79265471 (T.T.A.B. Jun. 1, 2021)

Bish Wines Limited

Trademark Trial and Appeal BoardJun 1, 2021

79265471 (T.T.A.B. Jun. 1, 2021)

This Opinion is Not a Precedent of the TTAB Mailed: June 1, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Bish Wines Limited _____ Serial No. 79265471 _____ Jeffrey M. Goehring of Nixon & Vanderhye P.C., for Bish Wines Limited. Brian Pino, Trademark Examining Attorney, Law Office 114, Laurie Kaufman, Managing Attorney. _____ Before Bergsman, Pologeorgis, and Johnson, Administrative Trademark Judges. Opinion by Johnson, Administrative Trademark Judge: I. Background Bish Wines Limited (“Applicant”) seeks registration on the Principal Register of the mark GOLDEN EGG, in standard characters (“Applicant’s Mark”), for “wines” in International Class 33.1 1 Application Serial No. 79265471, filed on April 29, 2019 under Section 66(a) of the Trademark Act, 15 U.S.C. § 1141f(a), with a priority date of April 26, 2019, based on International Registration No. 1483164. Citations to the record or briefs are to the publicly available documents in TTABVUE, the Board’s electronic docketing system. See, e.g., Turdin v. Trilobite, Ltd., 109 USPQ2d 1473, Serial No. 79265471 - 2 - The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s Mark, as applied to the goods identified in the application, so resembles the Registered Mark GOLDEN EGG, also in standard characters, for “restaurant services” in International Class 43,2 as to be likely to cause confusion. When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal resumed. The appeal is fully briefed. After consideration of the evidence of record, we affirm the refusal to register. II. Likelihood of Confusion – Applicable Law We base our determination of likelihood of confusion under Trademark Act Section 2(d) on an analysis of all of the probative facts in evidence that are relevant to the factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”) (cited in B & B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each DuPont factor for which there is evidence and argument. See, e.g., 1476 n.6 (TTAB 2014). The number preceding “TTABVUE” corresponds to the docket entry number; the number(s) following “TTABVUE” refer to the page number(s) of that particular docket entry, if applicable. Citations to the application record are to pages in the Trademark Status and Document Retrieval (TSDR) database of the United States Patent and Trademark Office (USPTO). All citations to documents contained in the TSDR database are to the downloadable .pdf versions of the documents in the USPTO TTABVUE Case Viewer. 2 Registration No. 5589879, issued Oct. 23, 2018 [also “Registered Mark” or “Registrant’s Mark”]. Serial No. 79265471 - 3 - In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). However, “each case must be decided on its own facts and the differences are often subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973). In applying the DuPont factors, we bear in mind the fundamental purposes underlying Trademark Act Section 2(d), which are to prevent confusion as to source and to protect registrants from damage caused by registration of confusingly similar marks. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1163 (1995); DuPont, 177 USPQ at 566. The proper focus is on the recollection of the average customer, who retains a general, rather than specific, impression of the marks. See Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012). Varying weights may be assigned to the various DuPont factors depending on the evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or less weighty roles in any particular determination.”). Two key considerations are the similarities between the marks and the relatedness of the goods or services. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002) (“The likelihood of confusion analysis considers all DuPont Serial No. 79265471 - 4 - factors for which there is record evidence but ‘may focus … on dispositive factors, such as similarity of the marks and relatedness of the goods.’”)). III. Likelihood of Confusion – Analysis We now consider the arguments of Applicant and the Examining Attorney, the applicable law, and the evidence of record. The likelihood of confusion factors Applicant and the Examining Attorney discussed are the similarity or dissimilarity of Applicant’s and Registrants’ GOLDEN EGG marks, the relatedness of the goods and services associated with the respective marks, and the strength of the Registered Mark. We discuss these factors, and more, below. A. The Strength of the Registered Mark, Including the Number and Nature of Similar Marks In Use on Similar Goods or Services. Other than the Registered Mark, the record is devoid of any registrations of the literal term “golden egg” for “restaurant services.”3 In addition, there is no evidence of use of similar marks for restaurants or restaurant services.4 As a result, we find 3 To show that the Registered Mark is suggestive, Applicant proffered seventy-six registered marks for restaurant services which include the term “golden” and fifty-nine registered marks in the record for restaurant services that include the term “egg,” but none for “golden egg.” Sept. 1, 2020 Request for Reconsideration After Final Action Denied, pp. 22-370. 4 To show that it is rare to find marks similar to “golden egg” for wine or restaurant services, Applicant proffered live (and dead) registrations incorporating the terms “golden,” “egg,” or “golden egg” for different goods and services. See Mar. 16, 2020 Response to Office Action, pp. 73-85 (DENVER DUCK AND THE QUEST FOR THE GOLDEN EGG, Reg. No. 2972958, for “gaming machines, namely, slot machines or lottery terminals with or without video input”; GOLDEN STATE SAFE EGGS, Reg. No. 4601776, for “eggs”; GOLDEN EGG AWARD, Reg. No. 3184864, cancelled on Jul. 19, 2013; FOLLOW THE GOLDEN EGG, Reg. No. 4348142, cancelled on Jan. 10, 2020; THE GOLDEN EGG, Reg. No. 3915054, cancelled on Sep. 8, 2017). However, third-party registrations for dissimilar goods have limited probative value. See Omaha Steaks Int’l v. Greater Omaha Packing Co., 908 F.3d 1315, 128 USPQ2d 1686 (Fed. Cir. 2018) (error to rely on third-party evidence of similar marks for dissimilar goods, as Board must focus “on goods shown to be similar”); Serial No. 79265471 - 5 - GOLDEN EGG, when used in connection with restaurant services, is an arbitrary, inherently distinctive mark. An arbitrary mark is an inherently or conceptually strong mark. Nautilus Group, Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 71 USPQ2d 1173, 1180 (Fed. Cir. 2004) (defining an arbitrary mark as a “known word used in an unexpected or uncommon way” and observing that such marks are typically strong); Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (arbitrary terms are conceptually strong trademarks). This especially holds true since the cited mark is registered on the Principal Register without a showing of acquired distinctiveness under Section 2(f) of the Trademark Act. Because the Registered Mark is arbitrary and inherently distinctive, it is entitled to a broad scope of protection. Consequently, this DuPont factor weighs in favor of a finding of likelihood of confusion. B. The Similarity or Dissimilarity of the Marks. Under the first DuPont factor, we determine the similarity or dissimilarity of Applicant’s and Registrant’s marks in their entireties, taking into account their appearance, sound, connotation, and commercial impression. DuPont, 177 USPQ at In re i.am.symbolic, 123 USPQ2d at 1751 (disregarding third-party registrations for other types of goods where the proffering party had neither proven nor explained that they were related to the goods in the cited registration). We will only consider the live registrations because an expired or cancelled registration is evidence of nothing but the fact that the registration once issued. Sunnen Prods. Co. v. Sunex Int’l Inc., 1 USPQ2d 1744, 1747 (TTAB 1987). See also Action Temp. Servs. Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“a cancelled registration does not provide constructive notice of anything.”). Serial No. 79265471 - 6 - 567; In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048 (Fed. Cir. 2018). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, 126 USPQ2d 1742, 1746 (TTAB 2018) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). Here, it is undisputed that Applicant’s and Registrant’s GOLDEN EGG marks are identical. Applicant cannot rely on extrinsic evidence to support its argument that the marks convey differing commercial impressions. See In re Detroit Athletic, 128 USPQ2d at 1052 (citing In re i.am.symbolic, 123 USPQ2d at 1749). As a result, the first DuPont factor weighs heavily in favor of a finding of likelihood of confusion. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (“This factor weighs heavily against applicant, as the two word marks are identical … .”). C. The Similarity or Dissimilarity and Nature of the Goods and Services. Since the goods and services at issue in this appeal are “wine” and “restaurant services,” Applicant argues that the Office is required to show “something more” than identical marks that are used for food products and restaurant services, In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003) (quoting Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982)), and that the Office has failed to meet this burden. In In re Coors, a decision about the relatedness of restaurant services and beer, the Federal Circuit elucidated why it is necessary to show “something more” in order to prove that beer and restaurant services are related: Serial No. 79265471 - 7 - The evidence of overlap between beer and restaurant services is so limited that to uphold the Board’s finding of relatedness would effectively overturn the requirement of Jacobs that a finding of relatedness between food and restaurant services requires “something more” than the fact that restaurants serve food. It is not unusual for restaurants to be identified with particular food or beverage items that are produced by the same entity that provides the restaurant services or are sold by the same entity under a private label. Thus, for example, some restaurants sell their own private label ice cream, while others sell their own private label coffee. But that does not mean that any time a brand of ice cream or coffee has a trademark that is similar to the registered trademark of some restaurant, consumers are likely to assume that the coffee or ice cream is associated with that restaurant. The Jacobs case stands for the contrary proposition, and in light of the very large number of restaurants in this country and the great variety in the names associated with those restaurants, the potential consequences of adopting such a principle would be to limit dramatically the number of marks that could be used by producers of foods and beverages. In re Coors, 68 USPQ2d at 1064. In other words, there is no per se rule that certain goods and services are related. Lloyd’s Food Products, Inc. v. Eli’s, Inc., 987 F.2d 766, 25 USPQ2d 2027, 2030 (Fed. Cir. 1993) (no per se rule about confusion where similar marks are used in connection with restaurant services and food products). The “something more” requirement has been met in several cases before the Board. See generally In re Golden Griddle Pancake House Ltd., 17 USPQ2d 1074 (TTAB 1990) (GOLDEN GRIDDLE PANCKAKE HOUSE for restaurant services found confusingly similar to GOLDEN GRIDDLE for table syrup, based on third- party registration evidence showing, among other things, that the GOLDEN GRIDDLE PANCAKE HOUSE mark itself suggests that the relevant restaurant Serial No. 79265471 - 8 - services feature pancakes and pancake syrup); In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) (AZTECA MEXICAN RESTAURANT for restaurant services found confusingly similar to AZTECA for Mexican food items, where the AZTECA MEXICAN RESTAURANT mark indicated that the relevant restaurant services featured Mexican food and the evidence showed that the goods at issue “are often principal items of entrees served by . . . Mexican restaurants”); In re Accelerate s.a.l., 101 USPQ2d 2047 (TTAB 2012) (COLOMBIANO and COLOMBIAN both meaning “from Columbia,” which is a country known for its coffee beans; applicant’s “providing food and drink” services related to registrant’s “coffee”); In re Opus One, 60 USPQ2d 1812 (registrant’s OPUS ONE wine was sold in applicant’s OPUS ONE restaurant); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988) (registrant’s mark, MUCKY DUCK, was found to be a “very unique, strong mark” where the Examining Attorney was unable to find, in the USPTO records, any other registrations for a mark containing the expression “Mucky Duck,” and applicant did not proffer evidence of third-party use of marks containing the expression “Mucky Duck”). Here, Applicant’s Mark is for “wine” and the Registered Mark is for “restaurant services.” In addition to the inherent strength of the mark GOLDEN EGG, to satisfy the “something more” requirement, the Examining Attorney submitted thirty-three use-based third-party registrations, a representative sample of which is shown below, to demonstrate that the same entity has registered a single mark for wine and restaurants or wine and restaurant services. Third-party registrations which cover, Serial No. 79265471 - 9 - individually, the goods and services may have some probative value to the extent that they serve to suggest that the listed goods and services are of a type which may emanate from the same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1983).5 Mark Reg. No. Goods and Services BUCKEYE LAKE WINERY 4701497 Alcoholic beverages, namely, wines, red wines, white wines, table wines, spirits. Bar and restaurant services, namely, providing meals and alcohol and non-alcoholic beverages.6 3828638 Alcoholic beverages, namely, wine. Business management consulting with relation to strategy, marketing, production, personnel and retail sale matters in the field of alcoholic beverages, apparel and accessories and cafes and restaurants.7 3868986 Sweet wines; Table wines; White wine; Wine; Wines; Grape wine; Red wine. Cafe-restaurants; Restaurant services.8 3652326 Wine. Restaurant and bar services. 3643141 Restaurant and bar services. 5 Sept. 5, 2019 Office Action, pp. 8-107. 6 Partial listing of goods and services. 7 Partial listing of goods and services. 8 Partial listing of goods and services. Serial No. 79265471 - 10 - The Examining Attorney also submitted screenshots from twenty third-party Internet websites showing that the same entity offers wine and restaurant services. Below is a list of representative websites:  Canterbury Hill Winery & Restaurant, http://canterburyhill.com.9 “Our expertly crafted wines [under the Canterbury Hill Winery label] that cannot be found anywhere else. From the deepest, most complex dry red to the most beautifully perfumed sweet white wine – we’ve got you covered.”10  Cascade Mountain Winery & Restaurant, https://www.cascademt.com.11 Cascade Mountain offers for sale wine under the Cascade Mountain Vineyards private label.  Cooper’s Hawk Winery & Restaurant, https://chwinery.com/.12 Cooper’s Hawk offers co-branded Cooper’s Hawk private label wine for sale.  The Country Squire Restaurant & Winery, www.countrysquirewinery.com.13 Country Squire offers wines under the Country Squire Restaurant private label for sale.  Ferrante Winery & Ristorante, www.ferrantewinery.com.14 Ferrante offers wine for sale under the Ferrante private label. 9 Id. at pp. 108-09. 10 Id. at 109. 11 Id. at pp. 110-13. 12 Id. at pp. 114-16. 13 Id. at pp. 117-18. 14 Id. at pp. 119-23. Serial No. 79265471 - 11 - In contrast, Applicant proffered industry data to support its argument that it is uncommon for restaurant services and wine to emanate from the same source.15 Applicant submitted screenshots from the website www.statista.com, which shows that, as of January 2020, there were almost 11,000 wineries in the United States, which is no greater than 0.011% of the over one million restaurants in the United States as of 2020.16 We find that the Office has met the “something more” requirement. In addition to the marks being identical and inherently strong, the Examining Attorney submitted thirty-three third-party registrations and twenty third-party Internet websites showing that “wine” and “restaurant services” are often offered by the same entity. Applicant fails to rebut this evidence of relatedness with any evidence showing that it is uncommon for restaurants to serve wine (including private label wine). Instead, Applicant proffered data about the number of wineries versus the number of restaurants operating in the United States as of 2020. This data, however, does not demonstrate that it is uncommon for restaurants to serve wine or private label wines; it only provides the number of wineries operating in the United States as of 2020. Also, this data does not indicate how many wineries also provide restaurant services. 15 Sept. 1, 2020 Request for Reconsideration After Final Action, pp. 371-72. 16 Id. at p. 381, from the National Restaurant Association’s 2020 State of the Restaurant Industry Factbook. Under Fed.R.Evid. 803 (17), “Exceptions to the Rule Against Hearsay – Market Reports and Similar Commercial Publications,” market quotations, tabulations, lists, directories, or other published compilations, generally used and relied upon by the public or by persons in particular occupations, are not excluded by the hearsay rule. Serial No. 79265471 - 12 - The evidence of record here shows that there is substantial overlap between restaurant services and wine with respect to source. Thus, the second DuPont factor also favors a finding that confusion is likely. D. The Similarity or Dissimilarity of Established, Likely-To- Continue Trade Channels. Even though there is no evidence that Registrant offers wine under its GOLDEN EGG mark, the third-party Internet website evidence proffered by the Examining Attorney establishes that restaurants serve wine, and that wine and restaurant services are offered to some of the same or overlapping classes of consumers. Accordingly, the third DuPont factor favors a finding of likelihood of confusion. IV. Conclusion Considering all of the arguments and evidence of record, we find that the marks at issue are identical, the cited mark is arbitrary in nature and conceptually strong, Applicant’s wine and Registrant’s restaurant services are related in nature, and that those goods and services would flow through the same or similar channels of trade to some of the same classes of consumers. In view thereof, we conclude that under Section 2(d) of the Trademark Act, Applicant’s GOLDEN EGG mark, as used in conjunction with wine, is likely to cause confusion with Registrant’s GOLDEN EGG mark used in conjunction with restaurant services. Decision: The refusal is affirmed.