E. & J. Gallo Winery

Trademark Trial and Appeal Board

Aug 13, 2009

No. 77458162 (T.T.A.B. Aug. 13, 2009)

Mailed: 8/13/09

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re E. & J. Gallo Winery
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Serial No. 77458162
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D. Peter Harvey and Matthew A. Stratton of Harvey Siskind
for E. & J. Gallo Winery.

Dayna J. Browne, Senior Trademark Examining Attorney, Law
Office 104 (Michael Baird, Managing Attorney).
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Before Quinn, Holtzman and Bergsman, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

E. & J. Gallo Winery filed, on April 25, 2008, an
intent-to-use application to register the mark BEAR
REPUBLIC (standard character form) for “wines.”
The senior examining attorney refused registration
under Section 2(d), 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when used in connection with applicant’s
goods, so resembles the previously registered mark shown
below

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser. No. 77458162
2

for “brewed malt-based alcoholic beverages in the nature of
beer and ale”1 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
The examining attorney maintains that the marks are
similar in that both share the same words “BEAR REPUBLIC”;
these words, appearing first in registrant’s mark and at
the top of registrant’s label, comprise the portion most
likely to be remembered by purchasers. In response to
applicant’s contention that the words “Bear Republic” are
weak, the examining attorney introduced a printout of the
results of a TESS search showing the absence of any third-
party registrations of the same or similar mark. “BEAR
REPUBLIC” in registrant’s mark is likely to be viewed as a
house mark, and the remainder of the mark as a separate
additional mark for the specific product. According to the

1 Registration No. 2923042, issued February 1, 2005. The word
“Ale” is disclaimed. The registration includes the following
statement: “The mark consists of a star next to the words "Bear
Republic" on a ribbon-like banner and a stylized rocket between
the words ‘Red’ and ‘Rocket.’”
Ser. No. 77458162
3
examining attorney, it is common in the beer industry for
brewers to use a house mark at the top of their marks, and
then have an additional product mark below. In support of
this proposition, the examining attorney submitted Internet
evidence retrieved from the websites of registrant and
third-party brewers. As to the goods, the examining
attorney contends that they are related, relying on several
third-party registrations showing that the same entity has
registered the same mark for both beer and wine. In
addition, there is Internet evidence showing two wineries
also producing beer.
Applicant contends that the words “BEAR REPUBLIC” do
not comprise the dominant portion of registrant’s mark due
to the small size of the words relative to the other
portions of the mark. Rather, applicant asserts, the
dominant portion comprises “RED ROCKET ALE,” given its size
in the mark and the representation of a rocket. According
to applicant, “[h]ad the Registrant intended ‘Bear
Republic’ to be the dominant portion of the mark, it would
have put those words in the center of the mark, in much
larger print, and included a drawing of a bear.” (Brief,
p. 3). In sum, applicant argues that the marks, when
considered in their entireties, are “dramatically”
different in appearance, given the presence in registrant’s
Ser. No. 77458162
4
mark of “a prominent drawing of a rocket in take-off, hand-
written script, three different text sizes, a drawing of a
star, a banner, and a box enclosing the primary elements of
the mark.” (Brief, p. 6). Applicant also points to
differences in sound, meaning and commercial impression.
Applicant submitted Internet evidence bearing on the
presence of a golden bear and the words “California
Republic” on the California state flag. In this
connection, applicant argues that the words “Bear Republic”
are diminished in distinctiveness because they are
suggestive of the state of California. As to the goods,
applicant’s only remark is that they are “not identical.”
(Brief, p. 7).
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, 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).
Ser. No. 77458162
5
We first turn to the second du Pont factor and compare
beer and ale with wines. It is not necessary that the
respective goods be competitive, or even that they move in
the same channels of trade to support a holding of
likelihood of confusion. The issue is not whether
consumers would confuse the goods themselves, but rather
whether they would be confused as to the source of the
goods. It is sufficient that the respective goods are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the goods are such
that they would or could be encountered by the same persons
under circumstances that could, because of the similarity
of the marks, give rise to the mistaken belief that they
originated from the same producer. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991).
Applicant’s and registrant’s goods obviously are
similar to the extent that wine, beer and ale are alcoholic
beverages. Wine and beer/ale are specifically different
products which would not be confused for each other, but
that is not the test, as noted above.
Further, the examining attorney submitted eleven
third-party use-based registrations that include in their
identification of goods both wine and beer (and/or ale).
Although such registrations are not evidence that the marks
Ser. No. 77458162
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shown therein are in use or that the public is familiar
with them, they nonetheless have probative value to the
extent that they serve to suggest that the goods listed
therein are of a kind which may emanate from a single
source under a single mark. In re Mucky Duck Mustard Co.,
6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149
(Fed. Cir. 1988). See also In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). Also of record
are excerpts of two third-party websites showing that these
two wineries also produce beer. We find that the evidence
of record weighs in favor of finding a likelihood of
confusion under the second du Pont factor.
Insofar as the trade channels and classes of
purchasers are concerned, we note that there are no trade
channel limitations in either applicant’s or registrant’s
identification of goods. Accordingly, we must presume that
the goods, as identified, are marketed in all normal trade
channels for such goods and to all normal classes of
purchasers for such goods. In re Elbaum, 211 USPQ 639
(TTAB 1981). It is common knowledge that wine and beer are
routinely sold in the same trade channels (e.g., liquor
stores, convenience stores, and the like) to the same
purchasers, including ordinary ones; applicant does not
argue to the contrary. See Schieffelin & Co. v. Molson
Ser. No. 77458162
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Companies Ltd., 9 USPQ2d 2069, 2073 (TTAB 1989) [“[a]
typical consumer of alcoholic beverages may drink more than
one type of beverage and may shop for different alcoholic
beverages in the same liquor store. Moreover, a person may
serve more than one kind of alcoholic beverage before or
during a meal or at a party.”] Further, wine and beer may
be the subject of an impulse purchase made by an ordinary
consumer without a great degree of sophistication. These
factors weigh in favor of a finding of likelihood of
confusion.
In making our findings above on the du Pont factors
relating to the goods, we have kept in mind that when
similar evidence has been made of record, numerous cases
have found that different alcoholic beverages are related
products which are sold in the same trade channels to the
same classes of purchasers, including to ordinary
consumers, and that confusion is likely to result if the
goods were to be sold under similar marks. See, e.g., In
re Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004) [beer and tequila]; and In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). Indeed, when the proper evidence has been made of
record, the Board’s precedential authority specifically
Ser. No. 77458162
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holds beer and wine are related products. See In re
Sailerbrau Franz Sailer, 23 USPQ2d 1719 (TTAB 1992).
With respect to the marks, we must compare the marks
in their entireties as to appearance, sound, connotation
and commercial impression to determine the similarity or
dissimilarity between them. Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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).
With respect to registrant’s mark, 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. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing
Ser. No. 77458162
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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.”).
Where both words and a design comprise the mark (as in
registrant’s mark), then the words are normally accorded
greater weight because the words are likely to make an
impression upon purchasers, would be remembered by them,
and would be used by them to request the goods. In re
Appetito Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987);
and Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228 USPQ
461, 462 (TTAB 1985). See also Giant Food, Inc. v.
Nation’s Food Service, Inc., 710 F.2d 1565, 218 USPQ 390
(Fed. Cir. 1983). Thus, although we have taken into
account the design features of the cited mark, we find that
the dominant portion is the literal portion of the mark.
Even assuming that the term “RED ROCKET ALE” is the
dominant portion of the registered mark, as applicant
argues, we find that the marks are similar because they
share the words “BEAR REPUBLIC.” See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 9
USPQ2d at 1692 [“To be sure, CLICQUOT is an important term
in the mark, but VEUVE nevertheless remains a ‘prominent
Ser. No. 77458162
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feature’ as the first word in the mark and the first word
to appear on the label.”]; Hewlett-Packard Company v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002) [“the dominant portion of Packard Press’s
mark [PACKARD TECHNOLOGIES] is identical to a prominent
portion of HP’S HEWLETT PACKARD marks”]; and Presto
Products, Inc. v. Nice Pak Products, Inc., 9 USPQ2d 1895,
1897 (TTAB 1988) [“it is often the first part of a mark
which is most likely to be impressed upon the mind of a
purchaser and remembered”]. Although the words “Bear
Republic” may suggest the state of California, the TESS
summary indicates the absence of any third-party
registrations of the same or similar mark for any goods (or
services), let alone for alcoholic beverages. Thus,
contrary to applicant’s contention, we do not view these
words as “weak.”
As shown by the excerpts from registrant’s (Bear
Republic Brewing Company, Inc.) website, “Bear Republic”
appears to be registrant’s house mark that is used on a
variety of its products. The examining attorney’s evidence
reveals that other brewers use their house mark or trade
name at the top of a label or mark, followed by an
additional product mark below, as is the case with
registrant’s mark. This would appear to be a common
Ser. No. 77458162
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practice in the industry, and serves to buttress the notion
that the “BEAR REPUBLIC” portion of registrant’s mark
cannot be ignored when comparing the marks.
In sum, the marks share the identical literal portion,
“BEAR REPUBLIC.” Thus, we find that the marks are similar
in appearance, sound, meaning and overall commercial
impression. This factor weighs in favor of finding a
likelihood of confusion. While registrant’s mark includes
other words and design features, this first portion of
registrant’s mark is identical to the entirety of
applicant’s mark, and thus may lead consumers to mistakenly
believe that applicant’s BEAR REPUBLIC wine is an expansion
of the BEAR REPUBLIC product line and somehow is associated
or affiliated with the source of the product sold under the
mark BEAR REPUBLIC RICARDO’S RED ROCKET ALE and design.
Lastly, to the extent that any of applicant’s points
raises a doubt about likelihood of confusion, that doubt is
required to be resolved in favor of the prior registrants.
In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.