Franciscan Vineyards, Inc.v.John Max Smith

Trademark Trial and Appeal Board

Jan 30, 2009

No. 91166031 (T.T.A.B. Jan. 30, 2009)

Mailed:
30 January 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Franciscan Vineyards, Inc.
v.
John Max Smith
_____

Opposition No. 91166031
to application Serial No. 76429673

_____

John M. Rannells of Baker and Rannells PA for Franciscan
Vineyards, Inc.

John Max Smith, pro se.
______

Before Quinn, Drost, and Cataldo, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

Applicant, John Max Smith, filed an application on July
9, 2002, to register the mark IKON in typed or standard
character form on the Principal Register for “vodka” in
Class 33. The application, (No. 76429673), is currently
based on applicant’s allegation of a bona fide intention to
use the mark in commerce.
After the mark was published for opposition, on July
26, 2005, Franciscan Vineyards, Inc. (opposer) filed a
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91166031
2
notice of opposition to the registration of applicant’s mark
alleging a likelihood of confusion with its mark ICON.
Opposer’s amended notice of opposition alleges that it is
the owner of a registration on the Principal Register under
the provision of Section 2(f) (No. 3172763) for the mark
ICON in typed or standard character form for “wine” in Class
33.1 Opposer alleges that “Opposer’s mark and Applicant’s
IKON mark are confusingly similar when applied to the goods
of the parties.” Amended Notice of Opposition at 2.
Applicant denied the salient allegations of the notice of
opposition. See Order dated March 29, 2007 at 2.
The Record
The record consists of the pleadings and the file of
the involved application. Neither party took any testimony
depositions. Both parties did submit numerous notices of
reliance (at least 15, with multiple separate submissions
for one notice for opposer and at least 37 for applicant).
Included among opposer’s notices of reliance were status and
title copies of its registration. See Opposer’s fourteenth
notice of reliance. We add that in an Order dated December
11, 2008 (p. 3), the board refused to consider a declaration
applicant submitted after its testimony and briefing period
and in an Order dated March 28, 2008 (p. 5), the board

1 The registration issued November 21, 2006 and it is based on an
application filed November 1, 2000.
Opposition No. 91166031
3
struck applicant’s notices of reliance Nos. 2-4, 6-8, 11,
12, and 16-37.2
Opposer has moved to strike applicant’s fifth notice of
reliance on the ground that it “is composed of a mere
summary search list from the TTB [Alcohol and Tobacco Tax
and Trade Bureau (TTB)] COLA3 database, and not the actual,
underlying label approval certificates.” Motion to Strike
at 1. Opposer argues that the exhibit is a “list [that] is
the equivalent of presenting a summary search list from a
TESS search without the accompanying underlying documents.”
Id. Applicant argues that the “list is an approved
government document obtained from an approved government
department.” Opposition to Motion to Strike at 1. We agree
that the search results have not been properly made of
record. 37 CFR § 2.122(e); Hovnanian Enterprises, Inc. v.
Covered Bridge Estates, Inc., 195 USPQ 658, 664 (TTAB 1977)
(“The notice of reliance filed by respondent also identified
two ‘official records’, one being a deed of realty and the
other a confirmatory assignment. Apart from considerations
of their admissibility under the rules of evidence, these
documents were not authenticated as required by Trademark

2 Opposer has objected to statements that applicant has made in
the body of Applicant’s 1st, 9th, 10th, 13th, 14th, and 15th notices
of reliance on such grounds as no foundation, hearsay, and
attempting to present testimony without proper notice. Opposer’s
Motion to Strike dated July 15, 2008 at 1-3. The statements in
the body of the notice of reliance are not evidence and we have
Opposition No. 91166031
4
Rule 2.122(c) [now 2.122(e)] and therefore have not been
considered as part of respondent’s record”). As best we
understand these documents, they are perhaps a list of
Official documents but not the documents themselves.
Indeed, this list is barely comprehensible. An example
follows:
TTB F 5100.31: Application For and
Certification/Exemption of Label/Bottle Approval
…

Permit No.
Serial Number
Complete Date
Fanciful Name
Brand Name
Origin
Class/Type
01348003000067
GA-I-620
01-0017
12/31/2001
SAKIRIKON
OENOTECHNIKI LTD
57
81
02109003000077
OR-I-867
02-004
04/23/2002

We add that even if we considered the evidence, because
of its lack of detail, it would not change the result in
this case. The fact that the Alcohol and Tobacco Tax and
Trade Bureau may have approved a label for an alcoholic

not considered these statements as evidence on behalf of
applicant.
3 Apparently, the “Certificate of Label Approval” Registry.
Opposition No. 91166031
5
beverage that has the letters “ikon” in its name hardly
establishes that opposer’s ICON mark is a weak mark.
Priority
Priority and standing are not an issue here to the
extent that opposer relies on its ownership of a federal
registration for the mark ICON for wine. See King Candy Co.
v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110
(CCPA 1974).
Likelihood of Confusion
The key issue in this case is whether there is a
likelihood of confusion. Under these circumstances, we
analyze the facts of the case under the factors set out by
the Court of Customs and Patent Appeals in In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563,
567 (CCPA 1973). See also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003) and
Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1896
(Fed. Cir. 2000).
Opposer, as plaintiff in the opposition proceeding,
bears the burden of proving, by a preponderance of the
evidence, its asserted ground of likelihood of confusion.
See Cerveceria Centroamericana, S.A. v. Cerveceria India
Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1309 (Fed. Cir. 1989);
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1848 (Fed. Cir. 2000).
Opposition No. 91166031
6
We begin by examining opposer’s and applicant’s marks.
This “DuPont factor requires examination of ‘the similarity
or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.’”
Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) (quoting du Pont, 177 USPQ at 567). Here, the
marks are ICON and IKON shown without any stylization so
that the only difference between the marks is the “C” and
“K” as the second letter in each mark. Opposer argues that
“Ikon” is an alternative spelling of “Icon.” See Brief at 7
and The Random House Dictionary of the English Language
(unabridged) (2d ed. 1987):
Icon (i kon) 1. a picture, image, or other
representation. 2. Eastern Ch. a representation of
some sacred personage, as Christ, or a saint or angel,
painted usually on a wood surface and venerated itself
as sacred. 3. a sign or representation that stands for
its object by virtue of a resemblance or analogy to it.
4. Computers. a picture or symbol that appears on a
monitor and is used to represent a command, as a file
drawer to represent filing. 5. Semantics. a sign or
representation that stands for its object by virtue of
a resemblance or analogy to it. Also, eikon, ikon (for
defs. 1, 2).

Ikon (i kon) – icon (defs. 1 and 2).4
It is clear that that marks could have the identical
meaning and their pronunciations are also identical. See

4 We take judicial notice of this definition as well as the
dictionary listings in opposer’s brief. University of Notre Dame
du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition No. 91166031
7
also Opposer’s Twelfth Notice of Reliance (“Applicant John
Max Smith hereby swears that applicant’s Mark and Opposer’s
Mark are similar in sound”). Their appearances are very
similar with the only difference being the letters “C’ and
“K.” We add that: “Human memories even of discriminating
purchasers … are not infallible." In re Research and
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir.
1986), quoting, Carlisle Chemical Works, Inc. v. Hardman &
Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970).
See also Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller,
477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973) (“Side by side
comparison is not the test”). Here, inasmuch as the marks
can have the same meaning and pronunciation, it is unlikely
that purchasers would take much notice of the fact that
applicant’s mark is the alternative spelling of the word
“Icon.” We add that the commercial impressions of the marks
are also likely to be very similar.
Applicant argues (Brief at unnumbered p. 3):
That either as Icon or Ikon they both pertain to
eastern orthodox religious paintings, heritage, and
representations of tradition that is and was widely
carried out in Russia, the bulwark of the eastern
Orthodox church and iconography applicant would agree
hence the choice of the noun to represent a Russian
vodka to indicate i[t]s provenance and heritage. Icon
or Ikon does not represent the same definition for
California boutique wine. If Opposer accepts the
definition presented by them to the Board. They must
agree that the definition of Icon in wines is a
generalize[d] modifier to indicate a rare special
boutique wine or blend not for mass consumption but in
short the wine makers select creation, a luxury brand.
Opposition No. 91166031
8

As we will discuss subsequently, opposer’s wines are
not limited to California boutique wine. It is not clear
why applicant’s and opposer’s marks ICON/IKON for many
purchasers would not have the same meaning, even if
applicant’s wines did not originate in Russia. Therefore,
when we compare the marks ICON and IKON, we conclude that
the marks are very similar, if not almost identical, in
sound, appearance, meaning, and commercial impression.
Next, we must consider whether the goods of the parties
are related. “In order to find that there is a likelihood
of confusion, it is not necessary that the goods or services
on or in connection with which the marks are used be
identical or even competitive. It is enough if there is a
relationship between them such that persons encountering
them under their respective marks are likely to assume that
they originate at the same source or that there is some
association between their sources.” McDonald's Corp. v.
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). See also In re
Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001).
In this case, opposer’s goods are wine and applicant
seeks registration for its mark on vodka. There are no
limitations in either applicant’s or opposer’s
identification of goods so we must consider the goods to be
unrestricted as to the price or quality of the wine and
vodka. These goods would include relatively inexpensive
Opposition No. 91166031
9
wine and vodka that would be purchased on impulse by
purchasers who were not very discriminating or sophisticated
purchasers. 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 re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997) (punctuation in
original), quoting, Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1816 (Fed.
Cir. 1987) (“‘Likelihood of confusion must be determined
based on an analysis of the mark applied to the … [goods or]
services recited in applicant’s application vis-à-vis the …
[goods or] services recited in [a] … registration, rather
than what the evidence shows the … services to be’”).
Opposer argues (brief at 9) that:
As further evidence of the relatedness of the goods in
issue in this case, Opposer’s Notices of Reliance nos.
1-11 are composed of representative samples (i.e., 362
registrations) of “live” third party trademark
registrations that recite both “wine(s)” and “vodka” in
the identification of goods.

“Third-party registrations which cover a number of
differing goods and/or services, and which are based on use
in commerce, although not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, may nevertheless have some probative
value to the extent that they may serve to suggest that such
Opposition No. 91166031
10
goods or services are of a type which may emanate from a
single source.” In re Mucky Duck Mustard Co., 6 USPQ2d
1467, 1470 n.6 (TTAB 1988) (emphasis added). See also In re
Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993);
In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214,
1217-18 (TTAB 2001) (“The registrations show that entities
have registered their marks for both television and radio
broadcasting services. Although these registrations are not
evidence that the marks shown therein are in use or that the
public is familiar with them, they nevertheless have
probative value to the extent that they serve to suggest
that the services listed therein, including television and
radio broadcasting, are of a kind which may emanate from a
single source”).
However, in order to be relevant in suggesting that the
goods are related, the registrations must be based on use.
In the instant case, however, 11 of the 15 third-party
applications and registrations which cover both
restaurant services and mustard were filed under the
provisions of Section 44 of the Act, that is, they are
based on foreign registration rather than on use in
commerce, and most of their owners appear to have
simply copied large parts of the title (including, in
some cases, even the punctuation used therein) of
International Class 30. Such registrations and
applications are not even necessarily evidence of a
serious intent to use the marks shown therein in the
United States on all of the listed goods and services,
and they have very little, if any, persuasive value on
the point for which they were offered.

Mucky Duck, 6 USPQ2d at 1470 n.6. See also In re W.W. Henry
Co., 82 USPQ2d 1213 (TTAB 2007) (“Third-party registrations
Opposition No. 91166031
11
which individually cover a number of different items and
which are based on use in commerce serve to suggest that the
listed goods are of a type which may emanate from a single
source… However, in this case, only two of the third-party
registrations are based on use”) (citation omitted) and
Albert Trostel, 29 USPQ2d at 1786 (“[T]hird-party
registrations which have issued under Section 44(e) of the
Act, 15 U.S.C. 1126(e), without any use in commerce basis,
have very little persuasive value on this point”). In this
case, the majority of opposer’s registrations are not based
on use so they have very little, if any, value.
However, opposer’s list (brief at 9-13) does identify
approximately 100 submitted registrations and points out
that these registrations “have a Section 1A basis.” Brief
at 9. Even among this list, we have given little weight to
several registrations because they are house marks or the
goods are not wine and vodka. Mucky Duck, 6 USPQ2d at 1470
n.6 (“In arriving at this conclusion, we have given little
weight to the majority of the third-party applications and
registrations which cover both restaurant services and
mustard… Moreover, two of the four registrations which were
based on use were issued to Saks & Company and to Knott's
Berry Farm, owners of a large department store and an
amusement or theme center, respectively, where a wide
variety of goods and services are sold”). See, e.g.,
Opposition No. 91166031
12
Registration Nos. 2271301 (vodka in Class 33 and retail
stores featuring wines and beers in Class 42) and 3057119
(house mark).
However, it is clear that opposer has submitted
numerous registrations that support its argument that
consumers would believe that the sources of vodka and wine
sold under similar marks would be associated or related.
Some of the relevant registrations include: No. 3165921 for
“vodka, rum, gin, brandy, and liqueur”; No. 3115035 for
“alcoholic malt coolers, alcoholic punch, prepared alcoholic
cocktails, vodka and wine”; No. 3093025 for “wine, brandy,
vodka”; No. 2505385 for “wine, rum, vodka, prepared
alcoholic cocktails, schnapps, gin, whiskey, tequila, mescal
and pulque”; No. 2402053 for “distilled alcoholic beverages,
namely, whiskey, gin, rum, vodka and brandy; wine and wine
products, namely, flavored wines and wine based beverages”;
No. 2528250 for “vodka, gin, scotch, bourbon, wine, wine
coolers, pre-mixed cocktails containing alcohol”; No.
2066536 for “cognac, distilled spirits, wines, and vodka”;
No. 2201358 for “wine, prepared alcoholic cocktails,
prepared wine cocktails, liqueurs, scotch, rum, tequila, gin
and vodka”; No. 1421383 for “wines, vodka and gin”; 2887345
(for “tequila, agave distilled, brandy, vodka, gin, rum,
whiskey, liquors, cognac, wine, sparkling wine, and
Opposition No. 91166031
13
champagne”; and No. 2775036 for “vodka, gin, scotch,
whiskey, bourbon, rye whiskey, rum, wine."
These registrations suggest that wine and vodka
originate from the same source. In addition, case law
suggests that wine and vodka are not unrelated goods.
[T]he products of both parties are alcoholic beverages
which flow through the same channels of trade to the
same class of purchasers, and we believe that a
prospective purchaser of an alcoholic beverage upon
entering and browsing through the various alcoholic
products located or displayed on the various shelves or
counters in retail liquor establishments would, upon
encountering a whiskey, rum, brandy or vodka identified
by the term "MONARCH," and then continuing on his jaunt
to another counter or section of the same store and
seeing a wine or champagne sold under the identical
mark "MONARCH," be likely to believe that both products
originated with the same producer.

Monarch Wine Co. v. Hood River Distillers, Inc., 196 USPQ
855, 857 (TTAB 1977). See also Myers v. Hood River
Distillers, Inc., 331 F.2d 606, 141 USPQ 499 (CCPA 1964)
(BARON ROTHSCHILD VODKA for vodka confusingly similar to
MONOPOLES ALFRED ROTHSCHILD for wines, cognac, and brandy).
Accord In re Chatam International Inc., 380 F.3d 1340, 71
USPQ2d 1944, 1947-48 (Fed. Cir. 2004)(Tequila and beer and
ale related). We find that applicant’s vodka and opposer’s
wine are related goods and this factor supports opposer’s
argument that confusion is likely.
We add that the case law recognizes that purchasers of
wine are not per se sophisticated purchasers who exercise
great care in making their purchasing decisions. Palm Bay
Opposition No. 91166031
14
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1695 (Fed. Cir. 2005)
(“[T]he Board found that champagne and sparkling wines are
not necessarily expensive goods which are always purchased
by sophisticated purchasers who exercise a great deal of
care in making their purchases. This court agreed with the
Board’s finding. Although some champagne can be expensive,
many brands sell for around $25 a bottle, and sparkling
wines for less than $10 a bottle. Moreover, general
consumers, not just connoisseurs, occasionally purchase
champagne or sparkling wines on celebratory occasions, with
little care or prior knowledge”); In re Opus One Inc., 60
USPQ2d 1812, 1817 (TTAB 2001) (“[R]egistrant's ‘wine’ must
be presumed to encompass inexpensive or moderately-priced
wine. In view thereof, applicant's arguments regarding the
high cost of its actual restaurant services and of
registrant's actual wine, and the resulting carefulness and
sophistication of the purchasers, miss the mark”). We also
note that 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.”
Schieffelin & Co. v. Molson Companies Ltd., 9 USPQ2d 2069,
2073 (TTAB 1989).
Opposition No. 91166031
15
Applicant also argues (Brief at unnumbered p. 5) that:
What Opposer fails to mention or admit to is that in no
articles about the Applicant’s mark and with none of
the Applicant[’]s 20 State US distributors, nor its
numerous and varied customer base has one individual,
customer, distributor, editor, spirits reviewer or
professional made mention to the Applicant of a
similarity between their mark and Opposer’s Mark or in
any way[,] shape or form Applicant[’]s brand being
associated with Franciscan” brand.

We note that even when we consider the fact that applicant
has submitted some admissible evidence regarding its use of
the mark5 and the lack of actual confusion, the test here is
likelihood of confusion not actual confusion. The absence
of actual confusion does not mean there is no likelihood of
confusion. J & J Snack Foods Corp. v. McDonald’s Corp., 932
F.2d 1460, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991). See also
Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390, 396 (Fed. Cir. 1983) (“Moreover, it is
unnecessary to show actual confusion in establishing
likelihood of confusion”).
Ultimately, we conclude that applicant’s and opposer’s
marks are very similar in sound, appearance, meaning, and
commercial impression. The goods (wine and vodka) are
related. When we consider all the evidence of record in
view of the du Pont factors, we conclude the confusion is
likely.

5 See, e.g., Applicant’s Notices of Reliance Nos. 9, 10, 13, and
14, which show applicant’s goods mentioned in magazine and
newspaper articles.
Opposition No. 91166031
16
Decision: The opposition is sustained.