S.P.H. – Gerard BertrandDownload PDFTrademark Trial and Appeal BoardSep 28, 2015No. 86075352 (T.T.A.B. Sep. 28, 2015) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: September 28, 2015 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re S.P.H. – Gerard Bertrand _____ Serial No. 86075352 _____ Janet G. Ricciuti of Janet Gilbert Ricciuti PC, for S.P.H. – Gerard Bertrand. Keri-Marie Cantone, Trademark Examining Attorney, Law Office 104, Chris Doninger, Managing Attorney. _____ Before Bergsman, Wellington and Gorowitz, Administrative Trademark Judges. Opinion by Wellington, Administrative Trademark Judge: S.P.H. – Gerard Bertrand (“Applicant”) seeks registration on the Principal Register of the following mark: Serial No. 86075352 - 2 - for “wines” in International Class 33.1 Applicant disclaimed the exclusive right to use of the word CUVEE. In addition, Applicant acknowledged that the name “Gerard Bertrand” identifies a living individual whose consent to register is of record. The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act based on a likelihood of confusion with the following registered mark: for “Ale; Beer” in International Class 32.2 Registrant disclaimed the exclusive right to use of the words "ALES," "TAVERN ALE," and "AUTHENTIC RECIPE.” 1 Application Serial No. 86075352 was filed on September 26, 2013, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. 2 Registration No. 4209038 issued on September 8, 2012. The mark is described in the registration as consisting of: [A] portrait of Thomas Jefferson appearing inside an oval with three outlines and surrounded by a dotted border, wavy designs appears on top, the wording "YARDS" and "ALES OF THE REVOLUTION" appears below the wavy design, the wording "AUTHENTIC RECIPE" appears on the left side of Thomas Jefferson's face, and the wording "THOMAS JEFFERSON'S TAVERN ALE" appears at the bottom portion of the oval. Serial No. 86075352 - 3 - When the refusal was made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We reverse the refusal to register. Our determination under Section 2(d) is based on an analysis of all of the 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). See also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”). A. The similarity or dissimilarity and nature of the goods. In determining whether the goods are related, it is not necessary that the goods of Applicant and Registrant be similar or competitive in character to support a holding of likelihood of confusion; it is sufficient for such purposes that the goods are related in some manner and/or that conditions and activities surrounding marketing of these goods are such that they would or could be encountered by the same persons under circumstances that could, because of the similarities of marks used with them, give rise to the mistaken belief that they originate from or are in Serial No. 86075352 - 4 - some way associated with the same source. Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722; Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); Schering Corporation v. Alza Corporation, 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corporation v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978). To show a relationship between Applicant’s goods, i.e., wine, and Registrant’s goods, i.e., beer, the Examining Attorney submitted printouts from seven different third-party websites advertising these same goods under a single mark. The Examining Attorney contends that this evidence supports “the fact that the goods [beer] of the Registrant are commonly sold by the same parties as the goods [wine] of the Applicant.” 11 TTABVUE 9 (Brief at unnumbered p. 8).3 The Examining Attorney also cites to Board decisions where the Board found that, under certain circumstances, beer and wine are related. While the record before us shows that it would not be unheard of for wine and beer to be sold by a single source under the same mark, the evidence is not overwhelming. Indeed, given the number of beer and wine manufacturers, a showing of seven entities cannot be construed as constituting a common practice. Rather, here, we find that the evidence shows that while there is some degree of relationship between beer and wine, it is not strong. 3 Citations to the record reference TTABVUE, the Board’s online docketing system. Specifically, the number preceding “TTABVUE” corresponds to the docket entry number, and the number(s) following “TTABVUE” refer to the page number(s) of that particular docket entry where the cited materials appear. Serial No. 86075352 - 5 - Nevertheless, we find that this factor slightly favors a finding of a likelihood of confusion. B. Weakness in the Name “Thomas Jefferson” Before comparing the marks, we offer a brief discussion concerning the relevance and renown of Thomas Jefferson (“Jefferson”), whose name is incorporated into both marks. We agree with the Examining Attorney’s assessment of the record and that it establishes that Jefferson, a Founding Father of the United States and author of the Declaration of Independence, is generally regarded as one of the most famous presidents in U.S. history, with several listings placing him as “third most famous President” or “fourth most influential president.”4 His image and name are on all nickels since 1938, as well on $2 bills. In addition to being a famous president, Jefferson is renowned for various other activities and endeavors, e.g., architect and owner of Monticello, his residence and a National Historic Landmark, and founder of the University of Virginia. In particular, his affinity for wine is well-documented:5 Statesman, president, inventor, architect, musician, farmer, philosopher and University of Virginia founder, while Thomas Jefferson filled a myriad of roles throughout his industrious 83 years, his legacy as America’s first wine connoisseur has also had an enduring influence on the world’s wine stage. Jefferson was well ahead of his time with regards to his vision for America’s potential for viticulture. He believed whole- heartedly that, “We could, in the United States, make as great a variety of wines as are made in Europe, not exactly of the same kinds, but doubtless as good.” However, it was not until almost 200 years later that 4 Evidence attached to Office Action issued on July 28, 2014. 5 From About Food website (www.wine.about.com); website printouts attached to Office Action issued on February 13, 2015. Serial No. 86075352 - 6 - America would begin to live the vinicultural vision that Jefferson had embraced so early on. … Jefferson brought a level of wine sophistication not seen before in America and as such wore the prestigious hat of both wine advisor and wine buyer for George Washington prior to and during his presidency. … Known as America’s first wine connoisseur, Jefferson played a definitive role in establishing America’s wine trends in the early days of her vineyard affections and his legacy lives on as the United States has established itself as a dominating force on the international wine stage. Or, as one author put it, “[w]hen it comes to Presidents and wine, there’s pretty much one name floating around out there: Thomas Jefferson.”6 In addition to his legacy as a wine enthusiast, the record reflects that Jefferson was an ardent brewer of beer and would produce his own at Monticello.7 It does not appear, however, that Jefferson’s reputation as a brewer of beer rivals that for wine. Applicant argues that the name THOMAS JEFFERSON “as a sole and unique identifier of source is weak” and that his name is “a constant in schools, in the press, in books, in the marketplace.” 9 TTABVUE 19 (Brief, p. 18). However, as the Examining Attorney correctly pointed out, Applicant did not submit any evidence to support its statement that the name is weak in the marketplace or otherwise commercially diluted. Moreover, the Examining Attorney contends that the name 6 From Food & Wine article (dated February 18, 2012) from the CNN website (www.cnn.com); printout attached to Applicant’s request for reconsideration (filed on January 22, 2015). 7 From The Jefferson Monticello website (www.monticello.org); website printouts attached to Examining Attorney’s Office Action issue on February 13, 2015. Serial No. 86075352 - 7 - THOMAS JEFFERSON is “not diluted in connection with alcoholic beverages and is thus deserving great protection.” 11 TTABVUE 7 (Brief at unnumbered p. 6). In support, she contends there are only eleven live third-party registrations for marks containing the name THOMAS JEFFERSON, none of which are for related goods.8 To the extent that Applicant argued that name THOMAS JEFFERSON is commercially weak or diluted through third-party use in connection with the involved goods, we disagree and this factor remains neutral. However, the fact that there is no evidence showing commercial weakness in the Jefferson name, at least not in connection with the involved goods, is not tantamount to a finding that any marks containing the same name are confusingly similar, even assuming the marks are used on related goods. As pointed out, there is no dispute that Jefferson is an extremely famous historical figure and, at least with wine, has some added significance or suggestive meaning in connection with the involved goods. In other words, consumers are not only accustomed to seeing his name in various aspects of life, but may understand the name differently if used in connection with wine. In sum, although Jefferson’s name has no demonstrated commercial weakness in connection with the involved goods, the name and Jefferson’s image are ubiquitous in the United States. In addition and aside from general fame and Jefferson being an iconic figure of U.S. history, the record shows that Jefferson is known as an 8 In particular, the Examining Attorney relies on a Trademark Electronic Search System (“TESS”) printout purportedly showing the results for a search of the name “Thomas Jefferson.” Attached to Office Action issued on February 12, 2015. Also attached are copies of the TESS printouts for the registrations with the name. Serial No. 86075352 - 8 - important figure in the history of wine in the United States. With this in mind, we turn now to an analysis of the marks bearing in mind the significance of Jefferson and the manner in which the name and/or image appears within the entireties of the marks. C. The similarity or dissimilarity of the marks in their entireties in terms of appearance, sound, connotation and commercial impression. In this du Pont likelihood of confusion factor, we focus on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont de Nemours & Co., 177 USPQ at 567. Here, “[t]he 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.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). See also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. June 5, 1992). Finally, although we must compare the marks in their entireties, it is a well- established principle that, in articulating reasons for reaching a conclusion on the issue of likelihood 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. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Serial No. 86075352 - 9 - With the above principles as well as the discussion regarding the importance of the Jefferson’s name, we begin our analysis of the two marks and begin with Applicant’s mark: With respect to this mark, we find its dominant element to be the name GERARD BERTRAND. This name not only appears first but has no demonstrated or apparent relevance or significance in the context of wine other than identifying the name of a vintner. As previously noted, there is a statement in the application that this name refers to a living individual whose consent to register the mark is of record; however, this does not mean that consumers are aware of this individual or that his name will be understood in any manner other than an individual and source for the wine. With respect to “Cuvée,” it is a descriptive word meaning “bulk wine; especially : wine in casks or vats so blended as to ensure uniformity and marketability [or] a blend of still wines used in the production of champagne.”9 With respect to the THOMAS JEFFERSON element, consumers will of course immediately recognize this as the name of a very famous former President and 9 Definition taken from The Merriam-Webster Online Dictionary, based on the print version of Merriam-Webster's Collegiate Dictionary, Eleventh Edition. Printout attached to Office Action issue on January 15, 2014. Serial No. 86075352 - 10 - Founding Father of the United States. We agree with Applicant, and apparently so does the Examining Attorney,10 that the mention of this famous name will be perceived by consumers as “paying homage” or a tribute to the man who was also known to be a wine aficionado. Thus, in terms of the mark’s overall commercial impression, it will likely be understood as “Gerard Bertrand” wine (cuvee) with a dedication or tribute to Jefferson. We turn our attention now to Registrant’s mark: Viewing this mark in its entirety, there is certainly a strong colonial-theme, with a clear intent to pay homage to Jefferson. The decorative oval border certainly enhances the colonial sentiment. Nevertheless, when viewing the mark on beer, it is the word YARDS, appearing at the apex of the mark in larger letters, that is most likely the element of the registered mark that consumers will look to for purposes of identifying or recalling the source of the beer. Although YARDS comprises only one 10 The Examining Attorney states “[a]s discussed by the applicant and further shown by the evidence of record, both parties intend to pay ‘homage’ to Thomas Jefferson.” 11 TTABVUE 7 (Brief at unnumbered p. 6). Serial No. 86075352 - 11 - of several literal terms in a composite design mark, it is the single arbitrary term in the mark. We remain cognizant that we must look at the entirety of the mark and that the “oval portrait” of Jefferson sets the background of the entire mark. However, the image of this President is hardly unique or distinctive; in other words, while consumers may recall a Jefferson theme or image, they are more likely to look elsewhere in the mark for purposes of identifying a distinctive source-identifier. Moreover, in viewing and contemplating the entire mark, consumers are more likely to associate Jefferson’s name and image with a particular recipe or style of beer rather than identifying the actual source of the beer. That is, when the wording ALES OF THE REVOLUTION is read in conjunction with AUTHENTIC RECIPE and THOMAS JEFFERSON’S TAVERN ALE,” these elements convey information about a particular revolution-era recipe or style of beer. More specifically, because Jefferson’s name is used in the possessive form before “tavern ale,” a descriptive term for a type of beer, consumers are likely to believe the beer derives from a particular recipe created or preferred by Jefferson. The wording “authentic recipe,” whether true or not, further enhances this meaning. For those familiar with Jefferson’s beer-making past, however, it would more logical to believe that the beer derives from one of Jefferson’s recipes. In comparing the two marks, we find their connotations and overall commercial impressions to be more dissimilar than similar, despite both paying homage to Jefferson. On the one hand, Applicant’s mark conjures a vintner or individual (“Gerard Bertrand”) as the source of wine who is paying homage to one of our most Serial No. 86075352 - 12 - famous Presidents who had a renowned fondness for wine and winemaking. Registrant’s mark, on the other hand, carries a different commercial impression of colonial-themed ale from the source “Yards” with an emphasis on a vintage recipe that was perhaps favored or created by Jefferson. In other words, although both marks may be broadly interpreted as a tribute to the same famous American president, the marks are distinguishable based on their different overall commercial impressions. The marks are sufficiently different that even if consumers are familiar with one mark, they are not likely to be confused as the source upon encountering the other mark on related goods. Accordingly, the first du Pont factor weighs against a finding of likelihood of confusion. D. Conclusion Despite the record showing that there is some relationship between beer and wine, we find that confusion is not likely because of the differences between the marks. The overall commercial impression created by the Applicant’s mark: for wine is sufficiently different from Registrant’s mark: Serial No. 86075352 - 13 - for beer. Decision: The refusal to register Applicant’s mark is reversed. Copy with citationCopy as parenthetical citation