| 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) |
| Input Field |
Entered |
|---|---|
| SERIAL NUMBER | 88451324 |
| LAW OFFICE ASSIGNED | LAW OFFICE 110 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88451324/mark.png |
| LITERAL ELEMENT | CAMBRIDGE |
| 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 | LUSOVINI - VINHOS DE PORTUGAL, S.A. |
| STREET | Avenida da Liberdade - Areal, nº 15 |
| CITY | Nelas |
| ZIP/POSTAL CODE | P-3520-06 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | Portugal |
| OWNER SECTION (proposed) | |
| NAME | LUSOVINI - VINHOS DE PORTUGAL, S.A. |
| STREET | Avenida da Liberdade - Areal, nº 15 |
| CITY | Nelas |
| ZIP/POSTAL CODE | P-3520-06 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | Portugal |
| lusovini@lusovini.com | |
| ARGUMENT(S) | |
|
Refusal Under Trademark Act § 2(d) The Examining Attorney has refused registration of the subject mark under Trademark Act § 2(d), 15 U.S.C. § 1052(d) alleging that the Applicant's CAMBRIDGE mark when used on or in connection with the recited goods as filed (“Alcoholic beverages with the exception of beers”) is likely to cause confusion with the CAMBRIDGE mark of Registration No. 1608440 covering “gin”. While the Cited Mark and Applicant’s Mark each consist of the term CAMBRIDGE, Applicant contends that given the differences in the goods covered by the respective marks as a result of Applicant’s amendment to its Description of Goods, the citation should be withdrawn and that the instant Application be approved for publication. As further support for this position, Applicant offers the following arguments. The fact that Applicant’s Mark and the Cited Mark may each share the term CAMBRIDGE is far from dispositive of a likelihood of confusion. “Per se” rules relating to likelihood of confusion have been struck down as being too inflexible as contrary to trademark law, where each case must be decided based on its own facts and circumstances. See In re Quadram Corporation, 228 U.S.P.Q. 863, 865 (TTAB 1985). There is also no per se rule that all alcoholic beverages are similar for likelihood of confusion purposes. In re White Rock Distilleries, 92 USPQ2d 1282, 1285 (TTAB 2009). Each case must be decided on its own facts. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001). Here, it is quite unlikely that an appreciable number of purchasers would assume that goods of the parties are related or originate from the same source, especially since the ordinary prudent purchaser of these types of wine (Applicant) and gin (Registrant) are always an adult over the age of 21, and commonly educated and knowledgeable spirits and wine connoisseurs who are familiar with the brands in the industry. This is not the kind of case where low-priced items used for the same purpose are marketed side by side on a store shelf and purchased with a minimum degree of care. These goods are sold by knowledgeable, educated, and helpful staff and specialty distributors who provide invaluable knowledge and information about the product to the potential customers. The customers engage in careful consideration before making their purchasing decisions. Accordingly, as the intended customer is a sophisticated and knowledgeable purchaser of two different types of products, the risk of any confusion occurring is negligible. Courts have recognized alcohol purchasers are sophisticated in their decision making. Star Indus. v. Bacardi & Co., 412 F.3d 373, 390 (2d Cir. 2005) (“unhurried consumers in the relaxed environment of the liquor store, making decisions about $12 to $24 purchases, may be expected to exhibit sufficient sophistication to distinguish between products”). When considering whether there is a likelihood of confusion, it is important to determine whether there is a probability that confusion will arise in the minds of an appreciable number of reasonably prudent buyers. See Lever Brothers Co. v. American Bakeries Co., 693 F.2d 251, 253 (2d Cir. 1982) (the “crucial issue is whether there exists a likelihood that an appreciable number of ordinary prudent purchasers will be misled, or simply confused, as to the source of the goods in question”); See also 7-Eleven, Inc. v. Lawrence I. Wechsler, 83 U.S.P.Q. 2d 1715, 2007 WL 1431084 (TTAB 2007) (the discernment exercised by a reasonably prudent purchaser varies under the circumstances). The mere possibility that some consumers will be confused is not enough. Vitek Systems, Inc. v. Abbott Laboratories, 675 F.2d 190, 192 (8th Cir. 1982). For at least the foregoing reasons, Applicant asserts that the differences in the respective parties’ goods, and the fact that consumers are conditioned to recognize the products at issue as being distinctive of one another ensures that no confusion is likely to result among potential consumers. In view of the foregoing, it is respectfully submitted that the refusal of registration under Section 2(d) should be withdrawn and the subject application be approved for publication. Further and favorable action in connection with the application is earnestly solicited. |
|
| GOODS AND/OR SERVICES SECTION (current) | |
| INTERNATIONAL CLASS | 033 |
| DESCRIPTION | Alcoholic beverages with the exception of beers |
| FILING BASIS | Section 1(b) |
| FILING BASIS | Section 44(e) |
| FOREIGN REGISTRATION NUMBER | 014840672 |
| FOREIGN REGISTRATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
| FOREIGN REGISTRATION DATE |
05/25/2016 |
| FOREIGN EXPIRATION DATE | 11/26/2025 |
| GOODS AND/OR SERVICES SECTION (proposed) | |
| INTERNATIONAL CLASS | 033 |
| TRACKED TEXT DESCRIPTION | |
| FINAL DESCRIPTION | Alcoholic beverages with the exception of beers, namely wine |
| DELETED FILING BASIS | 1(b) |
| FILING BASIS | Section 44(e) |
| FOREIGN REGISTRATION NUMBER | 014840672 |
| FOREIGN REGISTRATION COUNTRY/REGION/JURISDICTION/U.S. TERRITORY |
European Union Trademark - EUTM |
| FOREIGN REGISTRATION DATE |
05/25/2016 |
| FOREIGN EXPIRATION DATE | 11/26/2025 |
| ATTORNEY INFORMATION (current) | |
| NAME | Michael J. Leonard |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | FOX ROTHSCHILD LLP |
| STREET | 997 LENOX DRIVE, BLDG. 3 |
| CITY | LAWRENCEVILLE |
| STATE | New Jersey |
| POSTAL CODE | 08648-2311 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 215-299-2085 |
| ipdocket@foxrothschild.com | |
| DOCKET/REFERENCE NUMBER | 151272.00002 |
| ATTORNEY INFORMATION (proposed) | |
| NAME | Michael J. Leonard |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | FOX ROTHSCHILD LLP |
| STREET | 997 LENOX DRIVE, BLDG. 3 |
| CITY | LAWRENCEVILLE |
| STATE | New Jersey |
| POSTAL CODE | 08648-2311 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 215-299-2085 |
| ipdocket@foxrothschild.com | |
| DOCKET/REFERENCE NUMBER | 151272.00002 |
| OTHER APPOINTED ATTORNEY | Christopher D. Olszyk, Jr. |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | MICHAEL J. LEONARD |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | ipdocket@foxrothschild.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | mleonard@foxrothschild.com |
| DOCKET/REFERENCE NUMBER | 151272.00002 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | Michael J. Leonard |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | ipdocket@foxrothschild.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | mleonard@foxrothschild.com |
| DOCKET/REFERENCE NUMBER | 151272.00002 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | The filing Attorney has elected not to submit the signed declaration, believing no supporting declaration is required under the Trademark Rules of Practice. |
| RESPONSE SIGNATURE | /mjl/ |
| SIGNATORY'S NAME | Michael J. Leonard |
| SIGNATORY'S POSITION | Attorney of Record, PA Bar Member |
| DATE SIGNED | 02/26/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Wed Feb 26 13:53:05 ET 2020 |
| TEAS STAMP | USPTO/ROA-XXX.XX.XX.XXX-2 0200226135305475712-88451 324-710f46179a4792a313d35 15c5cca9583add29bc5b613eb 7fce2dd938eb6c5d84aa-N/A- N/A-20200226134725546371 |
| 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) |
Refusal Under Trademark Act § 2(d)
The Examining Attorney has refused registration of the subject mark under Trademark Act § 2(d), 15 U.S.C. § 1052(d) alleging that the Applicant's CAMBRIDGE mark when used on or in connection with the recited goods as filed (“Alcoholic beverages with the exception of beers”) is likely to cause confusion with the CAMBRIDGE mark of Registration No. 1608440 covering “gin”. While the Cited Mark and Applicant’s Mark each consist of the term CAMBRIDGE, Applicant contends that given the differences in the goods covered by the respective marks as a result of Applicant’s amendment to its Description of Goods, the citation should be withdrawn and that the instant Application be approved for publication. As further support for this position, Applicant offers the following arguments.
The fact that Applicant’s Mark and the Cited Mark may each share the term CAMBRIDGE is far from dispositive of a likelihood of confusion. “Per se” rules relating to likelihood of confusion have been struck down as being too inflexible as contrary to trademark law, where each case must be decided based on its own facts and circumstances. See In re Quadram Corporation, 228 U.S.P.Q. 863, 865 (TTAB 1985). There is also no per se rule that all alcoholic beverages are similar for likelihood of confusion purposes. In re White Rock Distilleries, 92 USPQ2d 1282, 1285 (TTAB 2009). Each case must be decided on its own facts. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Here, it is quite unlikely that an appreciable number of purchasers would assume that goods of the parties are related or originate from the same source, especially since the ordinary prudent purchaser of these types of wine (Applicant) and gin (Registrant) are always an adult over the age of 21, and commonly educated and knowledgeable spirits and wine connoisseurs who are familiar with the brands in the industry. This is not the kind of case where low-priced items used for the same purpose are marketed side by side on a store shelf and purchased with a minimum degree of care. These goods are sold by knowledgeable, educated, and helpful staff and specialty distributors who provide invaluable knowledge and information about the product to the potential customers. The customers engage in careful consideration before making their purchasing decisions. Accordingly, as the intended customer is a sophisticated and knowledgeable purchaser of two different types of products, the risk of any confusion occurring is negligible. Courts have recognized alcohol purchasers are sophisticated in their decision making. Star Indus. v. Bacardi & Co., 412 F.3d 373, 390 (2d Cir. 2005) (“unhurried consumers in the relaxed environment of the liquor store, making decisions about $12 to $24 purchases, may be expected to exhibit sufficient sophistication to distinguish between products”).
When considering whether there is a likelihood of confusion, it is important to determine whether there is a probability that confusion will arise in the minds of an appreciable number of reasonably prudent buyers. See Lever Brothers Co. v. American Bakeries Co., 693 F.2d 251, 253 (2d Cir. 1982) (the “crucial issue is whether there exists a likelihood that an appreciable number of ordinary prudent purchasers will be misled, or simply confused, as to the source of the goods in question”); See also 7-Eleven, Inc. v. Lawrence I. Wechsler, 83 U.S.P.Q. 2d 1715, 2007 WL 1431084 (TTAB 2007) (the discernment exercised by a reasonably prudent purchaser varies under the circumstances). The mere possibility that some consumers will be confused is not enough. Vitek Systems, Inc. v. Abbott Laboratories, 675 F.2d 190, 192 (8th Cir. 1982).
For at least the foregoing reasons, Applicant asserts that the differences in the respective parties’ goods, and the fact that consumers are conditioned to recognize the products at issue as being distinctive of one another ensures that no confusion is likely to result among potential consumers. In view of the foregoing, it is respectfully submitted that the refusal of registration under Section 2(d) should be withdrawn and the subject application be approved for publication.
Further and favorable action in connection with the application is earnestly solicited.