Canandaigua Wine Company, Inc.v.Davies & Gamble

Trademark Trial and Appeal Board

Sep 27, 2007

No. 91162103 (T.T.A.B. Sep. 27, 2007)

Mailed:
September 27, 2007
JTW

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Canandaigua Wine Company, Inc.
v.
Davies & Gamble, LLC
_____

Opposition No. 91162103
to Application Serial No. 76556728
filed on 11/4/2003
_____

John M. Rannells of Baker and Rannells PA for Canandaigua
Wine Company, Inc.

Gregory N. Owen of Owen, Wickersham & Erickson, P.C. for
Davies & Gamble, LLC.
______

Before Rogers, Walsh and Bergsman, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Canandaigua Wine Company, Inc. (opposer) has opposed
the application of Davies & Gamble, LLC (applicant) to
register the mark HERITAGE SITES in standard-character form
on the Principal Register for “wines” in International Class
33 (Application Serial No. 76556728). Applicant claims both
first use of the mark anywhere and first use of the mark in
commerce on January 23, 2003.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91162103
2
I. The Grounds
Opposer asserts priority and likelihood of confusion
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), as
its grounds for the opposition. Specifically, opposer
relies on its ownership, prior use and registration of its
HERITAGE mark for wines in asserting likelihood of
confusion. Opposer has pleaded ownership of and submitted a
status and title copy of incontestable Registration No.
1783602 for the mark HERITAGE in standard-character form for
“wine” in International Class 33. Opposer’s HERITAGE
registration issued on July 20, 1993. The registration
claims first use of the mark anywhere and first use of the
mark in commerce on February 15, 1993. The registration has
been renewed and is valid and subsisting.
In its answer applicant has denied the essential
allegations in the notice of opposition.
II. Standing
Because opposer has pleaded and shown that it owns a
registration for the HERITAGE mark, opposer has established
standing. See generally Jewelers Vigilance Committee Inc.
v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d 2021, 2023 (Fed.
Cir. 1987).
III. Priority
Priority is not at issue in this proceeding, again
because opposer has made of record a valid and subsisting
Opposition No. 91162103
3
registration for the HERITAGE mark which it owns. See King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974).
IV. The Record
The record consists of the file related to the opposed
application, the pleadings and notices of reliance filed by
each of the parties. Neither party submitted testimony.
V. Motion to Strike Evidence
There is one well defined evidentiary issue we must
address at the outset. Under a notice of reliance,
applicant has submitted certificates of label approval for
certain wines from the U.S. Department of the Treasury
Alcohol and Tobacco Tax and Trade Bureau (TTB). In its
notice of reliance applicant states, “The above referenced
Certificates of Label Approval are all on point and will be
relied upon to show that a great number of wine labels of
different producers containing ‘HERITAGE’ as an element of a
trademark on wine have been submitted to and approved by the
U.S. Department of the Treasury Alcohol and Tobacco Tax and
Trade Bureau establishing the common association of
‘HERITAGE’ with wine.” Applicant’s Notice of Reliance at 4.
Applicant indicates that it downloaded the records from the
TTB’s web page.
Opposer has moved to strike these records on the
grounds that they are not certified. Opposer argues that
Opposition No. 91162103
4
relevant provisions of the Federal Rules of Evidence and the
Trademark Rules require that these official records be
certified. We have considered opposer’s arguments carefully
and find them unpersuasive.
Trademark Rule 2.122(e), among other things, permits a
party to file “official records” under a notice of reliance
“… if the … official record is competent evidence and
relevant to an issue…” 37 C.F.R. § 2.122(e). The rule
specifies further that the filing “… be accompanied by the
official record or a copy thereof whose authenticity is
established under the Federal Rules of Evidence.” Id.
Applicant argues, “Federal Rules of Evidence, Rule 901(a)
states that the ‘the requirement of authentication or
identification as a condition precedent to admissibility is
satisfied by evidence sufficient to support a finding that
the matter in question is what its proponent claims.’ Rule
901(b)(7) gives as an illustration, ‘evidence that a writing
authorized by law to be recorded or filed and in fact
recorded or filed in a public office, or a purported public
record, report, statement, or data compilation, in any form,
is from the public office where items of this nature are
kept.’” Applicant’s Brief at 9. Applicant has represented
that the records at issue here are copies of actual records
from the official website of the TTB. The records in all
respects appear to be what applicant, the proponent, claims.
Opposition No. 91162103
5
In fact, opposer does not dispute that the records are
authentic records of label approvals. We find opposer’s
objection to the form of the records under the circumstances
of this case to be without merit. See Weyerhaeuser Co. v.
Katz, 24 USPQ2d 1230, 1232 (TTAB 1992). Accordingly, we
deny opposer’s motion to strike these records and will
consider them for whatever probative value they warrant.
VI. Likelihood of Confusion
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 of the parties.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976)(“The fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”). Below we will consider
each of the factors as to which applicant or the Examining
Attorney presented arguments or evidence.
Opposition No. 91162103
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A. The Goods and Channels Of Trade
In comparing the goods and the channels of trade for
the goods we must consider the goods as identified in the
application and registration. See Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990). See also Paula Payne Products
v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77
(CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”).
In this case, the goods of the parties are identical;
both the application and opposer’s registration identify
wine as the goods. There is no dispute on this point. In
addition, because the goods are identical, it logically
follows that we must also conclude that the channels of
trade for those goods are identical.
Furthermore, in cases such as this, where the
applicant’s goods are identical to the opposer’s goods, the
degree of similarity between the marks which is required to
support a finding of likelihood of confusion is less than it
would be if the goods were not identical. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992).
Opposition No. 91162103
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B. The Marks
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).
While we must consider the marks in their entireties,
it is entirely appropriate to accord greater importance to
the more distinctive elements in the marks. As the Court of
Appeals for the Federal Circuit observed, “… in articulating
reasons for reaching a conclusion on the issue of confusion,
there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Opposer argues that the marks are similar because
applicant’s mark, HERITAGE SITES, includes opposer’s mark,
HERITAGE, and because HERITAGE is the dominant element in
both marks. Opposer’s Brief at 3. Applicant, on the other
hand, argues that the marks are not similar when considered
in their entireties. Applicant argues further that the
marks differ in appearance, sound and connotation.
Opposition No. 91162103
8
Specifically, applicant relies on dictionary definitions of
HERITAGE and SITES, in particular an entry from The Compact
Oxford Dictionary for “heritage” which states, ”3. Before
another noun, relating to things of historical or cultural
value that are worthy of preservation.” With this
predicate, applicant argues that its HERITAGE SITES mark
differs from the HERITAGE mark, stating, “Applicant’s mark
HERITAGE SITES has a completely different connotation.
‘Heritage Sites’ is suggestive of wine made with grapes
grown on valued vineyard properties (sites) that have been
inherited or that have passed down from preceding
generations… Oppser’s mark suggests the quality of
opposer’s wine, whereas Applicant’s mark speaks to the
vineyard sources of the grapes used to make Applicant’s
wine. The connotations of the marks are completely
different and create completely different commercial
impressions.” Applicant’s Brief at 6.
We find the distinction in connotation applicant
attempts to draw too speculative and too subtle. The
dictionary meanings are not sufficient to establish that
relevant purchasers will attach the different meanings
applicant suggests to the respective marks. Indeed, we
conclude that it is no more likely that a potential
purchaser will associate either of the connotations
Opposition No. 91162103
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applicant suggests with its HERITAGE SITES mark as opposed
to opposer’s registered HERITAGE mark.
It is significant that both marks begin with HERITAGE.
Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d
1895, 1897 (TTAB 1988)(“… [it is] a matter of some
importance since it is often the first part of a mark which
is most likely to be impressed upon the mind of a purchaser
and remembered.”). We concur with opposer in concluding
that HERITAGE is the dominant element in both marks, not
only because it appears first, but because it is the only
element in the registered mark and the more important
element in projecting the connotation and commercial
impression in applicant’s mark.
In the context of applicant’s mark, “SITES” does
nothing to alter the primacy of “HERITAGE” in projecting the
connotation and commercial impression of the mark. “SITES”
simply adds the idea of a place and merely serves to enhance
the impression “HERITAGE.”
Finally, although there are some differences between
the HERITAGE and HERITAGE SITES marks in appearance and
sound, we conclude that, when considered in their
entireties, the similarities in appearance, sound,
connotation and commercial impresssion are more important,
and therefore, that the marks are highly similar.
Opposition No. 91162103
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C. Strength of the Registered Mark
Applicant also argues that opposer’s registered
HERITAGE mark is commonly used in association with wine and
consequently that it is “nondistinctive” and only worthy of
protection which is “extremely narrow in scope.”
Applicant’s Brief at 6. Applicant submitted copies of
twelve third-party registrations and sixty-five certificates
of label approval from the TTB in an attempt to demonstrate
that HERITAGE is a weak mark for wines.
The third-party registrations include the following
marks for wine: THE HERITAGE OF FRANCE (Registration No.
1493436); MENDOCINO HERITAGE (Registration No. 2170243);
HERITAGE DES CAVES DES PAPES (Registration No. 2213047);
HERITAGE CLONE (Registration No. 2474966); HERITAGE ROAD
(Registration No. 2494959); and LOST HERITAGE VINEYARDS
(Registration No. 2739486). The balance of the third-party
registrations are for whiskey, beer, bourbon and tequila.
The Federal Circuit has stated, “[t]he probative value
of third-party trademarks depends entirely upon their
usage.” Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 73 USPQ2d at 1693. Third-party
registrations are not evidence that the registered marks are
in use or that the public is familiar with them. See, e.g.,
AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403,
177 USPQ 268 (CCPA 1973). Nonetheless, the registrations
Opposition No. 91162103
11
“may be given some weight to show the meaning of a mark in
the same way that dictionaries are used.” Tektronix, Inc.
v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95
(CCPA 1976), aff'g 187 USPQ 588 (TTAB 1975).
In this case, the third-party registrations for
HERITAGE marks for wine are relatively few. Cf. Knight
Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB
2005) (NORTON MCNAUGHTON ESSENTIALS for women's clothing
held not confusingly similar to ESSENTIALS for similar goods
based, in part, on twenty-three third-party registrations
for “ESSENTIALS” marks for similar goods). Also, we
discount the relevance of the registrations for goods other
than wine. We have no evidence to support the proposition
that use of any term in conjunction with other types of
alcoholic beverages would have a dilutive effect on the use
of the term in relation to wine. More importantly, we have
no indication from this evidence that HERITAGE has any
consistent meaning in relation to wine. Under the
circumstances of this case, we do not find the third-party-
registration evidence sufficient in either quality or
quantity to establish that HERITAGE is a weak mark for wine.
Turing to the TTB certificates, opposer argues, and
applicant does not disagree, that the TTB certificates must
be secured prior to any proposed use of the label, and
further that the issuance of the certificates indicates
Opposition No. 91162103
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nothing about whether any use ever occurred. In the case of
a use-based, third-party trademark registration, we may
presume that some use of the mark occurred at some point in
time. On the other hand, the TTB certificates provide no
evidence of use.
Furthermore, the TTB certificates illustrate the
potential use of HERITAGE in a variety of ways. Many of the
certificates show the potential use of HERITAGE in a
composite mark where the HERITAGE component is clearly
subordinate to a house mark or other more dominant subject
matter. For example, TTB Certificate No. 04373001000057
shows a label where “PHILIP JAMISON JONES WINERY” is
displayed prominently at the top of the label in large type
and script and “HERITAGE BARN RED” appears below in small
standard block letters. Likewise, TTB Certificate No.
04257000000045 shows a two-part label consisting of a large
label where “CHATEAU PICQUE CAILLOU” is displayed in large
stylized type along with other pictorial elements, and text
and the words “IMPORTED BY HERITAGE WINE CELLARS, LTD.
NILES, ILLINOIS” appears in standard block letters on a
separate smaller label with what appears to be other legally
required information, such as government warnings. Even if
we assumed that these labels were in use, we have no basis
to assess the impact of these vastly different potential
uses on potential purchasers with regard to the strength of
Opposition No. 91162103
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HERITAGE. Accordingly, we find that the TTB certificates,
by themselves, lack probative value with regard to the
strength of the HERITAGE mark for wines. Han Beauty, Inc.
v. Alberto-Culver Co., 236 F.3d 1333, 57 USPQ2d 1557, 1561
(Fed. Cir. 2001) (Where the “… record includes no evidence
about the extent of [third-party] uses … [t]he probative
value of this evidence is minimal.”).
Ultimately, in this case, we must consider, on the one
hand, a prior registration for the HERITAGE mark alone and
accord the HERITAGE mark the presumptions dictated by
Trademark Act Section 7, 15 U.S.C. § 1057, including the
presumption of “the registrant’s exclusive right to use the
mark” without regard to its potential use with other subject
matter, and on the other hand, the application to register
the HERITAGE SITES mark alone in that same light. Based on
the evidence of record and other circumstances in this case,
we conclude that the HERITAGE mark is entitled to the same
scope of protection as any other comparable registered mark.
On this record, we are not persuaded that it is a weak mark
for wine.
VII. Conclusion
Based on all evidence of record in this proceeding
bearing on the du Pont factors, we conclude that there is a
likelihood of confusion between applicant’s HERITAGE SITES
mark for wine and opposer’s HERITAGE mark for wine. We
Opposition No. 91162103
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conclude so principally because the goods of the parties are
identical and the marks are highly similar.
Decision: The opposition is sustained on the grounds
of likelihood of confusion. Registration is refused.