UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88230986
MARK: MILITARY
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CORRESPONDENT ADDRESS: |
CLICK HERE TO RESPOND TO THIS LETTER: http://www.gov.uspto.report/trademarks/teas/response_forms.jsp
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APPLICANT: Craig Tribe
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CORRESPONDENT’S REFERENCE/DOCKET NO: CORRESPONDENT E-MAIL ADDRESS: |
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OFFICE ACTION
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: 3/19/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
· Trademark Act Section 2(d) Refusal – Likelihood of Confusion
· Identification of Goods Requirement
· Disclaimer Advisory
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Applicant seeks to register the standard character mark MILITARY for “Aloe juice beverages; Apple juice beverages; Frozen carbonated beverages; Frozen fruit beverages; Frozen fruit-based beverages; Fruit beverages; Fruit juice beverages; Fruit-based beverages; Fruit-flavored beverages; Fruit-flavoured beverages; Ginger juice beverages; Grape juice beverages; Green vegetable juice beverages; Isotonic beverages; Kvass; Malt syrup for beverages; Non-alcoholic beverages, namely, carbonated beverages; Non-alcoholic beer flavored beverages; Non-alcoholic fruit juice beverages; Non-alcoholic honey-based beverages; Non-alcoholic malt beverages; Orange juice beverages; Pineapple juice beverages; Protein-enriched sports beverages; Scented water for making beverages; Semi-frozen carbonated beverages; Sherbet beverages; Smoothies; Syrups for beverages; Syrups for making beverages; Tomato juice beverages; Vegetable juices; Water beverages; Whey beverages” in International Class 32 and “Alcoholic beverages containing fruit; Alcoholic beverages except beers; Alcoholic beverages, except beer; Alcoholic beverages, namely, digestifs; Alcoholic carbonated beverages, except beer; Alcoholic fruit beverages; Alcoholic mixed beverages except beers; Liquor and liqueur beverages, namely, ALCOHOL BEVERAGES; Liquor and liqueur beverages, namely, NON ALCOHOL BEVERAGES; Nira; Rum-based beverages; Spirits” in International Class 33.
Registrant’s standard character mark MILITARY SPECIAL is registered for “Alcoholic beverages, namely, Rum, Vodka, Gin, Bourbon, Scotch, Whiskey, Tequila and Brandy” in International Class 33.
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.
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).
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 Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. 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)); TMEP §1207.01(b)(viii), (c)(ii). In this case, the registered mark disclaims the wording “SPECIAL”, which renders the wording “MILITARY” the dominant feature of the registered mark. The same wording MILITARY is used in the applicant’s single-worded mark.
Therefore, the marks are confusingly similar.
Similarity of the Goods
Determining likelihood of confusion is based on the description of the goods stated in the application and registration at issue, not on extrinsic evidence of actual use. See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).
In this case, the application uses broad wording to describe “Alcoholic beverages containing fruit; Alcoholic beverages except beers; Alcoholic beverages, except beer; Alcoholic beverages, namely, digestifs; Alcoholic carbonated beverages, except beer; Alcoholic fruit beverages; Alcoholic mixed beverages except beers; Liquor and liqueur beverages, namely, ALCOHOL BEVERAGES; Liquor and liqueur beverages, namely, NON ALCOHOL BEVERAGES; Nira; Rum-based beverages; Spirits”, which presumably encompasses all goods of the type narrowly described in the registration, “Rum, Vodka, Gin, Bourbon, Scotch, Whiskey, Tequila and Brandy”, because the registrant’s goods are a type of alcoholic beverage and spirits as seen in Liquor.com, The Spruce Eats and The Man Mag. See, e.g., In re Solid State Design Inc., 125 USPQ2d 1409, 1412-15 (TTAB 2018); Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). Thus, applicant’s and registrant’s International Class 33 goods are legally identical. See, e.g., In re i.am.symbolic, llc, 127 USPQ2d 1627, 1629 (TTAB 2018) (citing Tuxedo Monopoly, Inc. v.Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336, 209 USPQ 986, 988 (C.C.P.A. 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014); Baseball Am. Inc. v. Powerplay Sports Ltd., 71 USPQ2d 1844, 1847 n.9 (TTAB 2004)).
Additionally, the goods of the parties have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s and registrant’s goods are related.
Moreover, there is evidence to show that applicant’s alcoholic and nonalcoholic beverages travel in the same trade channels as the registrant’s alcoholic goods. The attached Internet evidence from Crown Valley, St. Julian Winery and Distillery, Suntory and Copper & Kings American Brandy Company establishes that the same entity commonly manufactures, markets, and provides the relevant goods under the same mark. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Therefore, because the marks are confusingly similar and the goods are presumed to travel in the same trade channels, the applied-for mark is refused registration under Trademark Act Section 2(d) for likelihood of confusion.
Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. However, if applicant responds to the refusal, applicant must also respond to the requirement set forth below.
IDENTIFICATION OF GOODS
Class 32
If modifying one of the duplicate entries, applicant may amend it to clarify or limit the goods, but not to broaden or expand the goods beyond those in the original application or as acceptably amended. See 37 C.F.R. §2.71(a); TMEP §1402.06. Also, generally, any deleted goods may not later be reinserted. TMEP §1402.07(e).
Class 33
Applicant may substitute the following wording, if accurate (suggested wording in bold):
Class 32 Aloe juice beverages; Apple juice beverages; Frozen
carbonated beverages; Frozen fruit beverages; Frozen fruit-based beverages; Fruit beverages; Fruit juice beverages; Fruit-based beverages; Fruit-flavored beverages; Fruit-flavoured beverages;
Ginger juice beverages; Grape juice beverages; Green vegetable juice beverages; Isotonic beverages; Kvass; Malt syrup for beverages; Non-alcoholic beverages, namely, carbonated beverages;
Non-alcoholic beer flavored beverages; Non-alcoholic fruit juice beverages; Non-alcoholic honey-based beverages; Non-alcoholic malt beverages; Orange juice beverages; Pineapple juice beverages;
Protein-enriched sports beverages; Scented water for making beverages; Semi-frozen carbonated beverages; Sherbet beverages; Smoothies; Syrups for beverages; Syrups for making beverages; Tomato juice
beverages; Vegetable juices; Water beverages; Whey beverages; non-alcoholic liquor and liqueur beverages, namely, indicate specific beverages, e.g., malt
beverages, cider, wines, cordials, etc.}
Class 33 Alcoholic beverages containing fruit; Alcoholic beverages except beers; Alcoholic beverages, except beer; Alcoholic beverages, namely, digestifs; Alcoholic carbonated beverages, except beer; Alcoholic fruit beverages; Alcoholic mixed beverages except beers; Liquor and liqueur beverages, namely, {indicate specific beverages, e.g., rum, spirits, alcoholic cordials, etc.}; Nira; Rum-based beverages; Spirits
For assistance with identifying and classifying goods in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
DISCLAIMER
HIRING TRADEMARK ATTORNEY ADVISORY
Because of the legal technicalities and strict deadlines involved in the USPTO application process, applicant may wish to hire a private attorney specializing in trademark matters to represent applicant in this process and provide legal advice. Although the undersigned trademark examining attorney is permitted to help an applicant understand the contents of an Office action as well as the application process in general, no USPTO attorney or staff is permitted to give an applicant legal advice or statements about an applicant’s legal rights. TMEP §§705.02, 709.06.
For attorney referral information, applicant may consult the American Bar Association’s Consumers’ Guide to Legal Help; an online directory of legal professionals, such as FindLaw®; or a local telephone directory. The USPTO, however, may not assist an applicant in the selection of a private attorney. 37 C.F.R. §2.11.
RESPONSE GUIDELINES
Response guidelines. For this application to proceed, applicant must explicitly address each refusal and requirement 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.
TEAS PLUS OR 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 Plus or 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 Plus or 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 Plus or 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.
/Joanna Han/
Joanna Han
Trademark Examining Attorney
Law Office 126
(571) 270-3617
joanna.han@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.