United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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: March 20, 2020
This Office action is in response to applicant’s communication filed on February 26, 2020.
The trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) 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:
- Likelihood of Confusion – FINAL
The filing basis of the application has been amended to Section 44(e) only and the amended identification of goods is acceptable as amended.
Likelihood of Confusion
The examining attorney has reviewed the applicant’s arguments regarding the
likelihood of confusion refusal but has found them unpersuasive. Registration of the applied-for mark is refused because of a likelihood of confusion with the mark
in U.S. Registration No. 1608440 (Cambridge for gin) and this refusal is made final. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP
§§1207.01 et seq.
Applicant’s main argument regarding the likelihood of confusion refusal is that confusion is
unlikely based on consumers for the goods being sophisticated purchasers who would exercise a high degree of care when comparing and purchasing the products of the applicant and
registrant. However, even if consumers of the compared goods could be considered sophisticated and discriminating, it is settled that “even sophisticated purchasers
are not immune from source confusion, especially in cases such as the present one involving identical marks and related goods [and/or services].” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1413 (TTAB 2015) (citing In re Research & Trading Corp., 793 F.2d 1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)),
aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); see also In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir.
1993). The identity of the marks and the relatedness of the goods “outweigh any presumed sophisticated purchasing decision.”
In re i.am.symbolic, llc, 116 USPQ2d at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB 1989), aff'd, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)); see also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1325, 110 USPQ2d 1157, 1163-64
(Fed. Cir. 2014).
Applicant has not disputed the fact that applicant’s and registrant’s marks are identical and
where the marks of the respective parties are identical or virtually identical, as in this case, the degree of similarity or relatedness between the goods needed to support a finding of likelihood of
confusion declines. See In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re Shell
Oil Co., 992 F.2d 1204, 1207, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993)), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017); TMEP §1207.01(a).
Various alcoholic beverages have been shown to be related goods for purposes of a Trademark
Act Section 2(d) analysis. In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (holding GASPAR’S ALE for beer and ale likely to be
confused with JOSE GASPAR GOLD for tequila); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003) (holding RED BULL for tequila likely to
be confused with RED BULL for malt liquor); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261 (TTAB 2011) (holding HB for wine likely to be confused with HB and design for beer); Somerset
Distilling, Inc. v. Speymalt Whiskey Distribs. Ltd., 14 USPQ2d 1539 (TTAB 1989) (holding JAS. GORDON and design for scotch whiskey likely to be confused with GORDON’S
for distilled gin and vodka); Schieffelin & Co. v. Molson Cos., 9 USPQ2d 2069 (TTAB 1989) (holding BRAS D’OR for brandy likely to be confused with BRADOR for beer); Bureau
Nat’l Interprofessionnel Du Cognac v. Int’l Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) (holding trademark COLAGNAC for cola flavored liqueur likely to be confused
with certification mark COGNAC for brandy).
The attached Internet evidence, consisting of webpages from www.bevmo.com and www.totalwine.com, establishes that the relevant goods are sold or provided through the same trade channels and used by the same classes of consumers in the
same fields of use. 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).
Ultimately, in any likelihood of confusion determination, the overriding concern is not only to
prevent buyer confusion as to the source of the goods, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer.
See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion
determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press,
Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Confusion as to source of origin or sponsorship is extremely likely if the applicant’s proposed mark is allowed to register. Registration
is therefore refused by the examining attorney and this refusal is made final.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of
registration.
This refusal is final.
Please note that the only appropriate responses to a final action are either (1) compliance with the outstanding requirements, if feasible, or (2) filing of an appeal to the
Trademark Trial and Appeal Board. 37 C.F.R. §2.64(a). If the applicant fails to respond within six months of the mailing date of
this refusal, this Office will declare the application abandoned. 37 C.F.R. §2.65(a).
If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.
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).
/Giancarlo Castro/
Giancarlo Castro
Trademark Examining Attorney
Law Office 110
giancarlo.castro@uspto.gov
571-272-9357
RESPONSE GUIDANCE
- Missing the response deadline to this letter will cause the
application to abandon. A response or notice
of appeal must be received by the USPTO before midnight Eastern Time of the last day of the response period. TEAS and ESTTA maintenance or unforeseen circumstances could affect an applicant’s ability to timely
respond.
