| 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 | 88473693 |
| LAW OFFICE ASSIGNED | LAW OFFICE 101 |
| MARK SECTION | |
| MARK | http://uspto.report/TM/88473693/mark.png |
| LITERAL ELEMENT | ROUND TOP |
| 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 | Buffalo Bayou Distilleries, LLC |
| STREET | 5610 Clinton Drive, Building B |
| CITY | Houston |
| STATE | Texas |
| ZIP/POSTAL CODE | 77020 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| OWNER SECTION (proposed) | |
| NAME | Buffalo Bayou Distilleries, LLC |
| STREET | 5610 Clinton Drive, Building B |
| CITY | Houston |
| STATE | Texas |
| ZIP/POSTAL CODE | 77020 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| jegbert@emsip.com | |
| ARGUMENT(S) | |
|
In the Office Action, the examiner has initially refused registration on the Principal Register because of an alleged "likelihood of confusion" of the mark with two prior registered marks. 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 THE CITED REGISTRATIONS 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. 1. The Marks Are Dissimilar in Appearance. Applicant's mark is for "ROUND TOP" and the cited registrants' marks are for the word mark "ROUNDTOP MOUNTAIN RESORT" and "THE VINTAGE ROUND TOP". 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). In comparing the marks as a whole, it becomes clear that the marks are separate and distinct due to the additional wording in each of the cited registrations. In this case, the addition of the wording "MOUNTAIN RESORT" and "THE VINTAGE" in the cited registrations creates a different commercial impression for the marks and supports a finding that likelihood of confusion does not exist. 2. The Marks Differ in Commercial Impression. 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 gives the respective marks a different commercial impression when viewed in relation to the respective goods and/or services that the marks protect. The examiner relies on the general rule that the addition or deletion of terms, or other matter, does not avoid a determination of similarity between the respective marks in this refusal. See TMEP §1207.01(b)(iii). However, the examiner has failed to consider an exception to the general rule, namely, 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.; see, e.g., 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); see 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); see In re Shawnee Milling Co., 225 USPQ 747 (TTAB 1985) (GOLDEN CRUST for flour held not likely to be confused with ADOLPH'S GOLD'N CRUST and design (with "GOLD'N CRUST" disclaimed) for coating and seasoning for food items); see In re S.D. Fabrics, Inc., 223 USPQ 54 (TTAB 1984) (DESIGNERS/FABRIC (stylized) for retail fabric store services held not likely to be confused with DAN RIVER DESIGNER FABRICS and design for textile fabrics). In applying the law, it becomes clear that the addition of the wording "MOUNTAIN RESORT" gives the "ROUND TOP MOUNTAIN RESORT" mark a commercial impression related to a ski resort located on a mountain top that has been named "round top." The addition of the wording "THE VINTAGE" gives "THE VINTAGE ROUND TOP" mark a commercial impression related to and old style bed and breakfast in a location that is called Round Top. The descriptive nature of the latter registration in relation to bed and breakfast type services is evidenced by the fact that the cited registrant had to make a claim of Section 2(f) acquired distinctiveness. Applicant's mark has no such descriptive meaning when used in relation to beer or spirits. The clear differences in commercial impression between the respective marks will ensure that the consumer is not confused as to the source or sponsorship of the respective goods and services. B. The Marks are Used in Different Channels of Trade. Relatedness, or channels of trade, means, in this context, that the goods or services of Applicant and the cited registrant are related in some manner or some circumstance surrounding the marketing such that they are likely to be encountered by the relevant public under circumstances that will give rise to the mistaken belief that they originate from or in some way are associated with or sponsored by the same producer. See TMEP §1207.01(a)(i). The nature of the respective party's goods or services, and thus their relatedness, is determined on the basis of the goods or services set forth in the application or registration. In re Dixie Restaurants Inc., 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) ("Indeed, the second DuPont factor expressly mandates consideration of the similarity or dissimilarity of the services as described in an application or registration."). The cited registrant's channels of trade for goods sold under its "ROUND TOP MOUNTAIN RESORT" mark are limited to specialized services related to skiing, winter sports, paintball, and the associated lodging for this type of resort. The cited registrant's channels of trade for goods sold under "THE VINTAGE ROUND TOP" mark are limited to specialized bed and breakfast related services. Applicant's "ROUND TOP" application is related only to beer and spirits that would be sold in retail stores to consumers of alcoholic beverages. The respective consumers are unlikely to encounter the goods of both Applicant and the services of the cited registrant at the same time, location, or event. For these reasons, Applicant believes that the relevant consumers of the respective goods and services will not likely believe that Applicant and the cited registrants are related, nor will they encounter marketing or advertising that will give rise to the mistaken belief that the parties' respective goods and services originate from or in some way are associated with each other. 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 buyer confusion as to the source of the respective goods and services and respectfully requests that the present mark be passed to publication at an early date. |
|
| ATTORNEY INFORMATION (current) | |
| NAME | John S. Egbert |
| ATTORNEY BAR MEMBERSHIP NUMBER | NOT SPECIFIED |
| YEAR OF ADMISSION | NOT SPECIFIED |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | NOT SPECIFIED |
| FIRM NAME | EGBERT, MCDANIEL & SWARTZ, PLLC |
| STREET | 1001 TEXAS AVE., SUITE 1250 |
| CITY | HOUSTON |
| STATE | Texas |
| POSTAL CODE | 77002 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 713-224-8080 |
| FAX | 713-223-4873 |
| mail@emsip.com | |
| DOCKET/REFERENCE NUMBER | 2984-66 |
| ATTORNEY INFORMATION (proposed) | |
| NAME | John S. Egbert |
| ATTORNEY BAR MEMBERSHIP NUMBER | XXX |
| YEAR OF ADMISSION | XXXX |
| U.S. STATE/ COMMONWEALTH/ TERRITORY | XX |
| FIRM NAME | Egbert, McDaniel & Swartz, PLLC |
| STREET | 1001 Texas Ave., Suite 1250 |
| CITY | Houston |
| STATE | Texas |
| POSTAL CODE | 77002 |
| COUNTRY/REGION/JURISDICTION/U.S. TERRITORY | United States |
| PHONE | 713-224-8080 |
| FAX | 713-223-4873 |
| mail@emsip.com | |
| DOCKET/REFERENCE NUMBER | 2984-66 |
| OTHER APPOINTED ATTORNEY | Kevin S. Wilson, Michael Swartz |
| CORRESPONDENCE INFORMATION (current) | |
| NAME | JOHN S. EGBERT |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | mail@emsip.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | USPTO@dockettrak.com |
| DOCKET/REFERENCE NUMBER | 2984-66 |
| CORRESPONDENCE INFORMATION (proposed) | |
| NAME | John S. Egbert |
| PRIMARY EMAIL ADDRESS FOR CORRESPONDENCE | mail@emsip.com |
| SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) | kwilson@emsip.com |
| DOCKET/REFERENCE NUMBER | 2984-66 |
| PAYMENT SECTION | |
| APPLICATION FOR REGISTRATION PER CLASS | 275 |
| NUMBER OF CLASSES | 1 |
| TOTAL FEES DUE | 275 |
| SIGNATURE SECTION | |
| DECLARATION SIGNATURE | /2984-66/ |
| SIGNATORY'S NAME | Kevin S. Wilson |
| SIGNATORY'S POSITION | Attorney of record, Texas bar member |
| SIGNATORY'S PHONE NUMBER | 713-224-8080 |
| DATE SIGNED | 03/09/2020 |
| RESPONSE SIGNATURE | /2984-66/ |
| SIGNATORY'S NAME | Kevin S. Wilson |
| SIGNATORY'S POSITION | Attorney of record, Texas bar member |
| SIGNATORY'S PHONE NUMBER | 713-224-8080 |
| DATE SIGNED | 03/09/2020 |
| AUTHORIZED SIGNATORY | YES |
| FILING INFORMATION SECTION | |
| SUBMIT DATE | Mon Mar 09 17:45:59 ET 2020 |
| TEAS STAMP | USPTO/ROA-XX.XX.XXX.XX-20 200309174559285404-884736 93-710f7142799a043fa8bf11 9f7152c5cfed8112d88119477 c1b01adae48a02e-CC-455758 46-20200309174030623149 |
| 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) |
In the Office Action, the examiner has initially refused registration on the Principal Register because of an alleged "likelihood of confusion" of the mark with two prior registered marks. 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 THE CITED REGISTRATIONS
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.
1. The Marks Are Dissimilar in Appearance.
Applicant's mark is for "ROUND TOP" and the cited registrants' marks are for the word mark "ROUNDTOP MOUNTAIN RESORT" and "THE VINTAGE ROUND TOP". 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).
In comparing the marks as a whole, it becomes clear that the marks are separate and distinct due to the additional wording in each of the cited registrations. In this case, the addition of the wording "MOUNTAIN RESORT" and "THE VINTAGE" in the cited registrations creates a different commercial impression for the marks and supports a finding that likelihood of confusion does not exist.
2. The Marks Differ in Commercial Impression.
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 gives the respective marks a different commercial impression when viewed in relation to the respective goods and/or services that the marks protect.
The examiner relies on the general rule that the addition or deletion of terms, or other matter, does not avoid a determination of similarity between the respective marks in this refusal. See TMEP §1207.01(b)(iii). However, the examiner has failed to consider an exception to the general rule, namely, 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.; see, e.g., 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); see 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); see In re Shawnee Milling Co., 225 USPQ 747 (TTAB 1985) (GOLDEN CRUST for flour held not likely to be confused with ADOLPH'S GOLD'N CRUST and design (with "GOLD'N CRUST" disclaimed) for coating and seasoning for food items); see In re S.D. Fabrics, Inc., 223 USPQ 54 (TTAB 1984) (DESIGNERS/FABRIC (stylized) for retail fabric store services held not likely to be confused with DAN RIVER DESIGNER FABRICS and design for textile fabrics).
In applying the law, it becomes clear that the addition of the wording "MOUNTAIN RESORT" gives the "ROUND TOP MOUNTAIN RESORT" mark a commercial impression related to a ski resort located on a mountain top that has been named "round top." The addition of the wording "THE VINTAGE" gives "THE VINTAGE ROUND TOP" mark a commercial impression related to and old style bed and breakfast in a location that is called Round Top. The descriptive nature of the latter registration in relation to bed and breakfast type services is evidenced by the fact that the cited registrant had to make a claim of Section 2(f) acquired distinctiveness. Applicant's mark has no such descriptive meaning when used in relation to beer or spirits. The clear differences in commercial impression between the respective marks will ensure that the consumer is not confused as to the source or sponsorship of the respective goods and services.
B. The Marks are Used in Different Channels of Trade.
Relatedness, or channels of trade, means, in this context, that the goods or services of Applicant and the cited registrant are related in some manner or some circumstance surrounding the marketing such that they are likely to be encountered by the relevant public under circumstances that will give rise to the mistaken belief that they originate from or in some way are associated with or sponsored by the same producer. See TMEP §1207.01(a)(i). The nature of the respective party's goods or services, and thus their relatedness, is determined on the basis of the goods or services set forth in the application or registration. In re Dixie Restaurants Inc., 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) ("Indeed, the second DuPont factor expressly mandates consideration of the similarity or dissimilarity of the services as described in an application or registration.").
The cited registrant's channels of trade for goods sold under its "ROUND TOP MOUNTAIN RESORT" mark are limited to specialized services related to skiing, winter sports, paintball, and the associated lodging for this type of resort. The cited registrant's channels of trade for goods sold under "THE VINTAGE ROUND TOP" mark are limited to specialized bed and breakfast related services. Applicant's "ROUND TOP" application is related only to beer and spirits that would be sold in retail stores to consumers of alcoholic beverages. The respective consumers are unlikely to encounter the goods of both Applicant and the services of the cited registrant at the same time, location, or event. For these reasons, Applicant believes that the relevant consumers of the respective goods and services will not likely believe that Applicant and the cited registrants are related, nor will they encounter marketing or advertising that will give rise to the mistaken belief that the parties' respective goods and services originate from or in some way are associated with each other.
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 buyer confusion as to the source of the respective goods and services and respectfully requests that the present mark be passed to publication at an early date.
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.