Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1957 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 07/31/2017)
`
`Response to Office Action
`
`The table below presents the data as entered.
`
`Entered
`
`86567544
`
`LAW OFFICE 116
`
`http://tmng-al.uspto.gov/resting2/api/img/86567544/large
`
`VINO E AMICI
`
`YES
`
`YES
`
`The mark consists of standard characters, without claim to any particular font style,
`size or color.
`
`evi_701095979-20151221142050965542_._VINO_E_AMICI_OAR__Final_.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\865\675\86567544\xml4\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\865\675\86567544\xml4\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\865\675\86567544\xml4\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\865\675\86567544\xml4\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\865\675\86567544\xml4\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\865\675\86567544\xml4\ROA0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\865\675\86567544\xml4\ROA0008.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\865\675\86567544\xml4\ROA0009.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\865\675\86567544\xml4\ROA0010.JPG
`
`No claim is made to the exclusive right to use VINO apart from the mark as shown.
`
`/khardley/
`
`KEISHA HARDLEY
`
`Associate Attorney, Dunlap, Bennett & Ludwig PLLC (MD Bar)
`
`703.777.7319
`
`12/21/2015
`
`YES
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`MARK STATEMENT
`
`EVIDENCE SECTION
`
`        EVIDENCE FILE NAME(S)
`
`       ORIGINAL PDF FILE
`
`       CONVERTED PDF FILE(S)
`       (9 pages)
`
`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`       
`       
`       
`       
`       
`       
`       
`       
`

`

`SUBMIT DATE
`
`TEAS STAMP
`
`Mon Dec 21 14:25:48 EST 2015
`
`USPTO/ROA-XX.XXX.XX.XX-20
`151221142548682937-865675
`44-550c6d8f444042e4445bd4
`2de05d31a518bc77f8273a480
`9885f5bca25bee90-N/A-N/A-
`20151221142050965542
`
`Under the Paperwork Reduction Act of 1995 no persons are required to respond to a collection of information unless it displays a valid OMB control number.
`PTO Form 1957 (Rev 10/2011)
`
`OMB No. 0651-0050 (Exp 07/31/2017)
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 86567544 VINO E AMICI(Standard Characters, see http://tmng-al.uspto.gov/resting2/api/img/86567544/large) has been
`amended as follows:
`
`EVIDENCE
`
`Original PDF file:
`evi_701095979-20151221142050965542_._VINO_E_AMICI_OAR__Final_.pdf
`Converted PDF file(s) ( 9 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use VINO apart from the mark as shown.
`
`SIGNATURE(S)
`Response Signature
`Signature: /khardley/     Date: 12/21/2015
`Signatory's Name: KEISHA HARDLEY
`Signatory's Position: Associate Attorney, Dunlap, Bennett & Ludwig PLLC (MD Bar)
`
`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 owner's/holder'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 owner/holder in this matter: (1) the owner/holder 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 owner/holder has filed a power of attorney appointing him/her in this matter; or (4) the owner's/holder'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: 86567544
`
`        
`

`

`Internet Transmission Date: Mon Dec 21 14:25:48 EST 2015
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20151221142548682
`937-86567544-550c6d8f444042e4445bd42de05
`d31a518bc77f8273a4809885f5bca25bee90-N/A
`-N/A-20151221142050965542
`
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`Applicant:
`Serial No.:
`
`Filed:
`
`This Thing of Ous Inc.
`86567544
`
`March 18, 2015
`
`RESPONSE TO JUNE 30, 2015 OFFICE ACTION
`
`
`This Response is filed in reply to the Office Action e-mailed on June 30, 2015. The Applicant
`
`respectfully submits the following response. Applicant submits that the above—identified trademark
`
`application for VINO E AMICI is in condition for allowance to publication.
`
`Tamara Frazier
`Trademark Atty:
`VINO E AMICI
`Trademark:
`
`
`
`
`SECTION 2(d) REFUSAL — LIKELIHOOD OF CONFUSION
`
`Applicant submits a preliminary response to the potential section 2(d) refilsal; however, Applicant
`
`reserves all rights to provide a more detailed and descriptive response if Examining Attorney Tamara
`
`Frazier raises a Section 2(d) refusal in a subsequent Office Action.
`
`APPLICANT’S MARK
`
`CITED REGISTERED MARKS
`
`VINO E AMICI
`
`i710
`
`& Friends
`
`Serial No. 86567544
`
`Registration. No. 4278000
`
`Class 033: Spirts; Wine
`
`Class 043: Restaurant services
`
`Class 035: Retail store services featuring wine
`and accessories therefor
`
`

`

`Factors used to determine likelihood of confusion in a trademark registration case include: similarity
`
`or dissimilarity of marks in their entireties as to appearance, sound, connotation, and commercial
`
`impression; similarity or dissimilarity and nature of the goods described in application or registration
`
`or in connection with which a prior mark is in use; conditions under which and buyers to Whom sales
`
`are made; number and nature of similar marks in use on similar goods; any other established fact
`
`probative ofeffect ofuse. In re E. I. du Ponr de Nemours & C0,, 476 F.2d 1357, 1361, 177 USPQ 563,
`
`567 (C.C.P.A. 1973). Not all of the factors used to determine likelihood of confusion in a trademark
`
`registration case may be relevant or of equal weight in a given case, and any one of the factors may
`
`control a particular case. Id. Likelihood of confusion under the Lanham Act, 15 U.S.C. § 1052(d), is a
`
`legal determination based upon factual underpinnings. On-Line Careline, Inc. v. Am. Online, Inc, 229
`
`2000)
`
`AN EXAMINATION OF THE MARKS AS TO APPEARANCE,
`CONNOTATION DETERMINE THEY ARE NOT SIMILAR
`
`F.3d 1080, 1084 (Fed.Cir.2000).
`
`SOUND AND
`
`Under In re E. I du Pont de Nemours & C0., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A.
`
`1973), the first factor requires examination of "the similarity or dissimilarity of the marks in their
`
`entireties as to appearance, sound, connotation [,] and commercial impression." When considering the
`
`similarity of the marks, "[a]ll relevant facts pertaining to the appearance and connotation must be
`
`considered." Recot, Inc. v. MC. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1897 (Fed. Cir.
`
`

`

`Appearance & Sound
`
`In the instant case, the Applicant’s mark “VINO E AMICI” has a different sound an appearance from
`
`the cited registration “VINO & FRIENDS.” The applicant’s mark is entirely in Italian, whereas the
`
`cited registration is a combination of Italian and English. Further, the cited registration has a stylized
`
`design with the term “VINO” more prominently displayed. Since “VINO” in the cited registration is
`
`more prominently displayed the average consumer is more likely to remember that portion of the
`
`mark, in comparison to Applicant’s mark where the consumer is likely to recall the entire mark.
`
`Further, as noted by the Examining Attorney, the term “VINO” is descriptive and/or suggestive of the
`
`goods and/or services offered. As a result of the descriptive nature of “VINO” the term does not have
`
`as much source signifying importance as the other terms. The average consumer is likely to place more
`
`emphasis on the remaining elements of the mark. As a result of the difference in both appearance and
`
`sound, distinguishing impressions are created in the mind of the average consumer.
`
`equivalents is not an absolute rule and it should be viewed merely as a guideline. It is further noted,
`
`would translate “VINO E AMICI” into its English equivalent, it is evident consumers would simply
`
`Doctrine ofForeign Equivalents
`
`The Examining Attorney attempts to argue doctrine of foreign equivalents, however, has provided no
`
`evidence that customers for applicant’s goods and services would be likely to stop and translate
`
`“VINO E AMICI” into an English equivalent. The Examining Attorney in this instance has merely
`
`provided a translation for the term “vino.” As a result of the lack of evidence demonstrating consumers
`
`take the mark as is. In Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En I 772,
`
`396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005) the court
`
`indicated the doctrine of foreign
`
`

`

`“when it is unlikely that an American buyer will translate the foreign mark and will take it as it is, then
`
`the doctrine of foreign equivalents will not be applied.” Id at 1377. The examiners burden in this
`
`instance is to show that the doctrine of foreign equivalents applies by present evidence; however the
`
`examining attorney has presented no evidence. Thus, the Examining Attorney in this instance should
`
`not have applied the doctrine of foreign equivalents as there is no evidence that the average American
`
`consumer would translate VINO E AMICI.
`
`WHEN VIEWED IN ITS ENTIRETY APPLICANT’S MARK HAS A DISTINCT
`COlVIMERCIAL IMPRESSION
`
`Pack’em Enterprises, Inc, 951 F.2d 330 (Fed. Cir. 1991).
`
`Courts have held that the addition of different terms to common elements appreciably reduces the
`
`likelihood of confusion between two marks, even in cases where the goods are highly similar. See
`
`USTrust v. US. States Trust Co, 210 F. Supp 2d9 27—28 (D. Mass. 2002), (holding that UNITED
`
`STATES TRUST COMPANY not confusingly similar to UNITED STATES TRUST COMPANY OF
`
`BOSTON, both for financial services).
`
`Additionally, in In re Electrolyte Labs, 929 F.2d 645, U.S.P.Q. 2d 1239 (Fed. Cir. 1990), the Federal
`
`Circuit reversed the Trademark Trial and Appeal Board and held that the marks “K+ and Desi gn” and
`
`“K+ EFF” for “competitive dietary supplements” were not likely to be confused even if consumers
`
`would say “K-Plus” and “K-Plus EFF” when calling for products.” Id. At 647 The Court held that the
`
`“EFF” in the Registrant’s mark was a significant difference and ruled that “[n]0 element of a mark is
`
`ignored simply because it is less dominant, or would not have trademark significance if used alone.”
`
`Id. Furthermore, a similar phrase found in two marks is not dispositive of a confusing similarity
`
`between the marks when the marks give off different commercial impressions. See Kellogg Co. v.
`
`

`

`Moreover, in In re Hearst Corp, 982 F.2d 493 (Fed.Cir. 1992), the court reversed a Trademark Trial
`
`and Appeal Board decision that refused registration of VARGA GIRL because there was a likelihood
`
`of confusion with the registered mark VARGAS and stated the following:
`
`contribution word “girl.” When GIRL is given fair weight,
`along with VARGA, confusion with VARGAS becomes
`less likely.
`
`impression of
`The appearance sound and commercial
`VARGA GIRL derive significant contribution from the
`component “girl.” By stressing the portion “varga” and
`diminishing the portion “girl,” the Board inappropriately
`changed the mark. Although the weight is given to the
`respective words is not entirely free of subjectivity, we
`believe that
`the Board erred in its diminution of the
`
`connection with restaurant services, spirits and wine. Restaurant services are distinct from retail store
`
`Id. at 494. The registered mark and the applicant’s mark were both for calendars; however, the court
`
`held that VARGA GIRL and VARGAS are sufficiently different in sound, appearance, connotation,
`
`and commercial impression to negate likelihood of confusion. Id.
`
`In the present case, the marks give off different commercial impressions. Similar to In re Hearst the
`
`Examining Attorney is inappropriately changing the mark. Applicant’s mark VINO E AMICI entirely
`
`in Italian creates a different impression and may bring to mind an Italian restaurant. In comparison, the
`
`cited registration gives the impression of a winery as evidenced by the numerous wineries cited by the
`
`Examining Attorney. While both marks contain the term “vino” there are additional distinguishing
`
`elements that create a distinct commercial impression in the mind of the average consumer.
`
`APPLICANT DOES NOT OFFER THE SAME GOODS AND SERVICES
`
`The cited registration offers retail store services featuring wine and accessories. Applicant’s mark is in
`
`

`

`services as indicated by the cited registration. The Examining Attorney has included evidence of
`
`wineries and vineyards that also include retail store services. However, this evidence is not probative
`
`because neither the cited registration nor does the Applicant operate a winery. Further, retail stores that
`
`are in connection with a Vineyard typically sell exclusively wine produced by the vineyard and not
`
`competing brands. As a result the Applicant’s product would not travel in the same channels of trade
`
`as the services offered by the cited registration Additionally, restaurant services are distinct from
`
`retail store services; the average consumer is unlikely to confuse restaurant services and retail store
`
`services due to the nature of what is offered in each establishment. Further, the Applicant also intends
`
`to offer spirits which encompasses other beverages not inclusive of wine. This is another good that is
`
`not offered by the cited registration and further distinguishes Applicant’s mark.
`
`CROWDED FIELD DOCTRINE APPLIES
`
`When similar marks permeate the marketplace, the strength of the mark decreases. In Eclipse Assocs.
`
`1214, 73 U.S.P.Q.2d 1287 (CD. Cal. 2004), afl’d, 114 Fed. Appx. 921 (9th Cir. 2004).
`
`Ltd. v. Data Gen. Corp, 894 F.2d 1114 (9th Cir.1990), the court stated “in a crowded field of similar
`
`marks, each member of the crowd is relatively weak in its ability to prevent use by others in the
`
`crowd.” Third— party registrations may be relevant to show that the mark or a portion of the mark is
`
`descriptive, suggestive, or frequently used so that consumers will look to other elements to distinguish
`
`the source of the goods or services. See Plus Products 11. Star-Kist Foods, Inc, 220 U.S.P.Q. 541, 544,
`
`1983 WL 51884 (TTAB 1983). This is sometimes referred to as the crowded field doctrine. See In re
`
`Unidos Financial Services, Inc. Serial No. 77126814 [not precedential]. An applicant may be able to
`
`demonstrate that common use of a term by third parties in the same industry could support a claim that
`
`the mark is conceptually weak. See Moose Creek, Inc. v. Abercrombie & Fitch C0,, 331 F.Supp.2d
`
`

`

`Existing Registrations and Pending Applications Incorporating terms “Wine” & “Friends ”
`
`There are a number of registered and pending registration marks incorporating “wine” and “friends”
`
`for wine: Examples of registered marks include:
`
`Registration number: 3901816 FRIENDS JUST WINE for “wine”
`
`Registration number: 4022349 BLENDING WINE AND FRIENDS for “fruit wine, red wine, sweet
`wines, table Wines; white wine; wines”
`
`Registration number: 4472297 FRIENDS FUN WINE for “wine”
`
`Registration number: 4603043 GREAT WINE MADE BY GREAT FRIENDS for “alcoholic
`beverages except beers”
`
`Registration number: 4476363 FRIENDS .IUST WINE MOSCATO ORIGINAL WHITE MOSCATO
`
`Registration number: 4709329 YOUR FRIENDS IN WINE COUNTRY for “alcoholic beverages
`except beers”
`
`courts have long held that the addition of different terms to a common element appreciably reduces the
`
`Application serial number: 86781718 TWO FRIENDS FINE WINE for “grape wine”
`
`Application serial number: 86837955 WINE FRIENDS FOOD for “Wine bars”
`
`In the present case,
`
`the Examining Attorney has indicated Applicant’s mark is not capable of
`
`registration due to a likelihood of confusion; however, there are registrations that predate the cited
`
`registrations mark as well as marks that registered afterwards for similarly related goods. Under the
`
`crowded field doctrine, Applicant asserts that consumers will look to other elements to distinguish the
`
`Applicant’s goods from those in the cited registration. Specifically, consumers will look to the
`
`additional terms as distinguishing features of the Applicant’s mark.
`
`SIMILAR MARKS FOR SIMILAR GOODS/SERVICES CAN BE REGISTERED
`
`Applicant further asserts that the USPTO has found a mark capable of registration, even in cases
`
`where the marks are nearly identical and are covered under the same classification. Furthermore,
`
`

`

`likelihood of confusion between two marks. See Colgate Palmolive Co. v. Carter—Wallace, Inc., 432
`
`F.2d 1400, 1402, 167 US. P. Q. 529, 530 (C.C.P.A. 1970) (PEAK PERIOD not confusing similar to
`
`PEAK); Servo Corp. Am. v. Servo-Tel: Prod. Co., 289 F. 2d 955, 981 129 U.S.P.Q. 352, 353 (C.C.P.A.
`
`1961) (SERVOSPEED not confusingly similar to SERVO); Sweats Fashions, Inc. v. Pannill Knitting
`
`Co., 833 F. 2d 1560, 1564, 4 U.S.P.Q. 2d 1793, 1796 (Fed. Cir. 1987) (SWEATS not confusing
`
`similar to ULTRA SWEATS, both for sportswear); Gen. Mills Inc. v. Kellog Co., 824 F. 2d 622, 627,
`
`3 U.S.P.Q. 2d 1442, 1446 (8th Cir. 1987) (OATMEAL RAISIN CRISP not confusingly similar to
`
`APPLE RASIN CRISP, both for breakfast cereal); Consol. Cigar v. RJR Tobacco Co., 491 F.2d 1265,
`
`1267, 181 U.S.P.Q. 44, 45 (C.C.P.A. 1974) (DUTCH APPLE for pipe tobacco not confusingly similar
`
`to DUTCH MASTERS for cigars). Similarly the different
`
`terms, Italian terms in this instance
`
`appreciably reduce the likelihood of confusion between Applicant’s mark and the cited registration.
`
`Applicant’s favor. Furthermore, for at least the above reasons, Applicant asserts that Applicant’s
`
`When determining Whether an Applicant’s mark creates a likelihood of confusion with marks covered
`
`LIKELIHOOD OF CONFUSION IS NOT SUBSTANTIAL
`
`by cited registrations, "[a] showing of mere possibility of confilsion is not enough; a substantial
`
`likelihood that the public will be confused must be shown." Omaha Natl. Bank, 633 F. Supp. at 234,
`
`229 U.S.P.Q. at 52.
`
`For at least the reasons cited above, Applicant respectfully asserts that the
`
`potential for confusion is not substantial. As such, the 2(d) refusal should be resolved in favor of the
`
`Applicant.
`
`CONCLUSION
`
`Applicant has fully responded to the Office Action. A majority of the DuPont factors weigh in the
`
`

`

`consumer confusion. Applicant respectfully submits in good faith that all potential 2(d) refusals,
`
`rejections, and/or objections have been overcome and that the applied for mark is in condition for
`
`publication.
`
`mark, VINO E AMICI,
`
`is sufficiently distinct from the cited registration, so as not to result in
`
`Respectfully submitted,
`/Keisha M. Hardley /
`Keisha M. Hardley (MD Bar)
`
`Associate Attorney of Record for the Applicant
`
`