DGB (PTY) LTD

Trademark Trial and Appeal Board

Apr 29, 2016

No. 85944842 (T.T.A.B. Apr. 29, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: April 29, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re DGB (PTY) LTD
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Serial No. 85944842
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Lawrence E. Abelman and Erica R. Halstead of Abelman, Frayne & Schwab,
for DGB (PTY) LTD.
Jordan A. Baker, Trademark Examining Attorney, Law Office 102,
Mitchell Front, Managing Attorney.
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Before Seeherman, Mermelstein, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
DGB (PTY) LTD (“Applicant”) seeks registration on the Principal Register of the
standard character mark THE BEACHHOUSE, A WINE BY DOUGLAS GREEN for
“Wines” in International Class 33.1
The Trademark Examining Attorney has refused registration under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as

1 Application Serial No. 85944842 was filed on May 29, 2013 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce. The application includes a statement that the name
“Douglas Green” does not identify a living individual.
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applied to the goods identified in the application, so resembles the mark
BEACH HOUSE WINERY, in standard characters and with “winery” disclaimed,
previously registered on the Principal Register for “Wine” in International Class 33,
as to be likely to cause confusion, to cause mistake, or to deceive.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (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. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”).
We first consider the second and third du Pont factors, the similarity of the goods
and channels of trade. We must look to the goods as identified in the involved
application and cited registration, not to any extrinsic evidence of actual use. Stone
Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1162 (Fed. Cir. 2014).

2 Registration No. 4520020, issued April 29, 2014.
Serial No. 85944842
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Applicant’s goods are “wines,” and Registrant’s goods are “wine.” The goods are
identical. Because there are no limitations as to channels of trade or classes of
purchasers in the description of goods in either the cited registration or the
application, we must presume that they move in all channels of trade normal for such
goods and are available to all potential classes of ordinary wine consumers. See
Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253,
1261 (Fed. Cir. 2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006);
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Because the goods described in the application and the cited registration are
identical, moreover, we must presume that the channels of trade and classes of
purchasers are the same. See American Lebanese Syrian Assoc. Charities Inc. v. Child
Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled
to rely on this legal presumption in determining likelihood of confusion).
In our likelihood of confusion analysis, these findings under the second and third
du Pont factors strongly support a finding that confusion is likely.
We next address the du Pont likelihood of confusion factor focusing on “the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting du Pont, 177 USPQ at 567). When, as here, marks would appear on
identical goods, “the degree of similarity necessary to support a conclusion of likely
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confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
“The proper test is not a side-by-side comparison of the marks, but instead
whether the marks are sufficiently similar in terms of their commercial impression
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted). The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. Joel Gott Wines LLC v. Rehoboth Von Gott Inc.,
107 USPQ2d 1424, 1430 (TTAB 2013).
Because the similarity or dissimilarity of the marks is determined based on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks
into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, there is nothing improper
in stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. In re Nat’l Data, 224 USPQ at 751.
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Applicant’s mark is THE BEACHHOUSE, A WINE BY DOUGLAS GREEN. The
cited mark is BEACH HOUSE WINERY. The term BEACHHOUSE in Applicant’s
mark is easily recognized as a concatenation of the words BEACH and HOUSE. It is
well established that the definite article THE is insignificant as a source-identifier.
In re Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009); Conde Nast Publ’ns Inc. v.
Redbook Publ’g Co., 217 USPQ 356, 357 (TTAB 1983) (noting that the word “the”
cannot serve as an indication of origin). The fact that the shared terms
BEACHHOUSE and BEACH HOUSE are the first words with trademark
significance in both marks enhances the similarity between the marks, as our
primary reviewing court has noted. See, e.g., Century 21 Real Estate Corp., 23
USPQ2d at 1700 (stating that consumers will first notice the identical lead word on
encountering marks); see also Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d
1895, 1897 (TTAB 1988) (stating that “it is often the first part of a mark which is
most likely to be impressed upon the mind of a purchaser and remembered”).
We find the marks to be visually and aurally similar because BEACH HOUSE
(presented as one or two words) is the first and dominant portion of each. Compared
in their entireties, both marks also incorporate the descriptive term WINE or
WINERY, contributing to a similar connotation and overall commercial impression.
We do not agree with Applicant that the phrase “A WINE BY DOUGLAS GREEN”
will significantly distinguish its mark from the cited mark in the minds of consumers.
Rather, we find that consumers are likely to view Applicant’s mark as designating a
variation of the cited mark pointing to a common source. See In Re Mighty Leaf Tea,
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601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (affirming Board decision
finding that ML is likely to be perceived as a shortened version of ML MARK LEES,
and noting that “the presence of an additional term in the mark does not necessarily
eliminate the likelihood of confusion if some terms are identical”).
The application claims ownership of the mark shown below for “wines, spirits and
liqueurs” in International Class 33:3

Applicant contends that the DOUGLAS GREEN mark is well-known,4 and argues:
“Because of Applicant’s exclusive and extensive use of the DOUGLAS GREEN mark
on wines, consumers seeing goods bearing the mark THE BEACHHOUSE, A WINE
BY DOUGLAS GREEN will recognize the DOUGLAS GREEN brand and will
associate this mark solely with DGB (Pty) Ltd.”5
To the extent Applicant is arguing that its mark is distinguished by its house mark
DOUGLAS GREEN, as a general rule, the addition of a house mark to one of two
otherwise confusingly similar marks will not serve to avoid a likelihood of confusion.

3 Registration No. 2246114, issued May 18, 1999; renewed. September 13, 2014 Office Action
at 28-30; March 26, 2015 Response to Office Action at 4-5. Applicant also submitted a copy of
its pending application Serial No. 86194242, filed February 14, 2014 pursuant to Section 1(b)
of the Trademark Act, for the mark HONEYBUSH FROM DOUGLAS GREEN for “Wines.”
March 26, 2015 Response to Office Action at 6-7.
4 Appeal Brief at 8-9, 4 TTABVUE 9-10.
5 Id. at 7, 4 TTABVUE 8 (emphasis in original). Applicant did not submit any evidence
concerning use or recognition of the DOUGLAS GREEN mark.
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See, e.g., In re Chica Inc., 84 USPQ2d 1845, 1848-49 (TTAB 2007) (CORAZON and
CORAZON BY CHICA); Saks & Co. v. TFM Indus. Inc., 5 USPQ2d 1762, 1764 (TTAB
1987) (FOLIO and FOLIO BY FIRE ISLANDER); In re Apparel Ventures, Inc., 229
USPQ 225, 226 (TTAB 1986) (SPARKS and SPARKS BY SASSAFRAS); In re
Dennison Mfg. Co., 220 USPQ 1015, 1016 (TTAB 1983) (KANGAROO and
KANGAROO BY DENNISON). To the extent Applicant is attempting to assert rights
in a family of DOUGLAS GREEN-formative marks, the family of marks doctrine is
not available to an applicant seeking to overcome a likelihood of confusion refusal in
an ex parte proceeding. The focus must be on the mark Applicant seeks to register,
not other marks Applicant may have used or registered. In re Cynosure Inc., 90
USPQ2d 1644, 1645 (TTAB 2009).
For all of these reasons, we find Applicant’s mark, considered in its entirety, to be
similar to the cited mark. The first du Pont factor thus also supports a finding that
confusion is likely.
We turn finally to Applicant’s remaining argument. Applicant asserts that it
would be inconsistent to refuse registration of its mark while allowing the cited
registration to coexist with a third-party registration for BEACH HAUS for “beer” in
International Class 32.6 The registration Applicant cites was cancelled pursuant to
Section 8 of the Trademark Act, 15 U.S.C. § 1058, on February 26, 2016, during the
pendency of this appeal. Even if the registration were subsisting, however, it would

6 Registration No. 3656487, issued July 21, 2009. September 13, 2013 Office Action at 2-3;
March 26, 2015 Response to Office Action at 8-9.
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not change the outcome here. The Board must decide each case on its own merits. In
re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even
if some prior registrations had some characteristics similar to [Applicant’s]
application, the PTO’s allowance of such prior registrations does not bind the Board
or this court.”); see also In re Rodale Inc., 80 USPQ2d 1696, 1700 (TTAB 2006)
(“Although consistency in examination is a goal of the Office, the decisions of previous
Trademark Examining Attorneys are not binding on us, and we must decide each
case based on the evidence presented in the record before us.”).
In sum, we have found that the goods as identified in the subject application and
the cited registration are identical and travel through the same channels of trade to
the same classes of purchasers, and that Applicant’s mark, considered in its entirety,
is similar to the cited mark. We find that Applicant’s mark is likely to cause confusion
with the mark in cited Registration No. 4520020 when used in association with wines.
Decision: The refusal to register Applicant’s mark THE BEACHHOUSE, A
WINE BY DOUGLAS GREEN on the basis of Registration No. 4520020 is affirmed.