Wente Bros.Download PDFTrademark Trial and Appeal BoardJan 27, 2010No. 77290346 (T.T.A.B. Jan. 27, 2010) Copy Citation Mailed: January 27, 2010 jtw UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Wente Bros. ________ Serial No. 77290346 _______ Edward S. Wright of the Law Offices of Edward S. Wright for Wente Bros. James T. Griffin, Trademark Examining Attorney, Law Office 103 (Michael Hamilton, Managing Attorney). _______ Before Quinn, Hairston and Walsh, Administrative Trademark Judges. Opinion by Walsh, Administrative Trademark Judge: Wente Bros. (applicant) has applied to register the mark SYRENITY in standard characters on the Principal Register for goods identified as “wine” in International Class 33.1 1 Application Serial No. 77290346, filed September 27, 2007, based on a statement of a bona fide intention to use the mark in commerce under Trademark Act Section 1(b), 15 U.S.C. § 1051(b). THIS OPINION IS NOT A PRECEDENT OF THE T.T.A.B. Serial No. 77290346 2 The Examining Attorney has issued a final refusal under Trademark Act Section 2(d), 15 U.S.C. 1052(d), on the grounds that applicant’s mark is likely to be confused with the mark SEREINITÉ in standard characters in Registration No. 3408595 for goods identified as “wines” in International Class 33. The registration issued on April 8, 2008. The registration claims first use of the mark anywhere and first use of the mark in commerce on May 21, 2007. Applicant has appealed. Applicant and the Examining Attorney have filed briefs. We affirm. Section 2(d) of the Trademark Act precludes registration of an applicant’s mark “which so resembles a mark registered in the Patent and Trademark Office… as to be likely, when used on or in connection with the goods of the applicant, to cause confusion….” 15 U.S.C. § 1052(d). The opinion in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the factors to consider in determining likelihood of confusion. Here, as is often the case, the crucial factors are the similarity of the marks and the similarity of the goods in the application and the cited registration. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry mandated Serial No. 77290346 3 by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). In this case the goods are identical; applicant has not argued otherwise. Furthermore, we note that, “the degree of similarity [between the marks] necessary to support the conclusion of likely confusion declines” when the goods are identical. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert. denied, 506 U.S. 1034 (1992). In addition, we note that the goods, as identified in both the application and cited registration, without any restrictions, necessarily encompass wines at various price points. Consequently, the goods include relatively inexpensive wines which may be purchased by the public with a modest degree of care. In comparing the marks we must consider the appearance, sound, connotation and commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Applicant argues that the marks differ in all respects, appearance, sound, connotation and commercial impression. More specifically, applicant argues that there Serial No. 77290346 4 are obvious differences in appearance based on the differences in the letters in the respective marks. Applicant argues further that the cited mark, SEREINITÉ, is derived from the name of the Serein River which flows through the Chablis region. Applicant also asserts that “Serein” would be pronounced “suh-ran’.” Applicant notes the use of “Chablis” as an appellation applied to wines from the corresponding region of France. Applicant also notes that “serien” is a French common noun meaning a “fine mist or evening dew.” Applicant bases these assertions on fact sheets concerning the registrant’s products obtained from the registrant’s web site and from federal Certificate of Label Approval documents, both of which applicant made of record. Applicant argues further that SEREINITÉ is pronounced “suh- ran’-i-tay’.” As to its own mark, SYRENITY, applicant argues that it is “… a combination of the words ‘Syrah’ (a type of red wine) and ‘serenity’ and it means peace and serenity through wine.” Applicant’s Brief at 2. Applicant also asserts, “It is pronounced sa-‘re-natē, similar to ‘serenity’.” Id. Applicant concludes by arguing, “Thus, in addition to differing both in appearance and sound, Serial No. 77290346 5 SYRENITY also has an entirely different commercial impression than SEREINITÉ.” Id. On the other hand, the Examining Attorney argues, “The marks of the parties are confusingly similar. Both SYRENITY and SEREINITÉ are misspellings and phonetic equivalents of the word ‘serenity.’” Examining Attorney’s Brief at 3. The Examining Attorney argues further that there is no correct pronunciation of a trademark and that it is impossible to predict how the public will pronounce a particular trademark. The Examining Attorney also argues that the respective marks will project similar commercial impressions because they both would be perceived as equivalents of serenity. We conclude that the marks are confusingly similar, in particular, when we consider the facts that the goods of the parties are identical and that the goods include relatively inexpensive items purchased by the general public. While there are differences in appearance between the marks, there are also similarities, including the same beginning letters and other common letters. More importantly, as the Examining Attorney argues, we find it credible that each would be perceived as a misspelling of “serenity.” Also, it is axiomatic that there is no correct Serial No. 77290346 6 pronunciation of a mark. In re Great Lakes Canning, Inc., 227 USPQ 483, 484 (TTAB 1985). Also, the specific pronunciations applicant posits for each of the marks appear to presume use of each only on a specific type of wine, Chablis and Syrah respectively. However, neither identification is limited to use of the mark on a specific type of wine. Therefore, we must presume that both marks could be used on any type of wine. Also, as to the cited registration, we cannot consider extraneous evidence, such as the fact sheets applicant submitted here, to limit the scope of the goods covered by the registration. In re Bercut-Vandervoort & Co., 229 USPQ 763 (TTAB 1986). Accordingly, we conclude that the marks are similar in appearance and sound. As to the connotation and commercial impression, we likewise conclude that the connotation and commercial impression projected by each of the marks is similar based on the likely perception of both as a misspelling of “serenity.” We find it unlikely that potential purchasers of the goods would perceive the derivations of the registered mark applicant suggests. We agree with the Examining Attorney that it is unlikely that potential purchasers of these Serial No. 77290346 7 goods would perceive the connection between the mark and the French river name or common noun embedded in the mark. Applicant concedes that its own mark would project “serenity” as a connotation and commercial impression. Accordingly, we conclude that each of the marks would project a connotation and commercial impression related to serenity. Finally, after considering all evidence and arguments bearing on the du Pont factors, we conclude that there is a likelihood of confusion between applicant’s SYRENITY mark when used in connection with “wine” and the cited SEREINITÉ mark when used in connection with “wines.” Decision: We affirm the refusal under Trademark Act Section 2(d). Copy with citationCopy as parenthetical citation