To: | 1220 Spirits, LLC (iptm@armstrongteasdale.com) |
Subject: | U.S. TRADEMARK APPLICATION NO. 88307474 - FLORA - 38055-4 |
Sent: | 4/30/2019 4:55:34 PM |
Sent As: | ECOM105@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 |
UNITED STATES PATENT AND TRADEMARK OFFICE (USPTO)
OFFICE ACTION (OFFICIAL LETTER) ABOUT APPLICANT’S TRADEMARK APPLICATION
U.S. APPLICATION SERIAL NO. 88307474
MARK: FLORA
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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: 1220 Spirits, LLC
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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: 4/30/2019
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issues below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
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. 5276216 (the “Vina Mark”), 4873647 (the “Fonta Mark”), 4641075 (the “Vineyards Mark”), 5558067 (the “Badet Mark”), and 2709565 (the “Springs Mark”). 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. 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.
Comparison of Marks
In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression. In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017).
In the present case, applicant has applied for the mark FLORA. The Vina Mark is RUBEN & FLORA. The Fonta Mark is FONTA FLORA BREWERY. The Vineyards Mark is NATIVE FLORA. The Badet Mark is VILLA FLORA. The Springs Mark is FLORA SPRINGS.
Applicant’s mark is entirely incorporated within the registered marks. Indeed, applicant’s mark and the registered marks each prominently feature the word FLORA, and applicant adds no further wording to this shared term. Because of this, the marks as a whole are highly similar in sound and appearance. They also give off a highly similar commercial impression of the plants of a region.
Accordingly, the marks are similar for likelihood of confusion purposes.
Comparison of Goods
The goods are compared to determine whether they are similar, commercially related, or travel in the same trade channels. See Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369-71, 101 USPQ2d 1713, 1722-23 (Fed. Cir. 2012); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165, 64 USPQ2d 1375, 1381 (Fed. Cir. 2002); TMEP §§1207.01, 1207.01(a)(vi).
The compared goods need not be identical or even competitive to find a likelihood of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i). They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).
In the present case, applicant has applied for the mark for use in connection with:
Class 33: spirits and liqueurs; aperitifs
The Vina Mark is registered for use in connection with:
Class 33: Wine
The Fonta Mark is registered for use in connection with:
Class 32: Beer; Soda pops
The Vineyards Mark is registered for use in connection with:
Class 33: Grape wine; Natural sparkling wines; Red wine; Rose wine; Sparkling grape wine; Sparkling wines; Still wines; White wine; Wine; Wines; Wines and sparkling wines
The Badet Mark is registered for use in connection with:
Class 33: Alcoholic beverages except beers; wines
The Springs Mark is registered for use in connection with:
Class 33: Wines
Unrestricted and broad identifications are presumed to encompass all goods of the type described. See, e.g., Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015). The Badet Mark registrant broadly identifies alcoholic beverages in a manner that encompasses the goods listed by applicant, so these goods are essentially identical. The attached internet evidence from Charbay, Fiore, Real Ale, Five and 20, and Nashoba shows that the same source that offers spirits and other goods like the goods identified by applicant commonly also offers wine, beer, and other goods like the goods specified by registrants under the same mark. http://charbay.com/vodka/; http://www.charbaywinery.com/about; http://www.fiorewinery.com/shop/; http://nashobawinery.com/tastings-tours/; http://nashobadistillery.com/; http://www.fiveand20.com/our-story/; http://realalebrewing.com/spirits-old/process/?age-verified=9dfbde1b88; http://realalebrewing.com/brewery/our-story/; http://realalebrewing.com/spirits-old/process/.
Applicant and registrants’ goods are commonly offered by the same source and under the same mark, so they are considered related for likelihood of confusion purposes.
Conclusion
Because applicant and registrants’ goods are related and the marks are similar, it is likely a potential consumer would be confused as to the source of the goods of applicant and registrants. Accordingly, the proposed mark creates a likelihood of confusion with registered marks, and registration is properly refused on the Principal Register under Section 2(d).
Applicant should note the following potential ground for refusal.
PRIOR-FILED APPLICATION
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the mark in the referenced application. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
ASSISTANCE
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.
Robert N. Guliano
/Robert N. Guliano/
Examining Attorney
Law Office 105
571-272-0174
robert.guliano@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.