To: | Friedman, Jeffrey (paul@reidllaw.com) |
Subject: | U.S. Trademark Application Serial No. 88398557 - VIRTUOSO - N/A |
Sent: | February 24, 2020 09:43:22 PM |
Sent As: | ecom121@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 88398557
Mark: VIRTUOSO
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Correspondence Address: |
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Applicant: Friedman, Jeffrey
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Reference/Docket No. N/A
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: February 24, 2020
On July 2, 2019, action on this application was suspended pending the disposition of U.S. Application Serial No. 87772727. The referenced prior-pending application has since registered. Therefore, registration is refused as follows.
SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION WITH A REGISTERED MARK
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.
Summary of the Marks
Applicant has applied to register the mark VIRTUOSO in standard characters for use in connection with “alcoholic beverages, except beer” in International Class 33.
The registered mark is VIRTUOSO in standard characters for use in connection with “beer” in International Class 32.
Similarity of the Marks
In the present case, applicant’s mark is VIRTUOSO and registrant’s mark is VIRTUOSO. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id.
Therefore, the marks are confusingly similar.
Relatedness of the 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).
In this case, the attached Internet evidence, consisting of screenshots from the webpages of Grand River Brewery, McMenamins, Mountain View Vineyard, Critz Farms Brewing & Cider Co., and DC Brau, establishes that entities that commonly make or sell beer, like the registrant, commonly also make or sell alcoholic beverages other than beer, like the applicant. In other words, consumers are accustomed to seeing both applicant’s and registrant’s goods provided under the same mark. As a result, the use of confusingly similar marks for both applicant’s and registrant’s goods is likely to result in consumer confusion. Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
Therefore, because the marks are confusingly similar and the goods are related, registration of the applied-for mark is refused under Section 2(d) of the Trademark Act.
HOW TO RESPOND TO THIS OFFICE ACTION
Click to file a response to this nonfinal Office action.
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Hannah Gilbert/
Trademark Examining Attorney
Law Office 121
(571) 272-5029
hannah.gilbert@uspto.gov
RESPONSE GUIDANCE