To: | LA NETA GROUP, LLC (choffman@dickinsonwright.com) |
Subject: | U.S. Trademark Application Serial No. 90408238 - LA NETA TEQUILA - 085891-00007 |
Sent: | March 15, 2021 09:58:22 AM |
Sent As: | ecom118@uspto.gov |
Attachments: | Attachment - 1 Attachment - 2 Attachment - 3 Attachment - 4 Attachment - 5 |
United States Patent and Trademark Office (USPTO)
Office Action (Official Letter) About Applicant’s Trademark Application
U.S. Application Serial No. 90408238
Mark: LA NETA TEQUILA
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Correspondence Address: 1750 E. LAS OLAS BLVD. SUITE 1750
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Applicant: LA NETA GROUP, LLC
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Reference/Docket No. 085891-00007
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 15, 2021
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, LA NETA TEQUILA, includes the registrants’ marks, TEQUILA and NETA. 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.
Furthermore, the goods are closely related and overlapping. The applicant’s goods are “Distilled spirits; Liquor and liqueur beverages, namely, tequila.” The ‘126 registrant’s goods are “DISTILLED SPIRITS, NAMELY, SPIRITS DISTILLED FROM THE BLUE TEQUILANA WEBER VARIETY OF AGAVE PLANT.” The ‘784 registrant’s goods are “Alcoholic beverages except beers.” The applicant’s goods include the ‘126 registrant’s goods. The applicant’s goods are wholly within the scope of the ‘784 registrant’s goods.
The overriding concern is not only to prevent buyer confusion as to the source of the goods and/or services, but to protect the registrant from adverse commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil Co., 992 F.2d 1204, 1208, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Therefore, any doubt regarding a likelihood of confusion determination is resolved in favor of the registrant. TMEP §1207.01(d)(i); see Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
In this case, 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.
Identification of Goods
Proprietary wording, such as a registered term, should not be used in identifications, which should consist of generic everyday wording for the goods and/or services. See TMEP §§1402.01, 1402.09. A registered mark indicates origin in one particular party and so may not be used to identify goods and/or services that originate in a party other than that registrant. TMEP §1402.09 (citing Camloc Fastener Corp. v. Grant, 119 USPQ 264, 264 n.1 (TTAB 1958)).
For assistance with identifying and classifying goods and services in trademark applications, please see the USPTO’s online searchable U.S. Acceptable Identification of Goods and Services Manual. See TMEP §1402.04.
Translation
Processing fee required. Applicant must submit an additional processing fee of $100 per class because the application as originally filed did not meet the TEAS Plus application filing requirements. See 37 C.F.R. §2.22(c); TMEP §§819.01-.01(q), 819.04. Specifically, applicant failed to meet the following requirement(s): Applicant did not submit an English translation of the foreign wording in the mark. 37 C.F.R. §§2.32(a)(9), 2.61(b).
The additional processing fee is required regardless of whether applicant satisfies these application requirements.
Accordingly, the application will no longer be treated as TEAS Plus; it is now considered a TEAS Standard application. See 37 C.F.R. §2.22(c); TMEP §819.04.
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