Arkenstone Vineyards, LLC

Trademark Trial and Appeal Board

Mar 16, 2009

No. 76681180 (T.T.A.B. Mar. 16, 2009)

Mailed: 3/16/09

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Arkenstone Vineyards, LLC
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Serial No. 76681180
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Montgomery G. Frankel, Esq. for Arkenstone Vineyards, LLC.

Tina M. Kuan, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
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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
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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
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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).