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.
`
`Input Field
`
`Entered
`
`SERIAL NUMBER
`
`86745703
`
`LAW OFFICE ASSIGNED
`
`LAW OFFICE 109
`
`MARK SECTION
`
`MARK
`
`LITERAL ELEMENT
`
`http://tmng-al.uspto.gov/resting2/api/img/86745703/large
`
`MACDOWELL BREW KITCHEN
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`YES
`
`YES
`
`MARK STATEMENT
`
`ARGUMENT(S)
`
`The mark consists of standard characters, without claim to any particular font style, size or
`color.
`
`Please see the actual argument text attached within the Evidence section.
`
`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)(8 pages)
`
`evi_1-21624696170-20151218061118248708_._MACDOWELL_BREW_KITCHEN_OAR.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\867\457\86745703\xml4\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\867\457\86745703\xml4\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\867\457\86745703\xml4\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\867\457\86745703\xml4\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\867\457\86745703\xml4\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\867\457\86745703\xml4\ROA0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\867\457\86745703\xml4\ROA0008.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\867\457\86745703\xml4\ROA0009.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`Office action response brief.
`
`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`No claim is made to the exclusive right to use BREW KITCHEN apart from the mark as shown.
`
`/Thomas M Dunlap/
`
`Thomas M Dunlap
`
`Attorney of record, Virginia state bar
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`7037773885
`
`12/18/2015
`
`(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)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`AUTHORIZED SIGNATORY
`
`YES
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`Fri Dec 18 06:18:08 EST 2015
`
`USPTO/ROA-XXX.XXX.XX.XXX-
`20151218061808162541-8674
`5703-55023d55c42924d5ac92
`b5d5a2f322b71e7f2c24c5ce3
`e44ea866816611a189c5c-N/A
`-N/A-20151218061118248708
`
`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. 86745703(cid:160)MACDOWELL BREW KITCHEN(Standard Characters, see http://tmng-
`al.uspto.gov/resting2/api/img/86745703/large) has been amended as follows:
`
`ARGUMENT(S)
`In response to the substantive refusal(s), please note the following:
`
`Please see the actual argument text attached within the Evidence section.
`
`EVIDENCE
`Evidence in the nature of Office action response brief. has been attached.
`Original PDF file:
`evi_1-21624696170-20151218061118248708_._MACDOWELL_BREW_KITCHEN_OAR.pdf
`Converted PDF file(s) ( 8 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use BREW KITCHEN apart from the mark as shown.
`
`SIGNATURE(S)
`Response Signature
`Signature: /Thomas M Dunlap/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 12/18/2015
`Signatory's Name: Thomas M Dunlap
`Signatory's Position: Attorney of record, Virginia state bar
`
`Signatory's Phone Number: 7037773885
`
`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: 86745703
`Internet Transmission Date: Fri Dec 18 06:18:08 EST 2015
`TEAS Stamp: USPTO/ROA-XXX.XXX.XX.XXX-201512180618081
`62541-86745703-55023d55c42924d5ac92b5d5a
`2f322b71e7f2c24c5ce3e44ea866816611a189c5
`c-N/A-N/A-20151218061118248708
`
`(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.:
`
`MacDowell Brew Kitchen LLC
`86745703
`
`Filed:
`Trademark Atty:
`Trademark:
`
`September 02, 2015
`Roger McDorman
`MACDOWELL BREW KITCHEN
`
`RESPONSE TO DECEMBER 07, 2015 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e-mailed on December 07, 2015. The Applicant
`
`respectfully submits the following response. Applicant submits that the above—identif1ed trademark
`
`application for MACDOWELL BREW KITCHEN is in condition for allowance to publication.
`
`DISCLAIMER
`
`The Applicant submits the following disclaimer:
`
`No claim is made to the exclusive right to use “BREW KITCHEN” apart from the mark as
`
`shown.
`
`POTENTIAL SECTION 2(d) REFUSAL — LIKELIHOOD OF CONFUSION
`
`Applicant submits a preliminary response to the potential section 2(d) refusal; however, Applicant
`
`reserves all rights to provide a more detailed and descriptive response if Examining Attorney Roger
`
`McDorrnan raises a Section 2(d) refusal in a subsequent Office Action.
`
`

`

`APPLICANT’S MARK
`
`CITED REGISTERED MARKS
`
`MACDOWELL BREW KITCHEN
`
`Serial No. 86745703
`
`Class 032: Beer
`
`Class 043: Bar Services; Restaurant Services
`
`Registration. No. 86365872
`
`Class 032: Beers
`
`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
`
`of effect of use. In re E. I. du Pont 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. 12. Am. Online, Inc., 229
`
`F.3d 1080, 1084 (Fed.Cir.2000).
`
`

`

`AN EXAMINATION OF THE MARKS AS TO APPEARANCE, SOUND AND CONNOTATION
`DETERMINE THEY ARE NOT SIMILAR
`
`Under In re E. I. du Pontde 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. 12. MC. Becton, 214 F.3d 1322, 1329, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000).
`
`Appearance & Sound
`
`The Applicant has applied for MACDOWELL BREW KITCHEN, which is significantly different from
`
`the cited prior filed application. The cited application is a design mark with the literal elements G.
`
`MAC’S GRAEME MCDOWELL. There are additional terms Within the cited application that are not
`
`contained with Applicant’s mark that create a different impression. The first element in Applicant’s
`
`mark is “MACDOWELL,” whereas “MCDOWELL” in the cited application is the last element. The
`
`first element in the cited application is “G.MAC’S,” which is also the dominant feature in the design
`
`mark. As a result the average consumer is more likely to refer to the cited application as “G.MAC’S”
`
`with no reference to the term “MCDOWELL.” Further, the cited application is a design mark with visual
`
`elements consisting of the image of a golfer, along with a square background containing curved edges
`
`along with “G.MAC’S” featured prominently Whereas the Wording “MCDOWELL” is almost entirely
`
`illegible due to its cursive script, appearing to read “MWOell” and due to its very diminutive size would
`
`not be very legible in any use of this design mark and as such would not be identifiable as even remotely
`
`related to the differently spelled wordmark “MACDOWELL” by a consumer, absent some extrinsic
`
`explanation of the cursive Wording in the design mark. These additional elements demonstrate a
`
`

`

`significantly different appearance and sound that creates a different impression in the mind of the
`
`consumer. As a result there is no likelihood of confusion.
`
`Cormotation
`
`Graeme McDowell is a professional golfer from Northern Ireland (See Exhibit A). As a result the
`
`immediate connotation when encountering the mark in commerce is that it is in connection with golf
`
`products such as golf clubs, clothing, or bags. The average consumer would not encounter G.MAC’S
`
`GRAEME MCDOWELL and associate the mark with beer. Distinguishable from the cited application
`
`Applicant’s mark includes the terms “BREW KITCHEN,” as a result it is apparent to the consumer
`
`restaurant services are offered in conjunction with a brewery along with beer. As a result of the different
`
`elements contained within these marks a different connotation is created, thus, there is no likelihood of
`
`confusion.
`
`WHEN VIEWED IN ITS ENTIRETY APPLICANT’S MARK HAS A DISTINCT
`COMMERCIAL IMPRESSION
`
`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 Design” 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]o 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. Pack’em
`
`Enterprises, Inc, 951 F.2d 330 (Fed. Cir. 1991).
`
`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:
`
`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
`
`contribution word “girl.” When GIRL is given fair weight,
`along with VARGA, confusion with VARGAS becomes
`less likely.
`
`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. The cited application would easily be associated with golf products
`
`and not beer. There is no indication from the mark that it is in connection with beer. Whereas the
`
`Applicant’s mark creates the commercial impression that it is in association with restaurant services and
`
`beer.
`
`

`

`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, courts have
`
`long held that the addition of different terms to a common element appreciably reduces the 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.
`
`1/. Servo-Tek 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 C0., 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). In the instant case, there are additional terms that appreciably reduce the likelihood of
`
`confusion between the two marks. The common element within the two marks is “McDowell” and
`
`“MacDowell,” however, the cited application is likely to be referred to as “G.MAC’S” since that is the
`
`first element within its mark and is displayed prominently in the design of the mark. These marks have
`
`similar elements but are distinguishable from one another, thus minimizing the likelihood of COIlfilS1OI1
`
`amongst consumers.
`
`Separately,
`
`the Applicant also offers bar and restaurant services. The cited
`
`application does not offer bar and restaurant services. These additional services further distinguish
`
`Applicant’s mark from the services offered by the cited application.
`
`LIKELIHOOD OF CONFUSION IS NOT SUBSTANTIAL
`
`

`

`When determining whether an Applicant’s mark creates a likelihood of confusion with marks covered
`
`by cited registrations, "[a] showing of mere possibility of confusion 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 5 2. For at least the reasons cited above, Applicant respectfully asserts that the potential
`
`for confusion is not substantial. As such, the 2(d) refilsal should be resolved in favor of the Applicant.
`
`CONCLUSION
`
`Applicant has fillly responded to the potential 2(d) likelihood of confusion refusal. A majority of the
`
`DuPont factors weigh in the Applicant’s favor. Furthermore, for at least the above reasons, Applicant
`
`asserts that Applicant’s mark, MACDOWELL BREW KITCHEN, is sufficiently distinct from the cited
`
`registration, so as not to result in 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.
`
`Respectfully submitted,
`/Thomas M Dunlap /
`Thomas M. Dunlap (VA Bar)
`Attorney of Record for the Applicant
`
`

`

`mm. m
`
`EXHIBIT A
`
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`
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`
`2:
`
`Graeme McDowell
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