PROPERTY LAW, PC 1600 DIVISION STREET, SUITE 500
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Applicant: Standard Candy Company, LLC
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Reference/Docket No. 11545-019981
Correspondence Email Address: |
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NONFINAL OFFICE ACTION
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: May 11, 2020
On March 13, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 87782131. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION:
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 and/or services. 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.
The applicant’s mark is GOO GOO for liquor, whiskey and liqueur.
The registrant’s mark is GOO for beer.
Similarities of the marks:
In this case, the applicant’s mark and the registrant’s mark are highly similar and they convey a similar commercial impression. Here, both marks share the letter string “GOO”, and both marks are used to identify the same type of goods, namely, alcoholic beverages.
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
Similarities of the goods:
In this case, the applicant’s goods are liquor, whiskey and liqueur. The registrant’s goods are beer. The goods of the parties are alcoholic beverages and as such, are closely related.
Based on the evidence of record it is clear that the goods of the parties are closely related. As such, the goods of the parties will be marketed in the same channels of trade to the same class of consumers. Thus, consumers are likely to encounter the goods of the parties and are likely to mistakenly believe that the common elements in the marks are an indication that the goods emanate from the same source. Accordingly, confusion is likely.
Because the marks are highly similar and they identify closely related goods, their contemporaneous use is likely to cause confusion. Therefore, the proposed mark is refused registration pursuant to Section 2(d) of the Trademark Act.
RESPONSE:
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
How to respond. Click to file a response to this nonfinal Office action.
/Marlene Bell/
Trademark Examining Attorney
Law Office 118
571-272-9291
marlene.bell@uspto.gov (for informal inquiries)
RESPONSE GUIDANCE