PTO Form 1957 (Rev 9/2005)
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`OMB No. 0651-0050 (Exp. 07/31/2017)
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`Response to Office Action
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`Input Field
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`SERIAL NUMBER
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`LAW OFFICE ASSIGNED
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`MARK SECTION
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`MARK
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`LITERAL ELEMENT
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`STANDARD CHARACTERS
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`USPTO-GENERATED IMAGE
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`MARK STATEMENT
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`EVIDENCE SECTION
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`        EVIDENCE FILE NAME(S)
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`       ORIGINAL PDF FILE
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`       CONVERTED PDF FILE(S)
`       (7 pages)
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`The table below presents the data as entered.
`
`Entered
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`86062955
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`LAW OFFICE 104
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`http://tsdr.uspto.gov/img/86062955/large
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`ROCKÄS RUM INFUSED BEVERAGE
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`YES
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`YES
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`The mark consists of standard characters, without claim to any particular font style,
`size or color.
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`evi_701095314-105751257_._ROCKAS.pdf
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`\\TICRS\EXPORT16\IMAGEOUT16\860\629\86062955\xml4\ROA0002.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\860\629\86062955\xml4\ROA0003.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\860\629\86062955\xml4\ROA0004.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\860\629\86062955\xml4\ROA0005.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\860\629\86062955\xml4\ROA0006.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\860\629\86062955\xml4\ROA0007.JPG
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`\\TICRS\EXPORT16\IMAGEOUT16\860\629\86062955\xml4\ROA0008.JPG
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`DESCRIPTION OF EVIDENCE FILE
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`arguments to overcome the Section 2(d) refusal.
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`ADDITIONAL STATEMENTS SECTION
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`DISCLAIMER
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`SIGNATURE SECTION
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`RESPONSE SIGNATURE
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`SIGNATORY'S NAME
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`SIGNATORY'S POSITION
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`SIGNATORY'S PHONE NUMBER
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`DATE SIGNED
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`AUTHORIZED SIGNATORY
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`No claim is made to the exclusive right to use RUM INFUSED BEVERAGE apart
`from the mark as shown.
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`/avann/
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`Antonio G. Vann
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`Attorney of Record, VA Bar Member
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`2027168266
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`04/02/2014
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`YES
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`FILING INFORMATION SECTION
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`SUBMIT DATE
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`Wed Apr 02 11:00:10 EDT 2014
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`       
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`       
`

`

`USPTO/ROA-XX.XXX.XX.XX-20
`140402110010272289-860629
`55-500e5d814ad2d3e4df75ac
`cb4da9f9a385ec5c076ad9d04
`f5ae24438cff6af19-N/A-N/A
`-20140402105751257158
`
`TEAS STAMP
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`PTO Form 1957 (Rev 9/2005)
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`OMB No. 0651-0050 (Exp. 07/31/2017)
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`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 86062955 ROCKÄS RUM INFUSED BEVERAGE(Standard Characters, see http://tsdr.uspto.gov/img/86062955/large)
`has been amended as follows:
`
`EVIDENCE
`Evidence in the nature of arguments to overcome the Section 2(d) refusal. has been attached.
`Original PDF file:
`evi_701095314-105751257_._ROCKAS.pdf
`Converted PDF file(s) ( 7 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use RUM INFUSED BEVERAGE apart from the mark as shown.
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`SIGNATURE(S)
`Response Signature
`Signature: /avann/     Date: 04/02/2014
`Signatory's Name: Antonio G. Vann
`Signatory's Position: Attorney of Record, VA Bar Member
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`Signatory's Phone Number: 2027168266
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`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an
`associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not
`currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently
`filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or
`Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`Serial Number: 86062955
`Internet Transmission Date: Wed Apr 02 11:00:10 EDT 2014
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20140402110010272
`289-86062955-500e5d814ad2d3e4df75accb4da
`9f9a385ec5c076ad9d04f5ae24438cff6af19-N/
`
`        
`

`

`A-N/A-20140402105751257158
`
`A-N/A-20140402105751257158
`
`

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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`
`Applicant:
`Serial No.:
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`CH Holdings, LLC
`86062955
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`September 12, 2013
`Filed:
`Natalie L. Kenealy
`Trademark Atty:
`ROCKAS RUM INFUSED BEVERAGE
`Word Mark:
`
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`RESPONSE TO OFFICE ACTION DATED DECEMBER 26, 2013
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`This Response is filed in reply to the Office Action e-mailed on December 26, 2013. The Applicant
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`respectfully submits the following response. Applicant submits that the above-identified trademark
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`application for ROCKAS RUM INFUSED BEVERAGE is in condition for allowance to publication.
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`Potential Section 2(d) — Likelihood of Confusion
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`Applicant submits a preliminary response to the potential section 2(d) refusal; however, Applicant
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`reserves all rights to provide a detailed and more descriptive response ifExamining Attorney Natalie L.
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`Kenealy raises a Section 2(d) refusal in a subsequent Office Action.
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`Applicant’ s Word Mark
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`Cited Registered Marks
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`ROCKAS RUM INFUSED BEVERAGE
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`and
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`ROCKER
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`Reg. No. 4109917
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`Reg. No. 4345330
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`Preliminary Response with Reservation ofRights
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`The USPTO suggests that it will refuse registration of Applicant’s mark, ROCKAS RUM
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`INFUSED BEVERAGE, because ofa likelihood ofconfusion with registered marks R ROKKA
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`

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`LIQUEUR and ROCKER. “[T]he question ofconfusion is related not to the nature of the mark but to its
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`effect “when applied to the goods of the applicant.’” In re E. I. duPonr de Nemotms (Q Ca, 476 F.2d 1357,
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`1360. 177 USPQ 563, 566 (C.C.P.A. 1973). The United States Court of Customs and Patent Appeals listed
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`thirteen factors to weigh in the likelihood of confusion analysis and stated that all of the factors must be
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`considered “when of record.” Id. at 1361. The Examining Attorney has indicated that similarity of the
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`marks, similarity of the goods and/or services, and similarity of trade channels of the goods and /or
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`services weigh against the Applicant’s mark. However, Applicant respectfully asserts that when all factors
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`are weighed, the majority weighs against the existence ofa likelihood ofconfusion.
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`(I) Similarity 0fCanflicting Designations
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`The first factor is the similarity of the conflicting designations, including in their appearance,
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`sound, meaning or connotation, and commercial impression. In re E I. du Pant de Neintmm & Ca, 476
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`F.2d 1357. 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). A similar phrase found in two marks is not
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`dispositive ofa confusing similarity between the marks when the marks give offdifferent commercial
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`expressions. See Kellogg Ca v. Pack’em Enterprises, Inc, 951 F.2d 330 (Fed. Cir. 1991). When
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`Applicant’s mark (ROCKAS RUM INFUSED BEVERAGE), and the Registrants’ marks are compared the
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`appearance is not similar. Applicant’s shared terms are different in appearance. The common elements in
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`question are the variations of ROCKAS, ROKAS, and ROCKER. While these terms have similarities, on
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`their face each is different. The Applicant”s mark utilizes a diaeresis over the letter “a.” One cited
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`registration utilizes a macron over the letter “0.” The other cited registration utilizes the suffix “er.”
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`Further differences are apparent in the additional word elements in the Applicant’s mark that are not shared
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`by the cited registrations, namely, “rum infused beverage.” Phonetically the marks differ in sound as the
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`diaeresis in the Applicant’s mark creates a distinct and different pronunciation than the cited registrations.
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`The term “ROCKAS” is a word originally created by the Applicant, with the purpose of sounding
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`Jamaican in nature. Furthermore, the Applicant’ s mark consists of eight syllables and the cited
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`

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`registrations consist of four and two syllables.
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`Visually, the phrase ROCKAS RUM INFUSED BEVERAGE is easily distinguished from cited
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`Reg. No. 4345330 because it has a large letter “R” in the background ofthe mark. The large “R” creates a
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`commercial impression that is different from the Applicant’s commercial impression. The commercial
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`impression of mark, ROCKER. is significantly different from ROCKAS RUM TNFUSED BEVERAGE
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`because the commercial impression ofa wine beverage is different from that ofa fruit infused rum. For at
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`least these reasons, Applicant asserts that the mark ROCKAS RUM TNFUSED BEVERAGE is
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`significantly different than the cited marks. This factor weighs in Applicant’s favor.
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`(2) Similarity or Dissimilarity and the Nature of the Goods or Services
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`The second factor is the similarity or dissimilarity and the nature of the goods or services as
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`described in an application or registration or in connection with a prior use of the mark. In re E. 1. dill Pont
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`de Nemorirs (Q (70., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Applicant’s goods are for
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`“Alcoholic beverages of fruit; Alcoholic cocktail, mixes, Distilled Spirits.” One cited registration covers
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`“wine” and the other covers “Spirits; Alcoholic beverages except beers.” While the goods in question may
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`share the same classification, they fall within a distinct class of goods where the type ofliquor is a
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`substantially unique characteristic. Consumers purchase liquors based upon whether it is vodka, rum,
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`whiskey, etc. Furthermore, many stores often separate the liquor related goods within the store according
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`to alcohol type. Under this factor, Applicant asserts that, while the classification may be the same, the
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`goods are different.
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`(3) Similarity or Dissimilarity ofEstablished Likely to Continue Trade Channels
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`The third factor is the similarity or dissimilarity ofestablished, likely-to-continue trade channels. In
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`re E. 1. d2! Pont de Ncmoars & (70., 476 F.2d at 1361, 177 USPQ at 567. This factor weighs in favor of a
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`

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`finding of a likelihood ofconfusion. Alcohol is a heavily regulated industry and generally emanates from
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`the same trade channels. This factor weighs in favor ofa likelihood of confusion.
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`(4) Conditions Upon Sales Are Ildade
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`The fourth factor is the condition under which and buyers to whom sales are made (i.e. impulse v.
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`careful). Id. Alcohol is a distinct class of goods where the type of liquor is a substantially unique
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`characteristic driving the conditions of the sale. Consumers purchase liquors based upon whether it is
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`vodka, rum, whiskey. etc. Consumers looking for the cited marks’ wine or liqueur related beverages will
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`not confuse them with Applicant’s rum related beverage. Furthermore. the ROKAS rum is targets a
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`Caribbean market. Applicant asserts that this factor weighs heavily against a likelihood of confusion
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`between these the marks.
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`(5) Fame of the Prior Illark
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`The fifth factor is the fame of the prior mark (eg, sales, advertising. length ofuse. era). Id. There
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`is no evidence that the prior marks are famous. Therefore, this factor weighs against a likelihood of
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`confusion.
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`(6) Number and Nature of Similar Marks in Use on Similar Goods
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`The sixth factor is the number and nature of similar marks in use in connection with similar
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`services. Id. In this case, the USPTO has not made any assertions as to the number and nature of marks
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`used in connection with alcoholic beverages. Therefore. Applicant asserts that this factor also weighs in
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`his favor.
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`(7) Nature and Extent ofAny Actual Confusion
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`The seventh factor concerns the nature and extent of any actual confusion. Id No evidence exists
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`

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`that any consumer has been confused by the use of these marks. I11 fact, the concurrent registration of the
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`cited marks. ROCKERS and ROKAS, indicates that similar marks can exist without actual confusion
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`occurring. Consequently, Applicant asserts that this factor weighs in its favor.
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`(8) Length of Time During and Conditions under which There Has Been Concurrent Use Without
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`Evidence ofActual Confusion
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`The eighth factor is the length of time during and conditions under which there has been concurrent
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`use without evidence of actual confusion. Id. Applicant’s has enjoyed use of its mark since August 1. 2013
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`and has experienced no confusion with the cited registrations. Applicant also asserts that if the cited
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`registrations can exist concurrently without confusion occurring, then the Applicant’s mark could certainly
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`do the same. Therefore, this factor weighs in the Applicant’s favor.
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`(9) Variety of Goods on which n 1110146 Is or 15 Not Used
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`The ninth factor is the variety of goods on which a mark is or is not used (house mark. “family”
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`mark, product mark). In re E. I. du Pont de Nemours & Ca, 476 F.2d at 1361. 177 USPQ at 567. None of
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`the marks are house or family marks. Consequently. this factor is neutral.
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`(10) Market Interface Between Applicant and the Owner of (1 Prior JVIark
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`The tenth factor is the market interface between Applicant and the owner of a valid, prior mark. Id.
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`In this case. there has been no interface between the Applicant and the Registrants. However, Applicant
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`alleges that any potential interface will be minimal due to industry regulations. Therefore. this factor is at
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`least neutral, if not in favor of the Applicant.
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`(1]) Extent to which Applicant has a Right to Exclude Others from Use of its ll/Iark on its Goods
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`The eleventh factor is the extent to which Applicant has a right to exclude others from use of its
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`

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`mark on its goods. Id. The Applicant claims exclusive common law rights to the mark because, to
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`Applicant’s knowledge, there is no other alcohol related beverage using the mark “ROCKAS” pronounced
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`as the Applicant pronounces “ROCKAS,” Applicant’s exclusive use of the mark is unique, as applied to
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`the goods, and asserts that this factor weighs in Applicant’s favor.
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`(12) Extent ofPotential Confusion
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`The twelfth factor is the extent of potential confusion, Ila, whether de minimis or substantial. Id.
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`Because (1) Applicant’s mark is spelled differently, pronounced differently, and is for use on fruit infused
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`rum beverages, (2) the cited registrations share similar traits and exist on the principal register without
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`confusion, and (3) the conditions upon which sales are made are careful and precise, the potential for
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`confusion is de minimis and weighs heavily against a likelihood of confusion.
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`(13) Whether There Are any Other Established Facts Probative 0f the Eflect of Use
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`The thirteenth factor looks to whether there are any other established facts probative of the effect of
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`use. Applicant reserves all rights to provide a detailed and more descriptive response on this factor if the
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`USPTO should raise a Section 2(d) refusal in a subsequent Office Action. Applicant further asserts that
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`the USPTO has found a mark capable ofregistration, even in cases where the marks are nearly identical
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`and are covered under the same classification. Furthermore, courts have long held that the addition of
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`different terms to a common element appreciably reduces the likelihood ofconfusion between two marks.
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`See US Trust v. US. States Trust Co., 210 F. Supp. 2d 9, 27-28 (D, Mass 2002) (UNITED STATES
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`TRUST COMPANY not confusingly similar to UNITED STATES TRUST COMPANY OF BOSTON,
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`both for financial services); Colgate Palmolive Co. v. Carter-Wallace, Inc._, 432 F.2d 1400, 1402, 167 U.S.
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`P. Q. 529, 530 (C.C.P.A. 1970) (PEAK PERIOD not confusing similar to PEAK); Servo Corp. Am. v.
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`Servo-Tek Prod. Co, 289 F. 2d 955, 981 129 U.S.P.Q, 352, 353 (C.C.P.A. 1961) (SERVOSPEED not
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`confusingly similar to SERVO); Sweats Fashions, Inc. v. Pannill Knitting C0,, 833 F. 2d '1 560, 1564, 4
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`

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`U.S.P.Q. 2d 1793, 1796 (Fed. Cir. 1987) (SWEATS not confusing similar to ULTRA SWEATS), both for
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`sportswear); Gen. Mills Inc. V. Kellog Co., 824 F. 2d 622, 627, 3 U.S.P.Q. 2d 1442, 1446 (8111 Cir. 1987)
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`(OATMEAL RAISIN CRISP not confusingly similar to APPLE RASIN CRISP, both for breakfast cereal);
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`Consol. Cigar V. RJR Tobacco Co, 491 F.2d 1265, 1267, 181 U.S.P.Q. 44, 45 (C.C.P.A. 1974) (DUTCH
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`APPLE for pipe tobacco not confusingly similar to DUTCH MASTERS for cigars).
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`When determining whether an Applicant’s mark creates a likelihood of confusion, with marks
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`covered by cited registrations " [a] showing of mere possibility of confusion is not enough; a
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`substantial likelihood that the public will be confused must be shown.” Omaha Natl. Bank, 633 F.
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`Supp. at 234, 229 U.S.P.Q. at 52. Applying the factors set forth in Du Pont, and absent “substantial
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`doubt,” In re Mars, Inc., 741 F. 2d 395, 396 222 U.S,P.Q. 938 (Fed. Cir. 1984), registration oprplicant’s
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`mark is appropriate. For these reasons and others, the majority ofthese factors weigh against a finding of a
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`likelihood of confusion. Applicant respectfully submits that the mark for ROCKAS RUM INFUSED
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`BEVERAGE does not create a likelihood ofconfusion with the cited registrations.
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`CONCLUSION
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`Applicant has fully responded to the Office Action. Majority of the “DuPont” factors weigh in the
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`Applicant’s favor. Furthermore, for at least the above reasons, Applicant asserts that Applicant’s mark,
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`ROCKAS RUM INFUSED BEVERAGE, is sufficiently distinct to avoid consumer confusion. Applicant
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`respectfully submits in good faith that all potential 2(d) refusals, rejections. and/or objections have been
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`overcome and that the applied for mark is in condition for publication.
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`Respectfully submitted,
`/Antonio G, Vann/
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`Antonio G. Vann (VSB # 79765)
`
`