Les Collines, LLC

Trademark Trial and Appeal Board

Aug 19, 2011

No. 77871104 (T.T.A.B. Aug. 19, 2011)

Mailed: 8/19/11

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Les Collines, LLC
________

Serial No. 77871104
_______

Mark J. Nielsen, Esq. for Les Collines, LLC.

Steven Fine, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______

Before Quinn, Mermelstein and Wolfson, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Les Collines, LLC filed an application to register the
mark LES COLLINES (in standard characters) for “vineyard
and winery services, namely, the cultivation of grapes for
others; [and] viticulture services, namely, grape growing
and cultivation of grapes for others” (in Class 44).1 The

1 Application Serial No. 77871104, filed November 12, 2009,
alleging first use anywhere and first use in commerce on
September 15, 2002. The application includes a claim of
ownership of Registration No. 2893710, issued October 12, 2004,
of the mark LES COLLINES (in standard characters) for “fresh
grapes.” This registration also includes the same translation
statement as the one found in the present application.
THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Ser No. 77871104
2
application includes the following statement: “The English
translation of LES COLLINES in the mark is THE HILLS.”
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d), on the ground that applicant’s mark, when used in
connection with applicant’s services, so resembles the
previously registered mark HILLS VINEYARD (in standard
characters) (“VINEYARD” disclaimed) for “vineyard and
winery services, namely, the cultivation of grapes for
others”2 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 while the marks
LES COLLINES and HILLS VINEYARD do not look or sound alike,
the words “les collines” and “hills” have the same meaning
to individuals who are proficient in both English and
French. Because the English term “hills” or “the hills” is
a literal and exact translation of the French term “les
collines,” the examining attorney insists that the doctrine
of foreign equivalents is applicable to this case.
According to the examining attorney, a French speaker would
not need to “stop and translate” such simple wording as

2 Registration No. 3615995, issued May 5, 2009.
Ser No. 77871104
3
that comprising applicant’s mark; rather, the translation
would almost be second nature. Further, the examining
attorney states that the term “hill” or “hills” is not so
weak as to preclude a likelihood of confusion. Although
the examining attorney states that applicant’s evidence
“may show that HILLS is common in marks that are otherwise
distinguishable,” he goes on to state that “it does not
follow that HILLS by itself or with the generic wording
VINEYARD should be afforded a lower level of protection
against a subsequent mark that is legally identical to it.”
(Brief, unnumbered p. 5). The examining attorney also
points out that the services are, in part, identical, and
that even sophisticated purchasers would not be immune from
confusion as to source.
Applicant is the owner and operator of the LES
COLLINES vineyard in the Walla Walla Valley in the state of
Washington. As shown by the document originating from the
U.S. Department of the Treasury, Alcohol and Tobacco Tax
and Trade Bureau, the Walla Walla Valley is an authorized
wine appellation of origin, being a designated American
Viticultural Area since 2004. Applicant acknowledges that
its mark translates into the English term “hills” or “the
hills.” (Request for Reconsideration, p. 1). According to
applicant, however, the purchasers of its services are
Ser No. 77871104
4
wineries, which are sophisticated, professional purchasers
that would not stop and translate a vineyard name that
comprises foreign words. Applicant points out that the
United States has a substantial domestic wine industry,
which includes the sale of wines from foreign countries
(over 7,000 foreign brands), and that brand names
consisting of foreign words are common in the wine industry
in this country. According to applicant, these names are
accepted for what they are, simply names, and that
purchasers in the wine industry do not stop and translate
these names. Applicant also points to the foreign names of
grape varietals that, applicant contends, people in the
wine industry do not stop and translate. These
individuals, especially winery owners and winemakers, are
accustomed to seeing thousands of foreign names used in the
industry and, because of their familiarity with so many
names in foreign languages, foreign names are taken at face
value. Accordingly, applicant concludes that the doctrine
of foreign equivalents does not apply in this case. Even
if the doctrine applies, however, applicant argues that
confusion is unlikely to occur. Applicant puts significant
stock in the sophistication of purchasers for viticulture
services, and the complexities of the purchasing decisions
involving vineyard and viticulture services. In addition
Ser No. 77871104
5
to relying on the difference in sound and appearance
between the marks LES COLLINES and HILLS VINEYARD,
applicant contends that the terms “hills” and “hill” are
weak inasmuch as vineyards are commonly planted on hills,
thus leading wineries to adopt the term “hills” or “hill”
as part of their names and trademarks. Applicant also
points to the absence of any instances of actual confusion
between the marks, putting emphasis on its ownership of a
registration of the mark LES COLLINES for “fresh grapes.”
In urging that the refusal be reversed, applicant submitted
two declarations with numerous related exhibits.
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).
Insofar as the services are concerned, the question of
likelihood of confusion is determined based on the
Ser No. 77871104
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identification of services in the application vis-à-vis the
services as set forth in the cited registration. In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4
(Fed. Cir. 1993); and In re Jump Designs, LLC, 80 USPQ2d
1370, 1374 (TTAB 2006). Both the application and the cited
registration set forth identical recitations of services:
“vineyard and winery services, namely, the cultivation of
grapes for others.” Applicant’s recitation of services
also includes “viticulture services, namely, grape growing
and cultivation of grapes for others” which, if not
identical to registrant’s services, are nevertheless very
closely related to registrant’s services. The identity
between applicant’s and registrant’s services is a factor
that weighs heavily in favor of a finding of likelihood of
confusion.
As to the marks, we examine the similarities and
dissimilarities of the marks in their appearance, sound,
meaning, and commercial impression. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Where, as in
the present case, the marks appear in connection with, at
least in part, legally identical services, the degree of
similarity between the marks that is necessary to support a
finding of likely confusion declines. Century 21 Real
Ser No. 77871104
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Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698 (Fed. Cir. 1992).
The marks LES COLLINES and HILLS VINEYARD are
different in sound and appearance. In point of fact, there
is nothing even remotely similar between the marks in these
respects.
With respect to meaning, the French term “colline” is
translated into English as “hill,” and “les collines” as
“hills” or “the hills” (French-English Collins Dictionary
2007). The dictionary evidence shows that the English
translation is unambiguously exact and direct, with no
other relevant connotations or variations in meaning.
Applicant does not contend to the contrary, as confirmed by
applicant’s own translation in the present application and
its prior registration. Further, applicant acknowledges,
with good reason, that French is a common, modern language.
See, e.g., In re Thomas, 79 USPQ2d 1021, 1024 (TTAB 2006)
(evidence showed that, of the foreign languages with the
greatest number of speakers in the United States, French is
second only to Spanish).
Whether or not to apply the doctrine of foreign
equivalents in this case when it comes to meaning is at the
heart of the difference between applicant’s and the
Ser No. 77871104
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examining attorney’s respective positions on the merits of
the likelihood of confusion refusal.
The United States is a country of immigrants, and many
citizens are bilingual, speaking both English and a foreign
language. In re Peregrina Limited, 86 USPQ2d 1645 (TTAB
2008). Under the doctrine of foreign equivalents, a
foreign word (from a modern language familiar to an
appreciable segment of American consumers) and the English
equivalent may be held to be confusingly similar. Id.
Whether an examining attorney should apply the doctrine of
foreign equivalents turns upon the significance of the
foreign mark to the relevant purchasers, which is based on
an analysis of the evidence of record. Although words from
modern languages are generally translated into English, the
doctrine of foreign equivalents has evolved into a
guideline, not an absolute rule, and is applied only when
it is likely that “the ordinary American purchaser would
‘stop and translate’ [the term] into its English
equivalent.” Palm Bay Import, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1696, quoting
In re Pan Tex Hotel Corp., 190 USPQ 109, 110 (TTAB 1976).
See generally TMEP §1207.01(b)(vi) (7th ed. 2010). “When it
is unlikely that an American buyer will translate the
foreign mark and will take it as it is, then the doctrine
Ser No. 77871104
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of foreign equivalents will not be applied.” Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 73 USPQ2d at 1696, citing In re Tia Maria, Inc., 188
USPQ 524 (TTAB 1975) (no likelihood of confusion between
TIA MARIA for a Mexican restaurant and AUNT MARY’S for
canned vegetables). The “ordinary American purchaser”
includes “all American purchasers, including those
proficient in a non-English language who would ordinarily
be expected to translate words into English.” In re
Spirits Int’l, N.V., 563 F.3d 1347, 90 USPQ2d 1489, 1492
(Fed. Cir. 2009). Professor McCarthy’s view is that “[a]
rigid, unthinking application of the ‘doctrine’ of foreign
equivalents can result in a finding quite out of phase with
the reality of customer perception.” Simply stated,
Professor McCarthy’s opinion is that the doctrine should
not be transformed into a mechanical and rigid doctrine.
J.T. McCarthy, McCarthy on Trademarks and Unfair
Competition, §§11:35; 23:36; and 23:37 (4th ed. 2011).
In response to the established fact that “les
collines” and “hills” are an unambiguously direct and exact
translation, applicant submitted evidence in support of its
proposition that purchasers in any event are not likely to
translate the French term into English because of the
manner in which the terms are encountered in the unique
Ser No. 77871104
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marketplace environment of vineyards, wineries and
viticulture. The doctrine generally will not be applied
where the record indicates that it is unlikely purchasers
would translate the mark because of “marketplace
circumstances or the commercial setting in which the mark
is used.” In re La Peregrina Limited, 86 USPQ2d at 1648;
and in re Thomas, 79 USPQ2d at 1026.
The essence of applicant’s arguments is as follows:
the wine industry is inundated with foreign language
terminology (including grape varietals, wine names,
vineyard names, and wine regions) and foreign language
trademarks (including the names of foreign and domestic
wineries, wine brands, and vineyards) and, as a result, the
average American purchasers of vineyard and viticulture
services, who are sophisticated wineries and winemakers,
are so accustomed to seeing foreign languages in names and
trademarks that they take them at face value, which is a
common practice in the industry. The prevalence of so many
names and trademarks in many different foreign languages,
including French, reduces the likelihood that winery owners
and winemakers would be inclined to stop and translate
applicant’s mark. The particular circumstances in which
vineyard and viticulture services are evaluated and
selected militate against the likelihood that purchasers of
Ser No. 77871104
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such services will stop and translate foreign terms
encountered in this unique marketplace. According to
applicant, sophisticated wineries and winemakers look
beyond the name of a vineyard to the practical realities of
vineyard and viticulture services. While brand names
convey a vineyard’s goodwill, the translation of foreign
words in a vineyard’s name is not relevant information for
the purchasing decision.
The record includes the declaration of Norman
McKibben, applicant’s managing partner. Mr. McKibben has
been a winegrower and winery owner for over 20 years, and
is currently involved with several wineries in the Walla
Walla Valley in the state of Washington. Over the years,
Mr. McKibben has received industry awards, including “Grape
Grower of the Year” in 1998 awarded by the Washington
Association of Wine Grape Growers. Mr. McKibben states, in
pertinent part, that wineries, which are purchasers of
vineyard services and fresh grapes for making wine, are
sophisticated purchasers; that with so much foreign wine
sold in the United States, it is commonplace to see wines
bearing foreign names, and even domestic wines often bear
foreign names to suggest a connection to old world
winemaking; that because of the prevalence of foreign names
in the wine industry, people do not translate them, but
Ser No. 77871104
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rather they are accepted at face value as simply names;
that he is unaware of anyone translating the name of his
winery to “The Hills”; and that he is unaware of any
instances of actual confusion between the marks.
Also of record is the declaration of Mark Nielsen,
applicant’s attorney, in support of various documents. The
documents include excerpts from printed publications,
including Wine Brands, Success Strategies for New Markets,
New Consumers and New Trends (2008) by Evelyne Resnick.
The author writes that the United States has the largest
wine market in the world, with 7000 names from France,
Italy, Australia, Chile and Spain, in addition to American
wines. The record also includes a lengthy list, retrieved
from www.catchwine.com, of California wineries showing that
many of them bear names with foreign words (e.g., Clois du
Bois, Etude and Zaca Mesa). The documents also include a
search summary produced by Google’s search engine showing
several pages of “hits” for the search term “hills
vineyard.” Of the wineries listed, Mr. Nielsen produced
home pages of the websites of twenty-five of the wineries.
Given the unusual and unique marketplace environment
surrounding the purchase of vineyard, winery and
viticulture services, we appreciate the potential merit of
applicant’s argument. We find, however, that the evidence
Ser No. 77871104
13
in support of this argument falls short, in the face of an
exact and direct translation, of proving that wineries and
winemakers take foreign words such as LES COLLINES at face
value, rather than stopping and translating them. We
acknowledge that the record includes numerous examples of
foreign words used in winery and vineyard names, but a mere
single declaration of applicant (not exactly an unbiased
source) is not enough to persuade us that wineries and
winemakers would not stop and translate applicant’s mark.
Actually, in the absence of more compelling evidence, as
for example, affidavits or declarations of third-party
wineries and winemakers, we think it is plausible that
these purchasers are just as likely to stop and translate
applicant’s mark, if not more likely. We say this given
their degree of exposure to foreign terms in the wine
industry.
In sum, we are reluctant to take the view of one
individual, albeit knowledgeable in the wine industry, and
extrapolate his view to an appreciable number of relevant
purchasers in the viticulture industry.3 Accordingly, we
find that the doctrine of foreign equivalents is applicable

3 So as to be clear, we have discounted only Mr. McKibben’s
opinion about other customers’ perceptions of the mark. However,
we have relied upon some of his factual statements about the wine
industry (see discussion, infra), given his long experience in
the industry as a winegrower and winery owner.
Ser No. 77871104
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in this case, and that the marks convey the same or very
similar meaning.
Applying the doctrine of foreign equivalents, however,
is only part of the determination of whether the marks
being compared are confusingly similar. See In re L’Oreal
S.A., 222 USPQ 925, 926 (TTAB 1984) (noting that
“similarity in connotation [of the marks] must be viewed as
but a single factor in the overall evaluation of likelihood
of confusion”). As noted earlier, appearance, sound,
meaning and commercial impression are factors to be
considered when comparing marks. Similarity of the marks
in one respect, e.g. meaning, does not automatically result
in a finding of likelihood of confusion even if the
services are identical or closely related. In the present
case, LES COLLINES and HILLS have a similar meaning when
the doctrine of foreign equivalents is applied. “[S]uch
similarity as there is in connotation must be weighed
against the dissimilarity in appearance, sound and all
other factors, before reaching a conclusion on likelihood
of confusion as to source.” In re Sarkli, Ltd., 721 F.2d
353, 220 USPQ 111, 113 (Fed. Cir. 1983). See In re Thomas,
supra.
Ser No. 77871104
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As to commercial impression, we find that the marks
LES COLLINES and HILLS VINEYARD engender overall commercial
impressions that are completely different.
In sum, the differences between the marks in sound,
appearance and overall commercial impression clearly
outweigh the similarity in meaning when the doctrine of
foreign equivalents is applied. The differences between
the marks is a factor that weighs in favor of a finding of
no likelihood of confusion.
In addition to the dissimilarities between the marks,
there are other du Pont factors that contribute to the
likelihood of confusion analysis.
In the present case the record demonstrates that the
English words “hills” or “hill” are suggestive in the wine
industry and, therefore, are weak. Mr. McKibben explained
the importance of the “terroir” (comprising climate, soil
type, topography and elevation) of a vineyard as it impacts
the quality and characteristics of grapes grown for
winemaking. According to Mr. McKibben, vineyards are often
planted on hillsides due to advantages to such a location:
When vines are planted on hillsides,
the vines can be exposed to more sun
and therefore more heat during the
growing season. Planting vineyards on
hillsides allows the vineyard to take
advantage of variations in soil types,
drainage, and micro climate
Ser No. 77871104
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considerations so that different grape
varietals can be planted in places best
suited to successful growth and
harvesting. Planting on hillsides is
also advantageous for avoiding damage
to the vines in winter because cold air
tends to settle, leaving marginally
higher temperatures on the up slopes of
hills.

In addition, the U.S. Department of the Treasury,
Alcohol and Tobacco Tax and Trade Bureau’s listing of
“Authorized Wine Appellations of Origin – U.S. Viticultural
Areas” shows the use of the term “Hills” in connection with
several areas, including Dundee Hills, Eola-Amity Hills,
Horse Heaven Hills, and Tracy Hills.
Also introduced by applicant is a search summary for
“hills vineyard” using the GOOGLE search engine, showing
the first thirty “hits”; applicant also submitted the home
pages of the websites of twenty-five of these wineries
(e.g., Sunset Hills, Solomon Hills and Whispering Hills).
The GOOGLE search summary, in and of itself, is not
probative. Although the search summary shows many “hits,”
this evidence is of little probative value in the absence
of specific information regarding each entry. “Search
engine results — which provide little context to discern
how a term is actually used on the webpage that can be
accessed through the search result link – may be
insufficient to determine the nature of the use of a term
Ser No. 77871104
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or the relevance of the search results to registration
considerations.” In re Bayer Aktiengesellschaft, 488 F.3d
960, 82 USPQ2d 1828, 1833 (Fed. Cir. 2007) (GOOGLE search
results that provided very little context of the use of
ASPIRINA deemed to be “of little value in assessing the
consumer public perception of the ASPIRINA mark”); In re
Thomas, 79 USPQ2d at 1026 (Board rejected an applicant’s
attempt to show weakness of a term in a mark through
citation to a large number of GOOGLE “hits” because the
“hits” lacked sufficient context); and In re Remacle, 66
USPQ2d 1222, 1223 n.2 (TTAB 2002). Here, the listings do
not show that third parties actually use “HILL” or “HILLS”
as part of their names or trademarks, or how consumers
might encounter any such third-party uses.
As indicated above, applicant did submit actual home
pages retrieved from the websites of twenty-five of the
wineries identified as “hits” by applicant’s search. Given
the importance of hills in growing grapes for wine, it
comes as no surprise that wineries have a fondness for
using the terms “hill” or “hills” as a component of their
names and/or trademarks, or as a component of their names
for particular vineyards.
The cumulative effect of the evidence relating to this
point confirms that the terms “hill” and “hills” are, at a
Ser No. 77871104
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minimum, highly suggestive of the terroir of the winery or
vineyard; as such, the terms have diminished
distinctiveness in the wine industry. Thus, regardless of
the application of the doctrine of foreign equivalents and
similarity in meaning, this suggestiveness buttresses
applicant’s position that confusion is not likely. See In
re Ness & Co., 18 USPQ2d 1815 (TTAB 1991) (finding no
likelihood of confusion between the French mark LABONTE,
which means “the goodness,” and the mark GOOD-NESS for the
same goods because of the laudatory nature of the marks,
the dissimilarity in sight and sound, the slight
differences in meaning, and the connotation of the mark
GOOD-NESS in relation to applicant’s company name “Ness &
Co.”); and In re L’Oreal S.A., supra (applying the doctrine
to the French mark HAUTE MODE, which means “high fashion,”
but finding no likelihood of confusion between the mark and
HI-FASHION SAMPLER because of the suggestive nature of the
marks and because of the differences in the marks due to
the addition of the term SAMPLER in the English-language
mark). The suggestiveness of the cited mark weighs in
favor of a finding of no likelihood of confusion.
We next consider the trade channels, classes of
purchasers and conditions of sale relating to the services.
The record establishes that the relevant purchasers of
Ser No. 77871104
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“vineyard and winery services, namely, the cultivation of
grapes for others; and viticulture services, namely, grape
growing and cultivation of grapes for others” comprise
winery owners and winemakers. This class of purchasers is
highly sophisticated. Moreover, as detailed by Mr.
McKibben, the purchase of viticulture services typically
involves a complicated and informed decision, certainly not
made on impulse. Mr. McKibben states wineries are very
selective about where they buy their grapes and who they
entrust with management of the vines that will produce the
grapes from which they will make their wines. These facts
suggesting care in purchasing tend to minimize the
likelihood of confusion. Accordingly, these factors weigh
in favor of a finding that confusion is unlikely to occur.
Applicant’s assertion of no actual confusion between
the marks is entitled to little weight. In re Majestic
Distilling Co., 65 USPQ2d at 1205 (“uncorroborated
statements of no known instances of actual confusion are of
little evidentiary value”). See In re Bisset-Berman Corp.,
476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that
self-serving testimony of applicant’s corporate president’s
unawareness of instances of actual confusion was not
conclusive that actual confusion did not exist or that
there was no likelihood of confusion). The lack of
Ser No. 77871104
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evidence of actual confusion carries little weight, J.C.
Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ
435, 438 (CCPA 1965), especially in an ex parte context.
In any event, the record is devoid of probative evidence
relating to the extent of use of registrant’s and
applicant’s marks and, thus, whether there have been
meaningful opportunities for instances of actual confusion
to have occurred in the marketplace. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed.
Cir. 2000); and Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768, 1774 (TTAB 1992). Accordingly, the du Pont
factor of the length of time during and conditions under
which there has been contemporaneous use without evidence
of actual confusion is considered neutral.
Finally, although we have considered applicant’s
ownership of Registration No. 2893710 of the same mark at
issue herein for “fresh grapes,” this fact is entitled to
little probative value. See In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if
some prior registrations had some characteristics similar
to [applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the board or this
court.”).
Ser No. 77871104
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Based on our analysis of the relevant du Pont factors,
we see the likelihood of confusion between the marks LES
COLLINES and HILLS VINEYARD as amounting to only a
speculative, theoretical possibility, even when the marks
are used in connection with identical services. Confusion
is unlikely due to 1) the differences between the marks in
sound, appearance and overall commercial impression; 2) the
inherent weakness of the term “Hills” (or “hill”) in the
wine industry; 3) the sophistication of purchasers of
vineyard and viticulture services; and 4) the complexities
involved in the purchasing decision for vineyard and
viticulture services.
Language by our primary reviewing court is helpful in
resolving the likelihood of confusion issue in this case:
We are not concerned with mere
theoretical possibilities of confusion,
deception, or mistake or with de
minimis situations but with the
practicalities of the commercial world,
with which the trademark laws deal.

Electronic Design & Sales Inc. v. Electronic Data Systems
Corp., 21 USPQ2d at 1391 (Fed. Cir. 1992), citing Witco
Chemical Co. v. Whitfield Chemical Co., Inc., 418 F.2d
1403, 1405, 164 USPQ 43, 44-45 (CCPA 1969), aff'g 153 USPQ
412 (TTAB 1967).
Decision: The refusal to register is reversed.