Arkenstone Vineyards, LLCDownload PDFTrademark Trial and Appeal BoardMar 16, 2009No. 76681180 (T.T.A.B. Mar. 16, 2009) Copy Citation Mailed: 3/16/09 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Arkenstone Vineyards, LLC ________ Serial No. 76681180 _______ Montgomery G. Frankel, Esq. for Arkenstone Vineyards, LLC. Tina M. Kuan, Trademark Examining Attorney, Law Office 108 (Andrew Lawrence, Managing Attorney). _______ Before Quinn, Drost and Taylor, Administrative Trademark Judges. Opinion by Quinn, Administrative Trademark Judge: Arkenstone Vineyards, LLC filed an application to register the mark OBSIDIAN (standard character form) for “wine.”1 The trademark examining attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that applicant’s mark, when used in connection with applicant’s wine, so resembles the 1 Application Serial No. 76681180, filed August 27, 2007, alleging a bona fide intention to use the mark in commerce. THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Ser. No. 76681180 2 previously registered mark OBSIDIAN RIDGE (standard character form) for “wines”2 as to be likely to cause confusion. When the refusal was made final, applicant appealed. Applicant and the examining attorney filed briefs.3 Applicant argues that OBSIDIAN RIDGE is registrant’s winery’s brand name whereas OBSIDIAN, as used by applicant, is its fanciful cuvee name. In this connection, applicant contends that an agreement between it and a third-party precludes applicant from using OBSIDIAN in a manner to suggest a winery name, but rather it may use the term only in a manner subordinate to applicant’s winery name, “Arkenstone.” Applicant also argues that, given the price points of applicant’s and registrant’s wines, purchasers are sophisticated and are likely to pay close attention to the labels to understand the wines they are purchasing. 2 Registration No. 3076542, issued April 4, 2006. 3 Applicant apparently has commenced use of its mark, and attached to the appeal brief is a copy of one of its labels. Applicant also accompanied its reply brief with additional evidence (an excerpt from the website of the U.S. Department of the Treasury’s “COLA” (certificate of label approval) register) in an attempt to show that the cited mark is weak. The record in the application should be complete prior to the filing of an appeal. Trademark Rule 2.142(d). Exhibits attached to a brief that were not made of record during examination are untimely. Accordingly, we have not considered this additional evidence in making our decision. See In re U.S. Cargo Inc., 49 USPQ2d 1702, 1703 n.2 (TTAB 1998); and TBMP §1203.02(e) (2d ed. rev. 2004). Even if considered, this specific evidence would not change the outcome of this appeal. Ser. No. 76681180 3 Applicant further claims that registrant’s mark is geographically descriptive in that registrant’s winery is located in an area known as “Obsidian Ridge” in the Red Hills of Lake County, California, and that both wines are clearly marked to show their different places of origin. Lastly, applicant points to the absence of any actual confusion between the marks. In support of its position, applicant submitted one of registrant’s labels; excerpts from two third-party websites that include certain facts about registrant’s vineyard and wine; and a copy of an agreement between applicant and a third-party.4 The examining attorney maintains that the marks are similar and that, accordingly, consumers are likely to confuse the marks when used in connection with identical goods. In support of the refusal, the examining attorney submitted dictionary definitions of the words “obsidian” and “ridge,” three encyclopedia excerpts,5 and a Wikipedia 4 Applicant, in its brief, withdrew the earlier-submitted exhibit comprising a topographical map showing a geographic area called “Obsidian Ridge” located in the state of New Mexico. 5 The dictionary definitions and three encyclopedia excerpts accompanied the examining attorney’s appeal brief. Inasmuch as judicial notice may be taken of dictionary definitions and encyclopedia entries, the examining attorney’s request to take judicial notice of this evidence is granted. B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719 (Fed. Cir. 1988). See TBMP §704.12(a) (2d ed. rev. 2004). Ser. No. 76681180 4 listing for the term “cuvee.” Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). With respect to the goods, it is well settled that the question of likelihood of confusion must be determined based on an analysis of the goods recited in applicant’s application vis-à-vis the goods identified in the cited registration. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). Where the goods in the application at issue and/or in the cited registration are broadly identified as to their nature and type, such that there is an absence of any restrictions as to the channels of trade and no limitation as to the classes of purchasers, it is Ser. No. 76681180 5 presumed that in scope the identification of goods encompasses not only all the goods of the nature and type described therein, but that the identified goods are offered in all channels of trade which would be normal therefore, and that they would be purchased by all potential buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In the present case, both the application and the cited registration identify the goods as “wine(s).” Thus, for purposes of our analysis, the goods are considered to be legally identical. We presume that the goods move through the same trade channels to the same purchasers, including ordinary consumers. The identity in these factors heavily favors a finding of likelihood of confusion. Further, as to conditions of sale, the identifications of goods, “wine(s),” do not include any limitations as to price. Thus, the identifications encompass inexpensive wines that frequently would be the subject of impulse purchase made with nothing more than ordinary care. With regard to applicant’s contention that purchasers of applicant’s and registrant’s wines are sophisticated, this mere argument does not compel a different result here. See In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (evidence that relevant goods are expensive wines Ser. No. 76681180 6 sold to discriminating purchasers must be disregarded given the absence of any such restrictions in the application or registration); and In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001) (While the applicant “offered evidence to show that registrant’s OPUS ONE wine is an expensive wine...‘wine’ must be presumed to encompass inexpensive or moderately-price wine.”). See also In re Majestic Distilling Co., 65 USPQ2d at 1204-05 (“[E]ven if...‘common experience’ shows that consumers sometimes become attached to a particular brand of beer or spirits after purchasing and consuming that brand at least once, that would say little, if anything, about whether the consumer’s initial selection of that brand was based on studied consideration and sophistication or, alternatively, on impulse.” (emphasis in original)). This factor also weighs in favor of a likelihood of confusion. With respect to the marks, we must compare the marks in their entireties as to appearance, sound, connotation and commercial impression to determine the similarity or dissimilarity between them. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test, under the first du Pont factor, is not whether the marks can be distinguished when subjected to a side-by-side comparison, Ser. No. 76681180 7 but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the services offered under the respective marks is likely to result. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Finally, where, as in the present case, the marks are used in connection with legally identical goods, the degree of similarity between the marks that is necessary to support a finding of likely confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992). In comparing applicant’s mark OBSIDIAN to registrant’s mark OBSIDIAN RIDGE, the marks obviously share the term “OBSIDIAN.” Applicant has merely deleted the term “RIDGE” from registrant’s mark and adopted OBSIDIAN as its own. While not visually identical, the marks are substantially similar in appearance. The term “OBSIDIAN” in registrant’s mark, being the first word of the mark, is likely to have a greater impact on purchasers and will be remembered by them. Presto Products Inc. v. Nice-Pak Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first part of a mark which is likely to be impressed upon the mind of a Ser. No. 76681180 8 purchaser and remembered”). See also Palm Bay Imports Inc. v. Vueve Clicquot Ponsardin, 73 USPQ2d at 1692. The marks also are aurally similar because both marks share the term “OBSIDIAN” as their first word (in applicant’s mark, the only word). With respect to meaning, the term “obsidian” is defined as “a usually black or banded, hard volcanic glass that displays shiny, curved surfaces when fractured and is formed by rapid cooling of lava.” The term “ridge” means “a long narrow chain of hills or mountains.” The American Heritage Dictionary of the English Language (4th ed. 2000). The term “OBSIDIAN” in either applicant’s or registrant’s mark means the same thing, namely, volcanic glass formed of lava. Registrant’s mark just suggests that registrant’s vineyard is located along a ridge that may contain volcanic glass. Indeed, an excerpt from a third-party website indicates the following: “Obsidian, glassy black rock of volcanic origin, litters the steep slopes of Obsidian Ridge Vineyard.” Given these similarities, the marks will engender very similar overall commercial impressions. Consumers familiar with registrant’s OBSIDIAN RIDGE wine, upon encountering applicant’s OBSIDIAN wine, may believe that registrant has merely shortened its brand name or that OBSIDIAN brand wine Ser. No. 76681180 9 originates in one of registrant’s nearby vineyards that is not located along hills or mountains. Simply put, the presence of “RIDGE” in registrant’s mark does not sufficiently distinguish the marks. See, e.g., Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, supra (VEUVE ROYALE similar to VEUVE CLICQUOT and VEUVE CLICQUOT POSARDIN); Coca-Cola Bottling Co. v. Jos. E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL similar to BENGAL LANCER); and In re Corning Glass Works, 229 USPQ 65 (TTAB 1985) (CONFIRM similar to CINFIRMCELLS). Applicant’s contention that the registered mark is registrant’s winery’s brand name whereas applicant’s mark is its fanciful cuvee name (and must only be used as such in view of applicant’s agreement with a third party) is irrelevant to our analysis. The similarities between the marks weigh in favor of a likelihood of confusion, especially in view of the fact that the goods are identical. Applicant also points to the absence of any evidence of actual confusion. Firstly, applicant’s application is based on intent to use the mark in commerce, and while it appears that applicant may have commenced use, it may be that there has been little to no opportunity for confusion to occur in the marketplace. Secondly, even if applicant Ser. No. 76681180 10 has commenced use, applicant’s uncorroborated statement of no known instances of actual confusion is of little evidentiary value. In re Majestic Drilling Co., 65 USPQ2d at 1205. The lack of evidence of actual confusion carries little weight, especially in an ex parte context. Id. This factor is neutral in our analysis. Applicant contended during prosecution that “Obsidian Ridge” is a geographically descriptive term. To the extent that applicant’s allegations constitute a collateral attack on registrant’s registration, they are impermissible. Section 7(b) of the Trademark Act, 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal Register shall be prima facie evidence of the validity of the registration, of the registrant’s ownership of the mark and of the registrant’s exclusive right to use the mark in connection with the goods or services identified in the certificate. During ex parte prosecution, including an ex parte appeal, an applicant will not be heard on matters that constitute a collateral attack on the cited registration (e.g., a registrant’s mark is geographically descriptive). In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); and In re Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992). See TMEP §1207.01(d)(iv) (5th ed. 2007). Accordingly, no Ser. No. 76681180 11 consideration has been given to applicant’s arguments in this regard.6 Decision: The refusal to register is affirmed. 6 In any event, applicant’s evidence hardly mandates the result it urges. Further, when the examining attorney did an online search of The Columbian Encyclopedia (6th ed. 2007) for the term “obsidian ridge,” the search revealed “No documents match the query.” We agree with the examining attorney’s assessment: “Neither registrant’s label nor advertisement [third-party website] indicates that its wine originates in an area called ‘Obsidian Ridge,’ contrary to applicant’s claim. They only refer to registrant’s wine as produced by and at a winery called ‘Obsidian Ridge Vineyard.’” (Brief, p. 7). Copy with citationCopy as parenthetical citation