Diamond Hong, Inc.

Trademark Trial and Appeal Board

Aug 29, 2005

No. 76530111 (T.T.A.B. Aug. 29, 2005)

Mailed:
Aug. 29, 2005

Grendel

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Diamond Hong, Inc.
________

Serial No. 76530111
_______

Kenneth Cang Li of Lin & Li, LLC for Diamond Hong, Inc.

Sophia S. Kim, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Hairston, Grendel and Rogers, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark depicted below for goods identified in the
application as “distilled spirits made of rice, peas or
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76530111
2
sorghum, herb liquors, port wine, rum, sake, fruit wine,
red wine, white wine and cooking wine.”1

Applicant states in the application that the
transliteration of the Chinese characters is “Ban Bian Ji,”
which translates into English as “half chicken/rooster.”
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark, on the ground that
the mark, as applied to the goods identified in the
application, so resembles the mark depicted below,

1 Serial No. 76530111, filed on July 15, 2003. The application
is based on applicant’s allegation of intent-to-use. Trademark
Act 1(b), 15 U.S.C. §1051(b).

Ser. No. 76530111
3
previously registered for goods identified in the
registration as “wines,”2 as to be likely to cause
confusion, to cause mistake, or to deceive. Trademark Act
Section 2(d), 15 U.S.C. §1052(d).
Applicant has appealed the final refusal. Applicant
and the Trademark Examining Attorney filed main appeal
briefs, but applicant did not file a reply brief and did
not request an oral hearing. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. See In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the
marks and the similarities between the goods and/or
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In
re Dixie Restaurants Inc., supra.

2 Registration No. 2159050, issued May 19, 1998. Affidavits
under Trademark Act Sections 8 and 15 accepted and acknowledged.

Ser. No. 76530111
4
We find that certain of the goods identified in the
application, i.e., “port wine,” “fruit wine,” “red wine,”
“white wine,” and “cooking wine,” are encompassed by and
thus are legally identical to the “wines” identified in the
cited registration.3 Moreover, because there are no
restrictions or limitations in applicant’s or registrant’s
respective identifications of goods, we also find that
these goods are or would be marketed in the same trade
channels and to the same classes of purchasers. We reject
applicant’s argument that because its mark includes Chinese
characters, its wines likely would be marketed to and
purchased only by Asian-American purchasers. No such
restriction is included in applicant’s identification of
goods, and nothing in registrant’s identification of goods
would preclude registrant from marketing its wines to
Asian-American purchasers.

3 We also find that the other items listed in applicant’s
identification of goods, i.e., “distilled spirits made of rice,
peas or sorghum,” “herb liquors,” “rum” and “sake,” are similar
and related to registrant’s “wines.” It often has been held that
various alcoholic beverages are similar and related to each
other, for purposes of the second du Pont factor. See, e.g., In
re Majestic Distilling Co., supra; and In re Hennessy, 226 USPQ
274 (TTAB 1985). However, given that applicant’s various wine
products are legally identical to the “wines” identified in the
cited registration, this finding regarding applicant’s other
goods, and their relationship to registrant’s goods, is
unnecessary to our decision herein, and we need not discuss
applicant’s other products any further.
Ser. No. 76530111
5
We also find that applicant’s and registrant’s
respective wines are ordinary consumer goods, purchased by
ordinary consumers without a great deal of care. Although
some wines can be expensive and purchased only by
knowledgeable, sophisticated purchasers, the respective
identifications of goods also encompass wines which are
inexpensive and purchased by ordinary, non-sophisticated
purchasers.
For the reasons discussed above, we conclude that the
second, third and fourth du Pont evidentiary factors weigh
in favor of a finding of likelihood of confusion.
We also find that the sixth du Pont factor, i.e., the
number and nature of similar marks in use on similar goods,
weighs in favor of a finding of likelihood of confusion.
There is no evidence of any third-party registrations or
third-party use of marks featuring roosters for wine, much
less any marks featuring two mirror-image roosters facing
each other in profile.
We turn now to the first du Pont factor, i.e., whether
applicant’s mark and registrant’s mark are similar or
dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
We make this determination in accordance with the following
principles.
Ser. No. 76530111
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The test, under the first du Pont factor, 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 that confusion as to the source of the goods
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore, although
the marks at issue must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Finally, in cases such as this, where the
applicant’s goods are identical to the registrant’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).
Ser. No. 76530111
7
Applying these principles in this case, we find,
first, that the dominant feature of applicant’s mark is the
design of two mirror image roosters facing each other in
profile. The Chinese characters in the middle of the mark
contribute relatively less to the commercial impression of
applicant’s mark, because they would be indecipherable to
the vast majority of purchasers in this country, who do not
read or speak Chinese. To these purchasers, the Chinese
characters would be viewed as merely a design element which
may lend the mark an exotic or foreign feel. But because
these purchasers cannot read the characters or understand
what they mean, it is the two-rooster design which
dominates the commercial impression of applicant’s mark.
The general principle cited by applicant, i.e., that when a
mark consists of both wording and a design, the wording
will tend to dominate the mark, is not applicable to this
case, where the “wording” consists of Chinese characters
that the vast majority of purchasers would not be able to
read or understand.
Even to purchasers who read Chinese and who therefore
would understand the letters to mean “half
chicken/rooster,” these words merely refer back to and
reinforce the design of the mirror image roosters facing
each other in profile. Applicant argues that the wording
Ser. No. 76530111
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“half chicken/rooster” would lead purchasers to view each
of the two roosters in the design as half of a rooster,
which when put together comprise a whole rooster. We are
not persuaded by this argument. In any event, registrant’s
mark could be viewed in the same way, as half-roosters
making up a whole rooster.
In short, while we do not ignore the Chinese
characters in our analysis of applicant’s mark and in our
comparison of that mark to registrant’s mark, we find, for
the reasons stated above, that applicant’s mark is
dominated by the design of the mirror image roosters facing
each other in profile. See In re National Data Corp.,
supra.
Next, we note that registrant’s and applicant’s
respective marks are not identical, but that is not
dispositive. As noted above, the test is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but whether they are sufficiently similar, when
viewed in their entireties, that consumers are likely to be
confused as to the source of the goods sold under the
marks. The points of dissimilarity between the marks,
i.e., the fact that applicant’s two roosters are depicted
in solid silhouette while registrant’s roosters are
depicted in line drawings, and the addition to applicant’s
Ser. No. 76530111
9
mark of the Chinese characters, are greatly outweighed by
the basic and overwhelming point of similarity between the
marks, i.e., the fact that both marks prominently feature
the unusual and highly distinctive design of two mirror
image roosters facing each other in profile. Registrant’s
two-rooster design, in the absence of any evidence in the
record to the contrary, must be considered an arbitrary and
therefore highly distinctive mark for wines. Applicant’s
mark prominently features the same motif.
Purchasers are unlikely to assume, based simply on the
slight difference in the rooster designs (solid silhouette
versus line drawing) and the presence of the Chinese
characters in applicant’s mark, that there is no source or
other connection between identical goods sold under the
respective marks. It is more likely that purchasers will
assume that there is a source or other connection between
the goods sold under the respective marks, based on the
presence in both marks of the design of two mirror image
roosters facing each other in profile and despite the
slight differences between the marks which might be
perceived when the marks are compared side-by-side.
In terms of appearance, we find the marks to be
similar rather than dissimilar, because both marks
prominently feature the unusual design of two mirror image
Ser. No. 76530111
10
roosters facing each other in profile. In terms of sound,
we find the marks to be similar rather than dissimilar.
The two marks are basically design marks which would have
no pronunciation at all, because the vast majority of
purchasers in this country who encounter applicant’s mark
would not pronounce the Chinese characters. In terms of
connotation, we find the marks to be similar rather than
dissimilar. To the vast majority of purchasers in this
country, both marks connote what their designs depict,
i.e., two roosters. Even if, as applicant contends,
Chinese-speaking purchasers would understand the mark to
mean two “half-roosters” making up one whole rooster, they
could attribute the same meaning to registrant’s mark.
For all of the reasons discussed above, we find that
the marks create very similar commercial impressions when
viewed in their entireties. Applicant argues that the
respective marks are not only dissimilar, but that they are
so dissimilar that the first du Pont factor outweighs all
of the other factors. We cannot agree. The case cited by
applicant in support of this argument, Kellogg Co. v.
Pack’Em Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990),
aff’d, 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991),
simply is inapposite to the facts of the present case.
Rather, as noted above, because applicant’s goods are
Ser. No. 76530111
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identical to registrant’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 different. See Century 21 Real Estate Corp. v.
Century Life of America, supra. We find that applicant’s
mark and registrant’s mark certainly are similar enough to
create confusion when used on identical goods.
In summary, after considering all of the relevant du
Pont factors, we find that a likelihood of confusion
exists.
Decision: The refusal to register is affirmed.