To: | Reverent Distilling Co. LLC (vivek@blgtrademarks.com) |
Subject: | U.S. Trademark Application Serial No. 90133290 - BROOKFIELD - N/A |
Sent: | February 09, 2021 04:41:03 PM |
Sent As: | ecom108@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 Attachment - 6 Attachment - 7 Attachment - 8 Attachment - 9 Attachment - 10 Attachment - 11 Attachment - 12 Attachment - 13 Attachment - 14 Attachment - 15 Attachment - 16 Attachment - 17 Attachment - 18 Attachment - 19 Attachment - 20 Attachment - 21 Attachment - 22 Attachment - 23 Attachment - 24 Attachment - 25 Attachment - 26 Attachment - 27 Attachment - 28 Attachment - 29 Attachment - 30 Attachment - 31 Attachment - 32 Attachment - 33 Attachment - 34 Attachment - 35 Attachment - 36 Attachment - 37 Attachment - 38 Attachment - 39 Attachment - 40 Attachment - 41 Attachment - 42 Attachment - 43 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90133290
Mark: BROOKFIELD
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Correspondence Address:
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Applicant: Reverent Distilling Co. LLC
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Reference/Docket No. N/A
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: February 09, 2021
This Office action is in response to applicant’s communication filed on 01/13/21.
In the first Office action, dated 10/23/20, the examining attorney refused registration of the applied-for mark because of a likelihood of confusion with the mark in U.S. Registration No. 1695570. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq.
In its response, dated 01/13/21, applicant submitted arguments and evidence in support thereof, against the Trademark Act Section 2(d) Likelihood of Confusion refusal with U.S. Registration No. 1695570. The examining attorney has carefully reviewed and considered applicant’s arguments and evidence in support thereof, and is not persuaded. Accordingly, the examining attorney continues and maintains the Trademark Act Section 2(d) Likelihood of Confusion refusal with U.S. Registration No. 1695570 and hereby makes said refusal FINAL.
FINAL RFUSAL - Section 2(d) Likelihood of Confusion Refusal
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
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)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
When comparing marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that [consumers] who encounter the marks would be likely to assume a connection between the parties.” 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). The proper focus is on the recollection of the average purchaser, who retains a general rather than specific impression of trademarks. In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re St. Helena Hosp., 774 F.3d 747, 750-51, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014); Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 1007, 169 USPQ 39, 40 (C.C.P.A. 1971)), aff’d per curiam, 777 F. App’x 516, 2019 BL 343921 (Fed. Cir. 2019); TMEP §1207.01(b).
In this case, applicant’s mark is BROOKFIELD (standard character) for goods listed as “Whiskey” in International Class 33.
Registrant’s mark is BROOKFIELDS (typed drawing) for services listed as “restaurant services” in International Class 42.
Analysis
Here, applicant’s mark, namely, BROOKFIELD and registrant’s mark, namely, BROOKFIELDS, share the formative wording “BROOKFIELD” only differ in that registrant’s mark is the plural form of applicant’s mark. As such, the marks are confusingly similar in general sound, appearance, connotation and commercial impression. 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).
Accordingly, applicant’s mark and registrant’s mark are sufficiently similar, such that consumer confusion in the marketplace is likely.
Applicant’s Response, Dated 01/13/21
In its response, dated 01/13/21, applicant does not expressly argue against the examining attorney’s finding that its mark and registrant’s mark are confusingly similar in general sound, appearance, connotation and commercial impression.
Comparison of the Goods and Services
In this case, applicant’s goods listed as “Whiskey” in International Class 33 are related to registrant’s services listed as “restaurant services” in International Class 42, as restaurant-distilleries often provide both distilled spirits, such as whiskey, and restaurant services to consumers under the same name.
Third-Party Registrations Suggest Goods and Services May Emanate from Single Source
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, “Restaurant services,” “Whiskey” and “Spirits” 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).
Applicant’s Arguments in Response, Dated 01/13/21
In its response, dated 01/13/21, applicant asserts that the instant application is analogous to the In re Coors Brewing Co. case in that there are over 800,000 restaurants in the United States, and there are roughly 2,000 distilleries. As such, applicant argues that restaurants that also provide private label whiskey can only account for only .0025% of all restaurants, at most. While applicant notes that the examining attorney has attached evidence of third parties using the same mark for restaurant services and whiskey, the degree of overlap between the sources of restaurant services and the sources of whiskey is de minimis, and applicant argues that the examining attorney has not shown “something more” than these similar marks are used for beverage products and for restaurant services.
Examining Attorney’s Rebuttal
The examining attorney has carefully reviewed and considered applicant’s arguments and evidence in support thereof, against the finding that applicant’s goods listed as “Whiskey” in International Class 33 are related to registrant’s services listed as “restaurants” in International Class 42, and is not persuaded. 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 evidence of record consists of screenshots of restaurant-distilleries that offer restaurant services and spirits or whiskey under the same mark through the same channels of trade. Specifically, the attached evidence from Barrel 21 Distillery & Dining, Driftless Glenn, Lula Restaurant Distillery, High West Distillery, Rogue, Founding Spirits and Founding Farmers shows that the goods and services at issue are related because it is common in the industry for restaurants to offer and sell spirits named after the restaurant.
Furthermore, in support of establishing the “something more” requirement, the examining attorney has attached to the instant Office action, third-party website evidence from Thrillist, Building Design + Construction, Sirvo and Restaurant Development + Design, showing the growing trend of restaurant-distilleries selling packaged spirits under the same name or brand as the restaurant portion of the business. Please see attached website evidence. In light of this evidence, together with the third-party website evidence of record showing restaurant-distilleries that offer restaurant services and spirits or whiskey under the same mark, the examining attorney submits that the “something more” required by In re Coors Brewing Co. has been established in the instant case.
Therefore, confusion is likely, as consumers would believe that both applicant’s goods and registrant’s services emanate from a single source. Accordingly, registration is refused under Trademark Act Section 2(d) and said refusal is hereby made FINAL.
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).
/Brian P. Callaghan/
Trademark Examining Attorney
Law Office 108
Phone: (571) 272-4906
Email: brian.callaghan@uspto.gov
RESPONSE GUIDANCE