United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
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U.S. Application Serial No. 88958257
Mark: MODELO CANTARITO
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Correspondence Address: 233 SOUTH WACKER DRIVE, SUITE 8000
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Applicant: Cervecería Modelo de México, S. de R.L. ETC.
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Reference/Docket No. 105820-6
Correspondence Email Address: |
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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 18, 2021
This Office action is in response to applicant’s communication filed on 03/09/2021.
In a previous Office action(s) dated 09/10/2020, the trademark examining attorney refused registration of the applied-for mark based on the following: Trademark Act Section 2(d) for a likelihood of confusion with a registered mark. In addition, applicant was required to satisfy the following requirement(s): foreign translation requirement.
Based on applicant’s response, the trademark examining attorney notes that the following requirement(s) have been satisfied: foreign translation requirement. See TMEP §§713.02, 714.04.
Applicant’s arguments and amendment with respect to the refusal has been considered and found unpersuasive for the reasons set forth below.
Further, the trademark examining attorney maintains and now makes FINAL the refusal(s) and/or requirement(s) 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:
REFUSAL – SECTION 2(d) – LIKELIHOOD OF CONFUSION
Registration of the applied-for mark is refused because of a likelihood of confusion with the mark in U.S. Registration No(s) 4035575 (“CANTARITOS” for “Soft drinks”).Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the previously attached registration.
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
Applicant’s applied-for mark is “MODELO CANTARITO”. The mark in U.S. Registration No. 4035575 is “CANTARITOS”. Both marks are in standard character form.
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).
The applied-for mark contains the wording “CANTARITO”. The registered mark is “CANTARITOS”, which is the plural version of “CANTARITO”. Marks may be confusingly similar in appearance where similar terms or phrases or similar parts of terms or phrases appear in the compared marks and create a similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1495, 1 USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985) (finding CONFIRM and CONFIRMCELLS confusingly similar); In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983) (finding MILTRON and MILLTRONICS confusingly similar); TMEP §1207.01(b)(ii)-(iii). To that end, the registered mark and the applied-for mark have the same connotation and overall commercial impression.
The additional wording “MODELO” in the applied-for mark does not significantly change the overall commercial impression. It appears that applicant uses “MODELO” as a house mark based on the active prior registrations listed in the application. Adding a house mark to an otherwise confusingly similar mark will not obviate a likelihood of confusion under Section 2(d). See In re Fiesta Palms LLC, 85 USPQ2d 1360, 1366-67 (TTAB 2007) (finding CLUB PALMS MVP and MVP confusingly similar); In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (finding LE CACHET DE DIOR and CACHET confusingly similar); TMEP §1207.01(b)(iii). It is likely that goods and/or services sold under these marks would be attributed to the same source. See In re Chica, Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007).
The fact that there is an extra “S” in “CANTARITOS” does not significantly change the overall commercial impression. Case law has established that wording in an applied-for mark that is the singular or plural form of wording in a registered mark is essentially identical in sound, appearance, meaning, and commercial impression, and thus the compared wording are confusingly similar. Swiss Grill Ltd., v. Wolf Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (holding “it is obvious that the virtually identical marks [the singular and plural of SWISS GRILL] are confusingly similar”); Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d 1347, 1355 (TTAB 2014) (finding the singular and plural forms of SHAPE to be essentially the same mark) (citing Wilson v. Delaunay, 245 F.2d 877, 878, 114 USPQ 339, 341 (C.C.P.A. 1957) (finding no material difference between the singular and plural forms of ZOMBIE such that the marks were considered the same mark).
As such, viewed as a whole, applicant’s mark is substantially similar in sound, connotation and commercial impression to the registered mark.
Comparison of the Goods
Applicant’s goods/services are “beer”. The goods/services in the registered mark include “soft drinks”. These goods/services are related because they are often provided together by single entities under the same mark.
Determining likelihood of confusion is based on the description of the goods and/or 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)).
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).
The trademark attorney has attached evidence from USPTO’s X-Search database consisting of a representative sample of third-party marks registered for use in connection with the same or similar goods and/or services as those of both applicant and registrant in this case. Please see the attached third party registration evidence, which shows that the goods and/or services at issue are of a kind that may emanate from a single source under a single mark. See In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015) (citing In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); TMEP §1207.01(d)(iii).
The previously attached Internet evidence from “Wikipedia”—and the currently attached Internet evidence from “Insider”, “Fodors”, and “Ranker”—demonstrates that soda is a type of soft drink. The previously attached Internet evidence from “Stevens Point”, “Ithaca Beer Co.”, “Caldera”, “Sprecher Brewery”, and “Abita”—and the currently attached Internet evidence relating to “Gray Brewing Co.”, “Millstream Brewing Co.”, “Motor City Brewing Works”, “Roslyn Brewing Company”, “Saranac”, “Lionshead”, “Peace Tree Brewing”, and “Saint Arnold”—shows the same entity provides the relevant goods at issue. Consequentially, this evidence shows that the relevant goods and/or services are sold or provided through the same trade channels and used by the same classes of consumers in the same fields of use. Therefore, applicant’s and registrant’s goods and/or 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 Arguments with respect to the Refusal
Applicant makes 3 main arguments with respect to the refusal:
Applicant argues that “MODELO” in the applied-for mark refers to applicant and therefore acts as the source of applicant’s goods. Applicant emphasizes how such term is “the strongest and dominant portion of Applicant’s Mark”. However, as discussed above, applicant appears to be using “MODELO” as a house mark; the addition of a house mark would not change the confusingly similar commercial impression of “CANTARITO” versus “CANTARITOS”. Please note that page 5 of applicant’s brief dated 03/09/2021 states “Applicant’s Mark consists of the well-known and widely used MODELO house brand (emphasis added)”.
Applicant argues that it would be highly unlikely for consumers to mistakenly believe that the cited goods and applicant’s goods emanate from the same source given that applicant’s well-known house brand name. This argument does not address how beer and soft drinks are related and found under the same channels of trade. Also, “‘[a] showing of actual confusion is not necessary to establish a likelihood of confusion.’” In re i.am.symbolic, llc, 866 F.3d 1315, 1322, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (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(d)(ii). “[T]he relevant test is likelihood of confusion, not actual confusion.” In re Detroit Athletic Co., 903 F.3d 1297, 1309, 128 USPQ2d 1047, 1053 (Fed. Cir. 2018) (emphasis in original). “Uncorroborated statements of no known instances of actual confusion . . . are of little evidentiary value,” especially in ex parte examination. In re Majestic Distilling Co., 315 F.3d 1311, 1317, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).
Applicant takes issue with the previously attached evidence by the trademark examining attorney consisting of “a mere Wikipedia page about soft drinks, and a handful of screenshots of websites of small craft breweries that appear to sell both alcoholic and non-alcoholic beverages”. However, applicant does not actually provide any evidence of its own regarding why beer and soft drinks would not be considered related goods aside from making conclusory statements. Moreover, the previously attached evidence establishes that sodas are a type of a soft drink and that companies provide beer and types of soft drinks under the same trademark. More evidence have also been attached.
Applicant argues that In re Pan American Properties, Corp., is instructive in this case. Prior decisions and actions of other trademark examining attorneys in applications for other marks have little evidentiary value and are not binding upon the USPTO or the Trademark Trial and Appeal Board. TMEP §1207.01(d)(vi); see In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790, 1793 n.10 (TTAB 2017). Each case is decided on its own facts, and each mark stands on its own merits. In re Cordua Rests., Inc., 823 F.3d 594, 600, 118 USPQ2d 1632, 1635 (Fed. Cir. 2016) (citing In re Shinnecock Smoke Shop, 571 F.3d 1171, 1174, 91 USPQ2d 1218, 1221 (Fed. Cir. 2009); In re Nett Designs, Inc., 236 F.3d 1339, 1342, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)).
Also, applicant’s attempts to analogize In re Pan American Properties, Corp., to the current case is not a persuasive argument for the following reasons. The referenced case involves “G SHOT” and “G-SHOT”. Applicant notes that the only difference between “G SHOT” and “G-SHOT” was an incidental hyphen, and hyphens are immaterial. Applicant goes on to argue that in the instant case, “MODELO” is different because “MODELO” is a well-known and widely used house mark. Applicant somehow ignores how case law has established that adding a house mark to an otherwise confusingly similar mark will not obviate a likelihood of confusion under Section 2(d).
Applicant argues that the cited mark merely consists of “CANTARITOS”, which is the Spanish plural form of the second term in applicant’s mark. As discussed above, case law has found that the plural form of wording conveys the same commercial impression. Applicant notes that the goods at issue for In re Pan American Properties, Corp. were complementary and the instant goods at issue are not complementary. Applicant’s implied argument appears to be that because beer and soft drinks are not complementary goods, they are not related goods. While certainly a novel perspective to take, this argument does not address why the goods at issue are unrelated. Applicant’s argument does not address the examining attorney’s evidence that the same companies provide beer and soft drinks under the same trademark in any meaningful manner.
Applicant additionally argues that soft drinks and beer tend to be interchangeable. Applicant argues that “while [beer and soft drinks] are both items that consumers ingest, that is the end of their similarity”. This is like saying that skirts and pants are interchangeable because they are both bottoms that consumers wear and that is the end of their similarity.
Applicant argues that there is no evidence that “CANTARITOS” and “MODELO CANTARITO” could or do travel through the same trade channels. This ignores how the trademark examining attorney previously attached evidence showing that the same company provides the goods at issue under the same trademark.
Based on the foregoing, the refusal of registration is made FINAL.
CONCLUSION
Applicant must respond within six months of the date of issuance of this final Office action or the application will be abandoned. 15 U.S.C. §1062(b); 37 C.F.R. §2.65(a). Applicant may respond by providing one or both of the following:
(1) a response filed using the Trademark Electronic Application System (TEAS) that fully satisfies all outstanding requirements and/or resolves all outstanding refusals; and/or
(2) an appeal to the Trademark Trial and Appeal Board filed using the Electronic System for Trademark Trials and Appeals (ESTTA) with the required filing fee of $200 per class.
37 C.F.R. §2.63(b)(1)-(2); TMEP §714.04; see 37 C.F.R. §2.6(a)(18); TBMP ch. 1200.
In certain rare circumstances, an applicant may respond by filing a petition to the Director pursuant to 37 C.F.R. §2.63(b)(2) to review procedural issues. TMEP §714.04; see 37 C.F.R. §2.146(b); TBMP §1201.05; TMEP §1704 (explaining petitionable matters). There is a fee required for filing a petition. 37 C.F.R. §2.6(a)(15).
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).
/Xu, Elaine/
Trademark Examining Attorney
Law Office 128
(571) 270-5297
elaine.xu@uspto.gov
RESPONSE GUIDANCE
