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. 88373453 STILL BREWING(Standard Characters, see http://uspto.report/TM/88373453/mark.png) has been amended as follows:

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

In the Official Action, the Examiner has initially refused registration on the Principal Register because of the "likelihood of confusion" of the mark with a prior registered mark. Applicant respectfully disagrees and believes that the Examiner has failed to make a prima facie showing of likelihood of confusion.

I. NO LIKELIHOOD OF CONFUSION WITH U.S. REGISTRATION NO. 5,364,956.

A. The Respective Marks are Dissimilar.

As a matter of law, the purchaser is presumed not to retain a specific memory of the exact components of a mark, but rather a general impression. See TMEP §1207.01(b). It is that general impression that should form the basis of any likelihood of confusion analysis. See id. Therefore, the test in determining whether a likelihood of confusion exists is whether the general impressions of the respective marks are sufficiently similar as to create a likelihood of confusion as to the source of the goods or services. See id. When determining the issue of similarity, "[a]ll relevant facts pertaining to appearance, sound, and connotation must be considered before similarity as to one or more of those factors may be sufficient to support a finding that the marks are similar or dissimilar." Recot, Inc. v. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000). Where there are significant differences in these factors, it is proper to assume that the general impression of the marks would be different to the relevant public. See id.

In making the argument for the rejection as to confusing similarity, the Examiner has, in effect, based the decision for refusal only on the similarity of a portion of the respective marks. It is important to note, however, that similarity of the marks in one respect – sight, sound, or meaning – will not automatically result in a finding of likelihood of confusion even if the goods or services are somewhat related. See TMEP §1207.01(b)(i).

1. The Marks Are Dissimilar in Appearance.

In making the argument for the rejection as to confusing similarity, the Examiner points to only a portion of the mark, specifically the fact that the marks share the terms "STILL" and "BREWING". However, Applicant's mark is "STILL BREWING", and the cited registrant's mark is for "700 YEARS AND STILL BREWING STRONG". As such, the respective marks must be reviewed for likelihood of confusion as a whole and should not be broken into component parts to reach a conclusion of confusing similarity. In re Hearst Corp., 25 USPQ2d 1238, 1239 (Fed. Cir. 1992) (explaining that "marks tend to be perceived in their entireties, and all components thereof must be given appropriate weight.". . ."When GIRL is given fair weight, along with VARGA, confusion with VARGAS becomes less likely"). Professor McCarthy states in his treatise that the "anti-dissection" rule is violated in instances in which the "focus is on a prominent feature of conflicting marks and likelihood of confusion is decided solely upon that feature, ignoring all other elements of the mark." J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition, § 23:41 at 23-125,126 (4th ed. 2004).

It is also well established that there is nothing improper, under certain circumstances, to give more or less weight to a particular portion of a mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Any such adjustment given to a portion of a mark must still be considered with respect to the "anti-dissection" rule. See Shen Mfg. Co., Inc. v. The Ritz Hotel Ltd., 393 F.3d 1238 (Fed. Cir. 2004) (explaining that "while there are often discrete terms in marks that are more dominant and, thus, more significant to the assessment of similarity, the law forbids the type of dissection proposed . . . "). "The ultimate conclusion of similarity or dissimilarity must rest on consideration of the marks in their entirety." Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1358 (Fed. Cir. 2000).

In comparing Applicant's "STILL BREWING" mark with the cited registrant's mark "700 YEARS AND STILL BREWING STRONG", as a whole, it becomes clear that the marks are separate and distinct. Applicant's mark consists of the dominant, first term "STILL", followed by the second term "BREWING". In stark contrast, the cited registrant's mark consist of the dominant, first term "700", followed by the term "YEARS", followed by the term "AND", followed by the term "STILL", followed by the term "BREWING", followed by the term "STRONG". The shared terms "STILL" and "BREWING" are located near the end of the cited registrant's mark. Asa result, consumers may recognize those terms, but they will not strongly associate them with the cited registrant's trademark or afford them a high degree of trademark deference. These differences in appearance, along with the differences in commercial impression discussed below, support a finding that likelihood of confusion does not exist.

2. The Marks are Dissimilar in Sound.

A highly important difference between the Applicant's mark and the cited registrant's marks is in the sound of the respective marks. Applicant's mark is "STILL BREWING". Thus, Applicant's mark is composed of the single-syllable term "STILL", followed by the two-syllable term "BREWING". In contrast, the cited registrant's mark consists of the two-syllable term "700", followed by the single-syllable term "YEARS", followed by the single-syllable term "AND", followed by the single-syllable term "STILL", followed by the two-syllable term "BREWING", followed by the single-syllable term "STRONG". Because the dominant, first term of Applicant's mark has the most syllables and takes the longest to say, consumers will naturally place more emphasis on the term, which further contributes to a finding that there is no likelihood of confusion between these marks.

3. The Marks Differ in Connotation and Commercial Impression.

Similarity in meaning or connotation is a major factor in determining likelihood of confusion. TMEP §1207.01(b)(v). Furthermore, while an addition, subtraction or substitution of letters or words may not always be sufficient to eliminate confusion, it is clear that confusion should not be determined likely if the overall commercial impression changes when such additions, subtractions or substitutions exist. See TMEP § 1207.01 (b)(ii) and (b)(iii); see, e.g., Shen Manufacturing Co., 73 USPQ2d 1350 (Fed. Cir. 2004) (RITZ and THE RITZ KIDS create different commercial impressions). Where there are significant differences between the respective marks, it is proper to assume that the overall commercial impression of the marks would be different to the relevant public. See TMEP §1207.01(b). Applicant argues that the differences in appearance and connotation, described in detail above, combine to give the respective marks a different commercial impression when viewed in relation to the respective goods and/or services that the marks protect.

Quite simply, the Examiner's application of the law in this proceeding, namely, invoking the general rule that the addition or deletion of terms, or other matter, does not avoid a determination of similarity between the respective marks, has been misapplied to the facts in this case. See TMEP §1207.01(b)(iii). This is because the Examiner has failed to consider one of the exceptions to the general rule regarding addition or deletion of terms, or matter, in marks that are being compared, namely, the fact that likelihood of confusion will not be found if such additions and subtractions create significantly different commercial impressions between the marks in their entireties. See id. The following cases are factually analogous to the current proceeding:

--Shen Manufacturing Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) (RITZ and THE RITZ KIDS create different commercial impressions)

--Citigroup Inc. v. Capital City Bank Group, Inc., 98 USPQ2d 1253 (Fed. Cir. 2011) (CAPITAL CITY BANK and CITIBANK are "dissimilar in appearance, sound, connotation, and commercial impression")

--In re Farm Fresh Catfish Co., 231 USPQ 495 (TTAB 1986) (CATFISH BOBBERS (with "CATFISH" disclaimed) for fish held not likely to be confused with BOBBER for restaurant services)

--In re Hartz Hotel Services, Inc., ex parte appeal for Serial No. 76/692,673 (TTAB 2012) (reversing the Examiner's decision to refuse registration of GRAND HOTELS NYC (with "HOTELS NYC" disclaimed) for "hotel services" based on the registered mark GRAND HOTEL (with "HOTEL" disclaimed) for hotel, restaurant, and convention services.

--In re Quaker Coffee Co. Inc., Serial No. 78/465,668 (TTAB 2007) (reversing the Examiner's decision to refuse registration of QUAKER COFEE for "coffee shop services" based on the marks QUAKER STEAK & LUBE for "restaurant services" and QUAKER STEAK & WINGS for "restaurant services")

--Nestle Prepared Foods Co. v. V & V Enterprises, Inc., Opposition No. 91167465 (TTAB 2011) (reversing the Examiner's decision to refuse registration of POCKET FOODS CORPORATION AND DESIGN (with "POCKET FOODS CORPORATION" disclaimed) for "pocket sandwiches" based on the marks HOT POCKETS and LEAN POCKETS in connection with stuffed sandwiches)

--Consolidated Artists BV v. Camille Beckman Corporation, Opposition No. 91188863 (TTAB 2012) (MANGO BEACH (with "MANGO" disclaimed) for creams, powders, soap, perfume, etc. held not likely to be confused with MANGO for soaps, perfumery, and cosmetics)

While the Applicant's mark and the cited registrant's mark share the terms "STILL" and "BREWING", the marks are ultimately sufficiently different in terms of sound, appearance and meaning, and no one would perceive them as indicating a common source or origin for the respective goods of the owners at issue. Applicant's mark is "STILL BREWING". Applicant's goods are "Beer" in Class 32 and "Wine, alcoholic beverages except beers, alcoholic beverages, namely, spirits, vodka, whiskey, gin, bourbon" in Class 33. As such, the phrase "STILL BREWING" has a double entendre that imparts to the consumers a sense that these goods are associated with a still, used in distilling liquor. See [Exhibit "A", Merriam-Webster's Dictionary Definition of "STILL", entry 5 and 6]. Because Applicant's goods consist of distilled liquor as well as brewed beer, the otherwise incongruous commercial impression of brewing within a still makes some sense. Consumers will understand the marriage of two completely different methods for producing alcohol explicitly expressed within a single trademark. Consumers will also then appreciate the double entendre, in which Applicant's mark also means continuing to brew.

The cited registrant's mark is "700 YEARS AND STILL BREWING STRONG". Consumers will most closely associate the dominant, first terms "700" and "YEARS" with the cited registrant's goods. U.S. Consumers who encounter the cited registrant's mark will invariably be impressed by the fact that the cited registrant purports to have been in business for at least 700 years. A business operation lasting nearly three times as long as the entire time period that the United States has existed as a country is impressive, and that concept will certainly capture the U.S. consumer's attention and imagination. The remaining terms within the cited registrant's mark are merely ancillary to the powerful image of a 700 year old enduring business. As a result, they do little to modify or clarify the commercial impression that consumers will attribute to the cited registrant's mark. The word that follow "700 YEARS" within the cited registrant's mark simply clarify that the business is ongoing. Thus, the phrase "STILL BREWING STRONG" within the cited registrant's mark means that the cited registrant continues to brew its beer, and the business operation continues in a strong, steadfast manner. See [Exhibit "B", Merriam-Webster's Dictionary Definition of "STILL", entry 1]. The differing connotation of the phrase "WITHIN REACH" between the marks creates a substantially different commercial impression, which sufficiently prevents consumers from confusing the origin of the respective goods. The clear differences in connotation and commercial impression between the respective marks are sufficient enough to obviate a likelihood of confusion.

B. The Cited Registration Is Entitled to an Extremely Narrow Scope of Protection.

Applicant's mark and the cited registrant's mark share the terms "STILL" and "BREWING". However, the similarity regarding the shared terms "STILL" and "BREWING", alone, is not enough to warrant a refusal of Applicant's Mark. Refusal of Applicant's Mark is unwarranted when one considers the state of the register and marketplace with respect to other "STILL" and "BREWING" formative marks. This conclusion is further strengthened when considering the state of the register with regard to marks featuring both of the terms "STILL" and "BREWING". As such, the respective marks have to be viewed as a whole.

The Examining Attorney assumes that the terms "STILL" and "BREWING", alone, would be strong and sufficient enough to create a common commercial impression such that consumers encountering the cited mark and Applicant’s mark would be confused as to the origin of the goods of the parties. However, this assumption is clearly incorrect when viewed in light of the large number of "STILL" and "BREWING" marks, and even marks that use the two terms conjunctively, that exist on the United States register and in the marketplace, which is indicative of a weak mark that is used to describe numerous goods and services outside of the scope of the goods sold under the cited mark. A search of the TESS list of live registrations and applications containing the following terms obtained the following results:

--A search of all live registrations and applications containing the term "STILL" returned two thousand two hundred forty four (2,244) instances.

--A search of all live registrations and applications containing the term "BREWING" returned four thousand six hundred twenty seven (4,627) instances.

--A search of all live registrations and applications containing the terms "STILL" and "BREWING" returned eleven (11) instances.

--A search of all live registrations and applications containing the term "STILL" in International Class 32 returned seventy three (73) instances.

--A search of all live registrations and applications containing the term "BREWING" in International Class 32 returned three thousand six hundred fifty eight (3,658) instances.

Such data is probative to demonstrate that the terms "STILL" and "BREWING", even when used conjunctively, have been widely adopted by a number of other users as a good or service designation, and those terms are not distinctive of the cited mark. In the case of weak marks, even slight differences between the marks may be deemed sufficient to avoid a finding that confusion is likely. See In re Dayco Products -Eaglemotive Inc., 9 USPQ2d 1910, 1912 (TTAB 1988) ("As such, we find the term to be a relatively weak mark and we agree with applicant that the scope of protection afforded such a mark is considerably narrower than that afforded a more arbitrary designation."); see also In re Copytele Inc., 31 USPQ2d 1540, 1542 (TTAB 1994). Due to the dilute nature of the relevant portion of the cited marks, the scope of protection afforded such marks is considerably narrower than that afforded a more arbitrary designation.

As such, the additions and deletions in the Applicant's mark are of a nature that would eliminate any confusion in the purchasing consumer as to the source of the respective goods. See TMEP §1207.01(b)(iii). Evidence of widespread third-party use in a particular field of marks containing a certain shared term is competent to suggest that purchasers have been conditioned to look to the other elements of the marks as a means of distinguishing the source of goods or services in the field. In re Broadway Chicken Inc., 38 USPQ2d 1559, 1565 –1566 (TTAB 1996). Here, consumers are used to seeing the terms "STILL" and "BREWING", and even those terms together, used in conjunction with various trademarks. The consumer would look to the other terms in the marks, or the different characteristics of the goods, for identification of the source of the goods which, as discussed above, will make the marks dissimilar.

C. The Applicant's Goods and Cited Registrant's Goods Are Purchased by Sophisticated Purchasers.

Applicant argues that the purchase of Applicant's goods is made by sophisticated purchasers who exercise extra care when deciding whether to purchase such goods. See In re Ship, 4 USPQ2d 1174, 1176 (TTAB 1987) ("We are of the opinion that these dry cleaning professionals are likely to be aware of practices in the dry cleaning industry, are likely to be aware of the source of commercial dry cleaning equipment and are likely to know that a dry cleaning establishment offering laundry and dry cleaning services is not likely to be the source of commercial dry cleaning equipment, even where such services and goods are offered under virtually identical marks."); see also Tricia Guild Assocs. Ltd. v. Crystal Clear Indus. Inc., 38 USPQ2d 1313, 1315 (TTAB 1995) ("Upholstery, furnishing fabrics, textile wall coverings and wall paper are not the type of products that are purchased casually, especially by wholesale purchasers.").

Applicant submits that, like the dry cleaning professional in In re Ship, the purchasers of Applicant's goods are sophisticated in a manner that will effectively eliminate any likelihood of confusion. Applicant's mark is for "Beer" and "Wine, alcoholic beverages except beers, alcoholic beverages, namely, spirits, vodka, whiskey, gin, bourbon," while the cited registrant's products are "Beer." These products are ingested by individuals. Subsequently, the products have an effect on the thing that matters most to any consumer: themselves. As a result, sophisticated individuals, highly motivated to be aware of the product that they are purchasing, will seek such goods.

Thus, the goods sold under both Applicant's mark and the cited registrant's mark are sold to discerning members of the public, who are looking for a very particular brand of product, because of the effect that the product will have on his or her body. Only a sophisticated consumer, highly motivated to be aware of the products used in the product that will subsequently enter his or her body, will seek such products. Due to the level of care used in purchasing Applicant's goods and the cited registrant's goods, it is highly unlikely that these sophisticated consumers will be confused as to the source of the goods and services. See In re N.A.D. Inc., 224 USPQ 969, 971 (Fed. Cir. 1985); see In re Ship, 4 USPQ2d 1174, 1176 (TTAB 1987). This factor weighs heavily toward a finding that there is no likelihood of confusion.

II. CONCLUSION

Based on the foregoing analysis, Applicant requests that the Examiner reconsider the original rejection of this application. As such, Applicant believes there will be no consumer confusion as to the source of the respective goods and respectfully requests that the present mark be passed to publication at an early date.

EVIDENCE
Evidence in the nature of Exhibit "A", Merriam-Webster's Dictionary Definition of "STILL", entry 5 and 6; Exhibit "B", Merriam-Webster's Dictionary Definition of "STILL", entry 1 has been attached.
Original PDF file:
evi_5078217165-20190930164437768416_._2984-63_OA_Response_Exhibits.pdf
Converted PDF file(s) ( 4 pages)
Evidence-1
Evidence-2
Evidence-3
Evidence-4

The applicant's current attorney information: John S. Egbert. John S. Egbert of EGBERT, MCDANIEL & SWARTZ, PLLC, is located at

      1001 TEXAS AVE., SUITE 1250
      HOUSTON, Texas 77002
      US
The docket/reference number is 2984-63.

The phone number is 713-224-8080.

The fax number is 713-223-4873.

The email address is mail@emsip.com

The applicants proposed attorney information: John S. Egbert. Other appointed attorneys are Michael F. Swartz, Kevin S. Wilson. John S. Egbert of EGBERT, MCDANIEL & SWARTZ, PLLC, is a member of the XX bar, admitted to the bar in XXXX, bar membership no. XXX, and the attorney(s) is located at

      1001 TEXAS AVE., SUITE 1250
      HOUSTON, Texas 77002
      United States
The docket/reference number is 2984-63.

The phone number is 713-224-8080.

The fax number is 713-223-4873.

The email address is mail@emsip.com

John S. Egbert 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: JOHN S. EGBERT. JOHN S. EGBERT of EGBERT, MCDANIEL & SWARTZ, PLLC, is located at

      1001 TEXAS AVE., SUITE 1250
      HOUSTON, Texas 77002
      US
The docket/reference number is 2984-63.

The phone number is 713-224-8080.

The fax number is 713-223-4873.

The email address is mail@emsip.com; USPTO@dockettrak.com

The applicants proposed correspondence information: John S. Egbert. John S. Egbert of EGBERT, MCDANIEL & SWARTZ, PLLC, is located at

      1001 TEXAS AVE., SUITE 1250
      HOUSTON, Texas 77002
      United States
The docket/reference number is 2984-63.

The phone number is 713-224-8080.

The fax number is 713-223-4873.

The email address is mail@emsip.com

ADDITIONAL STATEMENTS
Disclaimer
No claim is made to the exclusive right to use "BREWING" apart from the mark as shown.


FEE(S)
Fee(s) in the amount of $275 is being submitted.

SIGNATURE(S)
Declaration Signature

DECLARATION: The signatory being warned that willful false statements and the like are punishable by fine or imprisonment, or both, under 18 U.S.C. § 1001, and that such willful false statements and the like may jeopardize the validity of the application or submission or any registration resulting therefrom, declares that, if the applicant submitted the application or allegation of use (AOU) unsigned, all statements in the application or AOU and this submission based on the signatory's own knowledge are true, and all statements in the application or AOU and this submission made on information and belief are believed to be true.

STATEMENTS FOR UNSIGNED SECTION 1(a) APPLICATION/AOU: If the applicant filed an unsigned application under 15 U.S.C. §1051(a) or AOU under 15 U.S.C. §1051(c), the signatory additionally believes that: the applicant is the owner of the mark sought to be registered; the mark is in use in commerce and was in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; the original specimen(s), if applicable, shows the mark in use in commerce as of the filing date of the application or AOU on or in connection with the goods/services/collective membership organization in the application or AOU; for a collective trademark, collective service mark, collective membership mark application, or certification mark application, the applicant is exercising legitimate control over the use of the mark in commerce and was exercising legitimate control over the use of the mark in commerce as of the filing date of the application or AOU; for a certification mark application, the applicant is not engaged in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

STATEMENTS FOR UNSIGNED SECTION 1(b)/SECTION 44 APPLICATION AND FOR SECTION 66(a) COLLECTIVE/CERTIFICATION MARK APPLICATION: If the applicant filed an unsigned application under 15 U.S.C. §§ 1051(b), 1126(d), and/or 1126(e), or filed a collective/certification mark application under 15 U.S.C. §1141f(a), the signatory additionally believes that: for a trademark or service mark application, the applicant is entitled to use the mark in commerce on or in connection with the goods/services specified in the application; the applicant has a bona fide intention to use the mark in commerce and had a bona fide intention to use the mark in commerce as of the application filing date; for a collective trademark, collective service mark, collective membership mark, or certification mark application, the applicant has a bona fide intention, and is entitled, to exercise legitimate control over the use of the mark in commerce and had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce as of the application filing date; the signatory is properly authorized to execute the declaration on behalf of the applicant; for a certification mark application, the applicant will not engage in the production or marketing of the goods/services to which the mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification standards of the applicant. To the best of the signatory's knowledge and belief, no other persons, except, if applicable, authorized users, members, and/or concurrent users, have the right to use the mark in commerce, either in the identical form or in such near resemblance as to be likely, when used on or in connection with the goods/services/collective membership organization of such other persons, to cause confusion or mistake, or to deceive.

Signature: /2984-63/      Date: 09/30/2019
Signatory's Name: Michael F. Swartz
Signatory's Position: Attorney of record, Texas bar member
Signatory's Phone Number: 713-224-8080


Response Signature
Signature: /2984-63/     Date: 09/30/2019
Signatory's Name: Michael F. Swartz
Signatory's Position: Attorney of record, Texas bar member

Signatory's Phone Number: 713-224-8080

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:    JOHN S. EGBERT
   EGBERT, MCDANIEL & SWARTZ, PLLC
   
   1001 TEXAS AVE., SUITE 1250
   HOUSTON, Texas 77002
Mailing Address:    John S. Egbert
   EGBERT, MCDANIEL & SWARTZ, PLLC
   1001 TEXAS AVE., SUITE 1250
   HOUSTON, Texas 77002
        
RAM Sale Number: 88373453
RAM Accounting Date: 09/30/2019
        
Serial Number: 88373453
Internet Transmission Date: Mon Sep 30 16:49:07 EDT 2019
TEAS Stamp: USPTO/ROA-XX.XX.XXX.XXX-2019093016490779
1410-88373453-6105e698abf76de9c42b67e46e
cef592776fedc57496f97b091ca29c0778dedb4-
CC-49063997-20190930164437768416