Night Wines, LLC

Trademark Trial and Appeal Board

Jun 20, 2018

No. 87084959 (T.T.A.B. Jun. 20, 2018)

Oral Hearing: May 29, 2018 Mailed: June 20, 2018
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Night Wines, LLC
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Serial No. 87084959
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Lawrence Papale of Law Offices of Lawrence G. Papale,
for Night Wines, LLC.
Esther Queen, Trademark Examining Attorney, Law Office 111,
Robert L. Lorenzo, Managing Attorney.
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Before Rogers, Chief Administrative Trademark Judge,
Mermelstein, and Wellington, Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Night Wines, LLC (Applicant) seeks registration on the Principal Register of the
standard character mark NIGHT for “wine” 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 there is a likelihood of

1 Application Serial No. 87084959, filed on June 27, 2016. The application was filed under
Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a
bona fide intent to use the mark in commerce.
This Opinion is not a
Precedent of the TTAB
Serial No. 87084959
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confusion among consumers because Applicant’s mark is the English translation of
the registered standard character mark, NOCHE, and both marks are for wine.2
After the Examining Attorney made the refusal final, Applicant filed concurrently
a request for reconsideration and an appeal.3 The Examining Attorney denied the
request for reconsideration and the appeal proceeded.4 The appeal has been briefed
and an oral hearing was held on May 29, 2018. We affirm the refusal to register.
I. Preliminary Evidentiary Matters
In its request for reconsideration, Applicant referenced various third-party
registrations and included a list of pairs of registrations.5 In denying the request for
reconsideration, the Examining Attorney informed Applicant that “the mere
submission of a list of registrations or a copy of a private company search report does
not make such registrations part of the record” and “to make third party registrations
part of the record, an applicant must submit copies of the registrations, or the
complete electronic equivalent from the USPTO’s automated systems, prior to
appeal,” citing to TRADEMARK BOARD MANUAL OF PROCEDURE (TBMP) § 1208.02 (June
2017).6

2 Registration No. 3546006 issued on December 16, 2008; Section 8 affidavit accepted and
Section 15 declaration acknowledged.
3 1 TTABVUE (appeal) and 4 TTABVUE (request for reconsideration).
4 5 TTABVUE (Office action denying request for reconsideration).
5 4 TTABVUE 8-10.
6 5 TTABVUE 3.
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In its appeal brief, Applicant again made mention of the third-party registrations
and provided the same list.7 The Examining Attorney, in her brief, “objects to the list
of third-party registrations referenced by applicant with its appeal brief,” as
improperly of record since copies of the registrations were not filed.8 In its reply brief,
Applicant requests that the Board take judicial notice of the third-party registrations
and/or “leave of court to supplement the record to include the referenced third-party
registrations.”9
Trademark Rule 2.142(d) makes it clear that the record in the application should
be complete prior to the filing of an appeal. See TBMP § 1207.01. As the Examining
Attorney informed Applicant, TBMP § 1208.02 provides, in relevant part, that the
“mere listings of registrations, or copies of private company search reports, are not
sufficient to make the registrations of record.” TBMP § 1208.04 further instructs that
“[t]he Board’s well-established practice is not to take judicial notice of third-party
registrations when an applicant or examining attorney requests that such notice be
taken during the course of an appeal.” To the extent that Applicant’s request for
“leave of court to supplement the record” can be considered a motion for remand,
albeit untimely, Applicant has not shown good cause and as such a request it is
therefore denied. See In re Adlon Brand Gmbh & Co., 120 USPQ2d 1717, 1725 (TTAB
2016) (applicant’s request for remand, included in applicant’s brief, denied,

7 7 TTABVUE 8-10.
8 9 TTABVUE 3.
9 10 TTABVUE 3.
Serial No. 87084959
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explaining that proper procedure “was to file with the Board, after the filing of the
appeal but before briefing, a request for remand with a showing of good cause.”); In
re Luxuria s.r.o., 100 USPQ2d 1146, 1147 (TTAB 2011) (applicant’s request for
remand denied for failure to show good cause).
Accordingly, the Examining Attorney’s objection is sustained and the third-party
registrations mentioned in Applicant’s brief, including the list, are not considered.10
We further note that Applicant, in its request for reconsideration and in its appeal
brief, makes reference to and provides a list of purported Certificates of Label
Approval (“COLAs”) issued for wine by the Alcohol and Tobacco Tax and Trade
Bureau [TTB].11 Applicant argues that the COLAs “demonstrate[ ] that the actual use
of the word NIGHT within the term MIDNIGHT for wine in the marketplace is not
unique; in fact, it is rather commonplace.”12 Applicant did not submit copies of the
COLAs, but even if it had, a COLA is only evidence that the label at issue was
approved by the TTB for use on alcoholic beverages. It is not evidence that the label
in question was or is in use in commerce, let alone the extent of any such use. Cf. AMF
Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973)
(“existence of [third-party] registrations is not evidence of what happens in the
market place or that customers are familiar with them.”). Nevertheless, inasmuch as

10 We note that the Examining Attorney cited in the first Office action an additional
registered mark as a bar to registration. Registration No. 3994332 (NIGHT for “beer”) was
cited and a copy of the registration was submitted. Although this registration was later
withdrawn as a basis for refusal, it is of record for whatever probative value it may have.
11 7 TTABVUE 11-12 and 14-16.
12 Id. at 14-15.
Serial No. 87084959
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the Examining Attorney has not objected, we have considered the list of COLAs
submitted by Applicant. However, as explained, the probative value of this list is
severely limited and, contrary to Applicant’s contention, the COLAs do not
demonstrate use in commerce of any brand name on a TTB-approved label.
II. Likelihood of Confusion
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.”).
1. Identity of the Goods, Their Trade Channels and Consumers
We first consider the du Pont factors addressing the similarity of the goods, the
channels of trade in which they may be encountered and the purchasers to whom they
are marketed. Here, the goods are identical – Applicant seeks registration of its mark
for “wine” and the cited registration covers “wine.” Because Applicant’s and
Registrant’s goods are identical, we must presume that the channels of trade and
classes of customers for the wine are the same. See Am. Lebanese Syrian Associated
Serial No. 87084959
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Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011);
In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). See also In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012).
Accordingly, we find that the du Pont factors relating to the similarity of the goods,
the trade channels through which they travel, and the customers to whom they are
offered, all favor a finding of likelihood of confusion.
2. Similarity of the Marks
We consider next the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. See Palm Bay Imps.,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005). “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.” In re i.am.symbolic, LLC, 866 F.3d 1315,
123 USPQ2d 1744, 1748 (Fed. Cir. 2017) (quoting Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)) (internal
quotation marks omitted).
At the outset, we note that NIGHT and NOCHE both begin with the same letter
and are five-letter terms with the fourth letter also being H; however, the similarity
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in appearance ends there. As to sound, aside from both marks beginning with the
letter N, there is no reason to believe the marks will sound alike when spoken.13
As to connotation and commercial impression, the Examining asserts that the
“doctrine of foreign equivalents” is applicable in this case in that the registered mark,
NOCHE, is in a common, modern foreign language (Spanish) and that Applicant’s
mark, NIGHT, is the English equivalent. Specifically, she relies on the evidence of
record showing the Spanish term “noche” directly translates to the English word
“night,” and therefore the marks are very similar in connotation.14
Applicant acknowledges that “noche” is the Spanish word for “night,” but argues
that “registration should not be refused to NIGHT based solely on its translation to
‘NOCHE’ in Spanish, given the other differences between the marks in sound and
appearance.”15 Applicant asserts that the doctrine of foreign equivalents is limited to
meaning only and, in this case, does not result in a finding that the marks are
confusingly similar.16
Whether the doctrine of foreign equivalents is relevant turns upon the significance
of the foreign mark to the relevant purchasers, which is based on an analysis of the
evidence of record. The doctrine may be applied to words or terms from common,
modern languages. Palm Bay Imps. Inc., 73 USPQ2d at 1696. Although words from

13 Applicant argues that “the registered mark consists of two syllables with the emphasis on
the first syllable, i.e., NO-chey.” 4 TTABVUE 6.
14 9 TTABVUE 7; the dictionary and translation evidence cited by the Examining Attorney
was attached to the Office Action issued on April 25, 2017, TSDR pp. 2-7.
15 7 TTABVUE 7.
16 Id., citing “McCarthy [on Trademarks and Unfair Competition] at §23.14.”
Serial No. 87084959
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modern languages are generally translated into English, the doctrine of foreign
equivalents has evolved into a guideline, not an absolute rule, and is applied only
when it is likely that “the ordinary American purchaser would ‘stop and translate’
[the term] into its English equivalent.” Id., (quoting In re Pan Tex Hotel Corp., 190
USPQ 109, 110 (TTAB 1976)). See generally TRADEMARK MANUAL OF EXAMINING
PROCEDURE (“TMEP”) § 1209.03(g) (Oct. 2017). However, “[w]hen it is unlikely that
an American buyer will translate the foreign mark and will take it as it is, then the
doctrine of foreign equivalents will not be applied.” Palm Bay Imps. Inc., 73 USPQ2d
at 1696, (citing In re Tia Maria, Inc., 188 USPQ 524 (TTAB 1975) (no likelihood of
confusion between TIA MARIA for a Mexican restaurant and AUNT MARY’S for
canned vegetables)). The “ordinary American purchaser” includes “all American
purchasers, including those proficient in a non-English language who would
ordinarily be expected to translate words into English.” In re Spirits Int’l, N.V., 563
F.3d 1347, 90 USPQ2d 1489, 1492 (Fed. Cir. 2009).
In this case, we agree with the Examining Attorney that the doctrine of foreign
equivalents is relevant to this proceeding and the ordinary American purchasers of
wine would understand that NIGHT is the English equivalent of the registered mark,
NOCHE, and vice-versa. The term, whether in English or Spanish, has no
demonstrated meaning in the context of wine and will likely be understood as an
arbitrary use of the word. Thus, the significance to the wine consumer of the terms
NIGHT and NOCHE will likely be the same.
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The Tia Maria decision, which Applicant cites in support of its argument that the
doctrine of foreign equivalents should not apply in this case, involved an applicant
offering restaurant services under the mark TIA MARIA versus a registrant’s use of
AUNT MARY’S on canned fruit and vegetable products. The Board clearly took into
consideration the context in which consumers would encounter the respective marks
in connection with the involved goods and services when deciding whether consumers
would perceive the marks as equivalents:
But, nevertheless there are foreign expressions that even those familiar
with the language will not translate, accepting the term as it is, and
situations arise in the marketplace which make it unfeasible or even
unlikely that purchasers will translate the brand names or labels
appearing on canned foods and other like products. … That is, insofar as
this reasoning applies to the instant case, it is unlikely to expect that a
person encountering “AUNT MARY’S” canned fruits and vegetables in a
supermarket or other establishment where goods of this type are
customarily sold would translate “AUNT MARY’S” into “TIA MARIA”, and
then go one step further and associate these food products with applicant’s
restaurant. Likewise, going the other route, it is difficult to perceive that a
person who had purchased “AUNT MARY’S” canned fruits and vegetables
on the shelves of a supermarket would, upon dining at the “TIA MARIA”
restaurant in Mexican decor and surrounded by a menu of Mexican
delicacies, translate “TIA MARIA” into “AUNT MARY” and then
mistakenly assume that the “TIA MARIA” restaurant and “AUNT
MARY’S” canned fruits and vegetables originate from or are sponsored by
the same entity.
In re Tia Maria, Inc., 188 USPQ at 526.
In contrast, in this case we must consider the fact that consumers will be
encountering the involved marks on the same goods, i.e., wine. As discussed above,
we must also presume that the same consumers will be encountering these marks on
wine in the same, usual trade channels for wine, including wine stores and
restaurants. Thus, unlike Tia Maria, the environment in which the marks are
Serial No. 87084959
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encountered is the same and we do not find it “difficult to perceive” that a consumer
would stop and translate the two marks upon encountering them on wine.
Under the circumstances, we find that the similarity between the marks based on
them having the same meaning outweighs the differences based on sound and
appearance, and the du Pont factor of the similarity or dissimilarity of the marks
weighs in favor of a finding of likelihood of confusion. In re Sarkli, Ltd., 721 F.2d 353,
220 USPQ 111, 113 (Fed. Cir. 1983) (“the PTO may reject an application ex parte
solely because of similarity in meaning of the mark sought to be registered with a
previously registered mark”); see also, Bost Bakery, Inc. v. Roland Industries, Inc.,
216 USPQ 799, 801 (TTAB 1991) ("the principle that similarity between marks in
meaning or commercial significance alone may be sufficient to create a likelihood of
confusion is applicable primarily to situations where marks are coined or arbitrary
rather than highly suggestive").
3. Other Factors Argued
Applicant argues that “use of the term MIDNIGHT on wine by third parties
demonstrates the number and nature of similar marks in the marketplace and
indicates that consumers will not be confused by applicant’s use of the mark
NIGHT.”17 However, there is no evidence of record showing third parties using the
term MIDNIGHT or any other similar term in marks in commerce on wine. As
discussed supra, the list of COLAs is not evidence of third-party use of any marks in
commerce. In any event, the marks at issue here are NIGHT and NOCHE. Although

17 7 TTABVUE 14.
Serial No. 87084959
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not entirely unrelated, MIDNIGHT has a different meaning than the marks before
us. Even if we were able to conclude that MIDNIGHT is commercially weak as a
trademark for wine, Applicant has not explained why that would compel a finding
that either NIGHT or NOCHE likewise is weak.
Applicant also argues that the “sophistication of wine drinkers tends to weigh
against a finding of likelihood of confusion.”18 However, there is no evidence to
suggest this is the case. Moreover, Applicant’s and Registrant’s goods are simply
identified as “wine,” and we must construe this as including wine being sold at all
price points, including the least expensive wine, and to all usual purchasers of wine.
We must base our decision “on the least sophisticated potential purchasers.” Stone
Lion Capital Partners, L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157,
1163 (Fed. Cir. 2014) (quoting Gen. Mills, Inc. v. Fage Dairy Proc. Indus. S.A., 100
USPQ2d 1584, 1600 (TTAB 2011), judgment set aside on other grounds, 2014 WL
343267 (TTAB Jan. 22, 2014)).
Accordingly, the aforementioned two factors remain neutral in our analysis.
4. Conclusion
Considering all the evidence of record, we find that there is a likelihood of
confusion. We come to this conclusion based on our findings that the marks are
somewhat similar in structure and identical in connotation and will be used on
identical goods, namely wine, which we must presume will be encountered by the
same consumers in common channels of trade.

18 7 TTABVUE 13.
Serial No. 87084959
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Decision: The refusal to register Applicant’s mark on the ground of likelihood of
confusion is affirmed.