Pinar Del Rio 1941 Oa 30509

To:

El Centauro de Oro, Ltda. ([email protected])

Subject:

TRADEMARK APPLICATION NO. 77497173 - PINAR DEL RIO 1941 47583

Sent:

3/5/2009 10:28:29 AM

Sent As:

[email protected]

Attachments: Attachment - 1 Attachment - 2 Attachment - 3

UNITED STATES PATENT AND TRADEMARK OFFICE SERIAL NO:

77/497173

MARK: PINAR DEL RIO 1941

*77497173*

CORRESPONDENT ADDRESS: AVA K. DOPPELT ALLEN, DYER, DOPPELT, MILBRATH & GILCHRI 255 S ORANGE AVE STE 1401 ORLANDO, FL 32801-3460

APPLICANT:

RESPOND TO THIS ACTION: http://www.uspto.gov/teas/eTEASpageD.htm GENERAL TRADEMARK INFORMATION:

http://www.uspto.gov/main/trademarks.htm

El Centauro de Oro, Ltda.

CORRESPONDENT’S REFERENCE/DOCKET NO: 47583 CORRESPONDENT E-MAIL ADDRESS: [email protected]

OFFICE ACTION TO AVOID ABANDONMENT, THE OFFICE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF THE ISSUE/MAILING DATE. ISSUE/MAILING DATE: 3/5/2009 This Office action is in response to applicant’s communication filed on February 16, 2009.

SECTION 2(d) REFUSAL – LIKELIHOOD OF CONFUSION In the first Office action, the applicant was informed of Application Serial No. 77428932, a prior pending application, which if registered could act to bar registration of the present application based upon Section 2(d) of the Trademark Act. That prior pending application has subsequently been registered. Accordingly, registration of the applied-for mark “PINAR DEL RIO 1941” is refused because of a likelihood of confusion with the mark “PINAR DEL RIO” in U.S. Registration No. 3542236. Trademark Act Section 2(d), 15 U.S.C. §1052(d); see TMEP §§1207.01 et seq. See the enclosed registration. Trademark Act Section 2(d) bars registration of an applied-for mark that so resembles a registered mark that it is likely that a potential consumer would be confused or mistaken or deceived as to the source of the goods and/or services of the applicant and registrant. See 15 U.S.C. §1052(d). The court in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) listed the principal factors to be considered when determining whether there is a likelihood of confusion under Section 2(d). See TMEP §1207.01. However, not all of the factors are necessarily relevant or of equal weight, and any one factor may be dominant in a given case, depending upon the evidence of record. In re Majestic Distilling Co., 315 F.3d 1311, 1315, 65 USPQ2d 1201, 1204 (Fed. Cir. 2003); see In re E. I. du Pont, 476 F.2d at 1361-62, 177 USPQ at 567. In this case, the following factors are the most relevant: similarity of the marks, similarity of the goods. See In re Opus One, Inc., 60 USPQ2d 1812 (TTAB 2001); In re Dakin’s Miniatures Inc., 59 USPQ2d 1593 (TTAB 1999); In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999); TMEP §§1207.01 et seq. In the present case, the dominant portion of the applicant’s mark is identical to the dominant portion of the registrant’s mark. Indeed, the applicant has simply taken the registrant’s mark PINAR DEL RIO, added “1941” and created “PINAR DEL RIO 1941.”As such, the applicant’s mark represents mere addition to a registered mark. The mere addition of a term to a registered mark is not sufficient to overcome a likelihood of confusion under Section 2(d). Coca-Cola Bottling Co. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) ("BENGAL" and "BENGAL LANCER"); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d 324, 153 USPQ 406 (CCPA 1967) ("THE LILLY" and "LILLI ANN"); In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) ("MACHO" and "MACHO COMBOS"); In re United States Shoe Corp., 229 USPQ 707 (TTAB 1985) ("CAREER IMAGE" and "CREST CAREER IMAGES"); In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) ("CONFIRM" and "CONFIRMCELLS"); In re Riddle, 225 USPQ 630 (TTAB 1985) ("ACCUTUNE" and "RICHARD PETTY'S ACCU TUNE"); In re Cosvetic Laboratories, Inc., 202 USPQ 842 (TTAB 1979) ("HEAD START" and "HEAD START COSVETIC"). It is noted that the application contains a design element, nevertheless, when a mark consists of a word portion and a design portion, the word portion is more likely to be impressed upon a purchaser's memory and to be used in calling for the goods or services. In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987); Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976). Finally, the goods of the applicant and the registrant are identical. The registration covers “cigars.” The applicant seeks registration for “cigars.” The examining attorney must determine whether there is a likelihood of confusion on the basis of the goods identified in the application and registration. Since the applicant describes the goods broadly and there are no limitations as to their nature, type, channels of

trade or classes of purchasers, it is presumed that the goods encompasses all goods of the type described, that they move in all normal channels of trade, and that they are available to all potential customers. In re Elbaum, 211 USPQ 639 (TTAB 1981). Although applicant’s mark has been refused registration, applicant may respond to the refusal by submitting evidence and arguments in support of registration. 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, 46465, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988). In its correspondence of February 16,2009, the applicant has stated that it “intends to file a petition to cancel the prior registration.” Please note, an intention to file a petition to cancel is not cause for suspension of proceedings. Once the applicant fillies such a proceeding with the Office, the application may be suspended. TMEP §716.02(d). Applicant must respond to the requirement(s) set forth below. DISCLAIMER REQUIRED Applicant must disclaim the descriptive wording “PINAR DEL RIO” apart from the mark as shown because it merely geographically descriptive of the applicant’s goods. See 15 U.S.C. §1056(a); TMEP §§1213, 1213.03(a). Evidence in the application record shows that Pinar Del Rio refers to a province and a city in Cuba. The city is located in a major tobacco-growing area and is a center of the cigar industry. The applicant’s response states that “that the seeds used to grow the tobacco that is used to manufacture Applicant's cigars are, in fact, from Pinar del Rio, Cuba.” Please note, a term is merely descriptive under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1), if it describes an ingredient, quality, characteristic, function, feature, purpose or use of the relevant goods/services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987); In re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986); In re MetPath Inc., 223 USPQ 88 (TTAB 1984); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); TMEP §1209.01(b). The Office can require an applicant to disclaim exclusive rights to an unregistrable part of a mark, rather than refuse registration of the entire mark. Trademark Act Section 6(a), 15 U.S.C. §1056(a). Under Trademark Act Section 2(e), 15 U.S.C. §1052(e), the Office can refuse registration of the entire mark where it is determined that the entire mark is merely descriptive, deceptively misdescriptive, or primarily geographically descriptive of the goods. Thus, the Office may require the disclaimer of a portion of a mark which, when used in connection with the goods or services, is merely descriptive, deceptively misdescriptive, primarily geographically descriptive, or otherwise unregistrable (e.g., generic). TMEP §1213.03(a). If an applicant does not comply with a disclaimer requirement, the Office may refuse registration of the entire mark. TMEP §1213.01(b). A “disclaimer” is thus a written statement that an applicant adds to the application record that states that

applicant does not have exclusive rights, separate and apart from the entire mark, to particular wording and/or to a design aspect. The appearance of the applied-for mark does not change. A disclaimer does not physically remove the disclaimed matter from the mark, but rather is a written statement that applicant does not claim exclusive rights to the disclaimed wording and/or design separate and apart from the mark as shown in the drawing. The following cases explain the disclaimer requirement more fully: Dena Corp. v. Belvedere Int’l Inc., 950 F.2d 1555, 21 USPQ2d 1047 (Fed. Cir. 1991); In re Kraft, Inc., 218 USPQ 571 (TTAB 1983); In re EBS Data Processing, Inc., 212 USPQ 964 (TTAB 1981); In re National Presto Industries, Inc., 197 USPQ 188 (TTAB 1977). The computerized printing format for the Office’s Trademark Official Gazette requires a standardized format for a disclaimer. TMEP §1213.08(a)(i). The following is the standard format used by the Office: No claim is made to the exclusive right to use “PINAR DEL RIO” apart from the mark as shown. See In re Owatonna Tool Co., 231 USPQ 493 (Comm’r Pats. 1983). RESPONSE TO OFFICE ACTION There is no required format or form for responding to an Office action. The Office recommends applicants use the Trademark Electronic Application System (TEAS) to respond to Office actions online. However, if applicant responds on paper via regular mail, the response should include the title “Response to Office Action” and the following information: (1) the name and law office number of the examining attorney, (2) the serial number and filing date of the application, (3) the mailing date of this Office action, (4) applicant’s name, address, telephone number and e-mail address (if applicable), and (5) the mark. 37 C.F.R. §2.194(b)(1); TMEP §302.03(a).

/Geoffrey Fosdick/ Geoffrey Fosdick Trademark Attorney Trademark Office 111 (571) 272-9161

RESPOND TO THIS ACTION: Applicant should file a response to this Office action online using the form at http://www.uspto.gov/teas/eTEASpageD.htm, waiting 48-72 hours if applicant received notification of the Office action via e-mail. For technical assistance with the form, please e-mail

[email protected]. For questions about the Office action itself, please contact the assigned examining attorney. Do not respond to this Office action by e-mail; the USPTO does not accept e-mailed responses. If responding by paper mail, please include the following information: the application serial number, the mark, the filing date and the name, title/position, telephone number and e-mail address of the person signing the response. Please use the following address: Commissioner for Trademarks, P.O. Box 1451, Alexandria, VA 22313-1451. STATUS CHECK: Check the status of the application at least once every six months from the initial filing date using the USPTO Trademark Applications and Registrations Retrieval (TARR) online system at http://tarr.uspto.gov. When conducting an online status check, print and maintain a copy of the complete TARR screen. If the status of your application has not changed for more than six months, please contact the assigned examining attorney.

To:

El Centauro de Oro, Ltda. ([email protected])

Subject:

TRADEMARK APPLICATION NO. 77497173 - PINAR DEL RIO 1941 47583

Sent:

3/5/2009 10:28:31 AM

Sent As:

[email protected]

Attachments:

IMPORTANT NOTICE USPTO OFFICE ACTION HAS ISSUED ON 3/5/2009 FOR APPLICATION SERIAL NO. 77497173 Please follow the instructions below to continue the prosecution of your application:

VIEW OFFICE ACTION: Click on this link http://tmportal.uspto.gov/external/portal/tow?DDA=Y&serial_number=77497173&doc_type=OOA&mail_date (or copy and paste this URL into the address field of your browser), or visit http://tmportal.uspto.gov/external/portal/tow and enter the application serial number to access the Office action. PLEASE NOTE: The Office action may not be immediately available but will be viewable within 24 hours of this notification. RESPONSE MAY BE REQUIRED: You should carefully review the Office action to determine (1) if a response is required; (2) how to respond; and (3) the applicable response time period. Your response deadline will be calculated from 3/5/2009. Do NOT hit “Reply”to this e-mail notification, or otherwise attempt to e-mail your response, as the USPTO does NOT accept e-mailed responses. Instead, the USPTO recommends that you respond online using the Trademark Electronic Application System response form at http://www.uspto.gov/teas/eTEASpageD.htm.

HELP: For technical assistance in accessing the Office action, please e-mail [email protected]. Please contact the assigned examining attorney with questions about the Office action.

WARNING 1. The USPTO will NOT send a separate e-mail with the Office action attached. 2. Failure to file any required response by the applicable deadline will result in

the ABANDONMENT of your application.