Corby Distilleries Limitedv.Augusto Ramon Lopez, Eva Maria Lopez and Maximo Ignacio Lopez

Trademark Trial and Appeal Board

Apr 30, 2009

No. 91180144 (T.T.A.B. Apr. 30, 2009)

Mailed:
April 30, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Corby Distilleries Limited
v.
Augusto Ramon Lopez, Eva Maria Lopez
and Maximo Ignacio Lopez
_____

Opposition No. 91180144
to application Serial No. 77046563
filed on November 17, 2006
_____

James D. Weinberger of Fross Zelnick Lehrman & Zissu, P.C.
for Corby Distilleries Limited.

Augusto Ramon Lopez, Eva Maria Lopez and Maximo Ignacio
Lopez, pro se.
______

Before Bucher, Grendel and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Augusto Ramon Lopez, Eva Maria Lopez and Maximo Ignacio
Lopez (“applicants”) filed an intent-to-use application on
the Principal Register for the mark LAM, in standard
character form, for “rum,” in Class 33.
Corby Distilleries Limited (“opposer”) filed a notice
of opposition against the registration of applicant’s mark
on the grounds of priority of use and likelihood of
confusion pursuant to Section 2(d) of the Trademark Act of
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91180144
2
1946, 15 U.S.C. §1052(d).1 Opposer alleged that it has been
continuously selling LAMB’S rum in the United States since
the early 1980’s and that applicant’s mark is likely to
cause confusion with opposer’s mark. Opposer also alleged
ownership of the following registered marks:
1. Registration No. 0580457 for the mark LAMB’S,
shown below, for rum.2

2. Registration No. 1677813 for the mark ALFRED LAMB,
shown below, for “alcoholic beverage; namely, rum.”3

3. Registration No. 1872733 for the mark LAMB’S NAVY
RUM, typed drawing form, for “alcoholic beverage, namely,
rum.”4

1 Opposer also pleaded a dilution claim pursuant to Section 43(c)
of the Trademark Act of 1946, 15 U.S.C. §1125(c). However,
because opposer did not reference dilution in its brief, we
consider that claim to be waived.
2 Issued September 29, 1953; Sections 8 and 15 affidavits
accepted and acknowledged; third renewal.
3 Issued March 3, 1992; Sections 8 and 15 affidavits accepted and
acknowledged; renewed.
4 Issued January 10, 1995; Sections 8 and 15 affidavits accepted
and acknowledged; renewed. Opposer disclaimed the exclusive
right to use the term “Navy Rum.”
Opposition No. 91180144
3
Applicant, in its answer, denied the salient
allegations in the notice of opposition.
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b). In addition, opposer introduced the following
testimony and evidence:
1. A notice of reliance on certified copies of
opposer’s pleaded registrations showing the current status
and title to the registrations; and,
2. The testimony deposition of Howard Charles Kirke,
opposer’s Vice President of External Affairs, with attached
exhibits.
Applicant did not submit any testimony evidence, nor
did applicant file a brief on the case.
Standing
Because opposer has properly made its pleaded
registrations of record, opposer has established its
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).
Priority

Because opposer has properly made its pleaded
registrations of record, Section 2(d) priority is not an
Opposition No. 91180144
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issue in this case as to the marks and the goods covered by
the registrations. King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In
re Majestic Distilling Company, Inc., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by §2(d) goes to the cumulative
effect of differences in the essential characteristics of
the goods and differences in the marks”).
A. The similarity or dissimilarity and nature of the goods
described in the application and registrations.

The goods in the application and opposer’s
registrations are identical: rum.
B. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

Because the goods described in the application and the
cited registration are identical, we must presume that the
Opposition No. 91180144
5
channels of trade and classes of purchasers are the same.
See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003)
(“Given the in-part identical and in-part related nature of
the parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers,
these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade”);
In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”).
C. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd.,
9 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co.,
6 USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we
are mindful that where, as here, the goods are in part
identical, the degree of similarity necessary to find
likelihood of confusion need not be as great as where there
Opposition No. 91180144
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is a recognizable disparity between the services. Century
21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992);
Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang,
84 USPQ2d 1323, 1325 (TTAB 2007); Jansen Enterprises Inc. v.
Rind, 85 USPQ2d 1104, 1108 (TTAB 2007).
Furthermore, the test 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 so that
confusion as to the source of the goods and services offered
under the respective marks is likely to result. San
Fernando Electric Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons
Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir. June
5, 1992). The proper focus is on the recollection of the
average customer, who retains a general rather than a
specific impression of the marks. Winnebago Industries,
Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB
1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975).
The terms LAMB’S and LAM are phonetically similar.
They are also visually similar because they both begin with
Opposition No. 91180144
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the letters L-A-M.5 There is little, if any, trademark
significance in the apostrophe letter “s” in opposer's mark.
See Winn’s Stores, Incorporated v. Hi-Lo, Inc., 203 USPQ 140
(TTAB 1979) (“little if any trademark significance can be
attributed to the apostrophe and the letter ‘s’ in opposer’s
mark” WINN’S when compared to applicant’s mark WIN-WAY).
See also Calvin Klein Industries Inc. v. Calvins
Pharmaceuticals Inc., 8 USPQ2d 1269, 1271 (TTAB 1988) (the
addition of the letter “s” at the end of applicant’s mark
CALVINS does little distinguish it from opposer’s mark
CALVIN); In re Curtice-Burns, Inc., 231 USPQ 990, 992 (TTAB
1986) (McKENZIE’S and McKENZIE are nearly identical). When
used in connection with rum, LAMB’S (or LAMB) and LAM are
equally arbitrary, and thus they engender the same
commercial impression. Accordingly, we find that the marks
are similar in appearance, sound, meaning and commercial
impression.
F. Balancing the du Pont factors.
In view of the similarity of the marks, the identity of
the goods and the presumption that the channels of trade and
classes of consumers are the same, we find that applicants’

5 With respect to opposer’s registered mark LAMB’S NAVY RUM, we
find that the name “Lamb’s” is the dominant part of that mark
because the term “Navy Rum” is descriptive. See Kirke Dep., p.
15 (“Navy rum traditionally was given a tot . . . which is a
ration that they would give the naval officers and the seaman on
the . . . ships”). We also note that opposer disclaimed the
exclusive right to use “Navy Rum.”
Opposition No. 91180144
8
registration of their mark LAM for rum is likely to cause
confusion with opposer’s marks LAMB’S (stylized) and LAMB’S
NAVY RUM registered for rum.6
Decision: The opposition is sustained and registration
to applicant is refused.

6 Because we find that applicant’s mark is likely to cause
confusion with the marks LAMB’S (stylized) and LAMB’S NAVY RUM,
we do not have to determine whether there is a likelihood of
confusion with opposer’s ALFRED LAMB (stylized) mark.