Frank-Lin Distillers Products, Ltd.

Trademark Trial and Appeal Board

Aug 24, 2005

No. 76419825 (T.T.A.B. Aug. 24, 2005)

Mailed:
24 August 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Frank-Lin Distillers Products, Ltd.
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Serial No. 76419825
_______

Robert A. Nakamae of Robinson & Wood, Inc. for Frank-Lin
Distillers Products, Ltd.

Georgia Ann Carty Ellis, Trademark Examining Attorney, Law
Office 108 (Andrew Lawrence, Managing Attorney).
_______

Before Drost, Zervas, and Kuhlke, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On June 12, 2002, Frank-Lin Distillers Products, Ltd.
(applicant) applied to register the mark BEYOND VODKA in
standard character form on the Principal Register for
“vodka” in Class 33. The application (Serial No. 76419825)
contains a date of first use of April 15, 2002, a date of
first use in commerce of May 7, 2002, and a disclaimer of
the term “Vodka.”
The examining attorney ultimately refused to register
applicant’s mark under Section 2(d) of the Trademark Act,
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76419825
2
15 U.S.C. § 1052(d), because of a registration for the mark
BEYOND MERLOT in standard character form for “wine” in
Class 33. The registration (No. 2,791,995) issued December
9, 2003, and the term “Merlot” is disclaimed.
After the examining attorney made the refusal final,
this appeal followed.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000).
The examining attorney argues (Brief at 3) that:
[T]he descriptive wording in each of the respective
marks has been disclaimed and the dominant portion of
the marks is the term “BEYOND.” There is no
distinction between the dominant wording in the
applicant’s mark and the dominant wording in the
registered mark.

The examining attorney also submitted numerous
trademark registrations to support her argument that the
goods (vodka and wine) are related.
Applicant, on the other hand, points to numerous
differences between vodka and wine and argues that the
Ser No. 76419825
3
examining attorney erred by relying “upon a comparison of
BEYOND only.” Brief at 8.
We will begin our analysis by considering the
“similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation, and
commercial impression.” Majestic Distilling, 65 USPQ2d at
1203. When we compare the marks, “there is nothing
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.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
The marks in this case consist of two words each,
BEYOND VODKA and BEYOND MERLOT. Neither claims a design or
stylization so the marks contain the identical common term
BEYOND followed by a different, disclaimed term VODKA and
MERLOT. The term BEYOND does not appear to have any
meaning in relation to alcoholic beverages.
Regarding the additional wording “Vodka” in
applicant’s mark and “Merlot” in the cited registration,
both terms have been disclaimed. Not only are the terms
disclaimed, the terms are also generic for their respective
Ser No. 76419825
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alcoholic beverages. Certainly, “Vodka” is the generic
name for “Vodka,” and “Merlot” is a generic term for a type
of wine.1 We do not disregard these terms, but disclaimed
matter is often “less significant in creating the mark’s
commercial impression.” In re Code Consultants, Inc., 60
USPQ2d 1699, 1702 (TTAB 2001). Furthermore, descriptive
terms are often given less weight in likelihood of
confusion analyses. The Federal Circuit held that the
addition of the word “Swing” to registrant’s mark “Laser”
did not result in the marks being dissimilar. “[B]ecause
both marks begin with ‘laser,’ they have consequent
similarities in appearance and pronunciation. Second, the
term ‘swing’ is both common and descriptive… Regarding
descriptive terms this court has noted that the descriptive
component of a mark may be given little weight in reaching
a conclusion on likelihood of confusion.” Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1845-45
(Fed. Cir. 2000) (citations and quotation marks omitted).
See also In re Dixie Restaurants, 105 F.3d 1405, 41 USPQ2d
1531, 1534 (Fed. Cir. 1997) (Court held that the addition

1 Merlot is defined as “a dark-blue grape used in winemaking,
esp. in the Bordeaux region of France and in areas of Italy,
Switzerland, and California.” The Random House Dictionary of the
English Language (unabridged) (2d ed. 1987). We take judicial
notice of this definition. 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).
Ser No. 76419825
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of “The,” “Cafe” and a diamond-shaped design to
registrant’s DELTA mark still resulted in a likelihood of
confusion); Wella Corp. v. California Concept Corp., 558
F.2d 1019, 194 USPQ 419, 422 (CCPA 1977) (CALIFORNIA
CONCEPT and surfer design likely to be confused with
CONCEPT for hair care products). In this case, the terms
“Vodka” and “Merlot” are generic for vodka and Merlot wine
respectively and they have much less commercial
significance. In re Chatam International Inc., 380 F.3d
1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“Because ALE
has nominal commercial significance, the Board properly
accorded the term less weight in assessing the similarity
of the marks under Du Pont. As a generic term, ALE simply
delineates a class of goods”).
We conclude that the term “Beyond” would clearly be
the dominant term in the marks BEYOND VODKA and BEYOND
MERLOT. In addition, the marks are similar in sound and
appearance to the extent that they begin with the identical
dominant term “Beyond.” Obviously, the terms “Vodka” and
“Merlot” would be different, but the addition of a generic
name for the respective products would not serve to
significantly distinguish the marks if the goods themselves
are related. Furthermore, the meaning and commercial
impression of the marks would likewise be similar. The
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term “Beyond” would seem to suggest that the goods are
something more than ordinary “Vodka” or “Merlot.”
When we compare the marks BEYOND VODKA and BEYOND
MERLOT in their entireties, we conclude that the marks are
similar. In re Denisi, 225 USPQ 624, 624 (TTAB 1985) (If
“the dominant portion of both marks is the same, then
confusion may be likely notwithstanding peripheral
differences”). See also Chatam International, 71 USPQ2d at
1946 (“With respect to JOSE, the Board correctly observed
that the term simply reinforces the impression that GASPAR
is an individual’s name. Thus, in accord with considerable
case law, the JOSE term does not alter the commercial
impression of the mark.” The marks JOSE GASPAR GOLD and
GASPAR’S ALE were determined to be similar).
We add one other factor that supports a determination
that the marks are similar. Applicant’s specimen shows the
mark displayed in such a way that the BEYOND portion of its
mark is emphasized. In re Nationwide Industries, 6 USPQ2d
1882, 1884 (TTAB 1984) (“Thus, it is settled that evidence
of the context in which a mark is used on labels,
packaging, advertising, etc., is probative of the
significance which the mark is likely to project to
purchasers”). The specimen shows BEYOND in larger
horizontal script across the middle portion of the bottle
Ser No. 76419825
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with the word VODKA in smaller, vertical block type at the
bottom of the bottle (see below).

Prospective purchasers encountering the specimen would
see that the specimen emphasizes the term BEYOND.
Therefore, we conclude that the marks, dominated by the
identical term BEYOND, are similar in sound, appearance,
meaning, and commercial impression.
Another important consideration is whether the goods
of applicant and registrant are related. It is not
critical that the goods be identical or interchangeable.
“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.
Ser No. 76419825
8
McKinley, 13 USPQ2d 1895, 1898 (TTAB 1989). See also In re
Opus One Inc., 60 USPQ2d 1812, 1814-15 (TTAB 2001).
When we consider the goods, we must consider them as
they are identified in the identification of goods in the
application and registration. 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”); Dixie Restaurants, 41 USPQ2d at
1534 (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 … services recited in applicant’s
application vis-à-vis the … services recited in [a] …
registration, rather than what the evidence shows the …
services to be’”).
Importantly in this case, the goods are identified
simply as “vodka” and “wine.” Therefore, we consider the
goods to be unrestricted as to the price or quality of the
wine and vodka and the goods would include relatively
inexpensive wine and vodka that would be purchased on
impulse by purchasers who were not very discriminating or
Ser No. 76419825
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sophisticated purchasers. Thus, the question is simply
whether vodka and wine are related products.
To support her conclusion that the goods are related,
the examining attorney has submitted numerous trademark
registrations to show that the same entities have
registered a common mark for vodka and wine. We have held
that although third-party registrations “are not evidence
that the marks shown therein are in use on a commercial
scale or that the public is familiar with them, [they] may
have some probative value to the extent that they may serve
to suggest that such goods or services are the type which
may emanate from a single source.” In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). 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”).
Ser No. 76419825
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We highlight several of these registrations including:
No, 2,517,580 for “Rice wine saki, red wine, white wine,
whiskey, vodka, brandy, and gin”; No. 2,865,432 for
“Liqueurs, wine and vodka” and consulting and other
services in the field of alcoholic beverages; No. 2,795,343
for “Distilled spirits, namely, cordials, liqueurs,
tequila, rum, vodka, scotch, bourbon, whiskey, brandy, rum,
gin; and wine”; No. 2,775,036 for “vodka, gin, scotch,
whiskey, bourbon, rye, whiskey, rum, wine”; No. 2,505,385
for “wine, rum, vodka, prepared alcoholic cocktails,
schnapps, gin, whiskey, tequila, mescal and pulque”; No.
2,402,053 for “Distilled alcoholic beverages, namely,
whiskey, gin, rum, vodka and brandy; wine and wine
products, namely, flavored wines and wine based beverages”;
No. 2,528,250 for “Vodka, gin, scotch, bourbon, wine, wine
coolers, pre-mixed cocktails containing alcohol”; and No.
2,162,763 for “wine, sparkling wine, brandy and vodka.”2
These registrations suggest that wine and vodka
originate from the same source. In addition, our case law
suggests that wine and vodka are not unrelated goods.

2 We have not considered several registrations as probative
evidence because they do not indicate that the mark has been used
(Nos. 2,690,975 and 2,695,683), they are apparently multiple
registrations to the same entity (No. 2,827,201 (two copies)), or
they appear to be for goods that are not simply vodka and wine
(Nos. 2,747,373; 2,555,017; 2,219,830 (“wine” deleted); and
1,553,182).
Ser No. 76419825
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[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 Chatam International, 71 USPQ2d at 1947-48 (Tequila
and beer and ale related).
In addition, as in Majestic Distilling, applicant
“has not demonstrated that consumers distinguish alcoholic
beverages by manufacturer rather than by brand.” 65 USPQ2d
at 1204. We find that applicant’s vodka and registrant’s
wine are related to the extent that when very similar marks
are used in connection with these goods, potential
customers are likely to believe that there is at least some
association between the source of the goods.
Applicant also argues (Brief at 21) that “the wine
buying general public — insofar as their selection and
Ser No. 76419825
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purchase of wine is concerned – is a highly discriminating
group.” Applicant has not submitted evidence to establish
this point and we add that the goods are broadly
identified as wine and vodka. Our case law recognizes that
purchasers of wine are not per se sophisticated purchasers
who exercise great care in making their purchasing
decisions. Palm Bay 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
Ser No. 76419825
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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).
While applicant argues that there is no evidence of
fame of registrant’s mark (Brief at 22), the absence of
this evidence is of no consequence. This type of evidence
would not normally be of record in an ex parte case and the
lack of such evidence does not indicate that there is no
likelihood of confusion. See Majestic Distilling, 65
USPQ2d at 1205 (citation omitted) (“Although we have
previously held that the fame of a registered mark is
relevant to likelihood of confusion, we decline to
establish the converse rule that likelihood of confusion is
precluded by a registered mark’s not being famous”).
Furthermore, applicant’s allegation regarding the lack of
use of registrant’s mark is also of no consequence.
Here, the DELTA mark is registered, in part, for
restaurant services. The certificate of registration
is prima facie evidence of the validity of the
registration and the registrant's exclusive right to
use the mark in connection with the services
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specified. 15 U.S.C. Section 1057(b)(1994). Dixie's
argument that DELTA is not actually used in connection
with restaurant services amounts to a thinly-veiled
collateral attack on the validity of the
registration. It is true that a prima facie
presumption of validity may be rebutted. See Dan
Robbins & Assocs., Inc. v. Questor Corp., 599 F.2d
1009, 1014, 202 USPQ 100, 105 (CCPA 1979). However,
the present ex parte proceeding is not the proper
forum for such a challenge.

Dixie Restaurants, 41 USPQ2d at 1534.
Applicant also argues (Brief at 22) that “[b]ased upon
Frank-Lin’s review and analysis of USPTO records, there are
no other similar marks utilized in connection with similar
goods. Therefore, this factor also weighs in favor of
Frank-Lin’s registration of BEYOND VODKA.” Applicant asks
that we take “judicial notice of all USPTO filings and
records.” Brief at 22 n.3. Of course, we do not take
judicial notice of third-party registrations and
applications. In re Carolina Apparel, 48 USPQ2d 1542, 1542
n.2 (TTAB 1998). Furthermore, the absence of other third-
party registrations would ordinarily be a fact that would
indicate that there is a likelihood of confusion and not,
as applicant suggests, a fact that favors its position. We
add that there is no evidence that registrant’s mark is a
weak mark that is only entitled to a narrow scope of
protection.
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Finally, applicant alleges that there has been
concurrent use of the marks and that there is no evidence
of actual confusion. Again, even if there was evidence of
this fact, it would not demonstrate that there is no
likelihood of confusion. Majestic Distilling, 65 USPQ2d at
1205 (“The lack of evidence of actual confusion carries
little weight”).
Our analysis of all the factors leads us to conclude
that when applicant’s and registrant’s marks are used on
the identified goods, there would be a likelihood of
confusion. If we had any doubts concerning this issue,
“this is a proceeding in which registrant has no
opportunity to be heard on this question and it is the
practice to resolve doubt under Section 2(d) with the
registrant.” In re Mayco Mfg., 192 USPQ 573, 576 (TTAB
1976).
Decision: The refusal to register applicant’s mark
under Section 2(d) is affirmed.