Nagy

Trademark Trial and Appeal Board

Sep 29, 2009

No. 77508865 (T.T.A.B. Sep. 29, 2009)

Mailed: September 29, 2009
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Nagy
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Serial No. 77508865
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Robert L. McRae of Gunn, Lee & Cave, PC for Stephanie Nagy.

Verna Beth Ririe, Trademark Examining Attorney, Law Office
104 (Michael Baird, Managing Attorney).
_______

Before Quinn, Hairston and Cataldo, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application was filed by Stephanie Nagy to register
the mark Y VODKA (standard characters; VODKA disclaimed)
for “distilled spirits, namely, vodka” in International
Class 33.1
The trademark examining attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act,

1 Serial No. 77508865, filed on June 26, 2008, based on an
assertion of a bona fide intention to use the mark in commerce.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77508865
2
15 U.S.C. §1052(d), in view of three previously registered
marks. The first two cited registrations are owned by
Alive Enterprises, Inc.: (1) Registration No. 2654882,
issued November 26, 2002 (affidavits under Section 8 and 15
accepted or acknowledged), for the mark Y SAKE´ (SAKE
disclaimed) for “sake”; and (2) Registration No. 2725051,
issued June 10, 2003 (affidavits under Section 8 and 15
accepted or acknowledged), for the mark shown below (SAKE
disclaimed) for “sake.”

The third cited registration is owned by Jackson Wine
Estates International: (3) Registration No. 2943086, issued
April 19, 2005, is for the mark shown below for “wine.”2

2 The examining attorney also cited another registration owned by
Jackson Wine Estates International, Registration No. 2666222, as
a basis for the refusal under Section 2(d). However, in her
appeal brief, the examining attorney withdrew the refusal as to
this registration. Further, this registration has been cancelled
under Section 8. Thus, the refusal is moot as to this
registration
Ser No. 77508865
3

When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs.3
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.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to a comparison of applicant’s and
registrants’ respective goods. It is not necessary that

3 Attached to applicant’s appeal brief is a copy of what appears
to be a label for the goods in cited Registration No. 2943086.
The examining attorney objected to this evidence as untimely
submitted, and we have given it no consideration. See Trademark
Rule 2.142(d).
Ser No. 77508865
4
the respective goods be identical or even competitive in
order to support a finding of likelihood of confusion.
Rather, it is sufficient that the goods are related in some
manner, or that the circumstances surrounding their
marketing are such that they would be likely to be
encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same source or that there is an
association or connection between the sources of the
respective goods. In re Melville Corp., 18 USPQ2d 1386
(TTAB 1991); In re International Telephone & Telegraph
Corp., 197 USPQ2d 910 (TTAB 1978).
Although there certainly is no per se rule that holds
that all alcoholic beverages are related, we find that
applicant’s vodka is sufficiently related to registrants’
sake and wine that confusion is likely to result if the
respective goods are marketed under similar marks. The
examining attorney has made of record eleven use-based
third-party registrations in which all three alcoholic
beverages, i.e., vodka, sake and wine, are included in the
identification of goods. Although these registrations are
not evidence that the marks shown therein are in commercial
use, or that the public is familiar with them, they
Ser No. 77508865
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nevertheless are probative evidence to the extent that they
suggest that the goods identified therein are of a type
which may emanate from a single source under a single mark.
See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993); In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467
(TTAB 1988).
Also, the examining attorney made of record printouts
from the websites of Internet retailers which offer wine
flavored vodkas, vodka distilled from wine, and vodka
blended with sake.
We find that the foregoing evidence suffices to
establish that vodka is related to both sake and wine.
We also find that vodka, sake and wine are marketed in
the same channels of trade to the same classes of
purchasers. Neither applicant’s nor registrants’
identifications of goods include any restrictions or
limitations as to trade channels or classes of purchasers,
and we accordingly presume that applicant’s and
registrants’ goods are marketed in all normal trade
channels for such goods (including liquor stores and
beverage retailers) to all normal classes of purchasers for
such goods (including ordinary consumers). See In re
Elbaum, 211 USPQ 639 (TTAB 1981).
Ser No. 77508865
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Next, we turn to a comparison of applicant’s mark and
each of the registrants’ marks. In determining the
similarity or dissimilarity of the marks, we must compare
the marks in their entireties as to appearance, sound,
connotation and commercial impression. Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The test is
not whether the marks can be distinguished when subjected
to a side-by-side comparison, but rather whether the marks
are sufficiently similar in their overall commercial
impression 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 specific
impression of trademarks. Sealed Air Corp. v. Scott Paper
Co., 119 USPQ 106 (TTAB 1975). Furthermore, although the
marks at issue must be considered in their entireties, it
is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
Ser No. 77508865
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Applying these principles to the present case, we find
that applicant’s Y VODKA mark and the previously registered
Y SAKE´ mark in Registration No. 2654882, when compared in
their entireties in terms of appearance, sound,
connotation, and commercial impression, are similar. The
letter Y is the dominant portion of both applicant’s and
registrant’s marks. Although the marks include other
words, it is this portion of the marks that conveys the
strongest impression. The disclaimed and descriptive terms
in the marks, VODKA and SAKE´, are not ignored, but the
fact is that purchasers are likely to rely on the
nondescriptive portion of the marks, that is, the letter Y,
as an indication of source. See National Data Corp., 224
USPQ2d at 751 (“That a particular feature is descriptive or
generic with respect to the involved goods or services is
one commonly accepted rationale for giving less weight to a
portion of a mark …”). Furthermore, the letter Y is the
first term purchasers will see or hear when encountering
registrant’s Y SAKE´ mark, making it more likely to be
remembered by purchasers when they later encounter
applicant’s Y VODKA mark in connection with related goods.
We find, therefore, that the marks are similar in sound and
appearance.
Ser No. 77508865
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Insofar as meaning is concerned, the letter Y itself
appears to have no intrinsic meaning in relation to vodka
or sake. In any event, whatever connotation it might have
as used in connection with applicant’s vodka, it would have
the same connotation as used in connection with
registrant’s sake.
Although we have focused on the dominant portion of
the marks, which, as indicated above, are identical, we
also have considered the marks in their entireties. And,
in doing so, we find that they engender similar overall
commercial impressions.
Keeping in mind that the comparison of the marks is
not necessarily made on a side-by-side basis and that
recall of the marks is often hazy and imperfect, the
differences in the marks are not so significant that they
are likely to remembered by purchasers when seeing these
marks at different times in connection with related goods.
Even if purchasers remember the specific differences in the
marks, they are likely to perceive Y VODKA as simply a
variation of registrant’s Y SAKE´ mark, and assume that
applicant’s mark identifies vodka from the same source or
an affiliated company, rather than a different source. We
find, therefore, that applicant’s Y VODKA mark is similar
to registrant’s Y SAKE´ mark.
Ser No. 77508865
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For similar reasons, we find that applicant’s Y VODKA
mark is similar to the previously registered mark shown
below in Registration No. 2725051.

Purchasers are likely to perceive registrant’s mark as
consisting of a stylized letter Y and the word SAKE´.
Although the stylized letter Y in the mark is prominent,
registrant’s mark does not create a visual impression that
is markedly different from applicant’s mark. Thus, when we
consider these marks in their entireties, giving
appropriate weight to the dominant features thereof, we
find that applicant’s mark and registrant’s mark are
similar in appearance, sound, connotation and commercial
impression.
We also find that applicant’s Y VODKA mark is similar
to the previously registered mark shown below in
Registration No. 2943086.
Ser No. 77508865
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Purchasers are likely to perceive this mark as a
stylized letter Y as well. As previously indicated, the
dominant portion of applicant’s Y VODKA mark is the
identical letter Y. Although we do not ignore the
disclaimed and descriptive term VODKA in applicant’s mark,
the fact is that purchasers are likely to rely on the
nondescriptive portion of the mark, the letter Y, as an
indication of source. Thus, we find that applicant’s and
registrant’s marks are similar in appearance and sound due
to the shared letter Y.
Insofar as meaning is concerned, as previously
indicated, the letter Y itself appears to have no intrinsic
meaning in relation to vodka. Nor does it appear to have
any meaning in relation to wine. In any event, whatever
connotation it might have as used in connection with
applicant’s vodka, it would have the same connotation as
used in connection with registrant’s wine.
Ser No. 77508865
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When we consider these marks in their entireties,
giving appropriate weight to the dominant portion of
applicant’s mark, we find that they engender similar
overall commercial impressions. In view of the arbitrary
nature of the letter Y as applied to both vodka and wine,
purchasers are likely to assume that a single entity
produces both vodka under the Y VODKA mark and wine under
the stylized letter Y mark. Purchasers are likely to
attribute the differences in the marks to the differences
in the goods themselves.
In sum, we find that applicant’s Y VODKA mark and
registrant’s stylized letter Y mark are similar in
appearance, sound, connotation and commercial impression.
Applicant asks that we consider that Registration Nos.
2666222 (now cancelled) and 2943086, both for wine and
owned by Jackson Wine Estates International, and
Registration Nos. 2654882 and 2725052, both for sake and
owned by Alive Enterprises, Inc., have coexisted on the
Register. However, it is settled that the fact that there
already may be confusingly similar marks co-existing on the
register and owned by different owners, which arguably
should not have registered over each other, does not
relieve the Board of its duty to determine the
registrability of the applicant’s mark on the record
Ser No. 77508865
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currently before it, nor does it justify the addition to
the Register of what may be another confusingly similar
mark. See, e.g., In re Paper Doll Promotions Inc., 84
USPQ2d 1660, 1670 (TTAB 2007) [“… our decision on the
registrability of applicant’s mark must be based on the
record in this case and not on the fact that two arguably
similar marks have been allowed for registration by the
Office.”).
We find that applicant’s mark is similar to each of
the three previously registered marks; that vodka is
related to both sake and wine; and that these goods travel
in the same channels of trade to the same classes of
purchasers. Accordingly, we conclude that a likelihood of
confusion exists, and the examining attorney’s Section 2(d)
refusal based on the three previously registered marks is
proper.
To the extent that we have any doubt about our
conclusions, we must resolve this doubt in favor of each of
the registrants. In re Hyper Shoppes (Ohio), Inc., 837
F.2d 463, 6 USPQ2d 1025 (Fed. Cir. 1988).
Decision: The refusal under Section 2(d) is
affirmed as to each of the cited registrations.