To: | Westrock Coffee Roasting, LLC (trademarks@stokeslaw.com) |
Subject: | U.S. Trademark Application Serial No. 90225705 - INNER CIRCLE - 54717-229 |
Sent: | February 25, 2021 03:45:25 PM |
Sent As: | ecom127@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90225705
Mark: INNER CIRCLE
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Correspondence Address:
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Applicant: Westrock Coffee Roasting, LLC
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Reference/Docket No. 54717-229
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: February 25, 2021
INTRODUCTION
SECTION 2(d) REFUSAL 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. 4737833. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the attached registration.
Here, applicant seeks to register the mark INNER CIRCLE in standard character format for use in connection with “coffee” in International Class 30.
The registered marks is INNER CIRCLE in standard character format for use in connection with “rum” in International Class 33.
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. 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 and differences in the marks.”); TMEP §1207.01.
Comparison of the Marks
In the present case, applicant’s mark is INNER CIRCLE and registrant’s mark is INNER CIRCLE. These marks are identical in appearance, sound, and meaning, “and have the potential to be used . . . in exactly the same manner.” In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017). Additionally, because they are identical, these marks are likely to engender the same connotation and overall commercial impression when considered in connection with applicant’s and registrant’s respective goods. Id.
Therefore, the marks are confusingly similar.
Relatedness of the Goods
· http://www.staugustinedistillery.com/pot-distilled-rum and http://store.staugustinedistillery.com/collections/gift-ideas/products/bourbon-barrel-rested-coffee (showing St. Augustine Distillery offering both coffee and rum under the same mark);
· http://www.margaritavillespirits.com/rum.html and http://www.margaritavillefoods.com/products.html?category=66 (showing Margaretville offering both coffee and rum under the same mark); and
· http://www.shopmcmenamins.com/spirits/ and http://www.shopmcmenamins.com/coffee/ (showing McMenamins offering both coffee and rum under the same mark).
This evidence establishes that the parties’ respective goods frequently travel in the same channels of trade, and are offered to the same class of class of consumers in the same field of use. Additionally, the evidence demonstrates that consumers are accustomed to seeing businesses offer both coffee and rum under the same mark. As a result, consumers encountering applicant’s and registrants’ respective goods at the same time are likely to mistakenly presume the goods originate from the same source because of the relationship between the good.
Thus, applicant’s and registrant’s goods 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).
Conclusion
Ultimately, because the parties’ marks are confusingly similar and the parties’ goods are closely related, a likelihood of confusion exists and registration must be refused under Section 2(d) of the Trademark Act.
RESPONSE GUIDELINES
For this application to proceed, applicant must explicitly address each refusal and/or requirement in this Office action. For a refusal, applicant may provide written arguments and evidence against the refusal, and may have other response options if specified above. For a requirement, applicant should set forth the changes or statements. Please see “Responding to Office Actions” and the informational video “Response to Office Action” for more information and tips on responding.
How to respond. Click to file a response to this nonfinal Office action.
ASSISTANCE
The USPTO does not accept emails as responses to Office actions; however, emails can be used for informal communications and are included in the application record. See 37 C.F.R. §§2.62(c), 2.191; TMEP §§304.01-.02, 709.04-.05.
/Dominic R. Pino III/
Mr. Dominic R. Pino III
Trademark Examining Attorney
Law Office 127
(571) 272-1611
dominic.pino@uspto.gov
RESPONSE GUIDANCE