Treana Winery LLC

Trademark Trial and Appeal Board

May 12, 2005

No. 76532863 (T.T.A.B. May. 12, 2005)

5/12/2005

THIS OPINION IS NOT CITABLE
AS PRECEDENT OF
THE TTAB

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

Trademark Trial and Appeal Board
____________

In re Treana Winery LLC
___________

Serial No. 76532863
_____________

Scott W. Petersen of Holland & Knight for Treana Winery
LLC.

Christopher L. Buongiorno, Trademark Examining Attorney,
Law Office 102 (Thomas V. Shaw, Managing Attorney).
_____________

Before Hanak, Walters and Bucher, Administrative Trademark
Judges.

Opinion by Hanak, Administrative Trademark Judge:

Treana Winery LLC (applicant) seeks to register in
typed drawing form WESTSIDE RED for “wine.” The
application was filed on July 28, 2003 with a claimed first
use date of July 2003. The Examining Attorney noted at
page 2 of the first Office Action that “the applicant must
disclaim RED in the mark because it is merely descriptive
of the color of the wine.” Thereafter, applicant submitted
a disclaimer of RED apart from its mark in its entirety.
Ser. No. 76532863
2
Citing Section 2(d) of the Trademark Act, the
Examining Attorney has refused registration on the basis
that applicant’s mark as applied to wine is likely to cause
confusion with the mark WESTSIDE BLUE previously registered
in typed drawing form for “wine.” Registration No.
2,801,202.
When the refusal to register was made final, applicant
appealed to this Board. Applicant and the Examining
Attorney filed briefs. Applicant did not request an oral
hearing.
In any likelihood of confusion analysis, two key,
although not exclusive, considerations are the similarities
of the goods and the similarities of the marks. Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated
by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.”).
Considering first the goods, they are legally
identical. Both are described as simply “wine.”
Without providing evidentiary support, applicant
argues at page 2 of its brief that the wines are different
in that “applicant’s mark is used on a red wine which is
produced in the Napa Valley, California. The cited
Ser. No. 76532863
3
registrant has a single function for its wine products –-
special low-alcohol served in a blue bottle for the Jewish
holidays.” Not only does applicant offer no evidence in
support of this proposition, but moreover, even if this
proposition were true, it is legally irrelevant. It is
well settled that in Board proceedings, “the question of
likelihood of confusion must be determined based on an
analysis of the marks as applied to the goods and/or
services recited in applicant’s application vis-à-vis the
goods and/or services recited in [the cited registration],
rather than what the evidence shows the goods and/or
services to be.” Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
Because both the application and the cited registration
listed the goods as simply “wine,” then for our likelihood
of confusion analysis, we must consider the goods to be
legally identical.
Turning to a consideration of the marks, we note at
the outset that when the goods of the parties are legally
identical as is the case here, “the degree of similarity
[of the marks] necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992).
Ser. No. 76532863
4
In this case both marks consist of two words, and both
marks begin with the same arbitrary word WESTSIDE. As
noted earlier, applicant has disclaimed the exclusive right
to use the word RED in its mark acknowledging that red is
merely descriptive of the color of its wine. In addition,
as just noted, applicant, besides reiterating that its wine
is a red wine, also argues that registrant’s wine comes in
a blue bottle. When used on wine marketed in a blue
bottle, the BLUE portion of the registered mark would be
viewed as merely indicating the color of the bottle.
Obviously, in comparing applicant’s mark and
registrant’s mark we are obligated to compare the marks “in
their entireties.” In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 750 (Fed. Cir. 1985). However, in
comparing the marks in their entireties, it is completely
appropriate to give less weight to a portion of a mark that
is merely descriptive of the relevant goods or services.
National Data, 224 USPQ at 751 (“That a particular feature
is descriptive … with respect to the relevant goods or
services is one commonly accepted rationale for giving less
weight to a portion of the mark.”).
Not only is WESTSIDE the only arbitrary portion of
both marks, but in addition, it is “the first word” in both
marks, a factor which makes “the marks similar.” Palm Bay
Ser. No. 76532863
5
Imports, Inc. v. Veuve Clicquot, 396 F.3d 1369, 73 USPQ2d
1689, 1690 (Fed. Cir. 2005). See also Presto Products v.
Nice-Pak Products, 9 USPQ2d 1825, 1897 (TTAB 1998)(The fact
that two marks share the same first word is generally “a
matter of some importance since it is often the first part
of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered.”).
In sum, given the fact that the goods of applicant and
registrant are legally identical and the additional fact
that the two marks are very similar in that they both begin
with the arbitrary word WESTSIDE and then end with mere
descriptive wording causes us to find that the
contemporaneous use of the two marks would result in a
likelihood of confusion. This is particularly true because
both applicant’s mark and the registered mark are depicted
in typed drawing form. This means that the two marks are
not limited to being “depicted in any special form,” and
hence we are mandated to “visualize what other forms the
mark[s] might appear in.” Phillips Petroleum Co. v. C. J.
Webb Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). See
also INB National Bank v. Metrohost Inc., 22 USPQ2d 1585,
1588 (TTAB 1992). One reasonable manner of presentation
for both marks would be to depict the arbitrary portion
WESTSIDE in large lettering on one line, and then depict
Ser. No. 76532863
6
the subordinate elements (RED or BLUE) in decidedly smaller
lettering on a second line. When so depicted, the two
trademarks would be extremely similar, and their use on
identical goods would result in not a mere likelihood of
confusion, but rather in an extremely high probability of
confusion.
Decision: The refusal to register is affirmed.