C & N Corporationv.Illinois River Winery, Inc.

Trademark Trial and Appeal Board

Oct 21, 2008

No. 91174718 (T.T.A.B. Oct. 21, 2008)

alinnehan Mailed: October 21, 2008

Opposition No. 91174718

C& N Corporation d/b/a Door
Peninsula Winery

v.

Illinois River Winery, Inc.

Before Walters, Zervas, and Mermelstein,
Administrative Trademark Judges.

Illinois River Winery, Inc. (“applicant”) seeks to
register the mark HALLOWINE1 for “wine” in International
Class 33. Articshield, Inc. (“opposer”) has opposed
registration based on its alleged prior use of the same
mark, HALLOWINE,2 for the same goods and its claim that a
likelihood of confusion exists between the marks.
This case now comes up for consideration of opposer’s
motion (filed June 12, 2008) for summary judgment in its
favor on the grounds of priority and likelihood of confusion
and opposer’s motion (also filed June 12, 2008) for

1 Application Serial No. 78841086, filed March 20, 2006, alleging
April 15, 2005 as a date of first use and August 20, 2005 as a
date of first use in commerce.
2 Opposer is the owner of Serial No. 77030,299, filed October 26,
2006, alleging July 1, 1998 as a date of first use and first use
in commerce. The application has been suspended pending the
disposition of applicant’s application.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
Opposition No. 91174718
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discovery sanctions pursuant to Trademark Rule 2.120(g)(1).
The motions are fully briefed.
Motion for Summary Judgment
We first turn to opposer’s motion for summary judgment.
In support of its motion, opposer argues that there are no
genuine issues of material fact with respect to priority and
likelihood of confusion. Specifically, opposer contends
that it has used the HALLOWINE mark since at least 1998 and
has extensively advertised the mark since that time; that it
has sold significant amounts of wine under the HALLOWINE
mark since 1998; and that its date of first use precedes
applicant’s first date of use which occurred in 2005.
Moreover, opposer argues that the involved marks are
identical in appearance, sound, meaning, and commercial
impression and that the involved goods are the same and are
sold in the same channels of trade to the same class of
purchasers.
As evidentiary support, opposer has submitted the
following: (1) Applicant’s Supplemental Answers to
Opposer’s First Requests for Admissions; (2) an invoice
demonstrating the sale of wine under the HALLOWINE mark in
July of 1998; (3) Applicant’s Second Supplemental Answers to
Opposer’s Second Set of Written Interrogatories (Nos. 20 and
22); (4) a copy of the Notice of Opposition; (5) a copy of
applicant’s Answer; (6) Applicant’s Supplemental Answer to
Opposition No. 91174718
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Opposer’s First Set of Written Interrogatories (Nos. 1-19);
(7) Opposer’s Response to Applicant’s First Set of
Interrogatories and First Set of Requests for Production of
Documents and Things; (8) Applicant’s Second Supplemental
Answer to Opposer’s First Request for Admissions (Nos. 17-
18); (9) an excerpt from applicant’s website depicting the
sale of wine under the HALLOWINE mark; and (10) the
declaration of Robert Pollman, opposer’s Chief Operating
Officer and Secretary.
In response to the motion, applicant argues that
opposer has failed to prove that it has priority in the mark
HALLOWINE; that opposer has failed to show that it has
continuously used the mark HALLOWINE for wine since at least
1998 so as to establish its priority in the mark; and
opposer has failed to prove that consumer confusion,
deception, or mistake in likely. In particular, applicant
maintains that its goods are “specialized and of high
quality” and that consumers of such goods are careful,
discriminating, and sophisticated purchasers who are
unlikely to be confused in the purchase of the parties’
respective goods.
In evidentiary support of its position, applicant has
submitted the affidavit of its president, Gregory Kane.
In reply to its motion, opposer maintains that it has
priority in the subject mark; that it has continuously used
Opposition No. 91174718
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the mark HALLOWINE for wine since at least 1997; and that
applicant’s use of the mark is likely to cause consumer
confusion, deception, or mistake because the marks are the
same, the goods are the same, and the channels of trade are
the same; and that the purchase of a “$10 or $13 bottle of
wine tends to be more of an impulse purchase by consumers
rather than a careful deliberate purchase” so confusion is
likely to occur.
In further evidentiary support of its position, opposer
has submitted the following: (1) the declaration of
Christopher M. Scherer, counsel for opposer; (2) Applicant’s
Second Supplemental Answers to Opposer’s Second Set of
Written Interrogatories (Nos. 20 and 22); (3) Applicant’s
Answer to Opposer’s First Request for Admissions; (4) a
representative sampling of invoices, orders, and shipping
documents demonstrating the sale of wine under the HALLOWINE
from 1998 to the present.
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine issue of material fact, and that it
is entitled to summary judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317 (1986), and Sweats
Opposition No. 91174718
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Fashions Inc. v. Pannill Knitting Co. Inc., 4 USPQ2d 1793
(Fed. Cir. 1987). When the moving party’s motion is
supported by evidence sufficient to indicate that there is
no genuine issue of material fact, and that the moving party
is entitled to judgment, the burden shifts to the nonmoving
party to demonstrate the existence of specific genuinely-
disputed facts that must be resolved at trial.
The nonmoving party may not rest on the mere
allegations of its pleadings and assertions of counsel, but
must designate specific portions of the record or produce
additional evidence showing the existence of a genuine issue
of material fact for trial. In general, to establish the
existence of disputed facts requiring trial, the nonmoving
party "must point to an evidentiary conflict created on the
record at least by a counterstatement of facts set forth in
detail in an affidavit by a knowledgeable affiant." Octocom
Systems Inc. v. Houston Computer Services Inc., 16 USPQ2d
1783, 1786 (Fed. Cir. 1990), citing Barmag Barmer
Maschinenfabrik AG v. Murata Machinery, Ltd., 221 USPQ 561,
564 (Fed. Cir. 1984). A dispute as to a material fact is
genuine only if a reasonable fact finder viewing the entire
record could resolve the dispute in favor of the nonmoving
party. See Olde Tyme Foods Inc. v. Roundy's Inc., 22 USPQ2d
1542, 1544 (Fed. Cir. 1992). If the nonmoving party fails
to make a sufficient showing on an essential element of its
Opposition No. 91174718
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case with respect to which it would have the burden of proof
at trial, judgment as a matter of law may be entered in
favor of the moving party. See Fed. R. Civ. P. 56(c),
Celotex Corp., 477 U.S. at 322-323. Finally, in deciding a
motion for summary judgment, the Board must view the
evidence in the light most favorable to the nonmovant, and
must draw all reasonable inferences from underlying facts in
favor of the nonmovant. Id.
After a careful review of the record in this case, as
discussed below, we find that there is no genuine issue of
material fact and that opposer is entitled to judgment as a
matter of law.
Standing
As a preliminary matter, we find that opposer has
standing to maintain this proceeding. We note that
applicant has not challenged opposer's standing to oppose
the involved application. Also, as discussed in more detail
infra, we find that the evidence of opposer's prior use of
its HALLOWINE mark and the fact that applicant's involved
mark was cited as a potential bar under Section 2(d) to
registration of opposer's mark as set forth in opposer's
pending application are sufficient to establish opposer's
standing to bring this case. As such, no genuine issue of
material fact exists on the issue of standing.

Opposition No. 91174718
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Likelihood of Confusion
Turning then to the issue of likelihood of confusion,
we are guided by the factors set forth in the case of In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). Our determination of likelihood of confusion
is based on an analysis of all of the facts in evidence that
are relevant to the factors bearing on the issue of
likelihood of confusion. Our primary reviewing Court has
held that only those du Pont factors shown to be material or
relevant in the particular case and which have evidence
submitted thereon are to be considered. See Olde Tyme
Foods, Inc. v. Roundy's, Inc., 961 F.2d 200, 22 USPQ2d 1542
(Fed. Cir. 1992). In this instance, therefore, we focus our
analysis on the dispositive factors, namely, the appearance
of the marks, the related nature of the goods, and the
similarity of trade channels. Han Beauty, Inc. v. Alberto-
Culver Co., 236 F.3d 1333, 1338, 57 USPQ2d 1557, 1559-1560
(Fed. Cir. 2001).
There is no genuine issue of material fact that the
marks at issue are similar. Indeed, they are identical
marks. There is also no genuine issue as to the similarity
of the goods. These too are identical. We note that
applicant has admitted both of these allegations in its
Opposition No. 91174718
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answer to the notice of opposition.3 Lastly, the record
indicates that the parties’ goods travel in similar channels
of trade. Applicant's argument regarding the alleged
sophistication of purchasers of its product is not supported
by any evidence and as such is unpersuasive. In the absence
of any limitations in the parties' identifications of goods,
we must presume that the goods move through all reasonable
trade channels for such goods to all usual classes of
consumers for such goods. Schieffelin & Co. v. Molson
Companies Ltd., 9 USPQ2d 2069, 2073(TTAB 1989); Morton-
Norwich Products, Inc. v. N. Siperstein, Inc., 222 USPQ 735,
736 (TTAB 1984); and In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). Accordingly, we presume that the parties' wines are
sold in the same trade channels to the same classes of
purchasers. The purchasers would include ordinary ones who
would exercise nothing more than ordinary care when buying
wine. Even assuming that some purchasers may be
sophisticated and a bit more discerning in buying wine, this
does not necessarily mean that they are sophisticated or
knowledgeable in trademarks or immune from source confusion.
See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ
49, 50 (Fed. Cir. 1986), citing Carlisle Chemical Works,

3 We further note that applicant now states in its response brief
that it disputes the assertions that the marks and the goods are
identical. However, applicant fails to provide reasons for its
position and we see no reasons for concluding otherwise.

Opposition No. 91174718
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Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110,
112 (CCPA 1970) ["Human memories even of discriminating
purchasers...are not infallible."]. See also In re Decombe,
9 USPQ2d 1812 (TTAB 1988).
In sum, applicant has failed to disclose any evidence
that points to the existence of a genuine issue of material
fact on the issue of likelihood of confusion.
Priority of Use
We turn next to the issue of whether there is a genuine
issue of material fact regarding opposer's asserted priority
of use. To establish priority on a likelihood of confusion
claim brought under Trademark Act Section 2(d), a party must
prove that, vis-a-vis the other party, it owns "a mark or
trade name previously used in the United States . . . and
not abandoned . . . . " Trademark Act Section 2, 15 U.S.C.
Section 1052.
There is no genuine issue of material fact as to
opposer’s priority of use of its mark. Opposer proved that
it first used its mark in July 1998. To establish this
date, opposer submitted the declaration of Robert Pollman,
its Chief Operating Office and Secretary, who attests to the
advertising expenditures and sales volume of opposer for its
goods under the HALLOWINE mark for each year from 1998 to
2007. Opposer has also submitted numerous copies of
invoices, orders, and shipping records showing sales of its
Opposition No. 91174718
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goods under the HALLOWINE mark from July 1998 to the
present. Thus, Mr. Pollman’s declaration, coupled with the
documentary evidence submitted with opposer’s briefs, are
sufficient to establish opposer’s date of first use in 1998
and the continuity of such use.
Applicant, on the other hand, states in its answer to
the notice of opposition that it did not commence using its
mark in interstate commerce until at least as earlier as
August 20, 2005, as indicated in its subject application.
Moreover, in response to opposer’s Requests for Admissions
Nos. 17-18, applicant admits that it did not even sell wine
prior to July, 2003.
Accordingly, opposer is entitled to a finding in its
favor on the issue of priority.
Conclusion
We have found no genuine issues of material fact
regarding opposer’s priority of use or the likelihood of
confusion between the marks. Accordingly, opposer’s motion
for summary judgment is hereby granted. Judgment is hereby
entered against applicant, the opposition is sustained, and
registration to applicant is refused.
In view thereof, opposer’s motion for sanctions under
Trademark Rule 2.120(g) is moot.