To: | Alexandria Nicole Cellars LLC (jah@consumerpractice.com) |
Subject: | U.S. Trademark Application Serial No. 88349496 - PURPLE REIGN - N/A |
Sent: | December 05, 2019 12:10:29 PM |
Sent As: | ecom128@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88349496
Mark: PURPLE REIGN
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Correspondence Address:
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Applicant: Alexandria Nicole Cellars LLC
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Reference/Docket No. N/A
Correspondence Email Address: |
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FINAL OFFICE ACTION
The USPTO must receive applicant’s response to this letter within six months of the issue date below or the application will be abandoned. Respond using the Trademark Electronic Application System (TEAS) and/or Electronic System for Trademark Trials and Appeals (ESTTA). A link to the appropriate TEAS response form and/or to ESTTA for an appeal appears at the end of this Office action.
Issue date: December 05, 2019
In a previous Office action dated June 6, 2019 (the “Previous Office Action”), the trademark examining attorney refused registration of the applied-for mark based on the following: 2(d) – likelihood of confusion.
Based on applicant’s response, the trademark examining attorney maintains and now makes FINAL the refusal in the summary of issues below. See 37 C.F.R. §2.63(b); TMEP §714.04.
SUMMARY OF ISSUES MADE FINAL that applicant must address:
2(d) Refusal – Likelihood of Confusion
Registration of the applied-for mark is refused in the Previous Office Action because of a likelihood of confusion with the mark in U.S. Registration No. 88349496. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the registration attached to the Previous Office Action.
The applicant applied for the mark “PURPLE REIGN” in standard characters for “Wines” in International Class 033.
The registrant’s mark is “REIGN” for “[Champagne; Sparkling wines;] Wine” in International Class 033.
Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties. See 15 U.S.C. §1052(d). Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”). In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017). Only those factors that are “relevant and of record” need be considered. M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018).
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.
Similarity of the Marks
The applicant applied for the mark “PURPLE REIGN” and the registrant’s mark is “REIGN.”
Marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); TMEP §1207.01(b)-(b)(v). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).
Here, the compared mark share the wording “REIGN” and are thus identical in part. The applicant argues that the shared wording has different commercial impression for each mark because the registration uses the wording within its “most common interpretation of … the political power or time of exercising it of a king, queen or monarch, or to be predominant or prevalent in influence or stature.” Applicant further argues that the applicant’s use is a double entendre play on the Prince song “Purple Reign” and that the public could discern the applicant’s use of the wording “REIGN” as separate and distinct from any other usage. However, the attached internet evidence from usatoday.com, macdonaldhighlands.com, and livescience.com show that the color purple is historically associated with royalty and the general public is accustomed to seeing the term “PURPLE REIGN” in relation products and discussions related to royalty and political power. Therefore, the applicant’s intended use as a double entendre does not change the meaning of the wording “REIGN” and this wording creates the same commercial impression in the compared marks.
Based on the foregoing, the marks are confusingly similar.
Comparison of the Goods
In addition to the marks being confusingly similar, the goods in this comparison are identical.
In this case, the goods in the application and registration are identical. Therefore, it is presumed that the channels of trade and class(es) of purchasers are the same for these goods. See Cai v. Diamond Hong, Inc., __ F.3d __, 27 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). Thus, applicant’s and registrant’s goods are related.
The applicant argued in the Response that the compared goods travel in different channels of trade and that the relevant purchasers are sophisticated such that there is likely to be no confusion regarding the source of the compared goods. Additionally, the applicant argues that the registered mark is diluted and that the applicant made prior use of the term. The examining attorney is not persuaded by these arguments for the reasons provided below.
Channels of Trade
Applicant argues that its activities are geographically separate from those of registrant; however, applicant seeks a geographically unrestricted registration. The owner of a registration without specified limitations enjoys a presumption of exclusive right to nationwide use of the registered mark under Trademark Act Section 7(b), 15 U.S.C. §1057(b), regardless of its actual extent of use. Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1568, 218 USPQ 390, 393 (Fed. Cir. 1983). Therefore, the geographical extent of applicant’s and registrant’s activities is not relevant to a likelihood of confusion determination.
Therefore, the presumption stands that the identical goods travel in the same channels of trade because the applicant failed to limit the channel of trade in the application or produce evidence to rebut this presumption.
Sophisticated Purchasers
The fact that purchasers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see, e.g., Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. 1317, 1325, 110 USPQ2d 1157, 1163-64 (Fed. Cir. 2014); Top Tobacco LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). Further, where the purchasers consist of both professionals and the public, the standard of care for purchasing the goods is that of the least sophisticated potential purchaser. In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d. at 1325, 110 USPQ2d at 1163).
Here, the purchasers of the applicant’s goods are wine connoisseurs and the general public. As such, the standard of care is that of the least sophisticated potential purchaser of wine which would be the consumer who has no knowledge of wine past the fact that it is an alcoholic beverage. Thus, the relevant purchaser would not “choose a wine based on region, type, or pairing with food and are informed enough to distinguish between different vineyards, vintages, and origins of products.”
Therefore, the level of sophistication of applicant’s and registrant’s purchasers is not relevant to a likelihood of confusion determination.
Dilution
The weakness or dilution of a particular mark is generally determined in the context of the number and nature of similar marks in use in the marketplace in connection with similar goods and/or services. See Nat’l Cable Tel. Ass’n, Inc. v. Am. Cinema Editors, Inc., 937 F.2d 1572, 1579-80, 19 USPQ2d 1424, 1430 (Fed. Cir. 1991); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Evidence of widespread third-party use of similar marks with similar goods and/or services “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection” in that particular industry or field. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005); see In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1062-63 (Fed. Cir. 2003).
In this case, the matter common to the marks is not diluted because there are not a large number of similar marks in use in the marketplace in connection with wines. In fact, the cited registration is the only similar mark in use for wine. Further, the applicant has not submitted printed or electronic copies of third-party registrations for marks containing the wording “REIGN” to support the argument that this wording is weak, diluted, or so widely used that it should not be afforded a broad scope of protection. Thus, the applicant has failed to establish that the wording “REIGN” is weak or diluted.
Prior Use
Applicant’s claim of priority of use is not relevant to this ex parte proceeding. See In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (C.C.P.A. 1971). Trademark Act Section 7(b), 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register is prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce on or in connection with the goods and/or services specified in the certificate. During ex parte prosecution, the trademark examining attorney has no authority to review or to decide on matters that constitute a collateral attack on the cited registration. TMEP §1207.01(d)(iv).
Considering all of the above, the refusal under Section 2(d) of the Trademark Act is hereby made FINAL.
Please call or email the assigned trademark examining attorney with questions about this Office action. Although the trademark examining attorney cannot provide legal advice or statements about applicant’s rights, the trademark examining attorney can provide applicant with additional explanation about the refusal(s) and/or requirement(s) in this Office action. See TMEP §§705.02, 709.06. Although the USPTO does not accept emails as responses to Office actions, emails can be used for informal communications and will be included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
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.
How to respond. Click to file a request for reconsideration of this final Office action that fully resolves all outstanding requirements and refusals and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).
/Ojeyemi, Ashley/
Examining Attorney
Law Office 128
(571)270-3399
ashley.ojeyemi@uspto.gov
RESPONSE GUIDANCE