To: | Good Boy Vodka LLC (tmdocket@gbclaw.net) |
Subject: | U.S. Trademark Application Serial No. 90231849 - GOOD BOY VODKA - 6885.143431 |
Sent: | March 04, 2021 08:12:54 PM |
Sent As: | ecom101@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 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90231849
Mark: GOOD BOY VODKA
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Correspondence Address: |
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Applicant: Good Boy Vodka LLC
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Reference/Docket No. 6885.143431
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: March 04, 2021
Issues Applicant Must Address:
The examining attorney refuses registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d), because the applicant's mark, when used on the identified goods, is likely to be confused with the registered mark in U.S. Registration No. 4940306. See the enclosed registration.
The examining attorney must analyze each case in two steps to determine whether there is a likelihood of confusion. First, the examining attorney must look at the marks themselves for similarities in appearance, sound, connotation and commercial impression. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Second, the examining attorney must compare the goods or services to determine if they are related or if the activities surrounding their marketing are such that confusion as to origin is likely. In re August Storck KG, 218 USPQ 823 (TTAB 1983); In re International Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978); Guardian Products Co., v. Scott Paper Co., 200 USPQ 738 (TTAB 1978).
Applicant seeks to register the mark GOOD BOY VODKA. The registrant’s mark is GOOD BOY STOUT.
The examining attorney must compare the marks for similarities in sound, appearance, meaning or connotation. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Similarity in any one of these elements is sufficient to find a likelihood of confusion. In re Mack, 197 USPQ 755 (TTAB 1977).
The applicant’s mark and the registrant’s mark are similar in appearance, sound and meaning as they both contain the wording GOOD BOY, the dominant element of both the applicant’s mark and the registrant’s mark.
The other wording in the marks, VODKA in applicant’s mark and STOUT in registrant’s mark, is less significance or less dominant in relation to the GOOD BOY element. The wording, VODKA in applicant’s mark and STOUT in registrant’s mark, is the common commercial name of the applicant’s goods and registrant’s goods and has been disclaimed. Although marks are compared in their entireties, one feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(viii), (c)(ii). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997)); TMEP §1207.01(b)(viii), (c)(ii).
If the marks of the respective parties are identical or highly similar, the examining attorney must consider the commercial relationship between the goods or services of the respective parties carefully to determine whether there is a likelihood of confusion. In re Concordia International Forwarding Corp., 222 USPQ 355 (TTAB 1983).
The goods of the parties need not be identical or directly competitive to find a likelihood of confusion. They need only be related in some manner, or the conditions surrounding their marketing be such, that they could be encountered by the same purchasers under circumstances that could give rise to the mistaken belief that the goods come from a common source. In re Martin's Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985); In re Rexel Inc., 223 USPQ 830 (TTAB 1984); Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738 (TTAB 1978); In re International Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Applicant's goods are vodka. The registrant’s goods are beer. The goods are related as they are both alcoholic beverages. Various alcoholic beverages have been shown to be related goods for purposes of a Trademark Act Section 2(d) analysis. In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (holding GASPAR’S ALE for beer and ale likely to be confused with JOSE GASPAR GOLD for tequila); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003) (holding RED BULL for tequila likely to be confused with RED BULL for malt liquor); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261 (TTAB 2011) (holding HB for wine likely to be confused with HB and design for beer); Schieffelin & Co. v. Molson Cos., 9 USPQ2d 2069 (TTAB 1989) (holding BRAS D’OR for brandy likely to be confused with BRADOR for beer); Bureau Nat’l Interprofessionnel Du Cognac v. Int’l Better Drinks Corp., 6 USPQ2d 1610 (TTAB 1988) (holding trademark COLAGNAC for cola flavored liqueur likely to be confused with certification mark COGNAC for brandy).
The goods are complementary as they can be used together to create drinks. See the attached websites for beer and vodka drinks.
http://www.tablespoon.com/recipes/shandy-beer-cocktail/dd9c3318-a7a0-44e3-abbf-bf4598757222
http://mixthatdrink.com/boilermaker/
http://www.drinksmixer.com/drink6488.html
Where evidence shows that the goods at issue have complementary uses, and thus are often used together or otherwise purchased by the same purchasers for the same or related purposes, such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 1567, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are often used in combination and noting that “[s]uch complementary use has long been recognized as a relevant consideration in determining a likelihood of confusion”); In re Hester Indus., Inc., 231 USPQ 881, 882-83 (TTAB 1986) (holding bread and frozen chicken parts to be related because they are complementary goods that are appropriate for use together in sandwiches and may otherwise be sold to the same purchasers for use in a single meal); In re Vienna Sausage Mfg. Co., 230 USPQ 799, 799-800 (TTAB 1986) (holding sausage and cheese to be related because they are complementary goods that may be used together in recipes, sandwiches, and hors d’oeuvres).
The goods would flow in the same channels of trade. The goods would be sold on alcoholic beverage websites, and in stores. The goods would be marketed to people who are interested in buying beer and vodka. As a consequence confusion as to the identity of the source of the goods is likely to occur.
Although the examining attorney has refused registration, the applicant may respond to the refusal to register by submitting evidence and arguments in support of registration. If applicant responds to the refusal, applicant must also respond to the requirement set forth below.
The applicant seeks to register GOOD BOY VODKA for vodka. The word “vodka” appears in applicant’s identification of goods as the common commercial name of the goods. Thus, the wording merely describes what applicant’s goods are.
Applicant may respond to this issue by submitting a disclaimer in the following format:
No claim is made to the exclusive right to use “VODKA” 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.
Earlier-Filed Application
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 mark in the referenced application. 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.
Email/Telephone for Inquiries
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.
How to respond. Click to file a response to this nonfinal Office action.
/Angela M Micheli/
Trademark Examining Attorney, Law Office 101
571.272.9196
angela.micheli@uspto.gov
RESPONSE GUIDANCE