| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88264452 |
| LAW OFFICE ASSIGNED | LAW OFFICE 104 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88264452/mark.png |
| LITERAL ELEMENT | MYSTICAL MONKEY |
| STANDARD CHARACTERS | YES |
| USPTO-GENERATED IMAGE | YES |
| MARK STATEMENT | The mark consists of standard characters, without claim to any particular font style, size or color. |
| ARGUMENT(S) | |
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The Examining Attorney has refused registration of the Applicant’s mark MYSTICAL MONKEY pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the grounds that Applicant’s mark is likely to be confused with the mark in Registration No. 4,935,840 (“Cited Registration”). For the following reasons, the Applicant respectfully disagrees with the findings and requests that the Examining Attorney reconsider the refusal and allow registration of the Applicant’s mark. The test for likelihood of confusion is whether a ‘reasonably prudent consumer’ in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks. In re E.I. DuPont de Nemours and Co., 177 U.S.P.Q. 563 (C.C.P.A 1973). Under Dupont, the marks are compared for similarity or dissimilarity in their entireties as to appearance, sound, connotation and commercial impression. However, marks may contain elements in common and still not create confusion if either: (1) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted, or (2) the marks in their entireties convey significantly different commercial impressions. See, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (RITZ and THE RITZ KIDS create different commercial impressions); In re Farm Fresh Catfish Co., 231 USPQ 495 (TTAB 1986) (CATFISH BOBBERS (with "CATFISH" disclaimed) for fish held not likely to be confused with BOBBER for restaurant services); In re Shawnee Milling Co., 225 USPQ 747 (TTAB 1985) (GOLDEN CRUST for flour held not likely to be confused with ADOLPH'S GOLD'N CRUST and design (with "GOLD'N CRUST" disclaimed) for coating and seasoning for food items); In re S.D. Fabrics, Inc., 223 USPQ 54 (TTAB 1984). In this case, when comparing the marks in their entirety, Applicant’s mark conveys a significantly different meaning and commercial impression. While both marks contain the common term MYSTICAL, “Mystical” in each mark is used to describe completely differently subjects and thus the marks present a substantially different commercial impression. Specifically, in the Cited Registration, “Mystical” is used as an adjective to describe the goods, i.e. the stout beer is mystical in nature. However, in the Applicant’s mark, “Mystical” is used to describe a fictitious monkey character. This distinction is clear when the mark is viewed in its entirety and emphasized in Applicant’s use. For example, Applicant uses the mark as a source identifier of a combination variety pack of MONKEY branded beers, which include its GOLDEN MONKEY® (which has been in the marketplace since 1999), SOUR MONKEY® and TWISTED MONEKY (see advertising attached as Exhibit A). Because the commercial impression of the marks suggest completely difference subjects (a mystical beer v. a mystical monkey), potential consumers would not likely mistakenly believe that the goods originate from the same source. This distinction should also be considered when looking at the dominate portion of the mark. The Examiner asserts that the marks are similar because the suffix “Mystical” is the dominant and distinctive term in both marks, however, Applicant disagrees. Although “Mystical” may be the dominant term in the Cited Registration because “Stout” is disclaimed, no such disclaimer is required in Applicant’s mark because “Monkey” is not descriptive of the goods. In fact, as noted above, Applicant would argue that “Monkey” is the dominant element of their mark because “Mystical” in the mark as a whole describes the second word “Monkey”, and thus the marks do not present the same commercial impression. Moreover, any possibility of confusion is reduced even further when the common element between the marks is weak. It is further established that where the common element of conflicting marks is "weak" in the sense that such portion is descriptive, highly suggestive, or is in common use by many sellers in the market, then this reduces the likelihood of confusion. See Clark Equip. Co. v. Baker-Lull Corp., 288 F.2d 926, 129 USPQ 220 (CCPA 1961) (no confusion between YARDLOADER and CARLOADER or YARDLIFT on forklift trucks); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed.Cir.1986) (no likelihood of confusion between BED AND BREAKFAST REGISTRY and BED AND BREAKFAST INTERNATIONAL, because the common part was the weak and descriptive phrase "bed and breakfast"). The mere fact that two marks incorporate a form of a common identifying word does not render the marks too similar. See, e.g., Freedom Sav. & Loan Ass'n, 757 F.2d at 1183 ("Freedom Savings and Loan" and "Freedom Realty" marks "lack ... confusing similarity"); Sun Banks of Florida, Inc. v. Sun Federal Sav. and Loan Ass'n , 651 F.2d 311, 316 ("Sun Federal and Savings Loan Association" not confusingly similar to "Sun Banks"); Amstar, 615 F.2d at 260 ("Domino's Pizza" not similar to "Domino sugar"); Bell Laboratories, Inc. v. Colonial Prods., Inc., 644 F. Supp. 542, 547 (S.D.Fla.1986) ("Final flip" and "Flip" marks for same product are "ultimately different and different sounding"); In re Hearst Corp., 982 F.2d 493, 494 (Fed.Cir.1992) ("Varga girl" and "Vargas" are "sufficiently different in sound, appearance, connotation, and commercial impression, to negate likelihood of confusion"); Mr. Hero Sandwich Sys., Inc. v. Roman Meal Co., 781 F.2d 884, 888 (Fed.Cir.1986) ("Romanburger" and "Roman" marks for food products "are not similar in appearance"); Little Caesar Enterprises, 834 F.2d 568, 571 ("Pizza Caesar U.S.A." not similar to "Little Caesar's"); Conde Nast Pubs., Inc. v. Miss. Quality, Inc., 507 F.2d 1404, 1407 (CCPA 1975) ("Country Vogues"and "Vogue" publications "do not look or sound alike"); Pacquin-Lester Co. v. Charmaceuticals, Inc., 484 F.2d 1384 (CCPA 1973) ("Silk 'n' Satin" beauty and bath lotion and oil not similar to "Silk" face cream). Ultimately whether an addition is sufficient to prevent confusion in a particular instance depends upon the strength of the main part of the mark and the distinctiveness of the additional feature. Bell Laboratories, supra, at 548. In this case, the word “MYSTICAL”, common between both marks, is diluted as it applies in connection with alcoholic beverages and services. Dilution of a common element can be shown by the existence of third- party registrations, or by evidence of actual use. AMF v. American League Products, Inc., 474 F.2d 1403, 1406, 177USPQ 268, 269-7-(CCPA 1973). There are at least two other concurrent registrations that contain the common term “MYSTICAL” or some foreign equivalent: ALMA MISTICA (English translation “MYSTICAL SOUL”) and ROSA MYTISCA (English translation “ROSA MYSTICA” (copies of registration certificates are attached as Exhibit B). Additionally, the consuming public is exposed to numerous actual uses of marks that incorporate the term MYSTICAL in connection with alcoholic beverages, including MYSTICAL JACK, MYSTICAL FOREST, MYSTICAL DRAGON CIDER, MYSTIC WINES, ROSA MISTICA, HOPTIMYSTICAL, MYSTICAL SPIRITS WINE & LIQUOR, MYSTICAL POWER STATION and NEPTUNE THE MYSTIC-MYSTICAL STOUT (Exhibit C). The existence and exposure of consumers to such third-party uses of similar marks on similar goods "is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection." Because of this exposure, potential customers would not expect the common word to distinguish one such alcoholic beverage or service from another but would look to any other words in the name as the distinguishing feature or source indicator. Where the common element is considered a weak mark, minor alterations could effectively negate any confusingly similarity between the two. Freedom Sav. & Loan Ass'n, 757 F.2d 1176, 1183 (C.A.11 Fla.1985). In this case, the remaining non-common portion of Applicant’s mark is nothing like the Cited Registration in terms of appearance or sound because MONKEY and STOUT look and sound different. Furthermore, the meaning of the non-common portions of the marks are very different. “Monkey” suggests a medium sized primate, whereas Stout is a dark beer. Case law is replete with analogous instances where differences in the remaining portions of the marks were much less significant and no likelihood of confusion found. See, e.g., Keebler Co. v. Murray Bakery Prods., 866 F.2d 1386, 1390 (Fed. Cir. 1989)(PECAN SANDIES and PECAN SHORTEES both for cookies do not convey similar commercial impressions); In re Bed & Breakfast Registry, 791 F.2d 157, 159 (Fed. Cir. 1986) (BED & BREAKFAST REGISTRY and BED & BREAKFAST INTERNATIONAL for closely related services held not confusingly similar where words "Registry" and "International" do not have the same meaning); EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc., 706 F.2d 1213 (Fed. Cir. 1983)(significance of the term "loader" in relation to the parties' goods relied upon in holding that contemporaneous use of EZ LOADER and SUPER LOADER not likely to cause confusion). Conclusion Because the marks in their entirety convey significantly different commercial impressions and the common elements between the marks are diluted, consumers are not likely to confuse the source of Applicant’s mark and the Cited Registration. Therefore, Applicant respectfully requests that the Examining Attorney reconsider the statutory refusal and allow Applicant’s mark to proceed to publication. |
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| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| JPG FILE(S) | \\TICRS\EXPORT17\IMAGEOUT 17\882\644\88264452\xml4\ ROA0002.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\882\644\88264452\xml4\ROA0006.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\644\88264452\xml4\ROA0007.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\644\88264452\xml4\ROA0008.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\644\88264452\xml4\ROA0009.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\644\88264452\xml4\ROA0010.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\644\88264452\xml4\ROA0011.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\644\88264452\xml4\ROA0012.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\644\88264452\xml4\ROA0013.JPG | |
| \\TICRS\EXPORT17\IMAGEOUT17\882\644\88264452\xml4\ROA0014.JPG | |
| ORIGINAL PDF FILE | evi_12813679200-20190628140727997202_._Exhibit_B-_Alama_Mistica_79137957.pdf |
| CONVERTED PDF FILE(S) (2 pages) |
\\TICRS\EXPORT17\IMAGEOUT17\882\644\88264452\xml4\ROA0003.JPG |
| \\TICRS\EXPORT17\IMAGEOUT17\882\644\88264452\xml4\ROA0004.JPG | |
| ORIGINAL PDF FILE | evi_12813679200-20190628140727997202_._Exhibit_B_-_Rosa_Mystica_77640946.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT17\IMAGEOUT17\882\644\88264452\xml4\ROA0005.JPG |
| DESCRIPTION OF EVIDENCE FILE | Exhibit A - advertising used by Applicant, Exhibit B - copies of registration certificates for existing registrations containing MYSTICAL, and Exhibit C - evidence (screenshots and digital photos) of existing uses of MYSTICAL in commerce |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /Lani Barnes Baxter/ |
| SIGNATORY'S NAME | Lani Barnes Baxter |
| SIGNATORY'S POSITION | Attorney of record, NC bar member |
| SIGNATORY'S PHONE NUMBER | 704-377-8105 |
| DATE SIGNED | 06/28/2019 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Jun 28 14:47:27 EDT 2019 |
| TEAS STAMP | USPTO/ROA-XXX.XXX.XX.XXX- 20190628144727674647-8826 4452-62079668cc20e5954e5c 5f2531865b3e0a1c6512a32be 8f98caddf1b41ebdc9-N/A-N/ A-20190628140727997202 |
| Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number. PTO Form 1957 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
The Examining Attorney has refused registration of the Applicant’s mark MYSTICAL MONKEY pursuant to Trademark Act Section 2(d), 15 U.S.C. § 1052(d), on the grounds that Applicant’s mark is likely to be confused with the mark in Registration No. 4,935,840 (“Cited Registration”). For the following reasons, the Applicant respectfully disagrees with the findings and requests that the Examining Attorney reconsider the refusal and allow registration of the Applicant’s mark.
The test for likelihood of confusion is whether a ‘reasonably prudent consumer’ in the marketplace is likely to be confused as to the origin of the good or service bearing one of the marks. In re E.I. DuPont de Nemours and Co., 177 U.S.P.Q. 563 (C.C.P.A 1973). Under Dupont, the marks are compared for similarity or dissimilarity in their entireties as to appearance, sound, connotation and commercial impression. However, marks may contain elements in common and still not create confusion if either: (1) the matter common to the marks is not likely to be perceived by purchasers as distinguishing source because it is merely descriptive or diluted, or (2) the marks in their entireties convey significantly different commercial impressions. See, e.g., Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (RITZ and THE RITZ KIDS create different commercial impressions); In re Farm Fresh Catfish Co., 231 USPQ 495 (TTAB 1986) (CATFISH BOBBERS (with "CATFISH" disclaimed) for fish held not likely to be confused with BOBBER for restaurant services); In re Shawnee Milling Co., 225 USPQ 747 (TTAB 1985) (GOLDEN CRUST for flour held not likely to be confused with ADOLPH'S GOLD'N CRUST and design (with "GOLD'N CRUST" disclaimed) for coating and seasoning for food items); In re S.D. Fabrics, Inc., 223 USPQ 54 (TTAB 1984).
In this case, when comparing the marks in their entirety, Applicant’s mark conveys a significantly different meaning and commercial impression. While both marks contain the common term MYSTICAL, “Mystical” in each mark is used to describe completely differently subjects and thus the marks present a substantially different commercial impression. Specifically, in the Cited Registration, “Mystical” is used as an adjective to describe the goods, i.e. the stout beer is mystical in nature. However, in the Applicant’s mark, “Mystical” is used to describe a fictitious monkey character. This distinction is clear when the mark is viewed in its entirety and emphasized in Applicant’s use. For example, Applicant uses the mark as a source identifier of a combination variety pack of MONKEY branded beers, which include its GOLDEN MONKEY® (which has been in the marketplace since 1999), SOUR MONKEY® and TWISTED MONEKY (see advertising attached as Exhibit A). Because the commercial impression of the marks suggest completely difference subjects (a mystical beer v. a mystical monkey), potential consumers would not likely mistakenly believe that the goods originate from the same source.
This distinction should also be considered when looking at the dominate portion of the mark. The Examiner asserts that the marks are similar because the suffix “Mystical” is the dominant and distinctive term in both marks, however, Applicant disagrees. Although “Mystical” may be the dominant term in the Cited Registration because “Stout” is disclaimed, no such disclaimer is required in Applicant’s mark because “Monkey” is not descriptive of the goods. In fact, as noted above, Applicant would argue that “Monkey” is the dominant element of their mark because “Mystical” in the mark as a whole describes the second word “Monkey”, and thus the marks do not present the same commercial impression.
Moreover, any possibility of confusion is reduced even further when the common element between the marks is weak. It is further established that where the common element of conflicting marks is "weak" in the sense that such portion is descriptive, highly suggestive, or is in common use by many sellers in the market, then this reduces the likelihood of confusion. See Clark Equip. Co. v. Baker-Lull Corp., 288 F.2d 926, 129 USPQ 220 (CCPA 1961) (no confusion between YARDLOADER and CARLOADER or YARDLIFT on forklift trucks); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed.Cir.1986) (no likelihood of confusion between BED AND BREAKFAST REGISTRY and BED AND BREAKFAST INTERNATIONAL, because the common part was the weak and descriptive phrase "bed and breakfast"). The mere fact that two marks incorporate a form of a common identifying word does not render the marks too similar. See, e.g., Freedom Sav. & Loan Ass'n, 757 F.2d at 1183 ("Freedom Savings and Loan" and "Freedom Realty" marks "lack ... confusing similarity"); Sun Banks of Florida, Inc. v. Sun Federal Sav. and Loan Ass'n , 651 F.2d 311, 316 ("Sun Federal and Savings Loan Association" not confusingly similar to "Sun Banks"); Amstar, 615 F.2d at 260 ("Domino's Pizza" not similar to "Domino sugar"); Bell Laboratories, Inc. v. Colonial Prods., Inc., 644 F. Supp. 542, 547 (S.D.Fla.1986) ("Final flip" and "Flip" marks for same product are "ultimately different and different sounding"); In re Hearst Corp., 982 F.2d 493, 494 (Fed.Cir.1992) ("Varga girl" and "Vargas" are "sufficiently different in sound, appearance, connotation, and commercial impression, to negate likelihood of confusion"); Mr. Hero Sandwich Sys., Inc. v. Roman Meal Co., 781 F.2d 884, 888 (Fed.Cir.1986) ("Romanburger" and "Roman" marks for food products "are not similar in appearance"); Little Caesar Enterprises, 834 F.2d 568, 571 ("Pizza Caesar U.S.A." not similar to "Little Caesar's"); Conde Nast Pubs., Inc. v. Miss. Quality, Inc., 507 F.2d 1404, 1407 (CCPA 1975) ("Country Vogues"and "Vogue" publications "do not look or sound alike"); Pacquin-Lester Co. v. Charmaceuticals, Inc., 484 F.2d 1384 (CCPA 1973) ("Silk 'n' Satin" beauty and bath lotion and oil not similar to "Silk" face cream). Ultimately whether an addition is sufficient to prevent confusion in a particular instance depends upon the strength of the main part of the mark and the distinctiveness of the additional feature. Bell Laboratories, supra, at 548.
In this case, the word “MYSTICAL”, common between both marks, is diluted as it applies in connection with alcoholic beverages and services. Dilution of a common element can be shown by the existence of third- party registrations, or by evidence of actual use. AMF v. American League Products, Inc., 474 F.2d 1403, 1406, 177USPQ 268, 269-7-(CCPA 1973). There are at least two other concurrent registrations that contain the common term “MYSTICAL” or some foreign equivalent: ALMA MISTICA (English translation “MYSTICAL SOUL”) and ROSA MYTISCA (English translation “ROSA MYSTICA” (copies of registration certificates are attached as Exhibit B). Additionally, the consuming public is exposed to numerous actual uses of marks that incorporate the term MYSTICAL in connection with alcoholic beverages, including MYSTICAL JACK, MYSTICAL FOREST, MYSTICAL DRAGON CIDER, MYSTIC WINES, ROSA MISTICA, HOPTIMYSTICAL, MYSTICAL SPIRITS WINE & LIQUOR, MYSTICAL POWER STATION and NEPTUNE THE MYSTIC-MYSTICAL STOUT (Exhibit C). The existence and exposure of consumers to such third-party uses of similar marks on similar goods "is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection." Because of this exposure, potential customers would not expect the common word to distinguish one such alcoholic beverage or service from another but would look to any other words in the name as the distinguishing feature or source indicator.
Where the common element is considered a weak mark, minor alterations could effectively negate any confusingly similarity between the two. Freedom Sav. & Loan Ass'n, 757 F.2d 1176, 1183 (C.A.11 Fla.1985). In this case, the remaining non-common portion of Applicant’s mark is nothing like the Cited Registration in terms of appearance or sound because MONKEY and STOUT look and sound different. Furthermore, the meaning of the non-common portions of the marks are very different. “Monkey” suggests a medium sized primate, whereas Stout is a dark beer. Case law is replete with analogous instances where differences in the remaining portions of the marks were much less significant and no likelihood of confusion found. See, e.g., Keebler Co. v. Murray Bakery Prods., 866 F.2d 1386, 1390 (Fed. Cir. 1989)(PECAN SANDIES and PECAN SHORTEES both for cookies do not convey similar commercial impressions); In re Bed & Breakfast Registry, 791 F.2d 157, 159 (Fed. Cir. 1986) (BED & BREAKFAST REGISTRY and BED & BREAKFAST INTERNATIONAL for closely related services held not confusingly similar where words "Registry" and "International" do not have the same meaning); EZ Loader Boat Trailers, Inc. v. Cox Trailers, Inc., 706 F.2d 1213 (Fed. Cir. 1983)(significance of the term "loader" in relation to the parties' goods relied upon in holding that contemporaneous use of EZ LOADER and SUPER LOADER not likely to cause confusion).
Conclusion
Because the marks in their entirety convey significantly different commercial impressions and the common elements between the marks are diluted, consumers are not likely to confuse the source of Applicant’s mark and the Cited Registration. Therefore, Applicant respectfully requests that the Examining Attorney reconsider the statutory refusal and allow Applicant’s mark to proceed to publication.
