Industria Licorera Quezalteca, S.A.

Trademark Trial and Appeal Board

Mar 12, 2008

No. 77013941 (T.T.A.B. Mar. 12, 2008)

Mailed: March 12, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Industria Licorera Quezalteca, S.A.

Serial No. 77013941
_______

Jason D. Voight of Hahn & Voight PLLC for Industria Licorera
Quezalteca, S.A.

Nakia D. Henry, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
_______

Before Grendel, Holtzman and Rogers, Administrative Trademark
Judges.

Opinion by Holtzman, Administrative Trademark Judge:

An application has been filed by Industria Licorera
Quezalteca, S.A. to register the mark shown below for goods
ultimately identified as "distilled spirits, prepared alcoholic
cocktail, rum and vodka" in Class 33.1

1 Application Serial No. 77013941, filed October 4, 2006, based on an
allegation of first use and first use in commerce on October 4, 2006.
EXTRA LIGHT is disclaimed. Applicant claims ownership of Registration
Nos. 1294811 (BOTRAN for rum); 1658465 (BOTRAN for vodka); and 2692281
(BOTRAN SOLERA 1893 and design for rum). The application includes a
description of the mark with color location and the statement "The
color(s) green and white is/are claimed as a feature of the mark."
THIS OPINION IS
NOT A PRECEDENT OF
THE TTAB
Serial No. 77013941
2

The trademark examining attorney has refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on
the ground that applicant's mark, when applied to applicant's
goods, so resembles the registered mark shown below for "whiskey
and brandy” (in Class 33) as to be likely to cause confusion.2

When the refusal was made final, applicant appealed. Briefs
have been filed.
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to

2 Registration No. 0860273; issued November 12, 1968; renewed.

Serial No. 77013941
3
the factors bearing on the likelihood of confusion issue. In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In any likelihood of confusion analysis, however, two key
considerations are the similarities or dissimilarities between
the marks and the similarities or dissimilarities between the
goods or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the goods. Applicant's goods, as
identified, include "distilled spirits" and "rum and vodka."
Registrant's goods are identified as "whiskey and brandy." The
goods are in part legally identical. We take judicial notice of
the definition of "distilled spirits" as: "also called distilled
liquor, alcoholic beverage (such as brandy, whisky, rum, or
arrack) that is obtained by distillation from wine or other
fermented fruit or plant juice or from a starchy material (such
as various grains) that has first been brewed. ...".3 (Italics
and bold in original.) Applicant's broadly worded "distilled
spirits" is deemed to encompass all distilled spirits including
registrant's whiskey and brandy. In any event, rum, vodka,

3 Encyclopædia Britannica (2008) (Encyclopædia Britannica Online
(www.eb.com). The Board may take judicial notice of reference works,
including online reference works which exist in printed format or have
regular fixed editions. See In re Red Bull GmbH, 78 USPQ2d 1375, 1378
(TTAB 2006).
Serial No. 77013941
4
whiskey and brandy are all basic alcoholic beverages. They are
inherently related goods.4
Absent any restrictions in the application or registration,
we must presume that these alcoholic beverages are sold through
all normal channels of trade for those goods and that they will
reach all the usual purchasers, including ordinary purchasers.
See Canadian Imperial Bank v. Wells Fargo, 811 F.2d 1490, 1
USPQ2d 1813, 1814-15 (Fed. Cir. 1987). In other words, we must
presume there are no limits on the trade channels and classes of
prospective purchasers for applicant's and registrant's alcoholic
beverages. See Interstate Brands Corp. v. McKee Foods Corp., 53
USPQ2d 1910 (TTAB 2000); and In re Smith & Mehaffey, 31 USPQ2d
1531 (TTAB 1994).
The Internet printouts submitted by the examining attorney
from the retail websites www.goldrushliquors.com and
www.missionliquors.com show that the involved goods can travel in
the same channels of trade and prospective purchasers for the
goods will be exposed to all the goods and their marks. To the
extent the goods of applicant and registrant, for reasons already
articulated, must be presumed to be legally identical, then the
goods will end up being marketed to the same potential customers.

4 The third-party registrations submitted by the examining attorney to
show the relatedness of the respective goods have not been considered.
The registrations are not based on use in commerce and thus they are
entitled to no probative weight. See In re Albert Trostel & Sons Co.,
29 USPQ2d 1783 (TTAB 1993).
Serial No. 77013941
5
In addition prospective purchasers of multiple types of liquor,
such as those who might be stocking a bar or who are planning to
make certain mixed drinks would be potential customers for all
the involved goods.
Furthermore, the ordinary purchaser of relatively low cost,
frequently replaced, products such as alcoholic beverages are
likely to be less careful in their purchasing decisions, and
therefore more prone to confusion. See Specialty Brands, Inc.,
748 F.2d 669, 223 USPQ 1281 (Fed. Cir. 1984); and In re Martin's
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984).
We turn next to a consideration of the similarity or
dissimilarity of the marks (shown below) in their entireties in
terms of sound, appearance, meaning and commercial impression.

Applicant argues that the marks feature numerous and
significant differences. In particular, applicant notes that
registrant's mark contains "what appear to be lions and a coat of
arms" whereas applicant's mark contains a "ragged patch design"
which appears in the color green; that the letters XL are
Serial No. 77013941
6
arranged vertically in the registration whereas they appear
horizontally in the application; and that the style of the
letters is different in that applicant's letters feature a
"distinctive ragged style," whereas in registrant's mark the
letters have "a classic or Roman style." Applicant also points
out that its mark contains word elements consisting of its house
mark BOTRAN and the term EXTRA LIGHT, that do not appear in
registrant's mark. Citing In re TSI Brands Inc., 67 USPQ2d 1657
(TTAB 2002), applicant argues that XL may be perceived as
standing for EXTRA LIGHT and that the disclaimed wording EXTRA
LIGHT therefore forms a significant part of the mark. In
addition, applicant argues that "there is no absolute rule that
no one has the right to incorporate the total mark of another as
a part of one's own mark."
In comparing the marks we must keep in mind that similarity
is not an absolute matter but instead is a matter of degree, and
when marks would appear on legally identical or closely related
goods, the degree of similarity between the marks necessary to
support a finding of likelihood of confusion declines. Century
21 Real Estate v. Century Life, 970 F.2d 874, 23 USPQ2d 1698
(Fed. Cir. 1992).
We must also consider that the test under this du Pont
factor is not whether the marks can be distinguished when
subjected to a side-by-side comparison, but rather whether the
Serial No. 77013941
7
marks are sufficiently similar in terms of their overall
commercial impressions 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). In addition, while marks must be compared in
their entireties, "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).
Applying the above principles in this case, when we compare
applicant's and registrant's marks in their entireties as used on
legally identical goods, we find that while there are clearly
differences between them, the similarities of the marks outweigh
their differences.
We begin by noting that the shared literal term, XL, is a
significant component of both applicant's and registrant's marks,
albeit even more significant in registrant's mark. We recognize
that in analyzing composite "letter" marks, it is important to
consider both the literal and visual elements of the marks. See
In re Electrolyte Laboratories, Inc., 913 F.2d 930, 16 USPQ2d
Serial No. 77013941
8
1239, 1240 (Fed. Cir. 1990) ("the nature of stylized letter marks
is that they partake of both visual and oral indicia. ... [A]
stylized letter design cannot be treated simply as a word mark").
Where the letters in a mark are so highly stylized that they are
essentially design elements incapable of being spoken, the
analysis would turn primarily on the basis of the visual
similarity of the marks. See Textron Inc. v. Maquinas Agricolas
"Jacto" S.A., 215 USPQ 162 (TTAB 1982). That is not the
situation here. In this case, the letters XL are easily
recognizable in both applicant's and registrant's marks. The
design of the letters is not so extreme or striking that it
overwhelms the underlying letters, making them virtually
unrecognizable or subordinate to the design. Compare, e.g.,
Georgia-Pacific Corp. v. Great Plains Bag Co., 204 USPQ 697 (CCPA
1980); In re Burndy Corporation, 133 USPQ 196 (CCPA 1962); and In
re Johnson Products Co., Inc., 220 USPQ 539 (TTAB 1983). In
fact, the stylization of XL is not particularly distinctive or
memorable in either mark. Registrant's mark uses a common, Roman
block style lettering, and the "ragged style" of the letters in
applicant's mark is barely noticeable.
Thus, while "there is no general rule as to whether letters
or design will dominate in composite marks" (Electrolyte
Laboratories at 1240), we find that the letters in this case form
the dominant portion of registrant's mark and this portion is
Serial No. 77013941
9
entitled to greater weight in our analysis. While the design
surrounding the letters is visually a prominent feature of
registrant's mark, it is not so clear what the design represents,
and as the only literal portion of registrant's mark, purchasers
will rely upon the term XL alone, in calling for or referring to
the registrant's whiskey and brandy. See In re Appetito
Provisions Co., 3 USPQ2d 1553, 1554 (TTAB 1987) (the word portion
of a composite word and design mark is generally accorded greater
weight because it would be used to request the goods). As for
applicant's mark, the letters XL are dominant in that they are
the largest and "dead center" in the mark, therefore serving as
the visual focal point.
We also point out that the letters, XL, at least on this
record, appear to be arbitrary with no meaning at all in relation
to registrant's goods. In addition, there is no evidence that XL
is commonly used by others in the field, and the examining
attorney states that there are no other registered marks
containing XL for similar goods.5 As a result, registrant's mark

5 Applicant, in its response dated February 23, 2007, listed several
third-party registrations which allegedly contain the term XL.
Applicant argues that these registrations "coexist on the register in
the same class of goods," without identifying the goods or the class
for which they are registered. Although this evidence is not properly
of record since printouts of the registrations were not provided, the
examining attorney did not object to the evidence on that basis, and so
we have considered the evidence for whatever probative value it may
have. That said, however, this evidence is of no probative value.
While the registrations are all "in the same class," as applicant
states, that class happens to be Class 25 for clothing, goods that are
Serial No. 77013941
10
which prominently features this term must be considered a strong
mark entitled to a broad scope of protection.6 See Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772,
396 F3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) ("VEUVE is
arbitrary term as applied to sparkling wines, and thus is
conceptually strong as trademark"); and In re Wilson, 57 USPQ2d
1863 (TTAB 2001).
The arbitrary term XL is the only literal portion of
registrant's mark, and it is a strong component of applicant's
mark. Thus, the marks when spoken are similar in sound. The
additional terms BOTRAN and EXTRA LIGHT in applicant's mark are
not sufficient to overcome this similarity. Where, as here, the
shared part of the marks is identical and arbitrary in nature,
purchasers familiar with the registrant's mark are likely to
assume that the house mark BOTRAN simply identifies what had

not similar to alcoholic beverages. Accordingly, this evidence is
irrelevant to our analysis.

6 Applicant argues that registrant's mark is not famous, claiming that
its Internet search revealed no reference to registrant or its
products. Applicant printed out one page of results for each of its
three different search strategies. Although this evidence is untimely,
having been submitted for the first time with applicant's appeal brief,
the evidence is considered properly of record because there has been no
objection by the examining attorney. However, the evidence is of no
persuasive value for any number of reasons, not the least of which is
the fact that applicant's search strategies were too broad. Had
applicant enclosed the search terms in quotes, applicant may have
retrieved more relevant, albeit possibly undesired, results. In any
event, the lack of fame of the cited mark does not weigh in applicant's
favor. This du Pont factor, as is normally the case in ex parte
proceedings, must be treated as neutral. See In re Thomas, 79 USPQ2d
1021 (TTAB 2006). However, the strength of registrant's mark weighs in
favor of finding likelihood of confusion.
Serial No. 77013941
11
previously been an anonymous source for the goods. See In re
Fiesta Palms LLC, 85 USPQ2d 1360, 1364 (TTAB 2007). Cf. Knight
Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313 (TTAB
2005). Furthermore, the descriptive wording EXTRA LIGHT in
applicant's mark, which simply provides information about the
goods, is of little, if any, source-distinguishing effect.
Applicant has detailed the various differences between the
marks in appearance; however there are also important
similarities. Both marks have a generally rounded appearance and
XL is featured in large and prominent letters in the center of
each mark. The letters are clearly the focal point of both marks
due to their size and placement relative to the other elements in
the marks, and they immediately catch the eye. The wording
BOTRAN and EXTRA LIGHT in applicant's mark is subordinate matter.
Those words appear in much smaller lettering than XL and they are
not nearly as visible as the letters. From a distance,
applicant's mark could be read simply as "XL." The design
elements in the marks are visually less significant as well,
serving more as a framework or background for the display of the
letters XL. Neither the different orientation of the letters nor
the different style of the letters are features that are likely
to be noticed or remembered by purchasers when seeing these marks
at separate times. Furthermore, the green background in
applicant's mark is not a distinguishing feature, particularly
Serial No. 77013941
12
considering that registrant's mark is not limited to any
particular color and may be displayed in any color, including
green.
Although it is not clear, as applicant claims, that the
design in registrant's mark represents lions and a coat of arms,
registrant's mark does present a more formal image than
applicant's mark, which has a more contemporary look.
Nevertheless, in view of the prominence and significance of XL in
both marks and the similar impressions that both marks convey,
they may be perceived by purchasers encountering these marks on
the identical alcoholic beverages simply as different versions of
the same mark, one more modern than the other, or that they
identify different alcoholic beverages from the same source.
The marks as a whole convey essentially the same arbitrary
meanings. There is no evidence that XL stands for EXTRA LIGHT,
as applicant contends, or that it would be perceived as such by
consumers. The additional words may add to the meaning of
applicant's mark, providing information about a characteristic of
the goods (EXTRA LIGHT) and the source of the goods (BOTRAN), but
they do not create a new or different meaning that would
distinguish the marks.
When the marks are viewed in their entireties, and
considering that the marks will be used on identical products, we
find that the marks are similar enough in sound, appearance,
Serial No. 77013941
13
meaning and commercial impression as to be likely to cause
confusion.
The cases relied on by applicant, including TSI Brands and
Electrolyte Laboratories, are not persuasive of a different
result. While the cited cases provide guidelines and principles
for analyzing composite "letter" marks, which we have applied
here, those cases involved entirely different marks, and they do
not require us to conclude that the composite marks in this case
are not similar.
For example, in TSI Brands involving the marks
(applicant's mark) and (registrant's

mark), both for clothing, the Board found that one of the marks
(registrant's) was so "highly stylized" and integrated into the
design that it was essentially a "design" mark, whereas in the
present case, the letters in both marks are primarily literal
elements. In TSI, the marks conveyed different meanings in that
the letters AK in applicant's mark stood for the wording
"American Khakis," unlike the present case where the letters must
be presumed to convey the same meanings in both marks. In TSI,
the marks were visually dissimilar because letters in applicant's
mark were subordinate matter serving as background for the words
AMERICAN KHAKIS, being superimposed over the letters, and also in
view of the overall "linearity" of applicant's mark in contrast

Serial No. 77013941
14
to the circular design of registrant's mark. This is unlike the
present case where the overall shapes of the marks are similar,
and all the other elements of both marks are subordinate to the
letters. The Electrolyte case is distinguishable on its facts,
as well, particularly in view of our finding that the stylization
of the letters is not a significant feature of either mark in
this case.
As a final point, the asserted absence of actual confusion
does not, as applicant seems to claim, weigh in favor of
applicant. We have no information regarding the nature or extent
of applicant's and registrant's use or whether a meaningful
opportunity for actual confusion ever existed. See Gillette
Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB 1992). Thus, we
consider this factor to be neutral. See Blue Man Productions
Inc. v. Tarmann, 75 USPQ2d 1811 (TTAB 2005).
In view of the foregoing, and because similar marks are used
on identical goods, we find that confusion is likely.
To the extent that there is any doubt on the issue of
likelihood of confusion, it is settled that such doubt must be
resolved in favor of the prior registrant. In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993).
Decision: The refusal to register under Section 2(d) of the
Trademark Act is affirmed.