S. Smith & Son Pty Ltd.

Trademark Trial and Appeal Board

Mar 29, 2001

No. 75467141 (T.T.A.B. Mar. 29, 2001)

03/29/01
Paper No. 16
JQ
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re S. Smith & Son Pty Ltd.
________
Serial No. 75/467,141
_______
Neil F. Martin of Brown Martin Haller & McClain for
applicant.
Angela Bishop Wilson, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney).
_______
Before Quinn, Hairston and Holtzman, Administrative
Trademark Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by S. Smith & Son Pty Ltd. to
register the mark NAUTILUS for “wines.”1
The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when applied to applicant’s goods, so
resembles the previously registered mark shown below
1 Application Serial No. 75/467,141, filed April 13, 1998, based
on Australian Registration No. 454899 issued November 6, 1986.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/467,141
2
for “beverages, namely, non-carbonated vitamin and mineral
isotonic soft drinks; carbonated soft drinks; [and] mineral
waters” as to be likely to cause confusion.2
When the refusal to register was made final, applicant
appealed. Applicant and the Examining Attorney filed
briefs. An oral hearing was not requested.
Applicant, relying on a specimen from the file of the
cited registration, contends that fitness and post-exercise
beverages would not be confused with wines.3 According to
applicant, the involved beverages are sufficiently distinct
that there is no likelihood of confusion.
The Examining Attorney maintains that applicant’s
focus on registrant’s isotonic drinks is misplaced inasmuch
as the entirety of the identification of goods in the cited
registration must be considered in determining likelihood
of confusion. The Examining Attorney points out that
registrant’s goods include carbonated soft drinks and
2 Registration No. 1,760,759, issued March 23, 1993; Section 8
affidavit filed and accepted.
3 The specimen was first submitted with applicant’s appeal brief.
Generally, such submissions are untimely. Trademark Rule
2.142(d). In this case, however, the Examining Attorney did not
object to the untimely submission, but rather considered the
evidence in her brief. Accordingly, we likewise have considered
the specimen in making our decision. The specimen does not
serve, however, to restrict in any way the cited registration.
As the Examining Attorney has pointed out, if more than one item
of goods is specified in an application in one class, it is not
ordinarily necessary to have specimens for each product. TMEP
§905.01(a).
Ser No. 75/467,141
3
mineral water, and contends that these goods are related to
wines. In connection with her arguments, the Examining
Attorney submitted third-party registrations showing that
the same entity has adopted a single mark to identify both
types of goods. Also of record are advertisements showing
that both applicant’s and registrant’s types of goods are
offered for sale in the same retail stores. Lastly, the
Examining Attorney relied upon recipes from a bartender’s
guide showing that these beverages are used together in the
same cocktails.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to 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, two key considerations are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
In the present case, the marks are identical in terms
of sound and meaning, both marks’ appearing to be arbitrary
for the respective beverages. In terms of appearance, the
stylization of the cited registration hardly is sufficient
to distinguish the marks. We say this keeping in mind the
Ser No. 75/467,141
4
normal fallibility of human memory over time and the fact
that consumers retain a general, rather than specific,
impression of trademarks encountered in the marketplace.
Moreover, the record is devoid of any evidence of any
third-party uses or registrations of the mark NAUTILUS or
similar marks in the beverage field.
Due to the virtual identity between the marks, if
there is a viable relationship between applicant’s goods
and registrant’s goods, a likelihood of confusion would
exist. Indeed, “even when goods or services are not
competitive or intrinsically related, the use of identical
marks can lead to the assumption that there is a common
source.” In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1689 (Fed. Cir. 1993).
With respect to the goods, it is well settled that the
issue of likelihood of confusion must be determined on the
basis of the goods as they are set forth in the involved
application and cited registration. See, e.g., Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d
1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). Thus, we must
compare applicant’s wines with all of registrant’s goods,
including carbonated soft drinks and mineral water, and not
just the isotonic drinks as applicant primarily has done.
Cf: Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648
Ser No. 75/467,141
5
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981)[likelihood of
confusion must be found if public confused as to any item
that comes within the identifications of goods in the
involved application and registration].
At the outset, we recognize that there is no per se
rule in cases involving wines and non-alcoholic beverages.
In re Jakob Demmer KG, 219 USPQ 1199 (TTAB 1983). In the
present case, we find that the record establishes a
sufficient relationship between applicant’s wines and
registrant’s carbonated soft drinks and mineral water that
the contemporaneous use of the marks thereon is likely to
cause confusion. The record shows that wine, on the one
hand, and soft drinks and mineral water on the other, are
complementary beverages which may be purchased and used
together. Wine is frequently used with beverages of the
type sold by registrant to form various wine cocktails as
shown by the bartender’s recipe guide. In addition, the
advertisements show that the goods are sold in the same
stores. See: In re Modern Development Company, 225 USPQ
695 (TTAB 1985)[THE CANTEEN (stylized) for wine in cans and
CANTEEN for soft drinks is likely to cause confusion].
We also have taken into account the several third-
party registrations based on use which the Examining
Attorney has submitted. The registrations show marks which
Ser No. 75/467,141
6
are registered for wines, soft drinks and mineral waters.
Although these registrations are not evidence that the
marks shown therein are in use or that the relevant
purchasers are familiar with them, they nevertheless have
probative value to the extent that they serve to suggest
that the goods listed therein are of a kind which may
emanate from a single source. See, e.g., In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993);
and In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470
at n. 6 (TTAB 1988).
We have considered applicant’s assertion that there
has been no actual confusion between its mark and
registrant’s mark, but have accorded it limited probative
value. As a du Pont factor, the absence of actual
confusion weighs, of course, in applicant’s favor. The
probative weight is limited, however, by the fact that
there are no specifics regarding the extent of use by
applicant or registrant. Thus, there is no way to assess
whether there has been a meaningful opportunity for
confusion to occur in the marketplace. In any event, the
test under Section 2(d) of the Trademark Act is the
likelihood of confusion. Weiss Associates Inc. v. HRL
Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842-43
(Fed. Cir. 1990), aff'g, 12 USPQ2d 1819 (TTAB 1989); and
Ser No. 75/467,141
7
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992).
We conclude that purchasers familiar with registrant’s
carbonated soft drinks and mineral water sold under the
mark NAUTILUS (stylized) would be likely to believe, upon
encountering applicant’s mark NAUTILUS for wines, that the
goods originated with or were somehow associated with or
sponsored by the same entity.
Decision: The refusal to register is affirmed.
Ser No. 75/467,141
8