Foster, Michele
Wine
United States Patent and Trademark Office (USPTO)
Office Action Response
Outgoing Trademark Office Action
Trademark Office Action Response
BLAZIER CHRISTENSEN BROWDER & VIRR
A PROFESSIONAL CORPORATION
ATTORNEYS AND COUNSELORS
BARTON OAKS PLAZA
901 S. MOPAC EXPY., BLDG. V, STE. 200
JOHN C. BLAZIER AUSTIN, TEXAS 78746 TELEPHONE (512) 476-2622
FLEUR A. CHRISTENSEN FACSIMILE (512) 476-8685
THOMAS F. VIRR**
PAUL K. BROWDER WWW.BLAZIERLAW.COM **BOARD CERTIFIED-TAX LAW, TEXAS BOARD
JUSTIN M. WELCH OF LEGAL SPECIALIZATION
JONATHAN S. CONNOR
JOHN P. FERGUSON
writers direct e-mail: [email protected]
March 8, 2017
Ms. Lyndsey Kuykendall
Trademark Examining Attorney
Law Office 102
P.O. Box 1451
Alexandria, Virginia 22313-1451
Filed via TEAS
Re: Response to Office Action Letter for the Mark , serial no. 76/719948,
on behalf of Applicant, Michele Foster.
Dear Ms. Kuykendall:
Pursuant to your Office Action letter for the above Mark, please consider the following in
support of issuing an approval for publication:
I. LIKELIHOOD OF CONFUSION.
The PTO contends there is a likelihood of confusion between Applicants Mark,
SOLIÈRE, and the Registrants Mark, SOLIERA. Applicant respectfully disagrees.
Specifically, Registrants mark is geographically descriptive i.e., its primary significance is a
generally known town in Italy. Applicants mark, on the other hand, is a fanciful, coined term
with no connection to the town. Moreover, there are two significant spelling and pronunciation
differences. When taken together, Applicant respectfully contends there is no likelihood of
consumer confusion.
i. Primary Significance of Registrants Mark is Italian Town.
Note, the purpose of this discussion is not to argue that Registrants product is
geographically descriptive or misdescriptive, or otherwise collaterally attack its
registration. Rather, the point is that more than a de minimus segment of the American
consuming public will recognize Registrants mark as a geographic reference, as opposed to
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F:Clients6000060397.001 Foster, Michele dba Michele Wines – Ste. MicheleRESPONSE TO OFFICE ACTION LETTER – logo – jmw.docx JMW
Applicants mark that is a fanciful, coined term. That is, Applicant simply intends to argue that
the meanings of the marks are different.
Soliera is an Italian municipality comprised of five villages encompassing 700 square
miles, according to the Wikipedia entry at Exhibit A. It had a population of 14,056 people in
2004, which has increased to 15,500 according to the Google search results at Exhibit B.
The significance of SOLIERA as geographic location is highlighted by a simple Google
search. Specifically, when SOLIERA is input into the Google Chrome search bar, the first result
in the autofill, drop-down menu is soliera italy, followed by soliera wine and soliera
tempranillo, the latter of which is a wine varietal sold by Registrant.
The full screenshot of the drop-down menu is attached at Exhibit B, and a screenshot of a bottle
of Registrants wine is attached as Exhibit C.
And, when the Google search is entered, at least the first two pages of results provide
information solely about Soliera, Italy, include links to Michelin and TripAdvisor.com guides,
vacation home advertisements, weather reports, and Wikipedia entries discussing the town.
Screen shots of the results are included at Exhibit B.
Whether the primary significance of a mark is a geographic place is judged by whether it
is generally known, as opposed to minor, obscure [or] remote. 1 The relevant population is
the purchasing public in the United States. 2 When the place is foreign, the question is judged
based on various factors including whether the population of the location is sizable, or
members of the consuming public have ties to the location. 3
Soliera is not a minor, obscure, [or] remote place. Rather, it encompasses five separate
villages over an area of 700 square miles, with a population of roughly 15,500. It is certainly
large enough to expect that immigrants from Italy to America will have heard of it. According to
Department of Homeland Security statistics (Exhibit E), 2,760 Italians became naturalized
American citizens and another 3,544 obtained permanent residency status in 2015 alone.
Assuming this rate of immigration was roughly consistent over just 20 years, there are at least
1
In re The Newbridge Cutlery Co., 776 F.3d 854, 861 (Fed.Cir. 2015) (quoting In re Nantucket, Inc.,
677 F.2d 95, 99 (Fed.Cir. 2003)).
2
Id.
3
Id.
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F:Clients6000060397.001 Foster, Michele dba Michele Wines – Ste. MicheleRESPONSE TO OFFICE ACTION LETTER – logo – jmw.docx JMW
250,000 U.S. consumers from Italy who arguably would recognize Soliera as a municipality in
their home country.
And, the number of such consumers is certainly much larger, since roughly 15 million
Americans were classified as Italian Americans in the 2000 census; all according to figures
compiled from that census by the Research Department of the National Italian Amercain
Foundation (Exhibit D). And, for those 15 million that are not themselves immigrants i.e., that
are descendants of immigrants it is reasonable to assume the closer in time their ancestors
immigrated from Italy, the more likely they are to be familiar with Soliera, Italy.
Finally, the PTO has already concluded Solieras primary significance is a geographic
place or location. Specifically, when reviewing Registrants application, the PTO initially
rejected it on the grounds it was geographically descriptive. A copy of the Office Action Letter
is attached as Exhibit H. This included an affirmative finding on the first of the three elements
required for such a rejection i.e., that [t]he primary significance of the mark is a generally
known geographic place or location. 4 Of course, the record does not indicate the basis for the
PTOs eventual registration of the mark. However, there is no indication that it reversed its
finding on this first element.
ii. Applicants Mark is a Coined Term,
Unrelated to Geographic Location.
Applicants Mark, SOLIÈRE, is a purely fanciful, coined term. Specifically, it is
comprised of the French word for sun Soleil and the final syllable re. Re has no
relevant meaning in any language, and was chosen solely because it sounds like a ray of
sunlight. Taken together, the Mark is intended to imply the wine is a ray of the sun. Note
that Applicant switched the I and E in Soleil based on interviews with American consumers
who thought ie easier to pronounce than ei.
iii. Differences in Spelling and Pronunciation.
There are two, critical differences in spelling and pronunciation between Applicants and
Registrants marks. First, the last syllable of Registrants mark ra is pronounced rä as in
father. This is confirmed by a video by www.pronouncenames.com posted on YouTube.com
at https://www.youtube.com/watch?v=UvGJsIxXyvQ.
The last syllable of Applicants mark re is pronounced r?, as in ray of sunlight
as already described.
In addition, Applicants mark includes the è ; referred to in general and by the PTO as
a grave e. Indeed, the è is included in the PTOs standard character set as a distinctly
different character than a normal e , as found in Registrants mark. 5 And, unlike a normal e,
the è generally indicates the syllable or sound should be emphasized or stressed. 6
4
See p.000002 of Exh. H.
5
See pp.6 and 8 of PTOs Standard Character Set at Exh. E (also at
https://www.uspto.gov/trademark/standard-character-set ).
6
See Wikipedia entry for Grave accent at Exh. G.
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F:Clients6000060397.001 Foster, Michele dba Michele Wines – Ste. MicheleRESPONSE TO OFFICE ACTION LETTER – logo – jmw.docx JMW
Registrants mark contains no indication of emphasis or stress. And, it is reasonable to
conclude that consumers will perceive è as distinctly different from a normal e; just as they
would distinguish the vowels e and u. Indeed, this was the obvious intent of the PTO in
listing e and è as different standard characters.
iv. Conclusion.
Taking all these differences together, Applicant respectfully contends there is no
likelihood of consumer confusion with Registrants mark. That is, consumers are unlikely to
confuse the name of a town in Italy, with a purely, fanciful, coined term intended to imply
Applicants wine is a ray of sunlight. This is especially true given the differences in spelling and
pronunciation.
II. COLOR CLAIM.
The examining attorney asked that Applicant make an acceptable color claim. The
Applicant submits the following color claim:
The colors dark red and gold are claimed as a feature of the mark. The white
background is not a part of the mark or otherwise claimed as a part thereof.
Please do not hesitate to contact me with any questions or comments.
Sincerely,
Justin M. Welch
For the Firm
cc: client via email
Page 4 of 4
F:Clients6000060397.001 Foster, Michele dba Michele Wines – Ste. MicheleRESPONSE TO OFFICE ACTION LETTER – logo – jmw.docx JMW
BLAZIER CHRISTENSEN BROWDER & VIRR
A PROFESSIONAL CORPORATION
ATTORNEYS AND COUNSELORS
BARTON OAKS PLAZA
901 S. MOPAC EXPY., BLDG. V, STE. 200
JOHN C. BLAZIER AUSTIN, TEXAS 78746 TELEPHONE (512) 476-2622
FLEUR A. CHRISTENSEN FACSIMILE (512) 476-8685
THOMAS F. VIRR**
PAUL K. BROWDER WWW.BLAZIERLAW.COM **BOARD CERTIFIED-TAX LAW, TEXAS BOARD
JUSTIN M. WELCH OF LEGAL SPECIALIZATION
JONATHAN S. CONNOR
JOHN P. FERGUSON
writers direct e-mail: [email protected]
March 8, 2017
Ms. Lyndsey Kuykendall
Trademark Examining Attorney
Law Office 102
P.O. Box 1451
Alexandria, Virginia 22313-1451
Filed via TEAS
Re: Response to Office Action Letter for the Mark , serial no. 76/719948,
on behalf of Applicant, Michele Foster.
Dear Ms. Kuykendall:
Pursuant to your Office Action letter for the above Mark, please consider the following in
support of issuing an approval for publication:
I. LIKELIHOOD OF CONFUSION.
The PTO contends there is a likelihood of confusion between Applicants Mark,
SOLIÈRE, and the Registrants Mark, SOLIERA. Applicant respectfully disagrees.
Specifically, Registrants mark is geographically descriptive i.e., its primary significance is a
generally known town in Italy. Applicants mark, on the other hand, is a fanciful, coined term
with no connection to the town. Moreover, there are two significant spelling and pronunciation
differences. When taken together, Applicant respectfully contends there is no likelihood of
consumer confusion.
i. Primary Significance of Registrants Mark is Italian Town.
Note, the purpose of this discussion is not to argue that Registrants product is
geographically descriptive or misdescriptive, or otherwise collaterally attack its
registration. Rather, the point is that more than a de minimus segment of the American
consuming public will recognize Registrants mark as a geographic reference, as opposed to
Page 1 of 4
F:Clients6000060397.001 Foster, Michele dba Michele Wines – Ste. MicheleRESPONSE TO OFFICE ACTION LETTER – logo – jmw.docx JMW
Applicants mark that is a fanciful, coined term. That is, Applicant simply intends to argue that
the meanings of the marks are different.
Soliera is an Italian municipality comprised of five villages encompassing 700 square
miles, according to the Wikipedia entry at Exhibit A. It had a population of 14,056 people in
2004, which has increased to 15,500 according to the Google search results at Exhibit B.
The significance of SOLIERA as geographic location is highlighted by a simple Google
search. Specifically, when SOLIERA is input into the Google Chrome search bar, the first result
in the autofill, drop-down menu is soliera italy, followed by soliera wine and soliera
tempranillo, the latter of which is a wine varietal sold by Registrant.
The full screenshot of the drop-down menu is attached at Exhibit B, and a screenshot of a bottle
of Registrants wine is attached as Exhibit C.
And, when the Google search is entered, at least the first two pages of results provide
information solely about Soliera, Italy, include links to Michelin and TripAdvisor.com guides,
vacation home advertisements, weather reports, and Wikipedia entries discussing the town.
Screen shots of the results are included at Exhibit B.
Whether the primary significance of a mark is a geographic place is judged by whether it
is generally known, as opposed to minor, obscure [or] remote. 1 The relevant population is
the purchasing public in the United States. 2 When the place is foreign, the question is judged
based on various factors including whether the population of the location is sizable, or
members of the consuming public have ties to the location. 3
Soliera is not a minor, obscure, [or] remote place. Rather, it encompasses five separate
villages over an area of 700 square miles, with a population of roughly 15,500. It is certainly
large enough to expect that immigrants from Italy to America will have heard of it. According to
Department of Homeland Security statistics (Exhibit E), 2,760 Italians became naturalized
American citizens and another 3,544 obtained permanent residency status in 2015 alone.
Assuming this rate of immigration was roughly consistent over just 20 years, there are at least
1
In re The Newbridge Cutlery Co., 776 F.3d 854, 861 (Fed.Cir. 2015) (quoting In re Nantucket, Inc.,
677 F.2d 95, 99 (Fed.Cir. 2003)).
2
Id.
3
Id.
Page 2 of 4
F:Clients6000060397.001 Foster, Michele dba Michele Wines – Ste. MicheleRESPONSE TO OFFICE ACTION LETTER – logo – jmw.docx JMW
250,000 U.S. consumers from Italy who arguably would recognize Soliera as a municipality in
their home country.
And, the number of such consumers is certainly much larger, since roughly 15 million
Americans were classified as Italian Americans in the 2000 census; all according to figures
compiled from that census by the Research Department of the National Italian Amercain
Foundation (Exhibit D). And, for those 15 million that are not themselves immigrants i.e., that
are descendants of immigrants it is reasonable to assume the closer in time their ancestors
immigrated from Italy, the more likely they are to be familiar with Soliera, Italy.
Finally, the PTO has already concluded Solieras primary significance is a geographic
place or location. Specifically, when reviewing Registrants application, the PTO initially
rejected it on the grounds it was geographically descriptive. A copy of the Office Action Letter
is attached as Exhibit H. This included an affirmative finding on the first of the three elements
required for such a rejection i.e., that [t]he primary significance of the mark is a generally
known geographic place or location. 4 Of course, the record does not indicate the basis for the
PTOs eventual registration of the mark. However, there is no indication that it reversed its
finding on this first element.
ii. Applicants Mark is a Coined Term,
Unrelated to Geographic Location.
Applicants Mark, SOLIÈRE, is a purely fanciful, coined term. Specifically, it is
comprised of the French word for sun Soleil and the final syllable re. Re has no
relevant meaning in any language, and was chosen solely because it sounds like a ray of
sunlight. Taken together, the Mark is intended to imply the wine is a ray of the sun. Note
that Applicant switched the I and E in Soleil based on interviews with American consumers
who thought ie easier to pronounce than ei.
iii. Differences in Spelling and Pronunciation.
There are two, critical differences in spelling and pronunciation between Applicants and
Registrants marks. First, the last syllable of Registrants mark ra is pronounced rä as in
father. This is confirmed by a video by www.pronouncenames.com posted on YouTube.com
at https://www.youtube.com/watch?v=UvGJsIxXyvQ.
The last syllable of Applicants mark re is pronounced r?, as in ray of sunlight
as already described.
In addition, Applicants mark includes the è ; referred to in general and by the PTO as
a grave e. Indeed, the è is included in the PTOs standard character set as a distinctly
different character than a normal e , as found in Registrants mark. 5 And, unlike a normal e,
the è generally indicates the syllable or sound should be emphasized or stressed. 6
4
See p.000002 of Exh. H.
5
See pp.6 and 8 of PTOs Standard Character Set at Exh. E (also at
https://www.uspto.gov/trademark/standard-character-set ).
6
See Wikipedia entry for Grave accent at Exh. G.
Page 3 of 4
F:Clients6000060397.001 Foster, Michele dba Michele Wines – Ste. MicheleRESPONSE TO OFFICE ACTION LETTER – logo – jmw.docx JMW
Registrants mark contains no indication of emphasis or stress. And, it is reasonable to
conclude that consumers will perceive è as distinctly different from a normal e; just as they
would distinguish the vowels e and u. Indeed, this was the obvious intent of the PTO in
listing e and è as different standard characters.
iv. Conclusion.
Taking all these differences together, Applicant respectfully contends there is no
likelihood of consumer confusion with Registrants mark. That is, consumers are unlikely to
confuse the name of a town in Italy, with a purely, fanciful, coined term intended to imply
Applicants wine is a ray of sunlight. This is especially true given the differences in spelling and
pronunciation.
II. COLOR CLAIM.
The examining attorney asked that Applicant make an acceptable color claim. The
Applicant submits the following color claim:
The colors dark red and gold are claimed as a feature of the mark. The white
background is not a part of the mark or otherwise claimed as a part thereof.
Please do not hesitate to contact me with any questions or comments.
Sincerely,
Justin M. Welch
For the Firm
cc: client via email
Page 4 of 4
F:Clients6000060397.001 Foster, Michele dba Michele Wines – Ste. MicheleRESPONSE TO OFFICE ACTION LETTER – logo – jmw.docx JMW