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 11/30/2023)

Response to Office Action

The table below presents the data as entered.

Input Field
Entered
SERIAL NUMBER88856120
LAW OFFICE ASSIGNEDLAW OFFICE 113
MARK SECTION
MARK mark
LITERAL ELEMENT GRANDEUR
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.
ARGUMENT(S)
The Examiner has refused applicant's application for the mark GRANDEUR in class 33 based on a prior registration for GRANDER for distilled spirits in class 33. As an initial matter, Applicant notes that it has amended the goods in its application to restrict them to "wine." Thus, while the goods at issue are both alcoholic beverages, they are different in that one is distilled spirits and the other is wine. While such distinction may not be particularly relevant when the marks are identical, the marks at issue here are in fact different, with the cited mark being an adjective derived from Old English meaning "more grand," and applicant's mark being a noun derived from Old French term meaning "splendor and impressiveness, especially of appearance or style." Additionally, the term "grand" is highly diluted when used in association with alcohol beverage products, with TESS indicating over 300 marks for alcoholic beverages. Other "GRAND" marks for alcoholic beverages include GRANDE, GRANDE ROSE, GRAND ESTATES and GRAND MOSCATO, just to name a few (see attached TARR records). When a term is used so prevalently in association with particular goods, consumers learn to distinguish different products based on small differences between the marks. Such is the case here, where a party seeing a GRANDER spirit and a GRANDEUR wine in the field of hundreds of "GRAND" derivative marks for alcohol will not be confused given the differences between the marks and the different products. Accordingly, Applicant respectfully requests that the 2(d) refusal be withdrawn.
EVIDENCE SECTION
        EVIDENCE FILE NAME(S)
       ORIGINAL PDF FILEevi_10715466-202012301811 41298172_._76074316.pdf
       CONVERTED PDF FILE(S)
       (4 pages) 		\\TICRS\EXPORT18\IMAGEOUT 18\888\561\88856120\xml5\ ROA0002.JPG
       \\TICRS\EXPORT18\IMAGEOUT 18\888\561\88856120\xml5\ ROA0003.JPG
       \\TICRS\EXPORT18\IMAGEOUT 18\888\561\88856120\xml5\ ROA0004.JPG
       \\TICRS\EXPORT18\IMAGEOUT 18\888\561\88856120\xml5\ ROA0005.JPG
       ORIGINAL PDF FILEevi_10715466-202012301811 41298172_._86882283.pdf
       CONVERTED PDF FILE(S)
       (3 pages) 		\\TICRS\EXPORT18\IMAGEOUT 18\888\561\88856120\xml5\ ROA0006.JPG
       \\TICRS\EXPORT18\IMAGEOUT 18\888\561\88856120\xml5\ ROA0007.JPG
       \\TICRS\EXPORT18\IMAGEOUT 18\888\561\88856120\xml5\ ROA0008.JPG
       ORIGINAL PDF FILEevi_10715466-202012301811 41298172_._87218817.pdf
       CONVERTED PDF FILE(S)
       (2 pages) 		\\TICRS\EXPORT18\IMAGEOUT 18\888\561\88856120\xml5\ ROA0009.JPG
       \\TICRS\EXPORT18\IMAGEOUT 18\888\561\88856120\xml5\ ROA0010.JPG
       ORIGINAL PDF FILEevi_10715466-202012301811 41298172_._86548685.pdf
       CONVERTED PDF FILE(S)
       (2 pages) 		\\TICRS\EXPORT18\IMAGEOUT 18\888\561\88856120\xml5\ ROA0011.JPG
       \\TICRS\EXPORT18\IMAGEOUT 18\888\561\88856120\xml5\ ROA0012.JPG
DESCRIPTION OF EVIDENCE FILETARR Records
GOODS AND/OR SERVICES SECTION (current)
INTERNATIONAL CLASS033
DESCRIPTIONAlcoholic beverages except beers
FILING BASISSection 1(b)
GOODS AND/OR SERVICES SECTION (proposed)
INTERNATIONAL CLASS033
TRACKED TEXT DESCRIPTION
Alcoholic beverages except beers; Wine
FINAL DESCRIPTIONWine
FILING BASISSection 1(b)
CORRESPONDENCE INFORMATION (current)
NAMEJ. SCOTT GERIEN
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCEtmdept@dpf-law.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) NOT PROVIDED
DOCKET/REFERENCE NUMBERSCHE5-109
CORRESPONDENCE INFORMATION (proposed)
NAMEJ. Scott Gerien
PRIMARY EMAIL ADDRESS FOR CORRESPONDENCEtmdept@dpf-law.com
SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES) NOT PROVIDED
DOCKET/REFERENCE NUMBERSCHE5-109
SIGNATURE SECTION
RESPONSE SIGNATURE/J. Scott Gerien/
SIGNATORY'S NAME J. Scott Gerien
SIGNATORY'S POSITION Attorney of record, California bar member
SIGNATORY'S PHONE NUMBER 7072527122
DATE SIGNED 12/30/2020
AUTHORIZED SIGNATORY YES
FILING INFORMATION SECTION
SUBMIT DATE Wed Dec 30 18:37:20 ET 2020
TEAS STAMP USPTO/ROA-XXX.X.XX.XX-202
01230183720522680-8885612
0-750e32874b86c0e5d557d8d
3233a81ae4c798947755c1cca
4c718f747c63b341-N/A-N/A-
20201230181141298172


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 11/30/2023)

Response to Office Action

To the Commissioner for Trademarks:

Application serial no. 88856120 GRANDEUR(Standard Characters, see https://tmng-al.uspto.gov/resting2/api/img/88856120/large) has been amended as follows:

ARGUMENT(S)
In response to the substantive refusal(s), please note the following:

The Examiner has refused applicant's application for the mark GRANDEUR in class 33 based on a prior registration for GRANDER for distilled spirits in class 33. As an initial matter, Applicant notes that it has amended the goods in its application to restrict them to "wine." Thus, while the goods at issue are both alcoholic beverages, they are different in that one is distilled spirits and the other is wine. While such distinction may not be particularly relevant when the marks are identical, the marks at issue here are in fact different, with the cited mark being an adjective derived from Old English meaning "more grand," and applicant's mark being a noun derived from Old French term meaning "splendor and impressiveness, especially of appearance or style." Additionally, the term "grand" is highly diluted when used in association with alcohol beverage products, with TESS indicating over 300 marks for alcoholic beverages. Other "GRAND" marks for alcoholic beverages include GRANDE, GRANDE ROSE, GRAND ESTATES and GRAND MOSCATO, just to name a few (see attached TARR records). When a term is used so prevalently in association with particular goods, consumers learn to distinguish different products based on small differences between the marks. Such is the case here, where a party seeing a GRANDER spirit and a GRANDEUR wine in the field of hundreds of "GRAND" derivative marks for alcohol will not be confused given the differences between the marks and the different products. Accordingly, Applicant respectfully requests that the 2(d) refusal be withdrawn.

EVIDENCE
Evidence has been attached: TARR Records
Original PDF file:
evi_10715466-202012301811 41298172_._76074316.pdf
Converted PDF file(s) ( 4 pages) Evidence-1Evidence-2Evidence-3Evidence-4
Original PDF file:
evi_10715466-202012301811 41298172_._86882283.pdf
Converted PDF file(s) ( 3 pages) Evidence-1Evidence-2Evidence-3
Original PDF file:
evi_10715466-202012301811 41298172_._87218817.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2
Original PDF file:
evi_10715466-202012301811 41298172_._86548685.pdf
Converted PDF file(s) ( 2 pages) Evidence-1Evidence-2

CLASSIFICATION AND LISTING OF GOODS/SERVICES

Applicant proposes to amend the following:

Current:
Class 033 for Alcoholic beverages except beers
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.


Proposed:

Tracked Text Description: Alcoholic beverages except beers; Wine

Class 033 for Wine
Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in connection with the identified goods/services, and 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.

Correspondence Information (current):
      J. SCOTT GERIEN
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdept@dpf-law.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is SCHE5-109.

Correspondence Information (proposed):
      J. Scott Gerien
      PRIMARY EMAIL FOR CORRESPONDENCE: tmdept@dpf-law.com
      SECONDARY EMAIL ADDRESS(ES) (COURTESY COPIES): NOT PROVIDED

The docket/reference number is SCHE5-109.

Requirement for Email and Electronic Filing: I understand that a valid email address must be maintained by the owner/holder and the owner's/holder's attorney, if appointed, and that all official trademark correspondence must be submitted via the Trademark Electronic Application System (TEAS).

SIGNATURE(S)
Response Signature
Signature: /J. Scott Gerien/     Date: 12/30/2020
Signatory's Name: J. Scott Gerien
Signatory's Position: Attorney of record, California bar member

Signatory's Phone Number: 7072527122

The signatory has confirmed that he/she is a U.S.-licensed attorney who is an active member in good standing of the bar of the highest court of a U.S. state (including the District of Columbia and any U.S. Commonwealth or territory); and he/she is currently the owner's/holder's attorney or an associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S.-licensed attorney not currently associated with his/her company/firm previously represented the owner/holder in this matter: the owner/holder has revoked their power of attorney by a signed revocation or substitute power of attorney with the USPTO; the USPTO has granted that attorney's withdrawal request; the owner/holder has filed a power of attorney appointing him/her in this matter; or the owner's/holder's appointed U.S.-licensed attorney has filed a power of attorney appointing him/her as an associate attorney in this matter.

Mailing Address:    J. SCOTT GERIEN
   DICKENSON PEATMAN & FOGARTY
   
   1455 FIRST STREET, STE. 301
   NAPA, California 94559
Mailing Address:    J. Scott Gerien
   DICKENSON PEATMAN & FOGARTY
   1455 FIRST STREET, STE. 301
   NAPA, California 94559
        
Serial Number: 88856120
Internet Transmission Date: Wed Dec 30 18:37:20 ET 2020
TEAS Stamp: USPTO/ROA-XXX.X.XX.XX-202012301837205226
80-88856120-750e32874b86c0e5d557d8d3233a
81ae4c798947755c1cca4c718f747c63b341-N/A
-N/A-20201230181141298172