United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90175049
Mark: JOSE CUERVO JOSE CUERVO ESPECIAL
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Correspondence Address: |
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Applicant: TEQUILA CUERVO, S.A. DE C.V.
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Reference/Docket No. 880414
Correspondence Email Address: |
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NONFINAL 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). A link to the appropriate TEAS response form appears at the end of this Office action.
Issue date: October 28, 2020
The referenced application has been reviewed by the assigned trademark examining attorney. Applicant must respond timely and completely to the issue(s) below. 15 U.S.C. §1062(b); 37 C.F.R. §§2.62(a), 2.65(a); TMEP §§711, 718.03.
Likelihood of Confusion
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.
In this case, the applied-for mark, JOSE CUERVO JOSE CUERVO ESPECIAL FABRICA LA ROJENA TEQUILA, includes the 5225126 registrant’s mark, TEQUILA. Incorporating the entirety of one mark within another does not obviate the similarity between the compared marks, as in the present case, nor does it overcome a likelihood of confusion under Section 2(d). See Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (C.C.P.A. 1977) (finding CALIFORNIA CONCEPT and surfer design and CONCEPT confusingly similar); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 557, 188 USPQ 105, 106 (C.C.P.A. 1975) (finding BENGAL LANCER and design and BENGAL confusingly similar); In re Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (finding BARR GROUP and BARR confusingly similar); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016) (finding JAWS DEVOUR YOUR HUNGER and JAWS confusingly similar); TMEP §1207.01(b)(iii). In the present case, the marks are identical in part.
The applied-for mark is also highly similar to the 0711360, 1459451, 1718557, 2200141, 2158371, 2439162, 2507566, 2537024, 2648617, 4805818, 5557567, 3791141, 4071014, 4147136, 3169796, 3321903, 3321906, 3407395, 4572336, 4568565, 4349104, and 5073771 registrant’s marks; JOSE CUERVO, JOSE CUERVO FABRICA LA ROJENA, FABRICA LA ROJENA, JOSE CUERVO TRADICIONAL, JOSE CUERVO, JOSE CUERVO ESPECIAL, JOSE CUERVO ESPECIAL TRADICIONAL, AUTHENTIC JOSE CUERVO MARGARITAS, JOSE CUERVO PLATINO, JOSE CUERVO RESERVA, JOSE CUERVO 250 ANIVERSARIO, JOSE CUERVO TRADICIONAL 1795, JOSE CUERVO, JOSE CUERVO, JOSE CUERVO GOLDEN MARGARITA, JOSE CUERVO GOLDEN MARGARITA, JOSE CUERVO BLACK, JOSE CUERVO AUTHENTICA MARGARITA, JOSE CUERVO TRADICIONAL 1795, JOSE CUERVO TRADICIONAL and JOSE CUERVO ESPECIAL. All of the cited registrations share significant elements with the applied-for mark.
Furthermore, the goods are closely related and overlapping. The applicant’s goods are “Distilled blue agave liquor, alcoholic cocktail mixes, containing distilled blue agave liquor.” The 5225126 registrant’s goods are “DISTILLED SPIRITS, NAMELY, SPIRITS DISTILLED FROM THE BLUE TEQUILANA WEBER VARIETY OF AGAVE PLANT.” The 0711360, 1459451, 1718557, 2200141, 2158371, 2439162, 2507566, 2537024, 2648617, 4805818, 5557567, 3791141, 4071014, 4147136, 3169796, 3321903, 3321906, 3407395, 4572336, 4568565, 4349104, and 5073771 registrant’s goods are “Tequila” “Tequila” “Tequila” “Alcoholic beverages, namely, tequila” “alcoholic beverages, namely, tequila and prepared alcoholic cocktails” ““Tequila” “Alcoholic beverages, namely, tequila” “Tequila” “Prepared alcoholic cocktails containing tequila” “tequila” “Distilled blue agave liquor” “Alcoholic beverages, namely, tequila” “Tequila” “Tequila” “Prepared alcoholic cocktail mixes containing tequila” “Prepared alcoholic cocktail mixes containing tequila” “Prepared alcoholic cocktail mixes containing tequila” “Tequila” “Alcoholic cocktail mixes” “Tequila” “Alcoholic beverages, namely, tequila” and “Tequila.” The applicant’s goods are within the scope of the registrant’s goods.
Since the marks are highly similar and the goods are closely related and overlapping, there is a substantial likelihood of confusion as to the source of the goods.
(1) Record the assignment with the USPTO’s Assignment Recordation Branch (ownership transfer documents such as assignments can be filed online at http://etas.uspto.gov) and promptly notify the trademark examining attorney that the assignment has been duly recorded;
(2) Submit copies of documents evidencing the chain of title; or
(3) Submit the following statement, verified with an affidavit or signed declaration under 37 C.F.R. §2.20: “Applicant is the owner of U.S. Registration Nos. 0711360, 1459451, 1718557, 2200141, 2158371, 2439162, 2507566, 2537024, 2648617, 4805818, 5557567, 3791141, 4071014, 4147136, 3169796, 3321903, 3321906, 3407395, 4572336, 4568565, 4349104, and 5073771.” To provide this statement using the Trademark Electronic Application System (TEAS), use the “Response to Office Action” form; answer “yes” to wizard questions #3 and #9; then, continuing on to the next portion of the form, in the “Additional Statement(s)” section, find “Active Prior Registration(s)” and insert the U.S. registration numbers in the data fields; and follow the instructions within the form for signing. The form must be signed twice; a signature is required both in the “Declaration Signature” section and in the “Response Signature” section.
TMEP §812.01; see 15 U.S.C. §1060; 37 C.F.R. §§2.193(e)(1), 3.25, 3.73(a)-(b); TMEP §502.02(a).
Recording a document with the Assignment Recordation Branch does not constitute a response to an Office action. TMEP §503.01(d).
Translation
Disclaimer
The wording ESPECIAL means SPECIAL and the attached page from American Heritage dictionary shows that SPECIAL means “Surpassing what is common or usual; exceptional.” Thus, the wording merely describes applicant’s goods because it attributes excellence to the goods.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “ESPECIAL” apart from the mark as shown.
For an overview of disclaimers and instructions on how to provide one using the Trademark Electronic Application System (TEAS), see the Disclaimer webpage.
Drawing
The drawing is not acceptable because the digitized image of the mark is unclear and does not show all aspects of the mark in sufficient detail. See TMEP §807.04(a). A clear drawing of the mark is an application requirement. 37 C.F.R. §2.52. Therefore, applicant must submit a new drawing showing a clear depiction of the mark. All lines must be clean, sharp and solid, and not fine or crowded. 37 C.F.R. §§2.53(c), 2.54(e); TMEP §§807.05(c), 807.06(a). The new drawing must have the federal registration symbol ® deleted from the drawing of the mark; this symbol is not part of the mark and is not registrable. See 37 C.F.R. §2.72; TMEP §807.14(a). Although applicant must delete this matter, applicant may not make any other changes or amendments that would materially alter the drawing of the mark. See 37 C.F.R. §2.72; TMEP §§807.14 et seq. For more information about deleting matter from the drawing, see the Drawing webpage.
The applicant should also note the following potential grounds for refusal.
Prior-Pending Applications
In response to this Office action, applicant may present arguments in support of registration by addressing the issue of the potential conflict between applicant’s mark and the marks in the referenced applications. Applicant’s election not to submit arguments at this time in no way limits applicant’s right to address this issue later if a refusal under Section 2(d) issues.
Please call or email the assigned trademark examining attorney with questions about this Office action.
How to respond. Click to file a response to this nonfinal Office action.
/RonaldMcMorrow/
Examining Attorney
Law Office 118
ronald.mcmorrow@uspto.gov
(571) 272-9306
RESPONSE GUIDANCE