To: | TEQUILA CUERVO, S.A. DE C.V. (docket@lawabel.com) |
Subject: | U.S. Trademark Application Serial No. 90175049 - JOSE CUERVO JOSE CUERVO ESPECIAL - 880414 |
Sent: | November 19, 2021 07:55:06 AM |
Sent As: | ecom118@uspto.gov |
Attachments: |
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: November 19, 2021
This Office action is in response to applicant’s communication filed on 11/15/21.
The disclaimer is acceptable and has been entered into the record.
Drawing Amendment Not Acceptable – Material Alteration
The original drawing shows the mark as JOSE CUERVO JOSE CUERVO ESPECIAL FABRICA LA ROJENA TEQUILA. The proposed amended drawing shows the mark as JOSE CUERVO JOSE CUERVO ESPECIAL FABRICA LA ROJENA.
The USPTO cannot accept an amendment to a mark if it will materially alter the mark in the drawing filed with the original application, or in a previously accepted amended drawing. 37 C.F.R. §2.72(a)(2), (b)(2); TMEP §807.14. An amendment to the mark is material when the USPTO would need to republish the mark with the change in the USPTO Trademark Official Gazette to fairly present the mark to the public. In re Thrifty, Inc., 274 F.3d 1349, 1352, 61 USPQ2d 1121, 1123-24 (Fed. Cir. 2001) (citing In re Hacot-Columbier, 105 F.3d 616, 620, 41 USPQ2d 1523, 1526 (Fed. Cir. 1997)); TMEP §807.14.
That is, an amendment is material if the altered mark does not retain “the essence of the original mark” or if the new and old forms do not “create the impression of being essentially the same mark.” In re Hacot-Columbier, 105 F.3d at 620, 41 USPQ2d at 1526 (quoting Visa Int’l Serv. Ass’n v. Life-Code Sys., Inc., 220 USPQ 740, 743-44 (TTAB 1983)); see, e.g., In re Who? Vision Sys., Inc., 57 USPQ2d 1211, 1218 (TTAB 2000) (amendment from “TACILESENSE” to “TACTILESENSE” a material alteration); In re CTB Inc., 52 USPQ2d 1471, 1475 (TTAB 1999) (amendment of TURBO with a design to just the typed word TURBO without design a material alteration).
When determining materiality, the addition of any element that would require a further search of the USPTO database for conflicting marks is also relevant. In re Guitar Straps Online LLC, 103 USPQ2d 1745, 1747 (TTAB 2012) (citing In re Pierce Foods Corp., 230 USPQ 307, 308-09 (TTAB 1986)); In re Who? Vision Sys. Inc., 57 USPQ2d at 1218-19; TMEP §807.14.
In the present case, applicant’s proposed amendment would materially alter the mark in the drawing filed with the original application or as previously amended because the applicant has deleted the distinctive term TEQUILA.
To avoid the application from abandoning, applicant must respond to this issue. TMEP §807.17. Applicant may respond by (1) withdrawing the request to amend the drawing, or (2) arguing that the proposed amendment is not a material alteration of the mark.
For more information about changes to the mark in the drawing after the application filing date, please go to the Drawing webpage.
Refusals and Requirements Maintained and Continued
The Section 2(d) refusal based on a likelihood of confusion with the marks in U.S. Registration Nos. 5225126, 0711360, 1459451, 1718557, 2200141, 2158371, 2439162, 2507566, 2537024, 2648617, 4805818, 5557567, 3791141, 4071014, 4147136, 3169796, 3321903, 3321906, 3407395, 4572336, 4568565, 4349104, and 5073771 is maintained and continued.
The examining attorney notes that the applicant is seeking a consent agreement from the owner of ‘126 Registration.
Applicant indicates that it has a legal relationship with the registrant(s) in the cited 0711360, 1459451, 1718557, 2200141, 2158371, 2439162, 2507566, 2537024, 2648617, 4805818, 5557567, 3791141, 4071014, 4147136, 3169796, 3321903, 3321906, 3407395, 4572336, 4568565, 4349104, and 5073771 registration(s). However, a legal relationship between the parties is insufficient to overcome a likelihood of confusion unless the parties constitute a “single source.” That is, the legal relationship between the parties must exhibit a “unity of control” over the nature and quality of the goods and/or services in connection with which the trademarks and/or service marks are used, and a “unity of control” over the use of the trademarks and/or service marks. See In re Wella A.G., 5 USPQ2d 1359, 1361 (TTAB 1987); see also TMEP §1201.07.
Unity of control is presumed in instances where, absent contradictory evidence, one party owns (1) all of another entity, or (2) substantially all of another entity and asserts control over the activities of that other entity. See TMEP §1201.07(b)(i)-(ii). Such ownership is established, for example, when one party owns all or substantially all of the stock of another or when one party is a wholly owned subsidiary of another. See In re Wella A.G., 5 USPQ2d at 1361; TMEP §1201.07(b)(i)-(ii). It is additionally presumed when, absent contradictory evidence, applicant is shown in USPTO records as a joint owner of the cited registration, or the owner of the registration is listed as a joint owner of the application, and applicant submits a written statement asserting control over the use of the mark by virtue of joint ownership. TMEP §1201.07(b)(ii).
However, in most other situations, additional evidence is required to show unity of control. For example, if the parties are sister corporations or if the parties share certain stockholders, directors or officers in common, additional evidence must be provided to show how the parties constitute a single source. See In re Pharmacia, Inc., 2 USPQ2d 1883, 1884 (TTAB 1987); TMEP §1201.07(b)(iii).
Therefore, applicant must provide a written statement explaining the nature of the legal relationship between the parties. In addition, if neither party owns all or substantially all of the other party, and USPTO records do not show their joint ownership of the application or cited registration, applicant must provide a detailed written explanation and documentary evidence showing the parties’ “unity of control” over the nature and quality of the goods and/or services in connection with which the trademarks and/or service marks are used, and the parties’ “unity of control” over the use of the trademarks and/or service marks. See TMEP §1201.07(b)(i)-(iii). This statement and, if necessary, explanation must be verified with an affidavit or signed declaration under 37 C.F.R. §2.20. TMEP §1201.07(b)(ii)-(iii); see 37 C.F.R. §2.193(e)(1). However, if one party owns all of the other entity, and there is no contradictory evidence of record, the written statement need not be verified. TMEP §1201.07(b)(i).
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). Additionally, the USPTO will not accept a new drawing in which there are amendments or changes that would materially alter the applied-for mark. 37 C.F.R. §2.72; see TMEP §§807.13 et seq., 807.14 et seq.
For more information about drawings and instructions on how to submit a drawing, see the Drawing webpage.
Prior-Pending Applications
The filing dates of pending U.S. Application Serial Nos. 77239213, 77452651, 77563539, 77650320, 77780088, 77810226, 85030171, 85201085, 85201099, and 85377802 precede applicant’s filing date. Copies of these applications were attached to the first Office Action. If one or more of the marks in the referenced applications register, applicant’s mark may be refused registration under Trademark Act Section 2(d) because of a likelihood of confusion with the registered mark(s). See 15 U.S.C. §1052(d); 37 C.F.R. §2.83; TMEP §§1208 et seq. Therefore, upon receipt of applicant’s response to this Office action, action on this application may be suspended pending final disposition of the earlier-filed referenced 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.
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