D’Andrea Family Ltd. Partnership

Trademark Trial and Appeal Board

Sep 9, 2003

No. 78082130 (T.T.A.B. Sep. 9, 2003)

Mailed:
9/9/03
Paper No. 11
RFC
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re D’Andrea Family Limited Partnership
________
Serial No. 78/082,130
_______
Gregg R. Zegarelli of Zegarelli Technology &
Entrepreneurial Ventures Law Group for D’Andrea Family
Limited Partnership.
Matthew C. Kline, Trademark Examining Attorney, Law Office
(K. Margaret Le, Managing Attorney).
_______
Before Simms, Cissel and Drost, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On August 31, 2001, applicant, a partnership organized
and existing under the laws of the Commonwealth of
Pennsylvania, filed the above-identified application to
register the mark APOLLO RIDGE on the Principal Register
for “wine,” in Class 33. The basis for filing the
application was applicant’s assertion that it possessed a
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78/082,130
2
bona fide intention to use the mark in commerce in
connection with this product.
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act, 15 U.S.C. Section 1052(d),
on the ground that the mark applicant seeks to register,
APOLLO RIDGE, so resembles the mark APOLLO, which has
already been registered1 for wine, that if applicant were to
use the mark it seeks to register in connection with the
identical goods, confusion would be likely.
Applicant responded to the refusal to register with
argument that confusion would not be likely, and attempted
to amend the application to disclaim the terms “Apollo” and
“Ridge” apart from the mark as shown.
The Examining Attorney was not persuaded by
applicant’s argument, and in his second Office Action, he
made the refusal to register under Section 2(d) of the Act
final. Additionally, he noted that applicant’s request to
disclaim both components of its mark was non-responsive and
unacceptable, in that an applicant may not disclaim the
entire mark it seeks to register.
1 Reg. No. 1,626,226, issued on the Principal Register on Dec. 4,
1990 to Barcamerica International Corp. U.S.A. d/b/a Apollo
Winery & Vineyards Corp.; assigned to Gino Barca as trustee of
the Barcamerica International U.S.A. Trust; affidavit under
Section 8 accepted; renewed.
Ser No. 78/082,130
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Applicant timely filed a Notice of Appeal, along with
its appeal brief. Attached to applicant’s brief was a copy
of what applicant asserted is a document showing that the
Bureau of Alcohol, Tobacco and Firearms (BATF) had approved
applicant to use the “brand name” APOLLO RIDGE on its wine.
At the end of applicant’s brief, applicant proposed, as an
“alternative request,” that if this additional evidence
were considered to exceed “the scope of evidence, or was
not,(sic) provided to the examiner, and if such information
is necessary or appropriate to use in the review, then
applicant hereby requests, pursuant to 37 C.F.R. Section
2.142 (d), to remand the application to the Examiner for
further examination.”
The Examining Attorney filed his appeal brief,
objecting to the Board’s consideration of the additional
evidence appended to applicant’s brief. Applicant filed a
reply brief, arguing that it had requested suspension and
remand for consideration of this evidence if the Examining
Attorney determined that its submission was not proper.
Applicant did not request an oral hearing before the
Board. Accordingly, we have resolved this appeal based on
the written arguments and the record presented on appeal.
We have not considered the evidence applicant
submitted with its brief. The record closes with the
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filing of the Notice of Appeal, and additional evidence may
only be made of record after that with permission of the
Board as a result of a request under Rule 2.142(d).
Ordinarily, the Board does not grant such requests if the
additional evidence sought to be made of record was
available for timely submission prior to the appeal.
In the case at hand, the Notice of Appeal was filed on
December 3, 2002. On its face, the evidence applicant
sought to introduce with its brief indicates that four of
applicant’s APOLLO RIDGE labels were approved in 2001 and
three were approved in January of 2002, so all of this
information could have been timely submitted long before
the appeal was filed. Accordingly, applicant’s request for
suspension and remand for consideration of this evidence is
denied.
We hasten to note that in any event, this Board would
not be bound by the decisions by the BATF to approve
labeling anyway, so even if applicant had timely introduced
evidence showing that that agency had approved the use of
the mark in question on applicant’s wine labels, the Patent
and Trademark Office would not be bound by that evidence to
reverse the refusal to register in this case. Whatever
considerations led the BATF to issue the Certificates of
Label Approval, the issue before that agency was not
Ser No. 78/082,130
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registrability of APOLLO RIDGE as a trademark for wine on
the Principal Register under Section 2(d) of the Lanham
Act, which is the issue for our resolution in this appeal.
In resolving this issue, we must follow the guidance
of our primary reviewing court, whose predecessor set forth
the factors to consider in determining whether confusion is
likely within the meaning of the Lanham Act in the case of
In re E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). Chief among these factors are the
similarity of the marks as to appearance, pronunciation,
meaning and commercial impression and the similarity of the
goods.
“When marks would appear on virtually identical goods
or services, the degree of similarity between the marks
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 6098, 1700 (Fed. Cir.
1992). In that applicant specifies the goods with which it
intends to use the mark as “wine,” and the goods named in
the cited registration are the same, the degree of
similarity between the marks necessary to support a
conclusion that confusion would be likely is less than
would be the case if the goods were not identical.
Ser No. 78/082,130
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When applicant’s mark is compared to the cited
registered mark, the marks easily meet this level of
similarity because they create similar commercial
impressions. As the Examining Attorney points out, the
test for likelihood of confusion is not whether the marks
can be distinguished when subjected to side-by-side
comparison, but rather whether they create similar overall
commercial impressions. Visual Information Institute,
Inc., v. Vicon industries, Inc., 209 USPQ 179 (TTAB 1980).
We must look to the likely recollection of the average
purchasers of the goods in question here, who do not
necessarily have perfect recall, and who normally would
retain a general, rather than a specific, impression of a
trademark. Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106 (TTAB 1975). In that wine is a product frequently
purchased by ordinary consumers, such purchasers, if
familiar with registrant’s APOLLO wine, would be likely,
upon being presented with wine bearing applicant’s APOLLO
RIDGE mark, to assume that the same source is responsible
for both.
Contrary to applicant’s argument, the addition of the
word RIDGE to the registered mark is insufficient to
provide a basis upon which consumers are likely to
distinguish between these two marks. As the courts and the
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Board have held many times, the mere addition of a term to
a registered trademark does not necessarily overcome the
likelihood of confusion. See: Coca-Cola Bottling Co. v.
Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105
(CCPA 1975); and Lilly Pulitzer, Inc. v. Lilli Ann Corp.,
376 F.2d 324, 153 USPQ 406 (CCPA 1967). Applicant argues
that the mark it seeks to register creates a very different
commercial impression from the one engendered by the cited
registered mark because the addition of the word RIDGE
results in the connotation of its mark being that of a
geographical place, whereas the registered mark conveys the
impression of a Greek god or a good looking man.
Thoughtful reflection upon these two marks might result in
some prospective purchasers developing this kind of an
understanding, but in view of the fact that wine is an
ordinary consumer product which is not necessarily
purchased with great care or deliberation by particularly
sophisticated purchasers (although applicant, without any
evidentiary support, maintains to the contrary), this
record does not establish that a significant portion of
such purchasers would be likely to distinguish between
these marks on this basis. Instead, it is more likely that
no particular deliberation or analysis would necessarily be
employed when these products are purchased, and that the
Ser No. 78/082,130
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ordinary people who shop for wine would be likely to
assume, mistakenly, that the same source is responsible for
both APOLLO wine and APOLLO RIDGE wine, perhaps because of
the mistaken impression that APOLLO RIDGE wine is a
particular line of wines produced by the makers of the
APOLLO wines with which they may be familiar. When the
marks are compared in their entireties, they create very
similar commercial impressions.
Applicant contends that it is “a matter of record”
that “the Assistant Commissioner has, through a high-level
volume of registrations, deemed that the term ‘apollo’ is
not fanciful or unique,”… but rather “is highly diluted and
has been registered in many cases.” This argument is
unsupported by any evidence properly made of record in this
application.
We have no doubt that in view of the cited registered
mark, confusion would be likely if applicant were to use
the mark it seeks to register in connection with wine.
Even if we did have doubt, however, it is well settled that
any such doubt would have to be resolved in favor of the
registrant and prior user, and against the applicant, who,
as the second comer, has a duty to select a mark which is
not likely to cause confusion with a mark already in use by
a competitor in the same commercial field. In re Hyper
Ser No. 78/082,130
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Shoppes, (Ohio), Inc., 837 F.2d 643, 6 USPQ2d 1025 (Fed.
Cir. 1988).
DECISION: The refusal to register under Section 2(d)
of the Lanham Act is affirmed.