Chatam International Incorporatedv.Indomita Wine, S.A.

Trademark Trial and Appeal Board

Aug 24, 2005

No. 91155603 (T.T.A.B. Aug. 24, 2005)

Mailed:
24 August 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Chatam International Incorporated
v.
Indomita Wine, S.A.
_____

Opposition No. 91155603
to application Serial No. 76416324

_____

Paul M. Lewis of Charles Jacquin et Cie., Inc. for Chatam
International Incorporated.

Thomas P. Philbrick of Allmark Trademark Service for
Indomita Wine, S.A.1
______

Before Hairston, Drost, and Walsh, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On June 3, 2002, Indomita Wine, S.A. (applicant) filed
an intent-to-use application (Serial No. 76416324) to
register the mark QUINTUS in standard character form on the
Principal Register for “wine” in Class 33.
On February 27, 2003, Chatam International Incorporated
(opposer) filed an opposition to the registration of
applicant’s mark. Opposer alleges that it is the owner of a

1 Applicant did not file a brief in this proceeding.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Opposition No. 91155603
2
registration (No. 2,684,008) for the mark QUANTUM in
standard character form for “wine” in Class 33.2 Opposer
alleges that based “on the similarities in the marks and the
related nature of the goods in issue, as well as the likely
overlap in the channels of trade, the public is likely to be
confused, mistaken or deceived as to the origin and
sponsorship of Applicant’s proposed goods to be marketed
under Applicant’s applied for ‘QUINTUS’ trademark….” Notice
of Opposition at 3. Applicant denied the salient
allegations of the notice of opposition.
The Record
The record consists of the following items: the
pleadings; the file of the involved application; the trial
testimony deposition of Alan M. Perlman, opposer’s linguist,
with accompanying exhibits; and a Notice of Reliance
containing status and title copies of opposer’s
registration.
Priority
Priority is not an issue here to the extent that
opposer relies on its ownership of a federal registration
for the mark QUANTUM. See King Candy Co. v. Eunice King’s
Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).

2 The registration issued February 4, 2003 and it is based on an
application filed March 31, 1999.
Opposition No. 91155603
3
Likelihood of Confusion
When the issue is likelihood of confusion, we analyze
the facts of the case under the factors set out in In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(Fed. Cir. 2003). See also Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000); In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563,
567 (CCPA 1973). Opposer, as plaintiff in the opposition
proceeding, bears the burden of proving, by a preponderance
of the evidence, its asserted ground of likelihood of
confusion. See Cerveceria Centroamericana, S.A. v.
Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309
(Fed. Cir. 1989); Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1848 (Fed. Cir. 2000).
Two important factors that we consider in likelihood of
confusion cases are the ones concerning the similarity of
the marks and the relatedness of the goods. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976). We look first at the goods. Here,
both applicant’s and opposer’s goods are identified simply
as “wine.” Inasmuch as we must compare the goods as they
are described in the application and the registration to
determine if there is a likelihood of confusion, there is no
question but that the goods are identical. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
Opposition No. 91155603
4
1813, 1815 (Fed. Cir. 1987). We add two other points
concerning identical goods. First, if the involved marks
are used on identical goods, there is a greater likelihood
that when similar marks are used in this situation,
confusion would be likely. Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992) (“When marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines”). Second, because the goods are identical, we
must assume that they travel through the same channels of
trade and that the potential purchasers are the same.
Schieffelin & Co. v. Molson Companies Ltd., 9 USPQ2d 2069,
2073 (TTAB 1989) (“[M]oreover, since there are no
restrictions with respect to channels of trade in either
applicant's application or opposer's registrations, we must
assume that the respective products travel in all normal
channels of trade for those alcoholic beverages”).
The next factor requires us to compare the parties’
marks as to the “similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connotation, and
commercial impression.” Majestic Distilling, 65 USPQ2d at
1203. It is well settled that it is improper to dissect a
mark and that marks must be viewed in their entireties. In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed.
Opposition No. 91155603
5
Cir. 1993). However, more or less weight may be given to a
particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.” In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985).
Applicant’s mark is the word QUINTUS and opposer’s mark
is the word QUANTUM. Since both marks are displayed in
typed or standard character form, there is no difference
concerning the display of the marks. Regarding the
appearance of the marks, opposer argues as follows:
Each of the marks “Quantum” and “Quintus” begin with
the letter combination “QU,” which is by itself an
unusual combination of letters, immediately being eye-
catching… Both terms have a vowel after the “QU”,
followed by “NT”, followed by a vowel and, in the case
of “Quantum”, an “M” and, in the case of “QUINTUS”, an
“S.”

Brief at 3-4 (Citations to record omitted).
We agree that there are similarities with the
appearance of the marks to the extent that the marks have
certain letters in common. Both do begin with the letters
“QU.” However, we are not persuaded that this is “eye
catching.”3 “Q” is one of the letters of the western

3 Despite the claim by opposer’s linguist that its mark is “eye
catching,” it submitted numerous examples of registered marks for
wine that begin with “Qu,” e.g., QUINSON, QUINTA DO CASTELINHO,
QUAIL HILL VINEYARD, QUINTET, and QUIERO. Opposer introduced
this evidence during the linguist’s testimony in the form of a
trademark search report, which is normally not appropriate.
Weyerhaeuser Co. v. Katz, 24 USPQ 1230, 1231 (TTAB 1992) (A
“trademark search report is not credible evidence of
Opposition No. 91155603
6
alphabet, and it almost always requires the letter “U” as
the letter following the letter “Q.”4
When we look at the appearance of the marks as a whole,
it is clear that the marks are both seven letter words that
begin with the letters “QU” and have the letters “NTU” in
the middle. However, they are different to the extent that
their initial vowel, the third letter, is a different vowel
and the final letter is different. Thus, while there are
similarities with the appearance of the marks, there are
also differences.
Regarding the pronunciation of the marks, opposer
argues (Brief at 4, citations to the record omitted):
They have almost the same phonetic structure; they have
the same sequence of vowels and consonants with many
sounds in common. Thus, five of the seven sounds in
“QUINTUS” are identical to five of the seven sounds in
“QUANTUM.” Finally and equally important, both
“QUANTUM” and “QUINTUS” have the same morphemic
structure. A morpheme is a minimal meaningful unit.

the existence of the registrations listed in the report”).
However, third-party registrations may be used as a form of
dictionary to demonstrate that a portion of a mark is suggestive
or descriptive. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394
(TTAB 1987). These registrations, used as a dictionary, would
also indicate that the “Qu” term is not unusual. Inasmuch as
opposer has submitted this registration search report and
applicant has not objected, they are a form of admission of
opposer that undercuts its witness’ testimony about the “eye-
catching” nature of the “QU” portion of its mark.
4 “When adopted from the Etruscans, the Latin alphabet contained
three symbols for the k-sound (See C, K), and the use of Q was
limited to representing the sound (k) when it was labialized and
followed in spelling by U, a practice maintained today with only
rare exceptions.” The Random House Dictionary of the English
Language (unabridged) (2d ed. 1987) 1576. We take judicial
notice of this dictionary information. University of Notre Dame
du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition No. 91155603
7
In both cases, there is a morphemic root, “QUANT” in
one case, “QUINT” in the other, and a morphemic suffix
“UM” in the one case, and “US” in the other.

Again, there are some similarities and differences
between the pronunciations of the marks. Ultimately, we
conclude that when the marks are pronounced, the marks would
not sound very similar and that there would be noticeable
differences between QUANTUM and QUINTUS. The differences
between the initial vowels and the last letter create marks
that would have significantly different pronunciations.
Next, we look at the meanings of the marks. Opposer
has submitted dictionary definitions of both terms (Perlman
Ex. 6). Quantum is defined as “Quantity, Amount.” There
are separate definitions for “Quantum Mechanics” and
“Quantum Theory.” “Quintus” is defined as the “fifth voice
or part in medieval music.” On the surface, both marks have
different meaning although we question whether many
prospective purchasers would be aware of the dictionary
definition of “quintus.” Applicant’s witness asserts that
the terms “would be two-syllable words that are Latin
sounding or at least foreign sounding.” Perlman dep. at 28.
However, “quantum” is a recognized word in English but the
term “quintus” is more likely to be viewed as a Latin
sounding word. The term “quint” is defined as an
abbreviation of “fifth,” (Perlman Ex. 6) and prospective
purchasers may associate the term “fifth” with applicant’s
Opposition No. 91155603
8
mark. Therefore, the meanings of the marks would not be
similar.
Another point of comparison is the commercial
impressions of the marks QUANTUM and QUINTUS. It is likely
that purchasers would view opposer’s mark as the recognized
English word “Quantum.” Applicant’s mark “Quintus” is an
unusual term that would likely create the impression of
either an arbitrary term with no established meaning or a
term with a Roman or Latin connotation. Neither term would
have any connection with the wine. We conclude that the
marks’ commercial impressions would not be similar.
When we compare the marks QUANTUM and QUINTUS, they
would appear somewhat similar in appearance inasmuch as only
two of the seven letters differ. Nevertheless, those two
different letters significantly change the pronunciation of
the marks and their meanings would not be the same. Their
commercial impressions would likewise be different. When we
consider the differences, we cannot hold that the marks are
similar. We are mindful that a “[s]ide by side comparison
is not the test,” Grandpa Pigeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973),
and that "[h]uman memories even of discriminating purchasers
… are not infallible." In re Research and Trading Corp.,
793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), quoting,
Carlisle Chemical Works, Inc. v. Hardman & Holden Ltd., 434
Opposition No. 91155603
9
F.2d 1403, 168 USPQ 110, 112 (CCPA 1970). However, we
cannot conclude that the term “Qu” is so unusual that
customers will attribute all identical products with these
initial letters to the same source. Nor is it likely that
customers will associate the recognized English word QUANTUM
with the unusual term QUINTUS. The difference between the
middle and ending of the words results in substantially
different marks.
Regarding the other factors on the issue of likelihood
of confusion, we add that there is no evidence that
opposer’s mark is famous nor is there evidence of actual
confusion. Inasmuch as applicant’s mark is based on an
intent to use the mark, the lack of actual confusion is
hardly surprising and neither this factor nor the fame
factor favors either party. There is also no evidence that
potential purchasers of wine are careful or sophisticated
purchasers and the board has held that wine purchasers are
not necessarily sophisticated purchasers. In re Opus One
Inc., 60 USPQ2d 1812, 1817 (TTAB 2001). None of the other
factors in this case is significant.
One other point we add concerns opposer’s linguistic
expert. Opposer’s witness testified on the ultimate
question of likelihood of confusion. We do not give the
witness’ testimony much weight on this subject for several
reasons. First, the witness did not submit evidence that he
Opposition No. 91155603
10
was an expert, or even familiar with, the marketing of
wines. Other than his linguistic studies, the witness
pointed “to nothing in that experience that provided him
with expertise in determining the likelihood of confusion in
the purchase of similarly named” wine. Betterbox
Communications Ltd. V. BB Technologies Inc., 300 F.3d 325,
64 USPQ2d 1120, 1128 (3rd Cir. 2002). Second, the witness’
testimony seemed to address the question of the potential
for confusion rather than likelihood of confusion. See
Perlman dep. at 34 (“So the potential for confusion which is
introduced by the linguistic similarities between the two
marks would be exacerbated by the context in which they are
likely to be seen”); 35 (“The potential for confusion is
inherent in the words, and that potential can be exacerbated
by the natural conditions under which we perceive language,
which tend to distract us and to create the possibility for
misinterpretation”). Indeed, the witness agreed that the
impressions of the marks were “different but not strikingly
so.” Perlman dep. at 29. The witness explained (p. 29):
[I]f you wrote those two words down and asked someone
to compare them, are they the same word or not, the
person would say, “they’re not the same word,” but
that’s very different from hearing the word in
conversation or against the buzz of background noise.

The testimony apparently concentrated on whether the
marks could ever be confused. However, whether there is a
possibility of confusion is not the question. Many
Opposition No. 91155603
11
dissimilar marks could be confused in the proper
circumstances due to external factors or inattention on the
part of listeners. Nevertheless, the question we must
consider is whether there is a likelihood of confusion.
Bongrain International (American) Corp. v. Delice de France,
Inc., 811 F.2d 1479, 1 USPQ2d 1775, 1779 (Fed. Cir. 1987)
(The “statute refers to likelihood, not the mere
possibility, of confusion”). Ultimately, even if the
witness was addressing the appropriate issue, we are not
persuaded that there is a likelihood of confusion in this
case.
When we consider all the evidence of record, we
conclude that while there are some similarities between the
marks QUANTUM and QUINTUS, we agree that the differences in
pronunciation, appearance, meaning and commercial impression
outweigh any similarities in the marks. Therefore, we hold
that there is no likelihood of confusion in this case.
Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d 330, 21
USPQ 1142, 1143-44 (Fed. Cir. 1991) (FROOTEE ICE and
elephant design is so different from FROOT LOOPS that even
if goods were closely related and opposer’s mark were famous
there was no likelihood of confusion).
Decision: The opposition is dismissed.