Mercury-2 LTD

Trademark Trial and Appeal Board

Jan 12, 2009

No. 78729582 (T.T.A.B. Jan. 12, 2009)

Mailed:
January 12, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mercury-2 LTD
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Serial No. 78729582
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Sergei Orel of Law Office of Sergei Orel, Esq. for Mercury-
2 LTD.

Christina M. Sobral, Trademark Examining Attorney, Law
Office 109 (Dan Vavonese, Managing Attorney).
_______

Before Seeherman, Hairston and Zervas, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Mercury-2 LTD has appealed from the Examining
Attorney’s final refusal to register MERCURY in standard
character format for vodka.1 Registration has been refused
pursuant to Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark so resembles

1 Application Serial No. 78729582, filed October 9, 2005,
pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b)
(intent-to-use).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78729582
2
the mark MERCURY in typed form, previously registered for
distilled spirits,2 that if used on applicant’s identified
goods it is likely to cause confusion or mistake or to
deceive.
As a preliminary matter, we note that applicant
submitted numerous exhibits with its appeal brief. The
Examining Attorney has objected to this material as being
untimely filed. Trademark Rule 2.142(d) provides that the
record in the application should be complete prior to the
filing of the appeal. Accordingly, the Board will not
consider the evidence submitted with applicant’s appeal
brief.
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). We limit our discussion herein to those
factors on which applicant and the Examining Attorney
submitted arguments or evidence.

2 Registration No. 2559044, issued April 9, 2002; Sections 8 and
15 affidavits accepted and acknowledged.
Ser No. 78729582
3
In any likelihood of confusion analysis, 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). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Here the marks are identical, a fact that applicant
does not dispute. See response to first Office action,
filed October 12, 2006, and request for reconsideration,
filed October 20, 2007 (the registration “appears to be
identical to the proposed mark”). This du Pont factor
weighs heavily in favor of a finding of likelihood of
confusion. Applicant’s arguments that the differences in
trade dress will avoid confusion, because the bottle it
uses is different from the bottle registrant uses, is of no
avail. We must determine likelihood of confusion based on
the applied-for mark and the registered mark, not on what
current trade dress may be.
The goods, too, are legally identical. The “distilled
spirits” identified in the cited registration encompass the
“vodka” identified in applicant’s application. The
Examining Attorney has submitted evidence showing that
vodka is a type of distilled spirit. See definition of
Ser No. 78729582
4
“vodka” in Random House Unabridged Dictionary, © 1997: “an
unaged, colorless, distilled spirit, originally made in
Russia,” as well as excerpts from various websites in which
vodka is listed under or classified as a distilled spirit.
Applicant has argued that the registrant actually uses its
mark for gin, but this argument, too, is of no avail.
Section 7(b) of the Statute provides, in part, that a
certificate of registration of a mark is prima facie
evidence of the registrant’s exclusive right to use the
mark on the goods specified in the registration. Thus, the
question of likelihood of confusion must be determined
based on an analysis of the mark as applied to the goods
and/or services recited in applicant’s application vis-à-
vis the goods and/or services recited in the cited
registration, rather than what the evidence shows the goods
and/or services to be. See In re Dixie Restaurants Inc.,
105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997); Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, N.A., 811
F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). Because
applicant’s goods are legally identical to the registrant’s
goods, they therefore must be deemed to be sold in the same
channels of trade to the same classes of consumers. These
du Pont factors, too, favor a finding of likelihood of
confusion.
Ser No. 78729582
5
Applicant has argued that the term MERCURY is diluted
for alcoholic beverages, but there is no evidence properly
of record in support of this claim. Based on the evidence
that is of record, MERCURY is an arbitrary and therefore
strong mark for distilled spirits.
Based on the foregoing, and particularly because these
are identical marks for legally identical goods, we find
that applicant’s mark MERCURY, if used on vodka, is likely
to cause confusion with the registered mark MERCURY for
distilled spirits.
Decision: The refusal of registration is affirmed.