UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88293248
MARK: PARADISO
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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: Divine Distillers, Inc.
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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: 4/19/2019
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 and/or services. 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.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the marks in U.S. Registration Nos. 2119088 and 4713331. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registrations.
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 and/or services. 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.
CONFUSION BASED ON REGISTRATION NO. 2119088
The proposed mark is PARADISO in standard characters for:
IC 033: Distilled spirits
The registered mark is PARADISO in typed form for:
IC 033: tequila
Tequila is a distilled spirit. Tequila is defined as: n. An alcoholic liquor distilled from the fermented sap of the blue agave. “tequila” The American Heritage® Dictionary of the English Language, Fifth Edition (2019) http://www.ahdictionary.com Retrieved April 19, 2019. See attachment.
In this case, the application uses broad wording to describe “distilled spirits”, which presumably encompasses all goods of the type described, including registrant’s more narrow “tequila”. 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)). Thus, applicant’s and registrant’s goods and/or services are related.
The applicant’s website shows that the applicant provides brandy and rum. http://divinedistillers.com Retrieved April 19, 2019. The applicant’s brandy and rum are related the registrant’s tequila they are distilled alcoholic beverages that commonly come from the same source.
The examining attorney refers to the attached excerpts from the attached excerpts from the following websites showing spirits such as brandy or wine commonly come from the same source as tequila. These excerpts are attached as a representative sample.
http://www.bacardilimited.com Retrieved April 19, 2019. See attachments.
http://haas-brothers.com Retrieved April 19, 2019. See attachments.
http://www.phillipsdistilling.com Retrieved April 19, 2019. See attachments.
http://www.tatteredflagbsw.com Retrieved April 19, 2019. See attachments.
http://greenbardistillery.com Retrieved April 19, 2019. See attachments.
http://coloradospiritstrail.com Retrieved April 19, 2019. See attachments.
Consumers who encounter the parties’ identical marks used on their related goods are likely to be confused about the source of the goods.
CONFUSION BASED ON REGISTRATION NO. 4713331
The proposed mark is PARADISO in standard characters for:
IC 033: Distilled spirits
The registered mark is PARADISO in standard characters for:
IC 033: Wine; Wines
The marks are identical. Where the marks of the respective parties are identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
The parties provide related alcoholic beverages. The applicant’s website shows that the applicant provides brandy and rum. http://divinedistillers.com Retrieved April 19, 2019. The examining attorney refers to the attached excerpts from the following websites showing distilled spirits, including brandy or rum, and wine coming from the same source.
http://bierdistillery.com Retrieved April 19, 2019. See attachments.
http://fairgamebeverage.com Retrieved April 19, 2019. See attachments.
http://www.gervasivineyard.com Retrieved April 19, 2019. See attachments.
http://bestvineyardswinery.com Retrieved April 19, 2019. See attachments.
http://treespiritsofmaine.com Retrieved April 19, 2019. See attachments.
http://www.crwine.com Retrieved April 19, 2019. See attachments.
http://sweetgrasswinery.com Retrieved April 19, 2019. See attachments.
Consumers who encounter the parties’ identical marks used on their related goods are likely to be confused about the source of the goods.
Although applicant’s mark has been refused registration, applicant may respond to the refusal(s) by submitting evidence and arguments in support of registration.
TRANSLATION
/Ellen Awrich/
Trademark Examining Attorney
Law Office 116
571-272-9123
ellen.awrich@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.