To: | Victory Brewing Company, LLC (lbarnes@robinsonbradshaw.com) |
Subject: | U.S. Trademark Application Serial No. 88264452 - MYSTICAL MONKEY - 24215.00164 |
Sent: | May 04, 2020 03:48:45 PM |
Sent As: | ecom104@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 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 Attachment - 44 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88264452
Mark: MYSTICAL MONKEY
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Correspondence Address: ROBINSON, BRADSHAW & HINSON, P.A. 101 NORTH TRYON STREET, SUITE 1900
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Applicant: Victory Brewing Company, LLC
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Reference/Docket No. 24215.00164
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: May 04, 2020
The Office has reassigned this application to the undersigned trademark examining attorney.
This Office action is in response to applicant’s communication filed on June 28, 2019.
In a previous Office action dated March 28, 2019, the previous trademark examining attorney refused registration of the applied-for mark under Trademark Act Section 2(d) for a likelihood of confusion with a registered mark.
Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
In the present case, the applicant seeks registration of MYSTICAL MONKEY in standard character form for “Beer; Beers, namely, beers sold in variety packs and containers” in Class 32.
The cited registered mark is MYSTICAL STOUT in standard character form for “beer” in Class 32.
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.
Comparison 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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
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).
Here, applicant’s mark is MYSTICAL MONKEY in standard character form, and registrant’s mark is MYSTICAL STOUT in standard character form. In this case, the first word in the applied-for mark, MYSTICAL, and the first and dominant word in the registered mark, MYSTICAL, are identical in spelling and sound, and overall have a similar appearance and commercial impression.
In this case, both marks begin with the wording MYSTICAL. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); TMEP §1207.01(b)(ii)-(iii). The wording MYSTICAL in the respective marks creates a highly similar appearance and commercial impression, namely, “of, relating to, or stemming from mysticism or immediate understanding of spiritual matters.” See attached evidence from http://www.ahdictionary.com/word/search.html?q=mystical.
Finally, 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 registrant has disclaimed the descriptive wording STOUT apart from its mark as shown. Thus, the examining attorney must closely examine the dominant portion of the registered mark, MYSTICAL, against the registered mark, MYSTICAL MONKEY.
In this case, the only differences between the respective marks is the wording MONKEY in the applied-for mark and the descriptive wording STOUT in the registered mark. These differences do not change the identical nature in sound and highly similar nature in appearance and commercial impression between the wording MYSTICAL in the applied-for mark and the dominant portion of the registered mark, MYSTICAL.
Considering the above, the marks are sufficiently similar to cause a likelihood of confusion under Trademark Act Section 2(d).
Relatedness of the Goods
In this case, applicant’s mark is MYSTICAL MONKEY in standard character form for “Beer; Beers, namely, beers sold in variety packs and containers” in Class 32.
The cited registered mark is MYSTICAL STOUT in standard character form for “beer” in Class 32.
In this case, the “beer” goods in the application and registration are identical. Therefore, it is presumed that the channels of trade and class of purchasers are the same for these goods ces. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1372, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)).
Further, the registration uses broad wording to describe “beer” in Class 32, which presumably encompasses all goods of the type described, including applicant’s more narrow “Beers, namely, beers sold in variety packs and containers” in Class 32. 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 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)).
Finally, the examining attorney has attached websites demonstrate that beer and beers sold in variety packs and containers are commonly provided together and commonly originate from the same source. The attached Internet evidence establishes that the same entity commonly produces and provides the relevant goods and markets the goods under the same mark and that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. 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). See attached evidence from:
· Kona Brewing Co.: http://konabrewingco.com/our-beers;
· 21st Amendment Brewery: http://origlio.com/brewery/21st-amendment-brewery;
· New Belgium:
o http://www.newbelgium.com/beer/mountain-time/;
o http://www.newbelgium.com/beer/bottle-folly-pack/;
· Anchor Brewing:
o http://www.anchorbrewing.com/beer/beer_cooler;
o http://www.anchorbrewing.com/connect/news/108;
· Flying Dog:
o http://www.flyingdog.com/beers/; and
o http://www.flyingdog.com/beers/variety-pack/.
Thus, applicant’s and registrant’s goods are related.
Applicant’s Arguments
Applicant argues that “when compared in their entireties, Applicant’s mark conveys a significantly different meaning and commercial impression,” namely, that the wording MYSTICAL that is present in both marks “is used to describe completely different subjects and thus the marks present a substantially different commercial impression.” Further, applicant argues that the wording MONKEY in the applied-for mark is part of a family of marks and that the purchasing public’s familiarity with these marks obviates any likelihood of confusion. However, the Trademark Trial and Appeal Board has found that a family of marks argument is “not available to an applicant seeking to overcome a [likelihood of confusion] refusal.” In re Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009). Specifically, an applicant’s ownership of other similar marks has little relevance in this context because the focus of a likelihood of confusion analysis in an ex parte case is on the mark applicant seeks to register, rather than other marks applicant has used or registered. In re Cynosure, Inc., 90 USPQ2d at 1645-46; In re Ald, Inc., 148 USPQ 520, 521 (TTAB 1965); TMEP §1207.01(d)(xi).
Further, as outlined in the Comparison of the Marks section above, Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. Here, the wording MYSTICAL in the respective marks retains its meaning, namely, of, relating to, or stemming from mysticism or immediate understanding of spiritual matters. As such, the respective marks could be interpreted as being part of a series.
Moreover, as stated in the Comparison of the Marks section above, although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. Disclaimed matter that is descriptive of or generic for a party’s goods is typically less significant or less dominant when comparing marks. In this case, the registrant has disclaimed the descriptive wording STOUT apart from its mark as shown. Thus, the examining attorney must closely examine the dominant portion of the registered mark, MYSTICAL, against the registered mark, MYSTICAL MONKEY.
Finally, where the goods of an applicant and registrant are identical or virtually identical, the degree of similarity between the marks required to support a finding that confusion is likely declines. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); TMEP §1207.01(b). As outlined in the Relatdness of Goods section above, the goods identified in the registered mark, beer, is identical to and encompasses applicant’s goods for “Beer; Beers, namely, beers sold in variety packs and containers.” As such, the degree of similarity between the marks required to support a finding of that confusion is reduced.
Therefore, applicant’s arguments are unpersuasive.
The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods. See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of widespread third-party use of similar marks with similar goods “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field. Omaha Steaks Int’l, Inc. v. Greater Omaha Packing Co., 908 F.3d 1315, 1324, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)).
However, evidence comprising only a small number of third-party registrations for similar marks with similar goods, as in the present case, is generally entitled to little weight in determining the strength of a mark. See In re i.am.symbolic, llc, 866 F.3d 1315, 1328-29, 123 USPQ2d 1744, 1751-52 (Fed. Cir. 2017); AMF Inc. v. Am. Leisure Products, Inc., 474 F.2d 1403, 1406, 177 USPQ 268, 269 (C.C.P.A. 1973). These few registrations are “not evidence of what happens in the market place or that customers are familiar with them.” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d at 1406, 177 USPQ at 269; In re I-Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018). Thus, the few similar third-party registrations submitted by applicant are insufficient to establish that the wording MYSTICAL is weak or diluted.
Further, the attached evidence from the USPTO’s public TESS search database demonstrates that the only two relevant marks with the wording “MYSTICAL” for “beer” goods are applicant’s and registrant’s respective marks. See attached evidence from http://tmsearch.gov.uspto.report/bin/gate.exe.
Thus, these third-party registrations submitted by applicant are insufficient to establish that the wording MYSTICAL is weak or diluted.
As such, applicant’s arguments are unpersuasive.
Conclusion
Thus, upon encountering MYSTICAL MONKEY for beer and beers sold in variety packs and containers, and MYSTICAL STOUT for beer, consumers are likely to be confused and mistakenly believe that the respective goods emanate from a common source because the marks are highly similar in appearance and commercial impression and the goods of the parties are essentially identical and thus travel in the same channels of trade to the same class of consumers.
Based on the foregoing, the refusal to register under Trademark Act Section 2(d) is maintained and made FINAL.
QUESTIONS
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.
PROPER RESPONSE TO A FINAL ACTION
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).
/Andrew Crowder-Schaefer/
Trademark Examining Attorney
Law Office 104
(571) 272-0087
andrew.crowderschaefer@uspto.gov
RESPONSE GUIDANCE