MAS CLARELLA SL

Trademark Trial and Appeal Board

May 6, 2021

88079246 (T.T.A.B. May. 6, 2021)

Mailed: May 6, 2021
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board
————
In re Mas Clarella SL
————
Serial No. 88079246
————
Michael F. Krieger and Adam D. Stevens of Kirton McConkie,
for Mas Clarella SL.
Benjamin H. Roth, Trademark Examining Attorney, Law Office 122,
Kevin Mittler, Managing Attorney.
————
Before Adlin, Pologeorgis, and English,
Administrative Trademark Judges.

Opinion by Pologeorgis, Administrative Trademark Judge:
Mas Clarella SL (“Applicant”) seeks registration on the Principal Register of the
standard character mark NYMPHS OF CLARELLA for “wines” in International
Class 33.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of

1 Application Serial No. 88079246, filed on August 15, 2018, based on an allegation of a bona
fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Serial No. 88079246
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likelihood of confusion with the standard character mark THE NYMPH registered on
the Principal Register for “wines” in International Class 33.2
When the refusal was made final, Applicant appealed and requested
reconsideration. When the request for reconsideration was denied, the appeal
resumed. The appeal is fully briefed. For the reasons explained below, we affirm the
Section 2(d) refusal.3
I. Preliminary Matter - Evidentiary Objection
We first turn to an evidentiary objection lodged by the Examining Attorney
regarding evidence submitted by Applicant for the first time with its appeal brief.
Specifically, the Examining Attorney objects to the inclusion of copies of (1) a U.S.
trademark registration for the standard character mark LA LYMPHINA for “wine,”
(2) a European Union trademark registration also for the mark LA NYMPHINA, and
(3) a European Union trademark registration for the mark CUISSE DE NYMPHE for
“liqueurs; liquor-based aperitifs; gin.”4
It is well-settled that the record in an ex parte proceeding should be complete prior
to appeal. Trademark Rule 2.142(d); 37 CFR § 2.142(d). Exhibits that are attached to
a brief but not made of record during examination are untimely, and will not be
considered. See In re Fitch IBCA, Inc., 64 USPQ2d 1058, 1059 n.2 (TTAB 2002); see
also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)

2 Registration No. 4376154, issued on July 30, 2013; renewed.
3 The TTABVUE and Trademark Status & Document Retrieval (“TSDR”) citations refer to
the docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .pdf version of the documents.
4 Examining Attorney’s Brief, p. 7; 9 TTABVUE 8.
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§§ 1203.02(e) and 1207.01 (June 2020). To the extent Applicant wished to introduce
additional evidence after its appeal had been filed, Applicant should have filed a
written request with the Board to suspend the appeal and remand the application for
further examination pursuant to Trademark Rule 2.124(d). Applicant did not do so.
Accordingly, the Examining Attorney’s objection is sustained and we have given no
consideration to these three registrations in our analysis.5
II. Section 2(d) - Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative facts
in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“DuPont”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We consider each DuPont factor for which there
is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis,
however, two key considerations are the similarities between the marks and the
similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry

5 Even if we were to consider the two European Union registrations, foreign trademark
registrations have no probative value. Cf. In re Hag AG, 155 USPQ 598, 599 (TTAB 1967)
(“The foreign registrations ... are not persuasive on the issue before us [whether KABA is
generic] because it has not been demonstrated that the criteria for registration in these
countries involve examination systems in any way analogous to that of this country; and
manifestly applicant’s right of registration must be determined under the provisions of the
Lanham Act as interpreted by the various judicial tribunals in this country.”); see also TBMP
§ 704.03(b)(1)(A) (“Foreign Registrations. A foreign registration owned by a party to a Board
inter partes proceeding . . . is not evidence of the use, registrability, or ownership of the
subject mark in the United States.”).
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mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”). “[E]ach case must be
decided on its own facts and the differences are often subtle ones.” Indus. Nucleonics
Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387 (CCPA 1973) (internal citations
removed).
A. Relatedness of the Goods
We initially compare the goods under the second DuPont factor. In making our
determination regarding the relatedness of the goods, we must look to the goods as
identified in Applicant’s application and the goods listed in cited registration. See
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Computs. Servs. Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must be decided on the basis of
the identification of goods set forth in the application regardless of what the record
may reveal as to the particular nature of an applicant’s goods, the particular channels
of trade or the class of purchasers to which the sales of goods are directed.”)); see also
In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
Here, Applicant’s goods and Registrant’s goods are identical, namely, wine. Thus,
the second DuPont factor heavily favors a finding of a likelihood of confusion.
B. Similarity of Trade Channels and Classes of Purchaser
Next we consider established, likely-to-continue channels of trade, the third
DuPont factor. Because we have found that Applicant’s and Registrant’s goods are
identical, we must presume that the goods travel through the same channels of trade
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and are offered to the same or overlapping classes of purchasers. In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to
rely on this legal presumption in determining likelihood of confusion); In re Yawata
Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are
legally identical goods, the channels of trade and classes of purchasers are considered
to be the same).
Accordingly, the third DuPont factor also strongly weighs in favor of finding a
likelihood of confusion.
C. Similarity of the Marks
We next consider the similarity or dissimilarity of the marks in their entireties
as to appearance, sound, connotation and commercial impression. See Stone Lion 110
USPQ2d at 1160; Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 369 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005); TRADEMARK MANUAL
OF EXAMINING PROCEDURE (TMEP) §1207.01(b)-(b)(v) (October 2018). “Similarity in
any one of these elements may be sufficient to find the marks confusingly similar.” In
re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., Slip Op.
No. 18-2236 (Fed. Cir. Sept. 13, 2019); TMEP §1207.01(b).
“The proper test is not a side-by-side comparison of the marks, but instead
whether the marks are sufficiently similar in terms of their commercial impression
such that persons who encounter the marks would be likely to assume a connection
between the parties.” In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744,
1748 (Fed. Cir. 2017) (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d
1356, 101 USPQ2d 1713 1721 (Fed. Cir. 2012) (internal quotation marks omitted)).
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The focus is on the recollection of the average purchaser, who normally retains a
general rather than a specific impression of trademarks. See Mini Melts, Inc. v.
Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC,
118 USPQ2d 1084, 1089 (TTAB 2016); Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106, 108 (TTAB 1975).
Our analysis cannot be predicated on dissecting the marks into their various
components; that is, the decision must be based on a comparison of the entire marks,
not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212
USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”). However, “in articulating reasons for reaching a conclusion
on the issue of confusion, 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.” In re
Nat’l Data, 224 USPQ at 751.
Finally, where the goods of an applicant and registrant are identical, as is the
case here, the degree of similarity between the marks required to support a finding
that confusion is likely declines. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127
USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting In re Viterra Inc., 101 USPQ2d at 1908);
TMEP § 1207.01(b).
Applicant’s mark is NYMPHS OF CLARELLA in standard characters and the
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cited mark is THE NYMPH, also in standard characters. Here, the marks at issue
are visually and aurally similar in that both marks include the term NYMPH or its
plural form. The addition of the article “the” in the cited mark has little significance
and does not distinguish the marks. See Motorola, Inc. v. Griffiths Elecs., Inc., 317
F.2d 397, 137 USPQ 551, 552 (CCPA 1963) (THE is “of trifling importance”); In re
Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (“The marks [WAVE and THE
WAVE] are virtually identical. The addition of the word ‘The’ at the beginning of the
registered mark does not have any trademark significance”); In re Narwood Prods.,
Inc., 223 USPQ 1034 n.2 (TTAB 1984) (noting “the insignificance of the word ‘the”’ in
comparison of THE MUSIC MAKERS and MUSICMAKERS).
Moreover, while Applicant’s proposed mark contains the additional wording “OF
CLARELLA” following the term “NYMPHS,” consumers generally are more inclined
to focus on the first word, prefix, or syllable in any trademark or service mark. See
Palm Bay Imps., Inc., 73 USPQ2d at 1692 (finding similarity between VEUVE
ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains
a ‘prominent feature’ as the first word in the mark and the first word to appear on
the label”).
Further, Applicant argues that while adding a house mark to an otherwise
confusingly similar mark does not always obviate a likelihood of confusion, the
Examining Attorney incorrectly fails to recognize that addition of a house mark may
at times be sufficient to distinguish sources of even identical goods.6 Applicant’s

6 Applicant’s Appeal Brief, p. 12; 7 TTABVUE 17.
Serial No. 88079246
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argument suggests that the wording OF CLARELLA or CLARELLA in its proposed
mark constitutes a portion of Applicant’s house mark. This is supported by
Applicant’s name, MAS CLARELLA SL, which intimates that the wording
CLARELLA is in fact a part of Applicant’s house mark. While it may be true that the
addition of a house mark in some circumstances may obviate a finding of likelihood
of confusion, in this instance, where both marks share the same dominant term, i.e.,
NYMPH in singular or plural form, we find that the addition of Applicant’s apparent
house mark CLARELLA to Applicant’s proposed mark is insufficient to distinguish
the marks. See, e.g., In re Christian Dior, S.A., 225 USPQ 533, 535 (TTAB 1985)
(addition of house mark DIOR to applicant’s LE CACHET DE DIOR for shirts does
not obviate likely confusion with CACHET for dresses and toiletries).
Additionally, consumers who are familiar with Registrant’s THE NYMPH wines
and who then encounter Applicant’s NYMPHS OF CLARELLA wines may think
Applicant’s wines are a product line extension of Registrant’s wines. See, e.g., Double
Coin Holdings Ltd. v. Tru Dev., 2019 USPQ2d 377409, *7 (TTAB 2019) (“ROAD
WARRIOR looks, sounds, and conveys the impression of being a line extension of
WARRIOR”); Joel Gott Wines LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424,
1433 (TTAB 2013) (“Purchasers of opposer’s GOTT and JOEL GOTT wines are likely
to assume that applicant’s goods, sold under the mark GOTT LIGHT and design, are
merely a line extension of goods emanating from opposer”); In re Toshiba Med. Sys.
Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (holding that VANTAGE TITAN for MRI
diagnostic apparatus and TITAN for medical ultrasound device were confusingly
Serial No. 88079246
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similar and that the addition of applicant’s “product mark,” VANTAGE, to the
registered mark would not avoid confusion); Schieffelin & Co. v. Molson Cos., 9
USPQ2d 2069, 2073 (TTAB 1989) (“Those consumers who do recognize the differences
in the [BRADOR and BRAS D’OR] marks may believe that applicant’s mark is a
variation of opposer’s mark that opposer has adopted for use on a different product.”).
Overall, we find that Applicant’s mark and the cited mark are much more similar
than dissimilar in sound, appearance, and connotation.
Notwithstanding the foregoing, to determine whether these marks, considered in
their entireties, are sufficiently similar in overall commercial impression for
confusion to be likely, we must also consider the relative commercial and conceptual
strength of Registrant’s mark.
“In determining strength of a mark, we consider both inherent strength, based on
the nature of the mark itself, and commercial strength or recognition.” Bell’s Brewery,
Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017) (citing
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476
(TTAB 2014)); see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681,
1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).”). “[T]he
strength of a mark is not a binary factor” and “varies along a spectrum from very
strong to very weak.” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1675-76 (Fed. Cir. 2015) (internal citations omitted). “The weaker [the
registrant’s] mark, the closer an applicant’s mark can come without causing a
Serial No. 88079246
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likelihood of confusion and thereby invading what amounts to its comparatively
narrower range of protection.” Id. at 1676 (internal citations omitted). See also Palm
Bay Imps., Inc., 73 USPQ2d at 1693 (“Evidence of third-party use of similar marks
on similar goods is relevant to show that a mark is relatively weak and entitled to
only a narrow scope of protection.”).
The fifth DuPont factor, the fame of the prior mark, and the sixth DuPont factor,
the number and nature of similar marks in use for similar goods or services, may be
considered in tandem to determine the strength of the cited mark and the scope of
protection to which it is entitled. Bell's Brewery, Inc., 125 USPQ2d at 1345; DuPont,
177 USPQ at 567; Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC,
122 USPQ2d 1030, 1033 (TTAB 2016 (“Evidence of third-party use of similar marks
on similar goods is relevant to show that a mark is relatively weak and entitled to
only a narrow scope of protection.”); Tao Licensing, LLC v. Bender Consulting Ltd.,
125 USPQ2d 1043, 1059 (TTAB 2017) (“As to commercial weakness, ‘the probative
value of third-party trademarks depends entirely upon their usage’”) (quoting Palm
Bay Imps., 73 USPQ2d at 1693),
Additionally, the Federal Circuit has held that if there is evidence that a mark,
or an element of a mark, is commonly adopted by many different registrants, that
may indicate that the common element has some non-source identifying significance
that undermines its conceptual strength as an indicator of a single source. Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports,
S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (“[E]vidence of third-
Serial No. 88079246
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party registrations is relevant to ‘show the sense in which a mark is used in ordinary
parlance,’ … that is, some segment that is common to both parties’ marks may have
‘a normally understood and well-recognized descriptive or suggestive meaning,
leading to the conclusion that that segment is relatively weak’”) (quoting Juice
Generation, 115 USPQ2d at 1674).
Applicant argues that the term NYMPH is weak when used in connection with
wines.7 As a result, Applicant maintains that the addition of the wording “OF
CLARELLA” in its mark is sufficient to avoid a likelihood of confusion.8 In support of
its argument, Applicant submitted the following evidence:
Third-Party Registration Evidence
Applicant submitted copies of the following U.S. third-party registrations:9
 U.S. Registration for the mark THE COCKTAIL NYMPH for
“Bartending services; Consulting services in the field of hospitality;
Providing information in the field of drinks, namely, providing
information about bartending”;10 and

 U.S. Registration for the mark BREWNYMPH for “On-line social
networking services; Online social networking services in the field
of beer, craft beer, breweries, homebrewing, beer events, food and
drink, travel, community events, sports, fitness, entertainment,
outdoor activities, active lifestyle; Online social networking services
in the field of beer, craft beer, breweries, homebrewing, beer events,
food and drink, travel, community events, sports, fitness,

7 Applicant’s Appeal Brief, pp. 5-9; 7 TTABVUE 10-14.
8 Id. at p. 9; 7 TTABVUE 14.
9 Applicant also submitted six foreign registrations for marks consisting of NYMPH-
formative marks for wine and other alcoholic beverages. As previously noted, foreign
registrations have no probative value in our strength analysis. See fn. 5, supra. Accordingly,
we have given no consideration to these six foreign registrations.
10 August 31, 2020 Request for Reconsideration; TSDR pp. 99-100.
Serial No. 88079246
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entertainment, outdoor activities, active lifestyle provided via a
website.”11

Third-Party Use Evidence

Applicant also submitted the following evidence obtained from the Internet of
purported third-party uses of the term NYMPH used in connection with wine:
 FLYING NYMPH12

11 Id.; TSDR pp. 101-102.
12 Id.; TSDR pp. 24-35.
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 NAKED NYMPH from Fieldwood Winery13

 BLUSHING NYMPHE and ROSE DE NYMPHE ÉMUE14

13 Id.; TSDR p. 38.
14 Id.; TSDR p. 42-44 and pp. 88-89. The record demonstrates that the BLUSHING NYMPHE
and ROSE DE NYMPHE ÉMUE wines are offered by the same third-party source, i.e.,
Chateau Maris.
Serial No. 88079246
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Serial No. 88079246
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 LA GOURMANDISE DES NYMPHES15

 NYMPH16

15 Id.; TSDR p. 40.
16 Id.; TSDR p. 45.
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 DOMAINE DES NYMPHES17

 L’AVEN DES NYMPHES18

17 Id.; TSDR pp. 67-80.
18 Id.; TSDR p. 82.
Serial No. 88079246
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Additionally, Applicant submitted an article from the website www.npr.org dated
July 30, 2009 and titled “Alabama Bans Wine with Naked Nymph on Label.”19 The
article states that Alabama’s state liquor board “has banned a California wine called
Cycles Gladiator because its label uses an Art Nouveau image that once graced the
posters of a turn-of-the-century French bicycle manufacturer.” The article quotes an
Associated Press report which states the following:

The label at issue is reproduced below:

19 Id.; TSDR pp. 103-05.
Serial No. 88079246
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Applicant also argues that the term “nymph” is somewhat suggestive or even
descriptive of wine and, therefore, the inclusion of the additional wording “OF
CLARELLA” in Applicant’s mark is sufficient to distinguish its mark from the cited
mark.20 Specifically, Applicant contends that the term “nymph” has a strong
association with Dionysus, the Greek god of wine.21 In support of this argument,
Applicant submitted screenshots from the website www.greekgods.org which states,
in part, the following:22
When Dionysus was born, he was, like many other illegitimate infants,
harassed by Hera and her minions. Those who helped Dionysus had to
be moving him constantly to keep his whereabouts a secret. And it was
Hermes once again who finally found him a safe shelter with a group of
mountain nymphs, away from the eyes of many. Dionysus spent his
childhood with these nymphs and invented the process of growing
grapes and making wine.

When viewing Applicant’s third-party evidence in its totality, we find that it is
insufficient to demonstrate that the cited mark is either conceptually or commercially
weak. First, with regard to Applicant’s third-party registration evidence, as indicated
in footnotes. 5 and 9, supra, six of the eight registrations are foreign and have no
probative value. With regard to the two remaining U.S. registrations, the marks are
for bartending and online social networking services concerning beer. While these
services may relate to alcoholic beverages, they are nonetheless too far afield to be
probative of how strong the wording NYMPH(S) is for wine. Accordingly, none of the

20 Applicant’s Reply Brief, p. 2, 10 TTABVUE 3.
21 Applicant’s Appeal Brief, p. 6; 7 TTABVUE 11.
22 June 3, 2019 Response to Office Action; TSDR pp. 26-27.
Serial No. 88079246
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third-party registration evidence demonstrates that the term “nymph” is
conceptually weak for wine.
We also find unpersuasive Applicant’s argument that the term “nymph,” when
used in association with wine, is descriptive or even suggestive. A term is descriptive
of goods or services within the meaning of Section 2(e)(1) of the Trademark Act if it
conveys an immediate idea of an ingredient, quality, characteristic, feature, function,
purpose or use of the goods or services. In re Chamber of Commerce of the U.S., 675
F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012). Applicant has not provided any
argument or evidence to demonstrate that the term “nymph” describes a feature,
characteristic or quality of wine, and it is hard to see how it could, as a nymph is “any
of numerous minor deities represented as beautiful maidens inhabiting and
sometimes personifying features of nature such as trees, waters, and mountains,”23
and wine is an alcoholic beverage made from grapes. Moreover, Applicant’s evidence
regarding the Greek god Dionysus does not demonstrate that the term “nymph” is
suggestive of wine. The evidence submitted merely states Dionysus spent his
childhood sheltered with mountain nymphs and invented the process of growing
grapes and making wine. This does not mean that the consuming public associates
nymphs with wine any more than it associates nymphs with childhood or agriculture.

23 We take judicial notice of the definition of the word “nymph.” See The American Heritage
Dictionary of the English Language www.ahdictionary.com. The Board may sua sponte take
judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food
Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983),
including definitions in online dictionaries that exist in printed format or have regular fixed
editions. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff'd, 823 F.3d
594, 118 USPQ2d 1632 (Fed. Cir. 2016).
Serial No. 88079246
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Thus, we do not find this evidence probative in showing that the term “nymph” is
suggestive of wine.
Finally, we note that the cited mark issued on the Principal Register without a
showing of acquired distinctiveness under Section 2(f) of the Trademark Act.
Accordingly, we find Registrant’s THE NYMPH mark, when viewed in its entirety, is
inherently distinctive and, therefore, is entitled to the normal scope of protection
accorded an inherently distinctive mark.
With regard to Applicant’s third-party use evidence, we find this evidence is
insufficient to demonstrate that the word “nymph” is so extensively used by third-
parties as to render the term commercially weak in connection with the sale of wine.
Applicant submitted eight purported third-party uses of the term “NYMPH” as part
of the name of a wine.
Two of these examples are from foreign websites in French, i.e., screenshots of
the wines DOMAINES DES NYMPHES and ROSE DE NYMPHE ÉMUE. “Various
factors may inform the probative value of a foreign website in any given case, such as
whether the website is in English (or has an optional English language version), and
whether the nature of the goods or services makes it more or less likely that U.S.
consumers will encounter foreign websites in the field of question.” In re Well Living
Lab Inc., 122 USPQ2d 1777, 1781 n.10 (TTAB 2017); see also In re King Koil, 79
USPQ2d 1048, 1050 (TTAB 2006) (assigning some probative value to information of
foreign origin). While the goods at issue, i.e., wine, are of a nature that would make
it likely that U.S. consumers would encounter at least some foreign websites that sell
Serial No. 88079246
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wine, the two websites submitted by Applicant are both in French and one with no
apparent option to view an English version.24 Without any evidence demonstrating
the extent to which relevant U.S. consumers have viewed these foreign websites, this
evidence has little, if any, probative value in our analysis regarding the commercial
strength of the cited mark in the United States.
Similarly, the NPR article submitted by Applicant that discusses Alabama’s state
liquor board’s banning of a wine with a picture of a naked nymph on the label is also
not probative. The fact that the Alabama liquor board perceived the pictorial
depiction of a nude woman on the label as a nymph does not necessarily mean that
relevant consumers of wine would also perceive the naked woman as a nymph. More
importantly, here we are focused on the word “nymph” rather than depictions which
may arguably be perceived as nymph-like.
We acknowledge that the remaining six websites demonstrate third-party use of
the term “nymph” in connection with the sale of wine. However, these six third-party
uses are “a far cry from the large quantum of evidence of third-party use and third-
party registrations that was held to be significant” in the Federal Circuit’s decisions
in Jack Wolfskin and Juice Generation. In re Inn at St. John’s, LLC, 126 USPQ2d at
1746; cf. Jack Wolfskin,, 116 USPQ2d at 1135-36 (at least fourteen relevant third-
party uses or registrations of record); Juice Generation, Inc., 115 USPQ2d at 1674-75
(at least twenty-six relevant third-party uses or registrations of record).

24 The foreign website displaying the ROSE DE NYMPHE ÉMUE wine includes a British flag
icon, suggesting that that a consumer may view an English version of the website. See August
31, 2020 Request for Reconsideration, TSDR pp. 88-89.
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22
Quite simply, the third-party uses here are too few in number to be “extensive”
evidence of weakness that is “powerful on its face,” Jack Wolfskin, 116 USPQ2d at
1136, and there is no accompanying showing of any long duration or widespread
exposure of the referenced uses that might enhance their probative value. Thus, we
find that Applicant’s third-party use evidence is insufficient to show that the cited
mark THE NYMPH has been weakened to such a degree that consumers of
Applicant’s goods will differentiate Applicant’s proposed mark from the cited mark.
Because we have found that the cited mark is not so weak as to be accorded a
narrow scope of protection against a similar mark for identical goods, consumers are
likely to be confused.
Thus, the first DuPont factor favors a finding of likelihood of confusion.
D. Consumer Sophistication
The fourth DuPont factor concerns the “conditions under which and buyers to
whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” DuPont,
177 USPQ at 567. Applicant argues that consumers of wine are sophisticated
consumers and thus are able to distinguish between even similar trademarks. In
support of its argument, Applicant submitted various articles from the Internet that
purportedly demonstrate that all classes of wine consumers are conscious of and
selective with regard to the sources of their wine.25

25 June 3, 2019 Response to Office Action, TSDR pp. 28-30; August 31, 2020 Request for
Reconsideration, TSDR pp. 17-19.
Serial No. 88079246
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Applicant’s argument is unavailing. By way of extrinsic evidence, Applicant is
impermissibly seeking to restrict the scope of the classes of purchasers even though
neither the identification of goods in Applicant’s application nor the identification of
goods in the cited registration are so restricted. It is well settled that in a proceeding
such as this, the question of likelihood of confusion must be determined by analyzing
the goods identified in the application vis-a-vis the goods recited in the registration,
rather than what extrinsic evidence shows those goods to be. In re Bercut-Vandervoort
& Co., 229 USPQ 763, 764 (TTAB 1986).
Moreover, we must presume that Applicant’s and Registrant’s wine encompasses
inexpensive or moderately-priced wine. In re Bercut-Vandervoort & Co., 229 USPQ at
764-65 (rejecting applicant’s arguments regarding the high cost and quality of its
wine and the sophistication of its purchasers, where application identified goods
merely as “wine”). The applicable standard of care is that of the “least sophisticated
purchasers.” Stone Lion, 110 USPQ2d at 1163.
Even assuming that the actual or potential consumers of the parties’ goods may
be sophisticated, we point out that they may not be sophisticated or knowledgeable
in the field of trademarks or immune from source confusion. See In re Shell Oil Co.,
922 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (indicating that “even
sophisticated purchasers can be confused by very similar marks”); Top Tobacco, LP
v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011); TMEP
§ 1207.01(d)(vii). Here, where the marks at issue are similar and the goods are
identical, confusion is often found likely despite customer sophistication and care.
Serial No. 88079246
24
“That the relevant class of buyers may exercise care does not necessarily impose on
that class the responsibility of distinguishing between similar trademarks for similar
goods. ‘Human memories even of discriminating purchasers . . . are not infallible.’” In
re Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986)
(quoting Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168
USPQ 110, 112 (CCPA 1970)); In re Wilson, 57 USPQ2d 1863, 1865-66 (TTAB 2001)
(where marks are very similar and goods related, confusion may be likely even among
sophisticated purchasers).
Thus, this DuPont factor is neutral.
III. Conclusion
We have considered all of the arguments and evidence of record, and all relevant
DuPont factors of which there is evidence of record. We find that (1) the marks at
issue are similar, (2) Applicant’s goods are identical to Registrant’s goods; (3) the
parties’ goods are presumed to move in identical trade channels and would be offered
to the same classes of purchasers, and (4) the cited mark should be accorded a normal
scope of protection. In view thereof, we conclude that Applicant’s NYMPHS OF
CLARELLA standard character mark so resembles the cited standard character
mark THE NYMPH as to be likely to cause confusion or mistake, or to deceive under
Section 2(d) of the Trademark Act.
Decision: The refusal to register Applicant’s NYMPHS OF CLARELLA mark
under Section 2(d) of the Trademark Act is affirmed.