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:  March 10, 2020

 

Introduction

 

This Office action is in response to applicant’s communication filed on February 17, 2020.

 

In a previous Office action dated December 19, 2019, the trademark examining attorney refused registration of the applied-for mark based on Trademark Act Section 2(d) for a likelihood of confusion with the marks in U.S. Registration Nos. 3894130 and 4850955.  In addition, applicant was required to provide its domicile address and amend the identification of goods.

 

Based on applicant’s response, the trademark examining attorney notes that the amended identification of goods is accepted, and the requirements for applicant’s domicile address and an amended identification of goods have been satisfied.  See TMEP §§713.02, 714.04. 

 

The Trademark Act Section 2(d) refusal for a likelihood of confusion with the mark in U.S. Registration No. 3894130 is withdrawn.  See TMEP §§713.02, 714.04. 

 

Further, the trademark examining attorney maintains and now makes FINAL the Trademark Act Section 2(d) refusal for a likelihood of confusion with the mark in U.S. Registration No. 4850955.  See 37 C.F.R. §2.63(b); TMEP §714.04.

 

Section 2(d) Refusal: Likelihood of Confusion with the Mark in U.S. Registration No. 4850955

 

Registration of the applied-for mark remains refused because of a likelihood of confusion with the mark in U.S. Registration No. 4850955.  Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.  See the registration attached to 12/19/19 Office action.

 

Summary of Section 2(d)

 

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 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).  Any evidence of record related to those factors need be considered; however, “not all of the DuPont factors are relevant or of similar weight in every case.”  In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019) (quoting In re Dixie Rests., Inc., 105 F.3d 1405, 1406, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997)).

 

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).

 

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.  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)); TMEP §1207.01.

 

Similarity of the Marks

 

The applied-for mark is THE WAND in standard characters.  The registered mark is WINE WAND with a design.

 

When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks.”  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).  Instead, marks are compared in their entireties for similarities in appearance, sound, connotation, and commercial impression.  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)); TMEP §1207.01(b)-(b)(v).  “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”  In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)); TMEP §1207.01(b).

 

In this case, the only element of the applied-for mark with any source-indicating significance is also the dominant source-indicating element in the registered mark.  WAND is the only element of the applied-for mark with source-indicating significance because the wording “THE” at the beginning of a mark does not have any trademark significance.  See In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE “virtually identical” marks).  WAND is the dominant source-indicating element in the registered mark because it is the only wording in the mark that is not merely descriptive of or generic for registrant’s goods.  See, e.g., Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1824-25 (TTAB 2015) (citing In re Chatam Int’l Inc., 380 F.3d 1340, 1342-43, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004)); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018) (citing In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)); see also, Disclaimer Statement in registration attached to 12/19/19 Office action.  WAND in the applied-for mark and WAND in the registered mark sound the same, appear the same, and convey the same commercial impression.

 

The applicant contends that the fact that the registered mark contains a design and the additional wording WINE, as compared to the applied-for mark, is sufficient to distinguish the marks.  2/17/20 response to Office action at page 4.  Although applicant’s mark does not contain all of the elements in the registered mark, applicant’s mark is likely to appear to prospective purchasers as a shortened form of registrant’s mark, and it does not create a distinct commercial impression from the registered mark because it contains some of the wording in the registered mark and does not add any wording that would distinguish it from that mark.  See In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (quoting United States Shoe Corp., 229 USPQ 707, 709 (TTAB 1985)). 

 

 For the foregoing reasons, the applied-for and registered marks are confusingly similar.

 

Relatedness of the Goods

 

Applicant seeks to register its mark for “Wine filters for filtering histamines and sulfite preservatives from wine”.  The registered mark is for “Coolers for wine; Wine aerators; Wine pourers”. 

 

Applicant suggests that there is no likelihood of confusion because the goods have different uses and would not be confused by consumers; in particular, applicant’s goods are for removing components from wine while registrant’s goods are for storing and pouring wine.  2/17/19 response to Office action at page 3.  The compared goods 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); 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).

 

The attached Internet evidence from www.wineenthusiast.com, www.amazon.com, www.franmara.com, http://vinturi.com, http://ullowine.com, http://barsupplies.com, and http://sfeldmanhousewares.com establishes the relatedness of the goods.  The evidence shows that the same entity commonly produces the relevant goods and markets them under the same mark, the relevant goods are sold through the same trade channels and used by the same classes of consumers in the same fields of use, and the goods are complementary in terms of purpose or function.  The evidence consists of excerpts from websites of entities that produce both types of goods and websites where goods consisting of aerators that also include filters are available for purchase.  The specimen submitted with the application further evidences that the applicant produces, in addition to the goods identified in the application, goods like those identified in the registration.  9/12/19 Specimen.

 

Thus, applicant’s and registrant’s goods are considered related for likelihood of confusion purposes, and, if the goods are marketed under confusingly similar marks, consumers are likely to be confused as to their source.  See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009).

 

Conclusion

 

For the foregoing reasons, the Trademark Act Section 2(d) refusal for a likelihood of confusion with the mark in U.S. Registration No. 4850955 is continued and made final at this time.

 

Response to Office Action Required to Avoid Abandonment

 

How to respond.  Click to file a request for reconsideration of this final Office action that fully resolves the outstanding refusal and/or click to file a timely appeal to the Trademark Trial and Appeal Board (TTAB) with the required filing fee(s).

 

 

Jeanine Gagliardi

/Jeanine Gagliardi/

Examining Attorney

Law Office 120

571-272-3177

jeanine.gagliardi@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 March 10, 2020 for

U.S. Trademark Application Serial No. 88615077

 

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. 

 

 

Jeanine Gagliardi

/Jeanine Gagliardi/

Examining Attorney

Law Office 120

571-272-3177

jeanine.gagliardi@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 March 10, 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.”