| 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 | 88272396 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION | |
| MARK | mark |
| LITERAL ELEMENT | MY WINE |
| 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. |
| OWNER SECTION (current) | |
| NAME | Norpexal Holding SA |
| MAILING ADDRESS | Turmstrasse 28 |
| CITY | Steinhausen |
| ZIP/POSTAL CODE | 6312 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | Switzerland |
| OWNER SECTION (proposed) | |
| NAME | Norpexal Holding SA |
| MAILING ADDRESS | Turmstrasse 28 |
| CITY | Steinhausen |
| ZIP/POSTAL CODE | 6312 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | Switzerland |
| XXXX | |
| ARGUMENT(S) | |
|
In the aforesaid Office Action, a refusal of registration under Section 2(d) has been maintained based upon an asserted likelihood of confusion for Trademark Registration Nos. 5297606, 5297607, 5302646 and 5454167 for the mark WHAT’S MY WINE, owned by What’s My Wine, Inc. and an additional refusal has been made based upon Trademark Registration 5973715 for the mark MY WINE GUIDE owned by MWG LLC. In analyzing the potential likelihood of confusion, the Examining Attorney cites to the du Pont case and TMEP 1207.01(b), but then has focused on only two relevant factors, specifically similarity of the marks and similarity of the goods and services on which the marks are used. The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that merely descriptive and weak designations may be entitled to a narrower scope of protection than an entirely arbitrary or coined word. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-39, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1026 (TTAB 2009) ; In re Box Solutions Corp., 79 USPQ2d 1953, 1957-58 (TTAB 2006); In re Cent. Soya Co., 220 USPQ 914, 916 (TTAB 1984). The marks of the cited registrations are weak designations. The first mark of the cited registrations is WHAT'S MY WINE. In the cited registrations, the term WINE is disclaimed. Further, the goods/services of these registrations are all focused on helping a consumer select a wine. Clearly this mark is a weak designation, and therefore is entitled to a narrower scope of protection than an entirely arbitrary or coined word. Also, this point must be given consideration in a proper analysis of likelihood of confusion. The distinctiveness of the WHAT'S MY WINE registrations is in the positioning of the leading term "WHAT'S". This significant and impactful portion of the mark of the cited registration is absent from the mark of the pending application. An analysis of the first du Pont factor, similarity of the marks, when made in light of the strength or lack thereof of the cited mark, clearly favors the applicant. In the Office action, it has been suggested that "applicant's mark is identical in dominant part to the already registered mark". This is only true if one considers the disclaimed term "WINE" to be the dominant part. It is submitted, however, that it would be an unfair restraint on fair competition to preclude others from using the term WINE in connection with goods and services such as those of the present application. Even considering the asserted close relationship between the goods and services of the present application as compared to those of the cited registrations, it is submitted that the lack of similarity of the marks is the controlling factor, and that the conclusion is no likelihood of confusion. Turning to the MY WINE GUIDE registration, the analysis and argument supporting registration is much the same as that provided above in responding to the first ground for refusal. In this cited registration, the terms "WINE GUIDE" are disclaimed, and the mark is clearly highly suggestive or descriptive of the registered goods/services relating to an app for consumers who would like help selecting wine. In other words, the goods are the consumer's personal wine guide. Certainly this mark also is entitled to a narrower scope of protection given the complete absence of any arbitrary terminology in the mark, and the highly suggestive nature of the mark overall. Against this narrow scope of protection, there is also a key distinction between the two marks, the term GUIDE gives the mark a completely different appearance and connotation. A consumer seeing MY WINE in one instance and MY WINE GUIDE in another, both in connection with wine related goods/services, would not assume that the shorter version of the mark is merely a shortened version of the registered mark. Inclusion of the term GUIDE gives the mark a clear meaning of guidance for the consumer that is not present in the applied for mark. This more of a distinction than a mere shortened version of the cited mark. The only non-disclaimed overlap between the applied for mark and the cited mark is the term MY. This is an insufficient overlap to support a finding of likelihood of confusion, and thus this factor, in this ground of refusal, also is in favor of the applicant. Further, here as with the above refusal, the asserted relationship of the goods/service of the cited registration and the application are not sufficient to outweigh the conclusion drawn from the lack of similarity of the marks. Based upon the foregoing, it is submitted that: (1) the issues regarding a requested disclaimer and identification of goods were resolved in the response of June 18, 2019; (2) there is no likelihood of confusion as between the mark of the present application and the cited WHAT’S MY WINE trademarks; (3) there is no likelihood of confusion as between the mark of the present application and the cited MY WINE GUIDE trademark; and (4) the mark of the present application is entitled to registration. It is submitted that the analysis with respect to similarity of the marks does not take into consideration the completely different commercial impression made by the cited registrations as well as the cited application, as compared to the present application. In addition, the analysis completely avoids another factor which appears to be critical in this analysis, namely, the strength of the senior mark. Starting first with the factor related to strength of the senior mark, it does appear that the cited registrations and application, having an earlier apparent filing date, would be considered the senior mark. In the case of the registrations as well as the pending application, the term WINE has been disclaimed, and the remaining wording of the mark can only be seen as being descriptive, or at the least very mildly suggestive. In addition, it is noted that the cited registrations and pending application are owned by different entities, and these two entities co-existing in the market with trademarks that both include the terminology “MY WINE” establishes that the marks in question are not particularly strong. Considering the disclaimers in all cited registrations and application of the term “WINE” or “WINE GUIDE”, the dilution in the market place by the terms MY and WINE being prominently present in trademarks utilized by different sources, and the overall descriptive nature of the marks in consideration of the fact that the trademarks include the terms “MY WINE” and the goods and services are all related to wine. Considering all above factors, and considering that the cited registrations and pending application already co-exist in the marketplace, it is respectfully submitted that there is no likelihood of confusion as between the mark of the present application and the mark of the earlier registrations and application. Withdrawal of the refusal under Section 2(d) is therefore respectfully requested. |
|
| ATTORNEY INFORMATION (current) | |
| NAME | George A. Coury |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | BACHMAN & LAPOINTE, P.C. |
| INTERNAL ADDRESS | SUITE 1201 |
| STREET | 900 CHAPEL STREET |
| CITY | NEW HAVEN |
| STATE | Connecticut |
| POSTAL CODE | 06510 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 203-777-6628 x113 |
| FAX | 203-865-0297 |
| docket@bachlap.com | |
| DOCKET/REFERENCE NUMBER | 19-108T |
| ATTORNEY INFORMATION (proposed) | |
| NAME | George A. Coury |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | BACHMAN & LAPOINTE, P.C. |
| INTERNAL ADDRESS | SUITE 1201 |
| STREET | 900 CHAPEL STREET |
| CITY | NEW HAVEN |
| STATE | Connecticut |
| POSTAL CODE | 06510 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 203-777-6628 x113 |
| FAX | 203-865-0297 |
| docket@bachlap.com | |
| DOCKET/REFERENCE NUMBER | 19-108T |
| OTHER APPOINTED ATTORNEY | William B. Slate; Andrew D. Gathy |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | GEORGE A. COURY |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | docket@bachlap.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| DOCKET/REFERENCE NUMBER | 19-108T |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | George A. Coury |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | docket@bachlap.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| DOCKET/REFERENCE NUMBER | 19-108T |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /George A. Coury/ |
| SIGNATORY'S NAME | George A. Coury |
| SIGNATORY'S POSITION | Attorney of record, CT bar member |
| SIGNATORY'S PHONE NUMBER | 203-777-6628 |
| DATE SIGNED | 06/26/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Fri Jun 26 08:45:41 ET 2020 |
| TEAS STAMP | USPTO/ROA-XX.XXX.XXX.XXX- 20200626084541393381-8827 2396-7104c10e5ebc295c5f6f 7bf3d216750f3b0c0259ec978 c9f0e424e893c7fdc449-N/A- N/A-20200626084238431263 |
| 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) |
In the aforesaid Office Action, a refusal of registration under Section 2(d) has been maintained based upon an asserted likelihood of confusion for Trademark Registration Nos. 5297606, 5297607, 5302646 and 5454167 for the mark WHAT’S MY WINE, owned by What’s My Wine, Inc. and an additional refusal has been made based upon Trademark Registration 5973715 for the mark MY WINE GUIDE owned by MWG LLC.
In analyzing the potential likelihood of confusion, the Examining Attorney cites to the du Pont case and TMEP 1207.01(b), but then has focused on only two relevant factors, specifically similarity of the marks and similarity of the goods and services on which the marks are used.
The Court of Appeals for the Federal Circuit and the Trademark Trial and Appeal Board have recognized that merely descriptive and weak designations may be entitled to a narrower scope of protection than an entirely arbitrary or coined word. See Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-39, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1026 (TTAB 2009) ; In re Box Solutions Corp., 79 USPQ2d 1953, 1957-58 (TTAB 2006); In re Cent. Soya Co., 220 USPQ 914, 916 (TTAB 1984).
The marks of the cited registrations are weak designations. The first mark of the cited registrations is WHAT'S MY WINE. In the cited registrations, the term WINE is disclaimed. Further, the goods/services of these registrations are all focused on helping a consumer select a wine. Clearly this mark is a weak designation, and therefore is entitled to a narrower scope of protection than an entirely arbitrary or coined word. Also, this point must be given consideration in a proper analysis of likelihood of confusion.
The distinctiveness of the WHAT'S MY WINE registrations is in the positioning of the leading term "WHAT'S". This significant and impactful portion of the mark of the cited registration is absent from the mark of the pending application.
An analysis of the first du Pont factor, similarity of the marks, when made in light of the strength or lack thereof of the cited mark, clearly favors the applicant.
In the Office action, it has been suggested that "applicant's mark is identical in dominant part to the already registered mark". This is only true if one considers the disclaimed term "WINE" to be the dominant part. It is submitted, however, that it would be an unfair restraint on fair competition to preclude others from using the term WINE in connection with goods and services such as those of the present application.
Even considering the asserted close relationship between the goods and services of the present application as compared to those of the cited registrations, it is submitted that the lack of similarity of the marks is the controlling factor, and that the conclusion is no likelihood of confusion.
Turning to the MY WINE GUIDE registration, the analysis and argument supporting registration is much the same as that provided above in responding to the first ground for refusal. In this cited registration, the terms "WINE GUIDE" are disclaimed, and the mark is clearly highly suggestive or descriptive of the registered goods/services relating to an app for consumers who would like help selecting wine. In other words, the goods are the consumer's personal wine guide. Certainly this mark also is entitled to a narrower scope of protection given the complete absence of any arbitrary terminology in the mark, and the highly suggestive nature of the mark overall.
Against this narrow scope of protection, there is also a key distinction between the two marks, the term GUIDE gives the mark a completely different appearance and connotation. A consumer seeing MY WINE in one instance and MY WINE GUIDE in another, both in connection with wine related goods/services, would not assume that the shorter version of the mark is merely a shortened version of the registered mark. Inclusion of the term GUIDE gives the mark a clear meaning of guidance for the consumer that is not present in the applied for mark. This more of a distinction than a mere shortened version of the cited mark.
The only non-disclaimed overlap between the applied for mark and the cited mark is the term MY. This is an insufficient overlap to support a finding of likelihood of confusion, and thus this factor, in this ground of refusal, also is in favor of the applicant.
Further, here as with the above refusal, the asserted relationship of the goods/service of the cited registration and the application are not sufficient to outweigh the conclusion drawn from the lack of similarity of the marks.
Based upon the foregoing, it is submitted that:
(1) the issues regarding a requested disclaimer and identification of goods were resolved in the response of June 18, 2019;
(2) there is no likelihood of confusion as between the mark of the present application and the cited WHAT’S MY WINE trademarks;
(3) there is no likelihood of confusion as between the mark of the present application and the cited MY WINE GUIDE trademark; and
(4) the mark of the present application is entitled to registration.
It is submitted that the analysis with respect to similarity of the marks does not take into consideration the completely different commercial impression made by the cited registrations as well as the cited application, as compared to the present application. In addition, the analysis completely avoids another factor which appears to be critical in this analysis, namely, the strength of the senior mark.
Starting first with the factor related to strength of the senior mark, it does appear that the cited registrations and application, having an earlier apparent filing date, would be considered the senior mark. In the case of the registrations as well as the pending application, the term WINE has been disclaimed, and the remaining wording of the mark can only be seen as being descriptive, or at the least very mildly suggestive.
In addition, it is noted that the cited registrations and pending application are owned by different entities, and these two entities co-existing in the market with trademarks that both include the terminology “MY WINE” establishes that the marks in question are not particularly strong. Considering the disclaimers in all cited registrations and application of the term “WINE” or “WINE GUIDE”, the dilution in the market place by the terms MY and WINE being prominently present in trademarks utilized by different sources, and the overall descriptive nature of the marks in consideration of the fact that the trademarks include the terms “MY WINE” and the goods and services are all related to wine.
Considering all above factors, and considering that the cited registrations and pending application already co-exist in the marketplace, it is respectfully submitted that there is no likelihood of confusion as between the mark of the present application and the mark of the earlier registrations and application. Withdrawal of the refusal under Section 2(d) is therefore respectfully requested.