To: | Standard Candy Company, LLC (docket@iplawgroup.com) |
Subject: | U.S. Trademark Application Serial No. 88221583 - GOO GOO - 11545-019981 |
Sent: | November 29, 2020 08:47:30 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 |
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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FINAL 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) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: November 29, 2020
This Office action is in response to applicant’s communication filed on November 11, 2020.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION – FINAL:
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No. 5985024. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
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.
The applicant contends that the marks are not confusingly similar. The examining attorney respectfully disagrees.
Here, both marks are standard character marks and neither mark contains any design elements to aid in distinguishing the marks. Here, both marks share the same term, GOO, and both marks are used to identify closely related goods, namely, alcoholic beverages.
The applicant’s prior use of the mark GOO GOO for candy is not controlling in this instance in relation to alcoholic beverages, because the goods are different and unrelated.
As such, the applicant’s mark and the registrant’s mark are confusingly similar.
The applicant’s goods are liquor, whiskey and liqueur. The registrant’s goods are beer. The goods of both parties are alcoholic beverages and the examining attorney maintains that the goods of the parties 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 travel and 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.
Accordingly, the Section 2(d) refusal is maintained and made FINAL.
RESPONSE:
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 request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Marlene Bell/
Trademark Examining Attorney
Law Office 118
571-272-9291
marlene.bell@uspto.gov (for informal inquiries)
RESPONSE GUIDANCE