Cristall U.S.A., Inc.v.Stockholm Imports, Ltd.

Trademark Trial and Appeal Board

Mar 23, 2004

No. 91123063 (T.T.A.B. Mar. 23, 2004)

Hearing: Paper No. 6
December 9, 2003 Mailed: March 23, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Cristall U.S.A., Inc.
v.
Stockholm Imports, Ltd.
_____
Opposition No. 91123063
to application Serial No. 75686518
filed on April 19, 1999.
_____
David L. Garrison of Garrison and Associates, PS, for
Cristall U.S.A., Inc.
Aaron T. Borrowman of Kelly Bauersfeld Lowry & Kelley, LLP,
for Stockholm Imports, Ltd.
______
Before Cissel, Rogers and Drost, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On April 19, 1999, Chester A. Swenson, a United States
citizen residing in California, filed the above-referenced
application to register the mark “STOCKHOLM KRISTALL” on the
Principal Register for “wines, spirits and liqueurs.” The
basis for filing the application was applicant’s assertion
that he possessed a bona fide intention to use the mark in
commerce in connection with the specified goods. Mr.
Swenson subsequently disclaimed the exclusive right to use
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91123063
2
the geographically descriptive word “STOCKHOLM” apart from
the mark as shown, and amended the application to state that
the goods are properly classified in International Class 33.
Then the application was amended to claim use of the mark on
the stated goods in interstate commerce as early as
September of 1999; specimens showing the mark displayed
vertically on vodka bottles were submitted; the
identification-of-goods clause was restricted to strike
reference to “wines”; and the application was assigned to
Stockholm Imports, Ltd., a corporation operating under the
laws of the state of California.
Following publication of the mark in the Official
Gazette, a timely Notice of Opposition was filed by Cristall
U.S.A., a corporation of the state of Florida. As grounds
for opposition, opposer alleged that it imports Russian
vodka for sale in the United States and is the assignee of
all rights in the trademark “CRISTALL” from Moscow
Distillery Cristall, a Russian entity; that opposer owns
United States Trademark Reg. No. 2,336,937 for the mark
“CRISTALL” for vodka1 and Reg. No. 2,301,166 for the same
word in stylized lettering, also for vodka2; that Moscow
Distillery Cristall has for many years manufactured high
1 Issued on the Principal Register to opposer on April 4, 2000.
The application had been assigned to opposer from Moscow
Distillery Cristall.
2 Issued to opposer on the Principal Register on Dec. 21, 1999.
Opposition No. 91123063
3
quality Russian vodka, including vodka sold in the United
States since 1989 under the marks “STOLICHNAYA CRISTALL,”
“CRISTALL” and “MOSCOW CRISTALL”; that opposer adopted and
is using a label which bears the “CRISTALL” mark oriented
vertically on the bottle, as opposed to the conventional
horizontal orientation3; and that the mark applicant seeks
to register, particularly as used on applicant’s vodka with
the word “KRISTALL” oriented vertically, so resembles
opposer’s marks as to be likely to cause confusion, to cause
mistake or to deceive.
Applicant answered the Notice of Opposition by denying
that confusion is likely, asserting that there had been no
actual confusion between the marks and that its mark differs
in sound, appearance and commercial impression from the
marks pleaded by opposer.
A trial was conducted in accordance with the Trademark
Rules of Practice. Both parties took testimony, introduced
evidence, filed briefs and argued their respective positions
at the oral hearing before the Board.
The record includes the depositions, with exhibits, of
Chester Swenson, Chairman of the Board of applicant, and of
Frank Pesce, Chairman of the Board and Chief Executive
Officer of opposer.
3 Reg. No. 2,548,656, showing the mark presented vertically, was
issued on March 19, 2000, based on a claim of use since Feb. 15,
Opposition No. 91123063
4
In view of opposer’s submission of suitable copies of
its pleaded and unchallenged registrations, opposer has
established its standing and that priority is not an issue
in this proceeding. See, e.g., Lipton Industries, Inc. v.
Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA
1982). In any event, the record establishes opposer’s
priority of use. Opposer’s predecessor in interest used the
mark on vodka imported into the United States as early as
1990, and opposer itself has sold vodka bearing the mark
here since 1998. The opposed application, based on the
intention to use the mark, was not filed until September of
1999.
We thus turn to determining of the merits of opposer’s
claim that confusion is likely. Based on careful
consideration of the record, the arguments presented by the
parties, the statute and the relevant legal precedents, we
find that the mark applicant seeks to register is similar to
opposer’s pleaded mark “CRISTALL” and that the goods on
which applicant uses its mark are identical to the products
with which opposer has used its mark and for which it has
registered its marks. Under these circumstances, confusion
is plainly likely.
This conclusion regarding the issue under Section 2(d)
of the Lanham Act is based on our analysis of all of the
1997. This registration was introduced into the record in
Opposition No. 91123063
5
probative facts in evidence that are relevant to the
likelihood of confusion factors set forth in In re E.I.
duPont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In considering the evidence of record on these
factors, we keep in mind that the basic inquiry mandated by
Section 2(d) goes to the cumulative effect of the
similarities and differences in the essential
characteristics of the goods and the similarities and
differences in the marks. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
The first issue for our determination is whether the
marks, when considered in their entireties, are similar in
terms of appearance, pronunciation and meaning, and whether
the overall commercial impressions they create, in
connection with vodka, are similar. The test is whether the
marks are sufficiently similar in terms of their overall
commercial impressions that confusion as to the source of
the goods offered under them is likely to result; the
question is not whether the marks can be distinguished when
they are subjected to a side-by-side comparison. In re
Continental Graphics Corp., 52 USPQ2d 1374 (TTAB 1999). Our
determination must focus on the recollection of the average
purchaser of the goods in question, taking into account that
such a person normally retains only a general, rather than a
connection with Mr. Pesce’s testimony.
Opposition No. 91123063
6
specific, impression of a trademark. Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
As noted above, the mark applicant seeks to register is
“STOCKHOLM KRISTALL,” and opposer’s mark is “CRISTALL.”
Notwithstanding applicant’s arguments to the contrary,
“STOCKHOLM KRISTALL” and “CRISTALL” are similar in
appearance, pronunciation and connotation, and the overall
commercial impressions they create in connection with vodka
are similar as well. Both marks employ unusual spellings,
at least as far as the United States market is concerned, of
the word “crystal.” Each mark consists of or includes a
phonetic equivalent of this word, and each presents the term
ending in two “l”s. The record shows that both applicant
and opposer intend for their marks to suggest that the
vodkas with which the marks are used are crystal clear, so
the connotations of “KRISTALL” and “CRISTALL” are the same,
as are their pronunciations.
Applicant’s argument that the geographically
descriptive (and hence disclaimed) term “STOCKHOLM” readily
differentiates its mark from that of opposer is not well
taken. It is well settled that the addition of descriptive
terminology to an otherwise similar mark is normally
insufficient to alter the overall commercial impression of
the mark to the point where the likelihood of confusion is
eliminated. The addition of the geographically descriptive
Opposition No. 91123063
7
term to applicant’s mark is an insufficient basis upon which
to conclude that vodka purchasers are likely to distinguish
between these otherwise very similar marks when they are
used on identical goods. Applicant’s addition of the term
“STOCKHOLM” is likely to be understood as an indication of
the geographic origin of applicant’s vodka. Vodka
purchasers familiar with opposer’s “Cristall” vodka from
Russia are likely to assume that applicant’s identical
products are produced by the same entity, but from a
facility in Stockholm, rather that one in Russia.
For the record, we note that we have not been persuaded
by opposer’s arguments concerning the vertical orientation
of its mark in one of its registrations, or by the argument
regarding its predecessor’s use of the term “Kristall,”
spelled with a “K,” in its name. The marks are similar even
without considering the vertical display, and the fact that
Moscow Distillery apparently referred to itself as “Moscow
Distillery Kristall” prior to using the name “Moscow
Distillery Cristall” is of no avail to opposer. The
testimony is less than clear as to when the transition from
“Kristall” to “Cristall” took place, much less whether, at
the present time, any significant number of purchasers in
this country are even aware of the alleged prior use of
“Kristall” by opposer’s predecessor. In a similar sense,
this record does not establish whether or not any such prior
Opposition No. 91123063
8
use is likely, at this juncture, to be attributed to
opposer. In any event, Moscow Distillery Cristall is not a
party to this proceeding and there is no evidence that any
rights it may have had in the term “Kristall” have been
assigned to opposer. We therefore cannot attribute any use
of that term by Moscow Distillery Cristall to opposer.
We further note that we have not been persuaded by
applicant’s argument that these marks are unlikely to cause
confusion because applicant promotes its product by using a
Swedish theme, emphasizing the Swedish origin of the goods,
whereas opposer promotes the Russian origin of its product.
In resolving the issue of whether confusion is likely, we
must consider the marks in their entireties, but it would
not be appropriate to let the other matter in advertising
copy in which the marks are used control with regard to our
resolution of the question of whether the marks themselves
are likely to cause confusion. As with a display associated
with a mark, advertising copy and its emphasis may be
changed at any time. Applicant is not attempting to
register anything but the word mark “STOCKHOLM KRISTALL.”
As both parties concede, the goods are identical.
Applicant does put forward the argument that in view of the
relatively high prices its vodka commands in the
marketplace, the purchasers of its goods are sophisticated
purchasers, but we must resolve the issue of whether
Opposition No. 91123063
9
confusion is likely based on the goods as they are
identified in the application and the pleaded registrations,
respectively, without any limitations or restrictions not
reflected therein. On that basis, we must conclude that the
goods of the parties are identical, moving through the same
channels of trade to the same ultimate consumers who are not
necessarily sophisticated consumers. Canadian Imperial Bank
of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987).
It is well settled that when marks are used on
identical goods, in order for confusion to be likely, the
marks do not have to be as similar as would be the case if
the goods were not the same. Century 21 Real Estate v.
Century Life of America, 570 F.2d 874, 23 USPQ2d 1098 (Fed.
Cir. 1992). As noted above, the issue is not whether the
marks can be distinguished based on side-by-side comparison,
but rather whether, as used on the same products, the
commercial impressions they engender are so similar that
prospective purchasers are likely to be confused as to the
source of the goods. In the instant case, the similarities
discussed above provide more than a sufficient basis for
holding that confusion is likely. Even if some doubt
remained on this issue, it is well settled that any such
doubt would have to be resolved in favor of the prior user
and registrant, and against the applicant, who, as the
Opposition No. 91123063
10
second comer, had a duty to select a mark that would not be
likely to cause confusion with a mark which was already in
use by a competitor. Burroughs Wellcome Co. v. Warner-
Lambert Co., 203 USPQ 191 (TTAB 1979).
That no incidents of actual confusion have come to
light is not determinative of this dispute. The issue is
whether confusion is likely, not whether it has actually
taken place. Evidence of actual confusion is not necessary
in order for us to find that confusion is likely.
Applicant argues that registration and use of marks
which include the phonetic equivalent of opposer’s mark for
the same or related goods by third parties establishes that
opposer’s mark is weak; that, as such, it is entitled to
only a narrow scope of protection under Section 2(d) of the
statute; and that this narrow scope does not encompass marks
such as the one applicant here seeks to register. Most of
the evidence and testimony applicant cites in support of
this argument does not establish the use of these third-
party marks. As to the few that have been shown to have
been in actual use, we are not provided with sufficient
evidence regarding the extent of their use or promotion to
conclude that prospective purchasers of vodka in the United
States have been exposed to the use of so many marks
consisting of or including the term “crystal” or a phonetic
Opposition No. 91123063
11
variation of it in connection with this product that the
word has become weak in source-identifying significance.
In summary, priority is not an issue in this case, but
if it were, priority would be with opposer; applicant’s mark
is similar to opposer’s mark in commercial impression; and
these two similar marks are used on identical goods. Under
these circumstances, we hold that confusion is likely.
Decision: The opposition is sustained and registration
to applicant is refused.