Saviah Rose Winery, LLC

Trademark Trial and Appeal Board

Aug 4, 2006

No. 78433647 (T.T.A.B. Aug. 4, 2006)

Mailed:
August 4, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Saviah Rose Winery, LLC
________

Serial No. 78433647
_______

Thomas J. Hoffman for Saviah Rose Winery, LLC.

M. Catherine Faint, Trademark Examining Attorney, Law
Office 103 (Michael Hamilton, Managing Attorney).
_______

Before Grendel, Drost and Kuhlke, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark BIG SKY CUVÉE (in standard character form;
CUVÉE is disclaimed apart from the mark as shown) for goods
identified in the application, as amended, as “wines
selling for a retail price of greater than thirty dollars
per bottle.”1

1 Serial No. 78433647, filed June 11, 2004. The application is
based on use in commerce under Trademark Act Section 1(a), 15
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78433647
2
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the mark, as applied to the identified
goods, so resembles the mark BIG SKY BREWING COMPANY,
previously registered on the Principal Register (in
standard character form; BREWING COMPANY disclaimed) for
“beer,”2 as to be likely to cause confusion, to cause
mistake, or to deceive. Trademark Act Section 2(d), 15
U.S.C. §1052(d).
The appeal is fully briefed. Applicant initially
requested an oral hearing but then withdrew the request,
and no oral hearing was held. We affirm the refusal to
register.
Initially, we sustain the Trademark Examining
Attorney’s objection (made in her appeal brief) to the
evidence submitted by applicant for the first time with
applicant’s main appeal brief (as Exhibits 1-14).
Trademark Rule 2.142(d) provides, in relevant part, that
“[t]he record in the application should be complete prior

U.S.C. §1051(a), and February 21, 2004 is alleged to be the date
of first use anywhere and the date of first use in commerce. The
application includes a translation statement stating that CUVÉE
means “blended wine.” The identification of goods in the
application as originally filed was “wines.”

2 Registration No. 2096496, issued September 16, 1997; affidavits
under Sections 8 and 15 accepted and acknowledged.

Ser. No. 78433647
3
to the filing of an appeal. The Trademark Trial and Appeal
Board will ordinarily not consider additional evidence
filed with the Board by the appellant or by the examiner
after the appeal is filed.” Exhibits 1 and 3-14 to
applicant’s brief consist of materials3 that were not made
of record prior to appeal, and we accordingly give them no
consideration. Exhibit 2 to applicant’s brief is the
specimen of use submitted with applicant’s involved
application; it is of record automatically and need not
have been submitted again. Finally, we note that we have
given no consideration to the numerous bare factual
assertions made by applicant in its request for
reconsideration and in its briefs, except to the extent
that those assertions are supported by evidence properly
made of record.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the

3 These include: the Section 8 specimen of use contained in the
file of cited Registration No. 2096496; printouts from five
Internet websites (applicant had submitted partial printouts from
these websites with its Request for Reconsideration; those
partial printouts are of record and shall be considered);
printouts from the Office’s TESS database of various third-party
registrations and applications, as well as a TTABVUE printout of
the prosecution history of a cancellation proceeding involving
the cited registration; and copies of various label approval
certificates for applicant’s wines and the wines of a third
party.
Ser. No. 78433647
4
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003); In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
We turn first to the first du Pont factor, i.e.,
whether applicant’s mark, BIG SKY CUVÉE, and the cited
registered mark, BIG SKY BREWING COMPANY, are similar or
dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
The test, under the first du Pont factor, is not whether
the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore, although
the marks at issue must be considered in their entireties,
Ser. No. 78433647
5
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985).
We find, first, that the dominant feature in the
commercial impression created by both marks is the
designation BIG SKY, which on this record appears to be an
arbitrary term as applied to the respective goods. The
other wording in the respective marks, i.e., CUVÉE and
BREWING COMPANY, are generic terms which have been
disclaimed; they are entitled to much less weight in our
comparison of the marks. See In re Chatam International
Inc., supra; In re National Data Corp., supra.
In terms of appearance and sound, we find that the
marks are similar to the extent that both begin with BIG
SKY, but dissimilar to the extent that the additional
generic wording in each mark looks and sounds different.
On balance, however, we find that the marks look and sound
more similar than dissimilar, because the similarity which
results from the presence in both marks of BIG SKY
Ser. No. 78433647
6
outweighs the dissimilarity which results from the
different generic wording in each mark.
In terms of connotation, the marks are dissimilar to
the extent that the generic wording in each mark results in
disparate meanings. However, the marks are similar in
meaning to the extent that both include the designation BIG
SKY. Whatever the connotation of BIG SKY, it is the same
in both marks. The difference in connotation which results
from the different generic wording in the marks is
outweighed, we find, by the similarity in connotation which
results from the presence of BIG SKY in both marks.
In terms of overall commercial impression, we again
find that the marks are similar rather than dissimilar.
The primary if not only source-indicating feature in each
mark is the arbitrary designation BIG SKY, and the presence
of different generic wording in each mark does not diminish
or detract from this basic point of similarity. Although,
as applicant asserts, the cited registered mark BIG SKY
BREWING COMPANY looks more like a trade name than does
applicant’s mark BIG SKY CUVÉE, we find that this
distinction is not significant enough to render the marks
dissimilar when viewed in their entireties. Applicant also
argues that BIG SKY BREWING COMPANY, if used solely as a
trade name, would not be registrable and thus is entitled
Ser. No. 78433647
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to a narrowed scope of protection. However, a designation
may serve both as a trade name and as a trademark. BIG SKY
BREWING COMPANY is registered as a trademark, and
applicant’s arguments regarding its registrability
constitute an impermissible collateral attack on the
validity of the cited registration which will not be heard
in this ex parte proceeding.
In short, we find that the marks, when viewed in
their entireties in terms of appearance, sound, connotation
and overall commercial impression, are similar rather than
dissimilar. The first du Pont factor therefore weighs in
favor of a finding of likelihood of confusion.
The second du Pont factor requires us to determine
whether the applicant’s and registrant’s goods, as
identified in the application and the registration, are
similar or dissimilar. In making this determination, we
note that it is not necessary that the respective goods be
identical or even competitive in order to support a finding
of likelihood of confusion. That is, the issue is not
whether consumers would confuse the goods themselves, but
rather whether they would be confused as to the source of
the goods. It is sufficient that the goods be related in
some manner, or that the circumstances surrounding their
use be such that they would be likely to be encountered by
Ser. No. 78433647
8
the same persons in situations that would give rise,
because of the marks used thereon, to a mistaken belief
that they originate from or are in some way associated with
the same source or that there is an association or
connection between the sources of the respective goods.
See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991); and In re International
Telephone & Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Applicant’s goods and registrant’s goods obviously are
similar to the extent that both products are alcoholic
beverages. Wine and beer are different products which
would not be confused for each other, but that is not the
test, as noted above.
Further, the Trademark Examining Attorney has
submitted four third-party registrations which include in
their identifications of goods both wine and beer.
Although such registrations are not evidence that the marks
shown therein are in use or that the public is familiar
with them, they nonetheless have probative value to the
extent that they serve to suggest that the goods listed
therein are of a kind which may emanate from a single
source under a single mark. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck
Ser. No. 78433647
9
Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).4 We find that
this evidence weighs in favor of a finding of likelihood of
confusion under the second du Pont factor.
The third du Pont factor requires us to consider the
similarity or dissimilarity of the trade channels and
classes of purchasers for the goods. Because there are no
trade channel limitations in either applicant’s or
registrant’s identification of goods, we must presume that
the goods, as identified, are marketed in all normal trade
channels for such goods and to all normal classes of
purchasers for such goods. In re Elbaum, 211 USPQ 639
(TTAB 1981).
The Trademark Examining Attorney has made of record
printouts from the websites of four retail liquor stores
which show that these stores sell both wine and beer. We
accordingly find that these products are marketed in the
same trade channels and to the same classes of purchasers.
Such similarity in marketing channels (aside from any
similarity in manufacturing channels) weighs in favor of a

4 A fifth third-party registration submitted by the Trademark
Examining Attorney (of the mark ESPERYA) appears to be of a house
mark, which is entitled to little probative weight under Trostel
and Mucky Duck. Also, applicant has submitted Internet evidence
purporting to show that these registered marks are not in use in
the United States as trademarks for wine and beer. However, we
cannot conclude that applicant’s evidence diminishes the
probative value of the Trademark Examining Attorney’s third-party
registration evidence under Trostel and Mucky Duck.
Ser. No. 78433647
10
finding of likelihood of confusion under the third du Pont
factor. See In re Majestic Distilling Co., supra.
The fourth du Pont factor requires us to consider the
conditions under which the goods are purchased. Applicant
has amended its identification of goods to specify that
applicant’s wines sell for a retail price of at least
thirty dollars per bottle. Applicant argues that its wines
therefore are “ultrapremium” wines which are purchased with
knowledge and care by sophisticated purchasers. We cannot
agree. There is no evidence of record to show that thirty
dollars is an especially steep price for a bottle of wine.
Moreover, we find that even at thirty dollars, a bottle of
wine could be an impulse purchase made by an ordinary
consumer without a great degree of care or sophistication.
Certainly, some wine purchasers are knowledgeable and
sophisticated, but we cannot conclude on this record that
it is only those persons who would ever be in the market to
purchase a thirty-dollar bottle of wine. In any event, the
“beer” identified in the cited registration must be deemed
to be an ordinary consumer item purchased on impulse.
In making our findings under the second, third and
fourth du Pont factors, we are mindful of the fact that
numerous cases (including recent cases from the Federal
Circuit Court of Appeals, our primary reviewing court) have
Ser. No. 78433647
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found that different alcoholic beverages are related
products which are sold in the same trade channels to the
same classes of purchasers, including to ordinary
consumers, and that confusion is likely to result if the
goods were to be sold under similar marks. See, e.g., In
re Chatam International Inc., supra (beer and tequila); In
re Majestic Distilling Co., supra (malt liquor and
tequila). Indeed, precedential authority of the Board
specifically holds that beer and wine are related products.
See In re Sailerbrau Franz Sailer, 23 USPQ2d 1719 (TTAB
1992).
We are not persuaded by applicant’s contention that
Sailerbrau is outdated, nor its contention that the present
case is distinguishable on its facts due to applicant’s
specification in its identification of goods of a thirty
dollar per bottle minimum retail price for its wine; for
the reasons discussed above, we find that this price floor
is not dispositive and does not suffice to negate
likelihood of confusion. Nor are we persuaded by
applicant’s argument that Sailerbrau has been superseded or
is rendered less persuasive or controlling by the Board’s
non-precedential decision in In re Coors Brewing Co.,
(Serial No. 75599304, July 31, 2002), in which the Board
declined to find, on the record presented therein, that
Ser. No. 78433647
12
wine and beer are related products.5 Finally, we
acknowledge that the Federal Circuit, in G.H. Mumm & Cie v.
Desnoes & Geddes Ltd., 917 F.2d 129, 216 USPQ 1635 (Fed.
Cir. 1990), found no likelihood of confusion in a case
involving beer and champagne; however, the court’s decision
was based to a large degree on its finding, inter alia,
that the marks at issue were sufficiently dissimilar that
confusion could be avoided.
For the reasons discussed above, we find that the
second, third and fourth du Pont factors all weigh in favor
of a finding of likelihood of confusion in this case.
Specifically, we find that applicant’s specification of a
thirty-dollar per bottle minimum retail price for its wine
does not suffice to make the fourth du Pont factor weigh
dispositively against a finding of likelihood of confusion.
Applicant’s goods and registrant’s goods are alcoholic
beverage products that would be purchased by the same
ordinary consumers in the same trade channels. In these
circumstances, the use of the similar BIG SKY marks at
issue is likely to cause confusion as to the source,
sponsorship or approval of the goods.

5 Nor is Sailerbrau’s authority as precedent diminished by the
fact that the Federal Circuit, in its decision on appeal in the
In re Coors Brewing Co. case, noted in dicta that the Board had
found beer and wine to be unrelated products. In re Coors
Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003).
Ser. No. 78433647
13
Applicant has presented arguments regarding many of
the remaining du Pont factors, but those arguments are
unpersuasive and unsupported by evidence in any event.
Specifically, there is no evidence of record as to the
fifth du Pont factor (fame of the prior mark);6 in any
event, any lack of fame of the cited registered mark is not
dispositive in this ex parte proceeding. In re Majestic
Distilling Co., supra. There is no evidence of record
under the sixth du Pont factor (similar marks in use on
similar goods). We note that even if the third-party
registration evidence submitted by applicant with its
appeal brief had been timely and properly made of record
(it was not; see discussion supra), such third-party
registrations are not evidence under the sixth du Pont
factor. See Olde Tyme Foods Inc. v. Roundy’s Inc., 961
F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992). The apparent
absence of actual confusion (under the seventh and eighth
du Pont factors) is not particularly probative in this ex
parte case. In re Majestic Distilling Co., supra. There
is no evidence of record as to du Pont factors nine through
twelve. As for the thirteenth du Pont factor (“any other
established fact probative of the effect of use”),

6 Applicant’s assertions regarding the cited registered mark’s
lack of fame are not supported by evidence.
Ser. No. 78433647
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applicant’s assertions that it adopted its mark in good
faith, and that its products are of high quality and
therefore would not disparage the reputation of
registrant’s mark, even if they were proven, are not
dispositive.
Considering all of the evidence of record as it
pertains to the du Pont factors, we conclude that a
likelihood of confusion exists. To the extent that any
doubts might exist as to the correctness of this
conclusion, we resolve such doubts against applicant. See
In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed.
Cir. 1993); In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840,
6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous
Pastry Shoppe, Inc., supra. Moreover, we reject
applicant’s argument that its mark should be published so
that the owner of the cited registration may file a notice
of opposition if it believes itself to be damaged by
registration of applicant’s mark. It is incumbent upon us,
in this ex parte context, to determine whether likelihood
of confusion exists. See in re Dixie Restaurants Inc.,
supra.

Decision: The refusal to register is affirmed.