PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`The table below presents the data as entered.
`
`Input Field
`
`Entered
`
`SERIAL NUMBER
`
`86491658
`
`LAW OFFICE ASSIGNED
`
`LAW OFFICE 118
`
`MARK SECTION
`
`MARK FILE NAME
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`EVIDENCE SECTION
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)EVIDENCE FILE NAME(S)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)ORIGINAL PDF FILE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)CONVERTED PDF FILE(S)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(7 pages)
`
`http://tsdr.uspto.gov/img/86491658/large
`
`HERITAGE BREWING CO.
`
`NO
`
`NO
`
`evi_701095314-20150423085315498555_._HERITAGE_BREWING_CO_OA_2d_response.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\916\86491658\xml6\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\916\86491658\xml6\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\916\86491658\xml6\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\916\86491658\xml6\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\916\86491658\xml6\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\916\86491658\xml6\ROA0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\864\916\86491658\xml6\ROA0008.JPG
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`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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`FILING INFORMATION SECTION
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`SUBMIT DATE
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`TEAS STAMP
`
`/tdunlap/
`
`TOM DUNLAP
`
`ATTORNEY OF RECORD
`
`703.777.7319
`
`04/23/2015
`
`YES
`
`Thu Apr 23 09:10:16 EDT 2015
`
`USPTO/ROA-XX.XXX.XX.XX-20
`150423091016196236-864916
`58-530ab23e6eeb6a6c0cca09
`89ff56e5095d455dd794c382e
`2a73dc5168597675bcd6-N/A-
`N/A-20150423085315498555
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 86491658(cid:160)HERITAGE BREWING CO. (Stylized and/or with Design, see http://tsdr.uspto.gov/img/86491658/large) has
`been amended as follows:
`
`EVIDENCE
`
`Original PDF file:
`evi_701095314-20150423085315498555_._HERITAGE_BREWING_CO_OA_2d_response.pdf
`Converted PDF file(s) ( 7 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`
`SIGNATURE(S)
`Response Signature
`Signature: /tdunlap/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 04/23/2015
`Signatory's Name: TOM DUNLAP
`Signatory's Position: ATTORNEY OF RECORD
`
`Signatory's Phone Number: 703.777.7319
`
`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: 86491658
`Internet Transmission Date: Thu Apr 23 09:10:16 EDT 2015
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20150423091016196
`236-86491658-530ab23e6eeb6a6c0cca0989ff5
`6e5095d455dd794c382e2a73dc5168597675bcd6
`-N/A-N/A-20150423085315498555
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant:
`Serial No.:
`
`Heritage brewing Co.
`86491658
`
`Filed:
`Trademark Atty:
`TradeMark:
`
`February 06, 2015
`Leigh Caroline Case
`HERITAGE BREWING CO. (design)
`
`RESPONSE TO FEBRUARY 06, 2015 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e-mailed on February 06, 2015. The Applicant
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`respectfully submits the following response. Applicant submits that the above-identified trademark
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`application for HERITAGE BREWING CO. (design) is in condition for allowance to publication.
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`POTENTIAL SECTION 2(d) REFUSAL — 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 if Examining Attorney Leigh
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`Caroline Case raises a Section 2(d) refusal in a subsequent Office Action.
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`APPLICANT’S MARK
`
`CITED REGISTERED MARK
`
`HERITAGE pmomzg YOUR HERITAGE
`BREWING co.
`
`N0‘
`
`Registration. N0.
`
`Date of First Use: 12/01/2011
`
`Date of First Use: 09/01/2010
`
`Class 032: Beer
`
`Class 032: Beer
`
`

`

`AN EXAMINATION OF THE MARKS AS TO APPEARANCE, SOUND AND MEANING
`DETERMINE THEY ARE NOT SIMILAR
`
`Under In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A.
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`1973), the first factor requires examination of "the similarity or dissimilarity of the marks in their
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`entireties as to appearance, sound, connotation and commercial impression."When considering the
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`similarity of the marks, "[a]ll relevant facts pertaining to the appearance and connotation must be
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`considered." Recot, Inc. V. M.C. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1897 (Fed. Cir.
`
`2000). Moreover, the focus is on the recollection of the average purchaser who normally retains a
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`general, rather than specific, impression of trademarks. See, e.g., In re M. Serman & Company, Inc.,
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`223 USPQ 52 (TTAB 1984).
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`In the present case, the cited registration prominently features the terms
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`PATRONIZE YOUR, which are stated first Within the mark. Given that PATRONIZE YOUR is stated
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`first, it is distinguishable from HERITAGE BREWING CO. in appearance, sound, and connotation.
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`Additionally, the recollections of a general purchaser of the cited registrants goods will focus on
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`PATRONIZE YOUR in reference to the mark rather than its additional terms.
`
`APPLICANT’S MARK HAS ADDITIONAL ELEMENTS GIVING IT A DISTINCT
`COMMERICAL IMPRESSION
`
`The USPTO suggests that it will refuse registration of Applicant’s mark, HERITAGE BREWING CO.
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`(design) in class 032, because of a likelihood of confusion with registered mark “Patronize Your
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`Heritage,” U.S. Registration No. 4168654, hereinafter “Registrant”. “[T]he question of confusion is
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`related not to the nature of the mark but to its effect ‘When applied to the [goods] of the applicant. ’” In
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`re E. I. du Pom‘ de Nemours & Co., 476 F.2d 1357, 1360, 177 USPQ 563, 566 (C.C.P.A. 1973). The
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`United States Court of Customs and Patent Appeals listed thirteen factors to weigh in the likelihood of
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`confusion analysis and stated that all of the factors must be considered “When of record.” Id. at 1361.
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`

`

`The Examining Attorney has indicated that similarity of the marks, similarity of the goods and/or
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`services, and similarity of trade channels of the goods and /or services weigh against the Applicant’s
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`mark. However, Applicant respectfully asserts that when all factors are weighed, the majority weigh
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`against the existence of a likelihood of confusion.
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`WHEN VIEWED IN ITS ENTIRETYAPPLICANTS MARK HAS A DISTINCT COMMERCIAL
`IMPRESSION
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`The Examining Attorney has highlighted the similarity of the marks as one basis for the refiisal,
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`focusing on the premise that the “word portion is often considered the dominant feature and is
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`accorded greater weight in determining whether marks are confiisingly similar...” However, when
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`viewed side by side, the marks do not appear similar. The Applicant’s mark includes additional
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`elements not shared by the cited registration, namely, a distinct design element which includes a snake
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`coiled around a rifle; in addition to the descriptive term “BREWING CO.” which, although
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`disclaimed, must be considered when viewing the Applicant’s mark as a whole.
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`Courts have held that the addition of different terms to common elements appreciably reduces the
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`likelihood of confusion between two marks, even in cases where the goods are highly similar. See
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`USTrust v. US. States Trust C0, 210 F. Supp 2d9 27-28 (D. Mass. 2002), (holding that UNITED
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`STATES TRUST COMPANY not confiisingly similar to UNITED STATES TRUST COMPANY OF
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`BOSTON, both for financial services).
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`Additionally, in In re Electrolyte Labs, 929 F.2d 645, U.S.P.Q. 2d 1239 (Fed. Cir. 1990), the Federal
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`Circuit reversed the Trademark Trial and Appeal Board, and held that the marks “K+ and Design” and
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`“K+ EFF” for “competitive dietary supplements” were not likely to be confused even if consumers
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`

`

`would say “K—Plus” and “K—Plus EFF” when calling for products.” Id. The Court held that the “EFF”
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`in the Registrant’s mark was a significant difference, and ruled that “No element of a mark is ignored
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`simply because it is less dominant, or would not have trademark significance if used alone.” Id.
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`Furthermore, a similar phrase found in two marks is not dispositive of a confusing similarity between
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`the marks when the marks give off different commercial impressions. See Kellogg Co. v. Pack ’em
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`Enterprises, Inc, 951 F.2d 330 (Fed. Cir. 1991).
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`In the present case, the marks give off different commercial impressions. The term ‘brewing co.’
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`immediately relays information about the nature of the Applicants goods, which has a significant
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`impact on the commercial impression. The cited registered mark does not include terms reflecting a
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`commercial impression that would connect the mark to brewery-related goods. Similar to Kellogg, the
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`similar phrase ‘heritage’ cannot be dispositive since the marks give off different commercial
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`impressions.
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`REGISTRANTS CITED MARKISNOT THE PRIMARYSOURCE OFIDENTIFICATION
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`The cited registration is not the primary source of identification of the goods offered by Registrant.
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`The cited mark is an associated slogan in smaller print located on the side of the goods offered by
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`Registrant. The mark associated with Registrant’s goods is “Fix 1864” and not the cited registration.
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`Thus, there is a distinct commercial impression between HERITAGE BREWING CO. (design) and the
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`cited registration.
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`

`

`THE GOODS ARE NOT SOLD THROUGH THE SAME CHANNELS
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`Another factor is the similarity or dissimilarity of established, likely-to-continue trade channels. In re
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`E. I. du Pant de Nemaurs & C0., 476 F.2d at 1361, 177 USPQ at 567. This factor heavily weighs
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`against a finding of a likelihood of confusion. The Applicant does not offer its goods through the same
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`direct chamiels as the cited registrant. HERITAGE BREWING CO. (design) produces beer that is
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`100% organic; as a result it is sold through channels catered to individuals looking for organic
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`beverages such as Whole Foods. Moreover, the Registrant promotes itself as a Greek beer and as such
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`is sold through channels catered toward Greek culture. In fact, HERITAGE BREWING CO. and cited
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`registrant have enjoyed over three years of concurrent use without any incidents of actual confusion.
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`THE CONSUIVIERS INVOLVED WILL MAKE CAREFUL DECISIONS SUFFICENT TO
`AVOID CONFUSION
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`The next factor is the conditions under which buyers and to whom sales are made (i.e. impulse v.
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`careful). Id. The customers of HERITAGE BREWING CO. (design) will be able to distinguish among
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`100% organic beer and beer that is not organic and designated to be Greek. Further, the cited
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`registrant’s goods rely on the consumer associating what appears to be a slogan in smaller print on the
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`label as the trademark, rather than the larger design located on its goods These careful choices filrther
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`support HERITAGE BREWING CO. (design) position that there is no likelihood of confusion.
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`THE PRIOR MARK IS NOT FAMOUS
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`Another factor is the fame of the prior mark (e. g., sales, advertising, length of use, eta). Id. There is no
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`evidence that the prior mark is neither popular nor famous, this factor weighs against a likelihood of
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`confusion.
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`

`

`SIMILAR MARKS FOR SIMILAR GOODS/SERVICES CAN BE REGISTERED
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`Applicant further asserts that the USPTO has found a mark capable of registration, even in cases
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`where the marks are nearly identical and are covered under the same classification. Furthermore,
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`courts have long held that the addition of different terms to a common element appreciably reduces the
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`likelihood of confusion between two marks. See Colgate Palmolive Co. V. Carter-Wallace, Inc., 432
`
`F.2d 1400, 1402, 167 U.S. P. Q. 529, 530 (C.C.P.A. 1970) (PEAK PERIOD not confiising similar to
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`PEAK); Servo Corp. Am. V. SerVo—Tek Prod. Co., 289 F. 2d 955, 981 129 U.S.P.Q. 352, 353
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`(C.C.P.A. 1961) (SERVOSPEED not confiisingly similar to SERVO); Sweats Fashions, Inc. V. Pannill
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`Knitting Co., 833 F. 2d 1560, 1564, 4 U.S.P.Q. 2d 1793, 1796 (Fed. Cir. 1987) (SWEATS not
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`confusing similar to ULTRA SWEATS), both for sportswear); Gen. Mills Inc. v. Kellog Co., 824 F.
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`2d 622, 627, 3 U.S.P.Q. 2d 1442, 1446 (8th Cir. 1987) (OATMEAL RAISIN CRISP not confusingly
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`similar to APPLE RASIN CRISP, both for breakfast cereal); Consol. Cigar V. RJR Tobacco Co., 491
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`F.2d 1265, 1267, 181 U.S.P.Q. 44, 45 (C.C.P.A. 1974) (DUTCH APPLE for pipe tobacco not
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`confilsingly similar to DUTCH MASTERS for cigars. In the present case the additional terms
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`‘Brewing Co.’ distinguish it from the cited registrant.
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`LIKELIHOOD OF CONFUSION IS NOT SUBSTANTIAL
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`When determining whether an Applicant’s mark creates a likelihood of confusion, with marks covered
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`by cited registrations "[a] showing of mere possibility of confiision is not enough; a substantial
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`likelihood that the public will be confused must be shown." Omaha Natl. Bank, 633 F. Supp. at 234,
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`229 U.S.P.Q. at 52. For at least the reasons cited above, Applicant respectfully asserts that the
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`potential for confusion is not substantial. As such, the 2(d) refusal should be resolved in favor of the
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`Applicant.
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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
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`mark, HERITAGE BREWING CO. (design), is sufficiently distinct from the cited registration, so as
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`not to result in consumer confusion. Applicant respectfully submits in good faith that all potential 2(d)
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`refiisals, rejections, and/or objections have been overcome and that the applied for mark is in condition
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`for publication.
`
`Respectfully submitted,
`/Keisha M. Hardley /
`Keisha M. Hardley (MD Bar)
`Attorney of Record for the Applicant
`
`