Offc Action Outgoing

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:  February 12, 2020

INTRODUCTION

Thank you for the recent response.  This Office action is in response to applicant’s communication filed on Jan. 21, 2020.

In a previous Office action(s) dated Jul. 19, 2019, the trademark examining attorney refused registration of the applied-for mark based on the following:

• Section 2(d) refusal for a likelihood of confusion

The trademark examining attorney maintains and now makes FINAL the refusal 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:

• Section 2(d) Refusal – Likelihood of Confusion

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION

Applicant seeks registration of the mark, LTK, in standard characters, for “wine” in class 33.

Registrant’s mark is LTK, in standard characters, for “restaurant services” in class 43.

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(s). 3154635 (LTK).  See 15 U.S.C. §1052(d); 37 C.F.R. §2.63(b).

All previous arguments and evidence are incorporated herein by reference.

Trademark Act Section 2(d) bars registration of an applied-for mark that is so similar to a registered mark that it is likely consumers would be confused, mistaken, or deceived as to the commercial source of the goods and/or services of the parties.  See 15 U.S.C. §1052(d).  Likelihood of confusion is determined on a case-by-case basis by applying the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973) (called the “du Pont factors”).  In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017).  Only those factors that are “relevant and of record” need be considered.  M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 1382, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (citing Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238, 1241, 73 USPQ2d 1350, 1353 (Fed. Cir. 2004)); see In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). 

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.

Comparison of the Marks

In a likelihood of confusion determination, the marks in their entireties are compared for similarities in appearance, sound, connotation, and commercial impression.  In re i.am.symbolic, llc, 866 F.3d 1315, 1323, 123 USPQ2d 1744, 1748 (Fed. Cir. 2017); Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 1321, 110 USPQ2d 1157, 1160 (Fed. Cir. 2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1371, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)); In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); TMEP §1207.01(b)-(b)(v). 

In the present case, applicant’s mark is LTK (in standard characters) and registrant’s mark is LTK (in standard characters).  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 and/or services.  Id.

Therefore, the marks are confusingly similar. 

Comparison of the Goods and Services

The goods and/or services 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).

The compared goods and/or services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and/or services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

Applicant’s goods are: “Wine” in class 33

Registrant’s services are: “Restaurant services” in class 43.

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 re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999) (holding use of AZTECA MEXICAN RESTAURANT for restaurant services and AZTECA (with and without design) for Mexican food items likely to cause confusion, where the AZTECA MEXICAN RESTAURANT mark itself indicated that the relevant restaurant services featured Mexican food and the evidence showed that the goods at issue “are often principal items of entrees served by . . . Mexican restaurants”); In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988) (holding use of applied-for mark, MUCKY DUCK and duck design, for mustard, and registered mark, THE MUCKY DUCK and duck design, for restaurant services, likely to cause confusion, given that applicant’s mark was highly similar to registrant’s “unique and memorable” mark, that “mustard is . . . a condiment which is commonly utilized in restaurants by their patrons,” and that “restaurants sometimes market their house specialties, including items such as salad dressings, through retail outlets”); TMEP §1207.01(a)(ii)(A); see also Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 212 USPQ 641 (C.C.P.A. 1982).

In this case, the examining attorney previous provided a sample of third party websites.  This evidence shows that the goods and services at issue are related because third party entities commonly manufacture wine and provide restaurant services under the same mark.  See previously attached pages from Marilake Winery, Grace Winery, Narcisi Winery, Folino Estate Vineyard & Winery, Sorrenti, Cooper’s Hawk Winery & Restaurants, The New Hope Winery, all providing wine and restaurant services under the same mark. 

In addition, the trademark examining attorney has attached evidence from the USPTO’s X-Search database consisting of a number of third-party marks registered for use in connection with the same or similar goods and services as those of both applicant and registrant in this case.  This evidence shows that the goods and services listed therein, namely wine products and restaurant services, are of a kind that may emanate from a single source under a single mark.  See In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018) (citing In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co.,29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); TMEP §1207.01(d)(iii); see attached 25 registrations, representing only a small sample, such as U.S. Reg. Nos. 5930574 (BARILLA), 5761723 (AGRI SEGRETUM), 5872146 (SPENCER OF ALTHORP), 5871171 (VESPA), 5824441 (NUDAKE), 5787815 (MONTALUCE), 5932458 (WILLOWSAWAKE WINERY), 5927034 (GROWN ON THE COAST THE OAK & BRAZEN WINE COMPANY CRAFTED IN THE CITY), 5915644 (ETHAN STOWELL RESTAURANTS), 5218543 (6), 5421770 (A.O.K KITCHEN), 5831001 (ROY’S), 5724682 (BREWMEISTER INHEREHENTLY SCOTTISH), 5705523 (THE SWEET POTATO SPIRIT CO), 5682972 (MARKS & SPENCER), 5662013 (BEAT CULTURE), 5631878 (OZUMO), 5619970 (LITTLE TAPE), 5596875 (INDULGE YOUR SENSES), 5456776 (BLACK APPLE EST. 2014), 5538431 (THE GOLDEN POD CHOCOLATE BAR), 5531596 (REDNER'S BEER & WINE CAFE), 5521349 (ADLON), 5465686 (ORGANIC BITES EST. 2015), 5506652 (PLUMPJACK), all providing wine and restaurant services under the same mark.

To further corroborate the relatedness, additional third party websites are provided herein.  The attached Internet evidence, consisting of third party websites, establishes that the same entity commonly manufactures and provides the relevant goods and services and markets the goods and services under the same mark and the relevant goods and services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use.  See attached pages from Village Vintner, Vintner’s Cellar, Montaluce, Knapp Winery & Vineyard Restaurant, Sanders Ridge Vineyard + Winery, Lescombes Family Vineyards, Raven’s Glenn Winery and Restaurant, Chateau Morrisette, Tabor Hill Winery & Restaurant, City Winery, South Coast Winery Resort & Spa, Justin, all providing wine and restaurant services under the same mark.  See Office action (Jul. 19, 2019).

In addition, there is a growing trend of entities, including restaurants, which provide private label wines under the same mark as the business name.  The attached articles show that it is becoming increasingly common for businesses to provide their own wine for a variety of reasons.  See attached articles “Will Private-Label Wines Work for Your Restaurant?” from FSR Magazine; “Silicon Valley Bank Addresses Current and Future Wine Trends” from Forbes; “Premium Private Label Wines Driving Growth” from Wine Industry Network Advisor; “Become Part of the Bulk Wine and Private Label Trend” and “How Private Label Wines Fit into the Wine Premiumization Trend” from Beverage Trade Network; “PLMA Show 2018: How Retailers are Winning with Private Label Wine” from Winsight Grocery Business; “Private-Label Wine is a Crowning Achievement” from FSR Magazine; “4 Key Benefits of Private Label Wine for your Restaurant” from Running Restaurants.com; “The Business of Private Label Wine” from IBWSS; “Why You Should Sell Private Wine Labels at your Restaurant” from Uncorkd.

Further, it is noted that the wording LTK is non-descriptive, arbitrary, and highly distinctive.  In addition, the provided articles show that private labels – that is, entities, including restaurants, that have their own wines with the same mark – is a continuing growing trend.  The evidence previously provided and also provided herein consisting of ample third party website evidence and third party registrations all show that entities commonly provide both wine and restaurant services under the same mark.  Thus, all of the foregoing illustrate and show that consumers are exposed to and accustomed to seeing entities and businesses with their own labeled wine.  As such, it is likely that consumers would confuse the marks and mistake the source of the goods, because there are many fronts and opportunities in which consumers would see, for example, restaurant services and wine bearing the same mark and also stemming from the same source.

Thus, applicant’s and registrant’s goods and services 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).

Applicant’s Response

On Jan. 21, 2020, applicant responded and provided arguments in support of registration.   Applicant’s arguments have been considered and found unpersuasive for the reason(s) set forth below.

Applicant primarily relies on the argument that the goods and services are not related.  First, applicant provides that it is undisputed that wine and restaurant services are unrelated, and that “something more” is required.  Applicant states that the evidence provided by the examining attorney in the previous Office action consisted of a “winery that also provides food options,” and this allegedly does not demonstrate that there is confusion between the applied-for mark and the cited mark. 

First, the fact that the provided evidence consists of wineries does not detract from the fact that the same entity is, in fact, providing both restaurant services as well as wine for purchase, all bearing the same mark.  It should be noted from the evidence made of record that it is not simply a matter of a winery that happens to provide food alongside its wine as a secondary or derivative service; rather, the restaurant services and provision of food is an important and significant part of its business, offering a full menu of food, much like any other restaurant or dining restaurant.  Just because the food service happens to be provided by or at a winery does not diminish its status as a full service restaurant.  This evidence serves to illustrate that consumers are exposed to business providing both types of services and goods under the same mark such that source confusion is likely.

Applicant next argues that the registrant does not mention wine or its own brand of alcoholic drinks.  Applicant also provides that it does not actually provide any restaurant services.  It is noted that the goods and services are compared as they are identified in the registration or application.  Determining likelihood of confusion is based on the description of the goods and services stated in the application and registration at issue, not on extrinsic evidence of actual use.  See In re Detroit Athletic Co., 903 F.3d 1297, 1307, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (citing In re i.am.symbolic, llc, 866 F.3d 1315, 1325, 123 USPQ2d 1744, 1749 (Fed. Cir. 2017)).  

Applicant also cites to In re Coors Brewing Co. and supports the argument by stating that less than 1% of businesses offering restaurant services are also selling its own branded wine.  In re Coors Brewing Co., 343 F.3d 1340, 1345, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003) (quoting Jacobs v. Int'l Multifoods Corp., 668 F.2d 1234, 1236, 212 USPQ 641, 642 (C.C.P.A. 1982).  This argument is not persuasive because applicant’s arrives at its 1% number solely based on the fact that there are more than 1 million restaurants and approximately 10,000 wineries.  This does not actually account for how many of the 1 million restaurants provide its own privately labeled wine.  Nevertheless, it is not required to show that all or most of the restaurants in the United States actually provide restaurant services and wine products; only a showing of relatedness is required.  The compared goods and services need not be identical or even competitive to find a likelihood of confusion.  See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 1086, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000); TMEP §1207.01(a)(i).  They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that [the goods and services] emanate from the same source.”  Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)); TMEP §1207.01(a)(i).

Applicant also cites to In re Wente Bros. dba Tamas Estates and In re Javiers, Inc. to support its argument that restaurant services and wine products are not related.  However, it is noted that the cases are from 2009 and 2008, which predates the recent and growing trend of entities and their own private labels of wine.  See previously referenced articles.  Thus, this should be considered less persuasive and less relevant in 2020.

Conclusion

Here, the marks are identical – that is, LTK – and is otherwise similar in sound, appearance, connotation and commercial impression.  The evidence provided herein and in the previous Office action illustrate that registrant’s restaurant services and applicant’s wine products are highly related, as there is a growing trend for entities to provide private-label wine, and entities commonly provide restaurant services and wine products under the same mark as established by third party websites and third party registrations.  Thus, consumers are likely to confuse the marks and mistake the source of the goods and services. 

The refusal to register the applied-for mark under Section 2(d) of the Trademark Act is FINAL.

Please see response guidance below.

TEAS PLUS OR TEAS REDUCED FEE (TEAS RF) APPLICANTS – TO MAINTAIN LOWER FEE, ADDITIONAL REQUIREMENTS MUST BE MET, INCLUDING SUBMITTING DOCUMENTS ONLINE:  Applicants who filed their application online using the lower-fee TEAS Plus or TEAS RF application form must (1) file certain documents online using TEAS, including responses to Office actions (see TMEP §§819.02(b), 820.02(b) for a complete list of these documents); (2) maintain a valid e-mail correspondence address; and (3) agree to receive correspondence from the USPTO by e-mail throughout the prosecution of the application.  See 37 C.F.R. §§2.22(b), 2.23(b); TMEP §§819, 820.  TEAS Plus or TEAS RF applicants who do not meet these requirements must submit an additional processing fee of $125 per class of goods and/or services.  37 C.F.R. §§2.6(a)(1)(v), 2.22(c), 2.23(c); TMEP §§819.04, 820.04.  However, in certain situations, TEAS Plus or TEAS RF applicants may respond to an Office action by authorizing an examiner’s amendment by telephone or e-mail without incurring this additional fee.  

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).

/Jeane Yoo/

Examining Attorney

Law Office 120

(571) 272-5021

Jeane.Yoo@uspto.gov

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.  

• Responses signed by an unauthorized party are not accepted and can cause the application to abandon.  If applicant does not have an attorney, the response must be signed by the individual applicant, all joint applicants, or someone with legal authority to bind a juristic applicant.  If applicant has an attorney, the response must be signed by the attorney.

• If needed, find contact information for the supervisor of the office or unit listed in the signature block.

United States Patent and Trademark Office (USPTO)

USPTO OFFICIAL NOTICE

Office Action (Official Letter) has issued

on February 12, 2020 for

U.S. Trademark Application Serial No. 88496299

Your trademark application has been reviewed by a trademark examining attorney.  As part of that review, the assigned attorney has issued an official letter that you must respond to by the specified deadline or your application will be abandoned.  Please follow the steps below.

(1)  Read the official letter.

(2)  Direct questions about the contents of the Office action to the assigned attorney below. 

/Jeane Yoo/

Examining Attorney

Law Office 120

(571) 272-5021

Jeane.Yoo@uspto.gov

Direct questions about navigating USPTO electronic forms, the USPTO website, the application process, the status of your application, and/or whether there are outstanding deadlines or documents related to your file to the Trademark Assistance Center (TAC).

(3)  Respond within 6 months (or earlier, if required in the Office action) from February 12, 2020, using the Trademark Electronic Application System (TEAS).  The response must be received by the USPTO before midnight Eastern Time of the last day of the response period.  See the Office action for more information about how to respond

GENERAL GUIDANCE

·         Check the status of your application periodically in the Trademark Status & Document Retrieval (TSDR) database to avoid missing critical deadlines.

·         Update your correspondence email address, if needed, to ensure you receive important USPTO notices about your application.

·         Beware of misleading notices sent by private companies about your application.  Private companies not associated with the USPTO use public information available in trademark registrations to mail and email trademark-related offers and notices – most of which require fees.  All official USPTO correspondence will only be emailed from the domain “@uspto.gov.”