Luca Mariano Distillery LLC

Trademark Trial and Appeal Board

Jun 23, 2016

No. 86293520 (T.T.A.B. Jun. 23, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: June 23, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Luca Mariano Distillery LLC
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Serial No. 86293520
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Molly B. Markley of Young Basile Hanlon & Macfarlane, P.C.,
for Luca Mariano Distillery LLC
Timothy J. Finnegan, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
_____

Before Greenbaum, Adlin, and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Luca Mariano Distillery LLC (“Applicant”) seeks registration on the Principal
Register of the mark OLD AMERICANA (in standard characters) for alcoholic
beverages except beers in International Class 33.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that

1 Application Serial No. 86293520 was filed on May 28, 2014, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
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Applicant’s mark so resembles the mark registered for vodka
in International Class 33,2 as to be likely to cause confusion. In addition, the
Examining Attorney has refused registration under Section 6 of the Trademark Act,
15 U.S.C. § 1056(a), based on Applicant’s failure to comply with the requirement to
disclaim the word “OLD.”
When the refusals were made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We reverse the disclaimer requirement but
affirm the refusal to register under Section 2(d).
I. Evidentiary Issue.
The Examining Attorney objects that Applicant submitted, as exhibits to its
appeal brief, new evidence that was not introduced prior to the appeal.3 The new
items are photographs of whiskey bottles bearing Applicant’s mark and a printout of
Trademark Electronic Search System (TESS) results listing a total of fifty
applications or registrations for the mark AMERICANA.4 Applicant has not filed a
reply brief, and therefore has not responded to the Examining Attorney’s objection.
To the extent that the photographs attached to Applicant’s brief were previously

2 Registration No. 3454378, issued on the Principal Register on June 24, 2008, Section 8 &
15 declarations accepted and acknowledged. According to the registration, “Color is not
claimed as a feature of the mark. The mark consists of stylized text of the wording
‘Americana’.”
3 Examining Attorney’s brief, 9 TTABVUE 3-4.
4 Exhibits to Applicant’s brief, 7 TTABVUE 17-20.
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submitted and of record,5 their resubmission was unnecessary. See In re Greenliant
Sys. Ltd., 97 USPQ2d 1078, 1080 (TTAB 2010); TBMP § 1203.02(e) (June 2015) (“It
is not necessary to attach as exhibits to a brief evidence that is already in the
application because the appeal brief is associated with the application. Such
evidence should not, as a matter of course, be resubmitted as exhibits to the brief.”).
In the course of arriving at our decision, we will consider the photographs that were
properly introduced in the course of prosecution.
The Examining Attorney’s objection to Applicant’s listing of TESS search results
is sustained, as well. The record in an application should be complete prior to the
filing of an appeal. Trademark Rule 2.142(d), 37 CFR § 2.142(d). Exhibits attached to
a brief that were not made of record during examination are untimely, and generally
will not be considered. Id. In re Compania de Licores Internacionales S.A., 102
USPQ2d 1841, 1843 (TTAB 2012). Applicant was afforded the opportunity to place
additional relevant third-party registrations in the record when it sought
reconsideration, but failed to do so. See In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A,
109 USPQ2d 1593, 1596 (TTAB 2014) (untimely evidence given no consideration); In
re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013); In re Jump Designs LLC, 80
USPQ2d 1370, 1372 (TTAB 2006).
Moreover, even if the list from the TESS database had been considered, it would
have little or no probative value. See Edom Laboratories Inc. v. Lichter, 102 USPQ2d
1546, 1550 (TTAB 2012) (TESS listing has little, if any, probative value). Mere

5 See, e.g., Response to Office Action of March 18, 2015, p. 2.
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listings of registrations are not sufficient to make the registrations of record. See In
re Jonathan Drew, Inc., 97 USPQ2d 1640, 1644 n. 11 (TTAB 2011); In re Carolina
Apparel, 48 USPQ2d 1542, 1543n.2 (TTAB 1998). In this case, of the fifty marks
listed, approximately thirty were the subject of applications, which have no probative
value. See Wet Seal, Inc. v. FD Management, 82 USPQ2d 1629, 1634 n.11 (TTAB
2007) (“An application is not evidence of anything except that the application was
filed on a certain date….”). The remaining registrations were for such marks as
AMERICANA GRILLS, PANAMERICANA, TOFFEE AMERICANA, and SHAKER
AMERICANA – with no identification of their goods or services.6 See Jump Designs,
80 USPQ2d at 1372 (“The list does not show the goods and/or services covered by the
registrations. Therefore, it has extremely limited probative value, since we cannot
determine whether the marks are for goods and services similar to those of applicant
and registrant.”). The objections are sustained.
II. Analysis.
A. The Disclaimer Requirement.

Section 6(a) of the Trademark Act provides that “The Director may require the
applicant to disclaim an unregistrable component of a mark otherwise registrable.”
15 U.S.C. § 1056(a). See In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB
2013) (citing In re Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662, 665 (CCPA
1979)). If the Applicant does not comply with the disclaimer requirement, the
Examining Attorney may refuse registration of the entire mark. In re Louisiana Fish

6 Exhibit to Applicant’s brief, 7 TTABVUE 17-18.
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Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015). See also In
re Slokevage, 441 F.3d 957, 78 USPQ2d 1395, 1399 (Fed. Cir. 2006); In re Stereotaxis
Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005).
Merely descriptive terms are subject to disclaimer if the mark in which they
appear is otherwise registrable. See, e.g., In re Omaha National Corp., 819 F.2d 1117,
2 USPQ2d 1859 (Fed. Cir. 1987); In re RiseSmart, Inc., 104 USPQ2d 1931, 1934
(TTAB 2012). A term is considered to be merely descriptive under Section 2(e)(1) of
the Trademark Act, 15 U.S.C. § 1052(e)(1), if it immediately conveys knowledge of a
quality, feature, function, or characteristic of the goods with which it is used. See In
re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed.
Cir. 2012); Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1478 (TTAB
2016).
The Examining Attorney has required Applicant to disclaim the word “OLD” in
OLD AMERICANA, originally taking the position that the word “old” means
“advanced in years or age,” which merely describes Applicant’s goods because the
identified “alcoholic beverages” encompasses aged alcoholic beverages.7
However, in a later Office Action, and his Appeal Brief, the Examining Attorney
has offered a different rationale, pointing to Applicant’s website, which states that
“Luca Mariano Old Americana is a brand dedicated to bringing back Prohibition's
Original Recipes. The Viola Family Whiskey recipes have been closely guarded
secrets kept by the family since 1914. … We do not add or remove from the Original

7 Office Action of Sept. 18, 2014, p. 1, quoting Merriam-Webster.com dictionary at pp. 9-10.
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Recipes….”8 Because “old” can also be defined as “of, relating to, or originating in a
past era,”9 the Examining Attorney concludes that “The wording ‘OLD’ merely
describes Applicant’s goods, alcoholic beverages derived from recipes ‘advanced in
years or age’ and ‘of relating to, or originating in a past era.’”10
Applicant submits that both interpretations require some stretch of the
imagination, rendering the term “OLD” suggestive, not descriptive: “While the
definition of ‘old’ can mean advanced in year[s] or age’ this is not the equivalent of
‘aged’ used on food and beverage products, as an ‘old’ food or beverage product would
be considered expired.” Furthermore, “even though the term ‘old’ can mean
originating in a past era, the term ‘old’ is referring to the recipe, not the product. The
use of ‘old’ is suggestive of a past era.”11
“A suggestive mark requires imagination, thought and perception to reach a
conclusion as to the nature of the goods, while a merely descriptive mark forthwith
conveys an immediate idea of the ingredients, qualities or characteristics of the
goods.” StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d
1649, 1652 (Fed. Cir. 2014) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ
215, 218 (CCPA 1978)) (internal punctuation omitted). See generally DuoProSS
Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753,
1755 (Fed. Cir. 2012); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,

8 Office Action of April 11, 2015, pp. 2, 5.
9 Office Action of April 11, 2015, quoting Merriam-Webster.com dictionary at p. 8.
10 Examining Attorney’s brief, 9 TTABVUE 11.
11 Applicant’s brief, p. 3, 7 TTABVUE 4.
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101 USPQ2d 1713, 1728 (Fed. Cir. 2012); In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Nett Designs, Inc., 236 F.3d 1339,
57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Fat Boys Water Sports LLC, 118
USPQ2d 1511, 1515 (TTAB 2016).
“There is a thin line of demarcation between a suggestive term and a merely
descriptive term….” In re George Weston Ltd, 228 USPQ 57, 58 (TTAB 1985);
Anheuser-Busch Inc. v. Holt, 92 USPQ2d 1101,1105 (TTAB 2009). The determination
of whether a term is descriptive or suggestive is made in relation to the goods for
which registration is sought, the context in which it is being used, and the possible
significance that the term would have to the average purchaser of the goods because
of the manner of its use or intended use. Bayer Aktiengesellschaft, 82 USPQ2d at
1831. “The perception of the relevant purchasing public sets the standard for
determining descriptiveness.” In re MBNA Am. Bank, N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003).
We find that members of the purchasing public, encountering the mark OLD
AMERICANA in a liquor store, would not tend to equate “OLD” with “aged.” The term
“aged” connotes a positive attribute of barrel-aged whiskey or fine wine; the term
“old” connotes a product that has exceeded its expiration date.12 It does not describe
“a desirable characteristic of the goods.” See In re Universal Water Sys., Inc., 209

12 See Schieffelin & Co. v. The Molson Cos. Ltd, 9 USPQ2d 2069, 2071 (TTAB 1989) (cognac
made from distilled spirits aged in oak barrels, then blended with wines of different ages);
Merriam-Webster.com dictionary: Old: “showing the effects of time or use,” “no longer in use.”
Office Action of April 11, 2015, p. 8.
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USPQ 165, 166 (TTAB 1980).
Rather, in our view, “OLD” is an adjective that modifies the noun “AMERICANA.”
“AMERICANA” means “things produced in the U.S. and thought to be typical of the
U.S. or its culture.”13 “OLD” enhances that connotation by alluding to bygone
American culture. The term “only vaguely suggests a desirable characteristic” of
Applicant’s goods by indirectly evoking in purchasers’ minds a nostalgic
remembrance of a past era—an import that would not be grasped without “some
measure of imagination and mental pause.” In re George Weston Ltd, 228 USPQ at
58; In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983). That is the essence of a
suggestive term. The disclaimer requirement is therefore reversed.
B. Likelihood of Confusion With the Registered Mark.

We next consider whether Applicant’s mark is likely to be confused with
Registrant’s mark .
Our determination of likelihood of confusion under Section 2(d) of the Trademark
Act 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, 567 (CCPA 1973) (“DuPont”). See also In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each
DuPont factor that is relevant and for which there is evidence of record. See M2
Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947

13 Applicant’s Response to Office Action of March 18, 2015, p. 3 quoting Merriam-Webster.com
dictionary. Examining Attorney’s brief, 9 TTABVUE 8.
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(Fed. Cir. 2006); ProMark Brands Inc. and H.J. Heinz Company v. GFA Brands, Inc.,
114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for
which we have evidence, we focus our analysis on those factors we find to be
relevant.”). In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the goods or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976). See also In re i.am.symbolic, LLC, 116 USPQ2d 1406, 1409 (TTAB
2015).
1. The Goods, Channels of Trade, and Purchasing Conditions.
We begin with the DuPont factors of the relatedness of Applicant’s and
Registrant’s respective goods, channels of trade, and purchasing conditions. E.I.
DuPont, 177 USPQ 567. We base our evaluation on the goods as they are identified
in the application and registration. Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems, Inc.
v. Houston Comp. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Applicant’s “alcoholic beverages except beers,” clearly encompass Registrant’s
“vodka,” “a strong, clear alcoholic drink that is originally from Russia.”14
Because the goods are legally identical, and there are no limitations as to channels
of trade or classes of purchasers in the application or cited registration, it is presumed
that Applicant’s goods and Registrant’s goods move in all channels of trade normal
for those goods (such as liquor stores), and that they are available to all classes of

14 Office Action of Sept. 18, 2014, p. 2, quoting Merriam-Webster.com dictionary.
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purchasers for those goods, including ordinary consumers of alcoholic beverages. See
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally
identical goods are presumed to travel in same channels of trade to same class of
purchasers); Monarch Wine Co., Inc. v. Hood River Dist., Inc., 196 USPQ 855, 857
(TTAB 1977) (whisky, vodka, rum, brandy, wine and champagne travel in same
channels of trade). Indeed, even if Applicant were to market other forms of alcoholic
beverages under its mark, those beverages would tend to flow in the same trade
channels to the same sort of customers as Registrant’s vodka. See Schieffelin, 9
USPQ2d at 2073 (TTAB 1989) (“A typical consumer of alcoholic beverages may drink
more than one type of beverage and may shop for different alcoholic beverages in the
same liquor store.”). And since there is no restriction in the subject application and
registration as to price or quality, there is no reason to infer that the consumers of
these alcoholic beverages will be particularly sophisticated, discriminating, or careful
in making their purchases. See Somerset Distilling Inc. v. Speymalt Whisky Dist. Ltd.,
14 USPQ2d 1539, 1542 (TTAB 1989); In re Bercut-Vandervoort & Co., 229 USPQ 763,
765 (TTAB 1986). Hence, these DuPont factors weigh heavily in favor of finding a
likelihood of confusion.
2. Comparison of the Marks.

Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks as compared in their entireties, taking into
account their appearance, sound, connotation and commercial impression. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
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USPQ2d 1689, 1692 (Fed. Cir. 2005); In re Midwest Gaming & Entm’t LLC, 106
USPQ2d 1163, 1165 (TTAB 2013). In comparing the marks, we are mindful that
where, as here, the goods are legally identical, the degree of similarity necessary to
find likelihood of confusion need not be as great as where there is a recognizable
disparity between the goods. Coach Servs., 101 USPQ2d at 1721; Viterra, 101
USPQ2d at 1912 (citing Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992)).
Applicant and Registrant’s respective marks, OLD AMERICANA and
, share the same dominant feature, AMERICANA.
Applicant argues: that its beverages are sold under the house brand LUCA
MARIANO, of which the applied-for mark, OLD AMERICANA, is merely a sub-
brand; that the design portion of Registrant’s mark distinguishes the two marks; that
its addition of the prefix OLD differentiates the marks; and that the marks’ shared
term, AMERICANA, is weak. None of these arguments suffices to avoid a likelihood
of confusion.
Even if Applicant owns a “house brand,” LUCA MARIANO, its proposed mark is
OLD AMERICANA alone, and a registration would entitle Applicant to use this mark
with or without a house mark or other designation. See In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993) (“Although Shell argues that its use
of RIGHT-A-WAY would be in association with other Shell trademarks, the proposed
registration is not so limited. Registrability is determined based on the description in
the application, and restrictions on how the mark is used will not be inferred.”).
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Registrant’s stylized mark contains a pillar-shaped “I” in the center of
AMERICANA, but that minor stylization does not significantly alter its appearance
or pronunciation. The appearance of Applicant’s proposed standard character mark
is not limited to any particular font, size, style, or color, In re Viterra Inc., 101
USPQ2d at 1909, and could, if registered, be depicted like Registrant’s mark: OLD
AMERICANA. See In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016). And
consumers requesting the products would naturally tend to pronounce AMERICANA
the same, disregarding the minor stylization of the “I” embedded in Registrant’s
mark. See Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431
(TTAB 2013). Applicant’s complete incorporation of Registrant’s one-word
AMERICANA mark increases the likelihood of confusion between the marks. See,
e.g., Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419 (CCPA
1977) (CALIFORNIA CONCEPT with surfer logo men’s hair and cosmetic products
confusingly similar to CONCEPT for cold permanent wave lotion and neutralizer);
Coca-Cola Bottling Co. of Memphis, Tenn., Inc. v. Joseph E. Seagram & Sons, Inc.,
526 F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL LANCER for club soda, quinine
water and ginger ale likely to cause confusion with BENGAL for gin).
Applicant’s addition of the prefix OLD to AMERICANA does not suffice to dispel
confusion between the two marks. In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d
1257, 1260 (Fed. Cir. 2010) (“[T]he presence of an additional term in the mark does
not necessarily eliminate the likelihood of confusion if some terms are identical.”).
Unlike some cases, where a combination of two words may yield a completely new
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connotation, see Lever Bros. Co. v. Barcolene Co., 463 F.2d 1107, 174 USPQ 392
(CCPA 1972) (ALL CLEAR! for household cleaner not confusingly similar to ALL for
household cleansing products), Applicant’s use of the prefix OLD merely enhances
the nostalgia that inheres in AMERICANA. Purchasers normally retain a general
rather than a specific impression of trademarks, Mini Melts, 118 USPQ2d at 1470
(TTAB 2016), and naturally shorten their pronunciation of marks. See Abcor Dev.,
200 USPQ at 219 (J. Rich, concurring); Marshall Field & Co. v. Mrs. Fields Cookies,
25 USPQ2d 1321, 1333 (TTAB 1992), so they would most likely focus on the marks’
common element, AMERICANA.
Applicant fails to demonstrate that Registrant’s mark is weak, as its listing of
third-party AMERICANA-formative marks is not of record, and lacks probative
value. Supra. Its allusion to third-party AMERICAN-formative marks15 has little
pertinence here, as the Examining Attorney has established that there are only two
marks of record containing the component AMERICANA for alcoholic beverages:
Applicant’s and Registrant’s.16 Both marks project the same connotation and
commercial impression of “things produced in the U.S. and thought to be typical of
the U.S. or its culture.” Moreover, Applicant’s evidence showing use of the term
“Americana” in its primary, literal sense, e.g., articles about western Americana or
musical Americana—all evoking a sense of nostalgia,17 does not in any way diminish

15 Applicant’s Response to Office Action of March 18, 2015, pp. 6 et seq.
16 Office Action of April 11, 2015, p. 1.
17 Applicant’s Request for Reconsideration of Oct. 12, 2015, pp. 6-29.
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the secondary, source-indicating meaning of the registered AMERICANA mark,
which is presumed valid. 15 U.S.C. § 1057(b).18 See Fat Boys Water Sports, 118
USPQ2d at 1517. This DuPont factor therefore favors finding a likelihood of
confusion.
3. Balancing the Factors.
After considering all evidence and arguments bearing on the DuPont factors,
including the evidence and arguments that we have not specifically discussed herein,
we find that the marks are similar, and used on legally identical goods, which are
presumed to move in the same channels of trade to the same classes of purchasers.
We treat as neutral any DuPont factors for which there is no evidence of record. On
balance, based on the evidence of record, we find that Applicant’s and Registrant’s
marks so resemble one another as to be likely to cause confusion, or to cause mistake,
or to deceive under Section 2(d) of the Trademark Act.
III. Conclusion.
Decision: The refusal to register Applicant’s mark OLD AMERICANA based on
the requirement for a disclaimer of OLD is reversed; however, the refusal to register
is affirmed on the ground of likelihood of confusion under Trademark Act Section 2(d).

18 See n. 2, supra.