| 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 1960 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88349496 |
| LAW OFFICE ASSIGNED | LAW OFFICE 128 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88349496/mark.png |
| LITERAL ELEMENT | PURPLE REIGN |
| 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 | Alexandria Nicole Cellars LLC |
| STREET | 2880 Lee Rd Suite D |
| CITY | Prosser |
| STATE | Washington |
| ZIP/POSTAL CODE | 99350 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| OWNER SECTION (proposed) | |
| NAME | Alexandria Nicole Cellars LLC |
| STREET | 2880 Lee Rd Suite D |
| CITY | Prosser |
| STATE | Washington |
| ZIP/POSTAL CODE | 99350 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| XXXX | |
| ARGUMENT(S) | |
|
The applicant respectfully requests reconsideration of the refusal to register the mark "Purple Reign".
The Office Action notes that dilution could be a factor in considering the scope of protection of a differently filed mark, in this case, "Reign".
Reign is not a term associated with any particular source of origin or well-known brand. A basic internet search on Google or other search engines of the term "reign wine" immediately pulls up
multiple entries of the use of the term "reign" and also even "purple reign" from multiple different producers of wine around the globe. Evidence of this is attached to this response.
As the Office Action notes, "the only exceptions are when (1) the matter common to the marks is merely descriptive or diluted, and not likely to be perceived by purchasers as distinguishing source, or (2) the compared marks in their entireties convey a significantly different commercial impression – neither of which is the case here.TMEP §1207.01(b)(iii); see, e.g., Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004). " In this instance, the term "reign" is merely descriptive or diluted, and does not distinguish source to any purchasers. The compared marks filed and not filed with the USPTO that exist in the marketplace when compared in their entirities convey different commercial impressions. As the Office Action also notes, "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 instance there is a number of similar and even identical marks in use in the marketplace with the same goods. There is widespread use by other parties other than applicant or the registered mark holder of not just similar marks, but the same mark, showing that the registered mark is relatively weak and entitled to only a narrow scope of protection, which in this instance Applicant argues should only be to deny a mark filed that is the exact same as the registered mark. Otherwise, the registered mark is interpreted too broadly to prevent fair use of a term with general application in the marketplace. Applicant has identified at least six (6) other users other than Applicant or the registered mark holder of the same or a similar mark using the term "reign" somehow in relation to their exact same good, wine. Additionally Applicant has provided evidence of the use of "purple reign" by wine journalists. There are many more examples of use or "reign" being used to refer to various aspects of winemaking on the internet and in the marketplace. In consideration of Applicant's prior arguments for registration, and this additional information, Applicant requests some relief from the USPTO for registration on either the principal or supplemental register, or any other protection for it's mark the USPTO may afford. |
|
| EVIDENCE SECTION | |
| EVIDENCE FILE NAME(S) | |
| ORIGINAL PDF FILE | evi_685611270-20200416153825215852_._ante_1966-2015__May_2018____Vinous_-_Explore_All_Things_Wine.pdf |
| CONVERTED PDF FILE(S) (5 pages) |
\\TICRS\EXPORT18\IMAGEOUT18\883\494\88349496\xml1\RFR0002.JPG |
| \\TICRS\EXPORT18\IMAGEOUT18\883\494\88349496\xml1\RFR0003.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT18\883\494\88349496\xml1\RFR0004.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT18\883\494\88349496\xml1\RFR0005.JPG | |
| \\TICRS\EXPORT18\IMAGEOUT18\883\494\88349496\xml1\RFR0006.JPG | |
| ORIGINAL PDF FILE | evi_685611270-20200416153825215852_._Blood_Reign_in_Red_-_Slayer_Wine.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT18\IMAGEOUT18\883\494\88349496\xml1\RFR0007.JPG |
| ORIGINAL PDF FILE | evi_685611270-20200416153825215852_._Free_Reign_by_Free_Spirit_Wines.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT18\IMAGEOUT18\883\494\88349496\xml1\RFR0008.JPG |
| ORIGINAL PDF FILE | evi_685611270-20200416153825215852_._Fresh_Reign_-_De_Bortoli_.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT18\IMAGEOUT18\883\494\88349496\xml1\RFR0009.JPG |
| ORIGINAL PDF FILE | evi_685611270-20200416153825215852_._Purple_Reign_by_another_winemaker.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT18\IMAGEOUT18\883\494\88349496\xml1\RFR0010.JPG |
| ORIGINAL PDF FILE | evi_685611270-20200416153825215852_._Purple_Reign_by_another_winemaker_number_2.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT18\IMAGEOUT18\883\494\88349496\xml1\RFR0011.JPG |
| ORIGINAL PDF FILE | evi_685611270-20200416153825215852_._Purple_Reign_by_another_winemaker_number_3.pdf |
| CONVERTED PDF FILE(S) (1 page) |
\\TICRS\EXPORT18\IMAGEOUT18\883\494\88349496\xml1\RFR0012.JPG |
| DESCRIPTION OF EVIDENCE FILE | Digital files and photographs of marketplace goods evidencing dilution of any similarly interpreted marks. |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | Jeffrey A Hank |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | jah@consumerpractice.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | NOT PROVIDED |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Jeffrey A Hank |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | jah@consumerpractice.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | contact@hanklegal.com |
| SIGNATURE SECTION | |
| RESPONSE SIGNATURE | /jah/ |
| SIGNATORY'S NAME | Jeffrey A Hank |
| SIGNATORY'S POSITION | Attorney of record |
| SIGNATORY'S PHONE NUMBER | 8554265529 |
| DATE SIGNED | 04/16/2020 |
| AUTHORIZED SIGNATORY | YES |
| CONCURRENT APPEAL NOTICE FILED | NO |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Thu Apr 16 16:08:33 ET 2020 |
| TEAS STAMP | USPTO/RFR-XX.XX.XXX.XX-20 200416160833866665-883494 96-710893860912ea3197a65c 972db1d4a66132be816bb3103 2ca777ffd10cdc3a1-N/A-N/A -20200416153825215852 |
| 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 1960 (Rev 10/2011) |
| OMB No. 0651-0050 (Exp 09/20/2020) |
As the Office Action notes, "the only exceptions are when (1) the matter common to the marks is merely descriptive or diluted, and not likely to be perceived by purchasers as distinguishing source, or (2) the compared marks in their entireties convey a significantly different commercial impression – neither of which is the case here.TMEP §1207.01(b)(iii); see, e.g., Citigroup Inc. v. Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004). "
In this instance, the term "reign" is merely descriptive or diluted, and does not distinguish source to any purchasers. The compared marks filed and not filed with the USPTO that exist in the marketplace when compared in their entirities convey different commercial impressions.
As the Office Action also notes, "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 instance there is a number of similar and even identical marks in use in the marketplace with the same goods. There is widespread use by other parties other than applicant or the registered mark holder of not just similar marks, but the same mark, showing that the registered mark is relatively weak and entitled to only a narrow scope of protection, which in this instance Applicant argues should only be to deny a mark filed that is the exact same as the registered mark. Otherwise, the registered mark is interpreted too broadly to prevent fair use of a term with general application in the marketplace.
Applicant has identified at least six (6) other users other than Applicant or the registered mark holder of the same or a similar mark using the term "reign" somehow in relation to their exact same good, wine. Additionally Applicant has provided evidence of the use of "purple reign" by wine journalists. There are many more examples of use or "reign" being used to refer to various aspects of winemaking on the internet and in the marketplace.
In consideration of Applicant's prior arguments for registration, and this additional information, Applicant requests some relief from the USPTO for registration on either the principal or supplemental register, or any other protection for it's mark the USPTO may afford.
