| To: | Buffalo Bayou Distilleries, LLC (mail@emsip.com) |
| Subject: | U.S. Trademark Application Serial No. 88473693 - ROUND TOP - 2984-66 |
| Sent: | March 17, 2020 09:46:53 AM |
| Sent As: | ecom101@uspto.gov |
| Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
|
U.S. Application Serial No. 88473693
Mark: ROUND TOP
|
|
|
Correspondence Address: Egbert, McDaniel & Swartz, PLLC
|
|
|
Applicant: Buffalo Bayou Distilleries, LLC
|
|
|
Reference/Docket No. 2984-66
Correspondence Email Address: |
|
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 17, 2020
This Office action is in response to applicant’s communication filed on March 9, 2020.
Upon reconsideration, the Section 2(d) likelihood of confusion refusal based on U.S. Registration No. 5410945 is withdrawn.
However, for the reasons set forth below, the refusal under Trademark Act Section 2(d) is now made FINAL with respect to U.S. Registration No. 4648891. See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).
Section 2(d) Refusal – Likelihood of Confusion – FINAL
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 and/or services. 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.
In its response, the applicant argues that 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. The examining attorney has considered this argument but finds the applicant’s argument unclear. The examining attorney clarifies that a comparison of the marks in a likelihood of confusion analysis involves the recollection of the average purchaser, who retains a general impression of trademarks. When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1373, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)); TMEP §1207.01(b). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In its response, the applicant argues that its mark and the cited mark differ in appearance and commercial impression. The addition of the wording MOUNTAIN RESORT in the cited registration gives a different appearance to the cited mark and creates a different commercial impression from the applicant’s mark. Applicant asserts that 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.
The examining attorney has carefully considered this argument but finds it unpersuasive. Marks must be compared in their entireties and should not be dissected; however, a trademark examining attorney may weigh the individual components of a mark to determine its overall commercial impression. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (“[Regarding the issue of confusion,] there is nothing improper in stating that . . . more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” (quoting In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985)).
Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii). In this case, the examining attorney has considered the cited registered mark in its entirety. Upon such consideration, it is determined that the wording ROUNTOP in the cited mark that is more significant or dominant in creating a commercial impression because the wording MOUNTAIN RESORT is less significant as disclaimed matter. See attached cited registration showing the disclaimer of the wording “mountain resort.” Therefore, despite the addition of MOUNTAIN RESORT to the mark, the cited registered mark is similar in appearance and commercial impression to the applicant’s mark because these marks contain the similar wording ROUND TOP and ROUNDTOP.
Further, consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 876, 23 USPQ2d 1698, 1700 (Fed Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic Co., 903 F.3d 1297, 1303, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). In this case, it is the wording ROUNDTOP in the cited mark that consumers will be more inclined to focus on because it is the first word of the cited mark and consumers therefore will notice this word first.
Therefore, despite the differences, both marks share the confusingly identical sounding, similar appearing, and dominant wording ROUND TOP and ROUNTOP and thus share a similar overall commercial impression.
In its response, the applicant also argues that the marks are used in different channels of trade where the cited registrant's channels of trade are limited to specialized services related to skiing, winter sports, paintball, and the associated lodging for this type of resort. Applicant states that its application is related only to beer and spirits that would be sold in retail stores to consumers of alcoholic beverages. Thus, the respective consumers are unlikely to encounter the applicant’s goods and the cited registrant’s services at the same time, location, or event.
The examining attorney has carefully considered this argument but finds it unpersuasive. For purposes of a likelihood of confusion determination, food-related services such as restaurant and catering services, may be found related to beverage products where the evidence shows something more than just that such goods and services may be provided under the same or similar marks. See, e.g., In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001) (holding use of OPUS ONE for both wine and restaurant services likely to cause confusion, where the evidence of record indicated that OPUS ONE is a strong and arbitrary mark, that it is common in the industry for restaurants to offer and sell private label wines named after the restaurant, and that registrant’s wines were served at applicant’s restaurant).
In this case, the evidence of record (previously sent to applicant) consists of third party websites found on the Google Searchable Database. This evidence shows that the goods and services at issue are related because it demonstrates that something more than just that such goods (beer, wine and spirits) and services (restaurant and bar services) may be provided under the same or similar marks. Specifically, the evidence shows that the cited mark is a strong and arbitrary mark (the wording ROUNDTOP of the mark is a non-descriptive, arbitrary term), that it is common in the beer, wine and spirits industry that distilleries and breweries provide their own alcoholic products in their own restaurants and bars, and that bars and restaurants often market their own beer, wine, and spirits made in their own breweries and distilleries.
Additionally, the applicant’s goods and registrant’s services have no restrictions as to nature, type, channels of trade, or classes of purchasers and are “presumed to travel in the same channels of trade to the same class of purchasers.” In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d 1001, 1005 (Fed. Cir. 2002)). Thus, applicant’s goods and registrant’s services are related.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, 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).
This refusal is made FINAL.
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).
/Andrew Rhim/
Examining Attorney
United States Patent & Trademark Office
Law Office 101
(571) 272-9711
andrew.rhim@uspto.gov
RESPONSE GUIDANCE
