Response to Office Action

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)

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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)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88284567 SPEECHLESS(Standard Characters, see http://uspto.report/TM/88284567/mark.png) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

Applicant seeks to register the mark SPEECHLESS for “wine”.

The Examining Attorney has refused registration under Section 2(d) of the Trademark Act, citing a prior registration of the mark SPEECHLESS, for “beer” (Registration No. 5246506).

As discussed below, beer and wine are not related goods such that any confusion would be likely to arise.

Similarity of the Goods

In ex parte prosecution, the burden is initially on the Patent and Trademark Office to put forth sufficient evidence to show that the mark for which registration is sought meets the criteria of unregistrability.  Consorzio del Prosciutto di Parma v. Parma Sausage Products, Inc., 23 U.S.P.Q.2d 1894, 1902 (T.T.A.B. 1992).  Thus, the burden is on the Examining Attorney to prove that beer and wine are related goods. In re T.F. & J.H. Braime Holdings Plc, 2015 TTAB LEXIS 504, *7-8 (T.T.A.B. 2015); In re Crosswalk, Inc., 2007 TTAB LEXIS 449, *26 (T.T.A.B. 2007).

Under the second DuPont factor, the similarity or dissimilarity of the parties’ goods are key considerations. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”); see also Oakville Hills Cellar, Inc. v. Georgallis Holdings, LLC, 826 F.3d 1376, 119 USPQ2d 1286, 1288 (Fed. Cir. 2016) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus . . . on dispositive factors, such as similarity of the marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 303 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). Our decision is based on the identification of goods as set forth in the application and Opposer’s pleaded registration. Stone Lion, 110 USPQ2d at 1162.

“There is no per se rule that holds that all alcoholic beverages are related.” In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009). Even though beer and wine have been found related in other cases, this application must be reviewed on its own facts and evidence.  The decisions cited by examiner are not to the contrary. In Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816 (TTAB 2015), the Board acknowledged that beer and wine certainly can be found to be related, but noted that “each case must be decided on its own record.” Id. at 1827.

Likelihood of confusion is a question of law based on underlying findings of fact. E.g., Oakville Hills Cellar, 119 USPQ2d at 1288. Under DuPont, it is examiner's burden to prove that beer and wine are similar or related goods. This is a separate, and critical, inquiry in a likelihood of confusion analysis, distinct from the DuPont factors assessing similarity of trade channels and classes of consumers.

Here, in contrast, there is no evidence supporting a conclusion that beer and wine are sufficiently related that consumers expect them to emanate from the same source under the same mark. 

Several cases have held that beer and wine are not related.  See Justin Vineyards & Winery LLC v. Crooked Stave, LLC, 2018 TTAB LEXIS 340, *16-17 (T.T.A.B. 2018)(notably both marks are now registered for beer and wine); In re White Rock Distilleries, Inc., 92 U.S.P.Q.2d 1282, 1285 (T.T.A.B. 2009). The Board and its reviewing courts have also declined to find a likelihood of confusion in cases involving similar marks applied to different alcoholic beverages. G.H. Mumm & Cie. v. Desnoes & Geddes Ltd., 16 U.S.P.Q.2d 1635 (Fed. Cir. 1990) (Red Stripe Design for wine and RED STRIPE & Red Stripe Design for beer); National Distillers and Chemical Corp., 184 U.S.P.Q. 34, 35 (C.C.P.A. 1974) (DUET prepared alcoholic cocktails and DUVET brandy); Patron Spirits International AG v. Conyngham Brewing Co., 2018 TTAB LEXIS 202 (T.T.A.B. 2018) (PIRATE PISS beer and PYRAT rum); In re Coors Brewing Co., 2002 TTAB LEXIS 497, *24-26 (T.T.A.B. 2002), reversed on other grounds 68 U.S.P.Q.2d 1059 (Fed. Cir. 2003) (BLUE MOON for beer and wine); Schenley Industries, Inc. v. Battistoni, 112 U.S.P.Q. 485 (T.T.A.B. 1957) (ROMEO vermouth and ROMA wine).

Applicant believes there is a lack of evidence supporting a finding that the cited mark's goods are related and the examiner has not carried the burden to show that Applicant’s mark is likely to cause consumer confusion when used in association with wine.

 

The applicant's current attorney information: CAROLINE BOLLER. CAROLINE BOLLER of TERRAVANT WINE COMPANY, LLC, is located at

      35 INDUSTRIAL WAY
      35 INDUSTRIAL WAY
      BUELLTON, California 93427
      US

The phone number is 805-686-9400 x270.

The email address is legal@terravant.com

The applicants proposed attorney information: CAROLINE BOLLER. CAROLINE BOLLER of TERRAVANT WINE COMPANY, LLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, is located at

      35 INDUSTRIAL WAY
      BUELLTON, California 93427
      United States

The phone number is 805-686-9400 x270.

The email address is Kurt@incip.com

CAROLINE BOLLER submitted the following statement: The attorney of record is an active member in good standing of the bar of the highest court of a U.S. state, the District of Columbia, or any U.S. Commonwealth or territory.
The applicant's current correspondence information: CAROLINE BOLLER. CAROLINE BOLLER of TERRAVANT WINE COMPANY, LLC, is located at

      35 INDUSTRIAL WAY
      35 INDUSTRIAL WAY
      BUELLTON, California 93427
      US

The phone number is 805-686-9400 x270.

The email address is legal@terravant.com

The applicants proposed correspondence information: CAROLINE BOLLER. CAROLINE BOLLER of Koenig & Associates, is located at

      35 INDUSTRIAL WAY
      BUELLTON, California 93427
      United States

The phone number is 805-686-9400 x270.

The email address is Kurt@incip.com

SIGNATURE(S)
Response Signature
Signature: /Kurt Koenig/     Date: 10/16/2019
Signatory's Name: Kurt Koenig
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 805-965-4400

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    CAROLINE BOLLER
   TERRAVANT WINE COMPANY, LLC
   35 INDUSTRIAL WAY
   35 INDUSTRIAL WAY
   BUELLTON, California 93427
Mailing Address:    CAROLINE BOLLER
   Koenig & Associates
   35 INDUSTRIAL WAY
   BUELLTON, California 93427
        
Serial Number: 88284567
Internet Transmission Date: Wed Oct 16 22:07:28 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XXX.XXX.XXX-201910162207282
08056-88284567-61029b94f75a831858723c9c5
6112ca36c35ed8403093ba4c9b58b85f9c2e4d84
-N/A-N/A-20191016215605545476