The 67 Liquor Shop, Inc.

Trademark Trial and Appeal Board

Sep 26, 2001

No. 75724894 (T.T.A.B. Sep. 26, 2001)

9/26/01

Paper No. 13
JQ

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re The 67 Liquor Shop, Inc.
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Serial No. 75/724,894
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Bruce E. Lilling of Lilling & Lilling for applicant.

Alex S. Keam, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Quinn, Wendel and Bottorff, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application has been filed by The 67 Liquor Shop,
Inc. to register the mark WALL STREET WINE EXCHANGE for
“wine brokerage services.”1
Registration has been refused by the Trademark
Examining Attorney under Section 2(d) of the Trademark Act
on the ground that applicant’s mark, as used in connection

1 Application Serial No. 75/724,894, filed June 9, 1999, alleging
a bona fide intention to use the mark in commerce. Applicant
subsequently filed an amendment to allege use setting forth dates
of first use of May 29, 2000.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/724,894
2
with applicant’s services, so resembles the previously
registered mark WALL STREET for “whiskey”2 as to be likely
to cause confusion.
When the refusal was made final, applicant appealed.3
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested.
The Examining Attorney maintains that the marks are
highly similar and that the goods and services are related.
As to the later point, the Examining Attorney asserts that
wine and whiskey often emanate from a common source and
that these goods travel in the same trade channels. The
Examining Attorney goes on to state that it is “common
practice for retailers to sell goods featuring the same
mark as its store” and that “[c]onsumers are likely to
believe that the applicant’s wine brokerage services
feature whiskey with the same brand name as the services,
or that the whiskey is provided by the same party as the
source of the wine brokerage services.” The Examining
Attorney argues that retailers are likely to be confused as
well. In response to applicant’s argument based on laws

2 Registration No. 963,057, issued July 3, 1973; renewed.
3 The final refusal also was based on applicant’s failure to
comply with a requirement to disclaim the words “Wine Exchange”
apart from the mark. Applicant, in its reply brief, proffered a
disclaimer in compliance with the requirement. Accordingly, the
issue is moot, and a disclaimer of the words “Wine Exchange” has
been entered in the file.
Ser No. 75/724,894
3
prohibiting the same entity from distilling and also
selling the alcoholic beverages, the Examining Attorney
states that consumers may not even be aware of such laws.
In support of the refusal, the Examining Attorney submitted
excerpts retrieved from the NEXIS database and the
Internet, and third-party registrations, all of which show,
according to him, that wine and whiskey may emanate from
the same source.
Applicant readily concedes that the marks are similar,
stating that “[a]s self apparent here, the principal
portion of each of the marks is WALL STREET, so the
consideration [of likelihood of confusion] necessarily
revolves around the similarity or dissimilarity between the
goods and services.” Applicant asserts that the alcoholic
beverage industry is heavily regulated by governmental
laws, and that there is a very clear demarcation between
distillers on the one hand and sellers on the other hand.
Applicant points to federal and state laws that prevent the
same entity from distilling alcoholic beverages and then
also acting as a direct seller of them to the public. In
response to the Examining Attorney’s evidence, applicant
argues that the relatedness of wine and whiskey is not the
specific comparison to make here, but rather wine brokerage
services and whiskey must be compared. Applicant states
Ser No. 75/724,894
4
that there is no evidence that consumers expect a single
source to be responsible for both wine brokerage services
and whiskey, and, moreover, that it is legally impossible
for any company to both produce distilled alcoholic
beverages and directly sell them. In support of its
position, applicant submitted the declaration of Bernard
Weiser, applicant’s president. Mr. Weiser attests to
federal and New York state laws providing that distillers
are not permitted to sell at retail directly to the
consuming public; rather, the distillers sell their
alcoholic beverages to distributors who, in turn, sell them
to retail stores for ultimate distribution to purchasers.
With its reply brief, applicant submitted a copy of its
recently issued (June 19, 2001) Registration No. 2,462,666
for the mark WALL STREET for services including “wine
trading and wine brokerage.”4
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

4 Although the submission is technically untimely, a remand of
the application to the Examining Attorney would have been
warranted inasmuch as this evidence was not previously available.
Thus, we have considered the registration. We hasten to add,
however, that, even in its absence, we would have reached the
same result on the merits.
Ser No. 75/724,894
5
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 and/or services. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Applicant’s mark WALL STREET WINE EXCHANGE and
registrant’s mark WALL STREET are similar in sound,
appearance and meaning. Applicant does not disagree and,
thus, we turn to focus our attention, as has applicant, on
a comparison of applicant’s wine brokerage services with
registrant’s whiskey.
The recitation of services in the application and the
identification of goods in the cited registration control
the legal comparison herein. Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed.
Cir. 1987); and In re Elbaum, 211 USPQ 639 (TTAB 1981). We
recognize, at the outset of our consideration, that the
Examining Attorney’s evidence suggests that whiskey and
wine may emanate from a single source. We agree with
applicant, however, that its services are “one step
removed” from wine. While the evidence shows that whiskey
and wine are broadly related in that both are alcoholic
beverages, nevertheless, there is a clear distinction
between whiskey and wine brokerage services. The record is
Ser No. 75/724,894
6
devoid of any evidence suggesting that these specific goods
and services, namely “whiskey” and “wine brokerage
services,” may emanate from a common source. Moreover, as
highlighted by applicant, the likelihood of confusion
scenarios advanced by the Examining Attorney are not
realistic given the federal laws preventing a distiller of
alcoholic beverages from also acting as a retailer of
alcoholic beverages.
Based on the record before us, we see the Examining
Attorney’s view of the likelihood of confusion as amounting
to only a speculative, theoretical possibility, especially
in view of the distinction between the goods and services
and the highly regulated nature of the alcoholic beverage
industry. 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., 954 F.2d 713, 21 USPQ2d 1388, 1391 (Fed. Cir. 1992),
citing Witco Chemical Co. v. Whitfield Chemical Co., Inc.,
Ser No. 75/724,894
7
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.