Response to Section 2(d) Refusal — Likelihood of Confusion
The January 24, 2025 Office Action refuses registration of MOLTO in Class 032 under Trademark Act Section 2(d), 15 U.S.C. §1052(d), based on MOLTO BENE (Reg. No. 6070597) for “Wines” in Class 033. Applicant respectfully submits that confusion is unlikely because the marks, compared in their entireties, differ materially in appearance, sound, connotation, and commercial impression.
The marks create different connotations and commercial impressions
Marks must be compared in their entireties for similarities in appearance, sound, connotation, and commercial impression. In re Charger Ventures LLC, 64 F.4th 1375, 1380, 2023 USPQ2d 451, at *3 (Fed. Cir. 2023); TMEP §1207.01(b). The fundamental Section 2(d) inquiry concerns the cumulative effect of differences in the essential characteristics of the goods and differences in the marks. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103, 192 USPQ 24, 29 (C.C.P.A. 1976). Not all du Pont factors are relevant or entitled to similar weight in every case. In re Guild Mortg. Co., 912 F.3d 1376, 1379, 129 USPQ2d 1160, 1162 (Fed. Cir. 2019).
The application states that the English translation of MOLTO is “very.” The cited registration states that the English translation of MOLTO BENE is “VERY WELL.” These different meanings are not a difference in length alone: the second word changes the connotation of the cited mark and also makes it longer in appearance and sound. The required whole-mark comparison therefore gives BENE substantive weight rather than treating it as an appendage that leaves the same expression intact.
The Office Action states that the MOLTO translation is unnecessary because the term appears in an English dictionary. That publication treatment does not remove connotation from the comparison required by Charger Ventures.
Palm Bay found the shared first word VEUVE prominent and relied on that prominence in finding similarity between the marks before it. Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 1372, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The Office Action reasons that consumers will focus on MOLTO because it is the first word of the cited mark and is identical to the applied-for mark. That observation does not make the second word immaterial here, because the second word supplies the portion of the cited expression that gives it a meaning not present in the applied-for mark. Giving controlling effect to first position would discount the element responsible for the marks’ different connotations and would conflict with the required comparison of the marks as a whole.
The Office Action characterizes MOLTO as a likely shortened form of MOLTO BENE. The Office Action cites In re Mighty Leaf Tea and In re Optica International for the proposition that merely omitting wording from a registered mark may not overcome likelihood of confusion. In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); In re Optica Int’l, 196 USPQ 775, 778 (TTAB 1977). That qualified proposition does not establish that every shortened mark preserves the commercial impression of the longer mark. In this comparison, the omission is material because it removes the wording that supplies the cited mark’s distinct full connotation; the shortened-form rationale therefore does not outweigh the differences between the marks as a whole.
Relatedness of the goods does not overcome the differences between the marks
Applicant does not contest that beer and wine may be related goods. The Office Action relies on third-party registrations covering beer and wine to show that those goods may emanate from a single source under a single mark. Third-party registrations may be probative for that purpose. In re I-Coat Co., 126 USPQ2d 1730, 1737 (TTAB 2018). That evidence addresses relatedness; it does not determine whether MOLTO and MOLTO BENE create the same appearance, sound, connotation, or commercial impression. Accordingly, the relatedness evidence does not eliminate the need to give full weight to the differences between the marks.
In the alternative, amendment of the identification
Applicant submits that the examiner’s relatedness finding principally rests on registrations combining beer and wine; limiting Class 032 to entries expressly described as alcohol-free, de-alcoholised, de-alcoholized, or non-alcoholic removes every unqualified or reduced-alcohol beer entry and materially distances the retained goods from registrant’s wines. Reg. No. 7505080 (HIVE2HAND) includes certain alcohol-free, de-alcoholized, and non-alcoholic Class 032 goods and wines in Class 033; Reg. No. 5116260 (TULASI) includes certain alcohol-free and de-alcoholised Class 032 goods and wine in Class 033; under In re I-Coat, each shows only that its listed goods may emanate from a single source under a single mark, not that relatedness is categorical under every mark or that the distinct connotations of MOLTO and MOLTO BENE may be disregarded. In the alternative, and without conceding the refusal, Applicant amends the identification in International Class 032 to read: Alcohol-free beer; Alcohol-free beers; De-alcoholised beer; De-alcoholized beers; Non-alcoholic beer; Non-alcoholic beer-based cocktails; Non-alcoholic beer-flavoured drinks; Non-alcoholic beverages, namely, carbonated beverages.