White Rock Distilleries, Inc.

Trademark Trial and Appeal Board

Oct 5, 2009

No. 77093221 (T.T.A.B. Oct. 5, 2009)

Hearing: Mailed: October 5, 2009
August 11, 2009 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re White Rock Distilleries, Inc.
________

Serial No. 77093221
_______

Daniel I. Schloss of Greenberg Traurig, LLP for White Rock
Distilleries, Inc.

Renee Servance, Trademark Examining Attorney, Law Office
111 (Craig D. Taylor, Managing Attorney).
_______

Before Quinn, Hairston and Bergsman, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application was filed by White Rock Distilleries,
Inc. to register the mark VOLTA (standard character format)
for goods ultimately identified as “energy vodka infused
with caffeine” in International Class 33.1
Registration was refused by the trademark examining
attorney under Section 2(d) of the Trademark Act on the

1 Serial No. 77093221, filed January 29, 2007, alleging a date of
first use anywhere and a date of first use in commerce of August
20, 2007.
THIS OPINION IS A CITABLE
PRECEDENT OF THE TTAB
Ser No. 77093221
2
ground that applicant’s mark, when used on applicant’s
goods, so resembles the previously registered mark shown
below

for “sparkling fruit wine; sparkling grape wine; sparkling
wine; wines,”2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Our determination of the issue of likelihood of
confusion is based on analysis of all of the probative

2 Registration No. 3247456, issued May 29, 2007. The
registration contains the following statements: (1) The mark
consists of the drawing of a vine shoot in various shades of
brown and black, below of which appears the word TERZA in capital
black letters and below it the word VOLTA in smaller capital
yellow letters. The color brown appears in the vine shoot
drawing. The color black appears in the vine shoot drawing as
well as in the word TERZA. The color yellow appears in the word
VOLTA. (2) The color(s) Black, Brown and Yellow is/are claimed
as a feature of the mark. (3) The foreign wording in the mark
translates into English as third party.

Ser No. 77093221
3
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 first turn to compare the 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).
Ser No. 77093221
4
As to appearance, we find that the prominent design
feature and the term TERZA in the registered mark serve to
distinguish the registered mark visually from applicant’s
mark. The term TERZA clearly dominates over the term VOLTA
in the registered mark as TERZA appears in large bold
letters above VOLTA. The examining attorney contends that
the respective marks are similar because applicant may
display its VOLTA mark in the same lettering as the literal
portion of registrant’s mark and with a similar design.
When a word is registered in standard character format, the
Board must consider all reasonable manners of display that
could be represented, including the same stylized lettering
as that in which a registrant’s mark appears. See Phillips
Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ
35 (CCPA 1971). See also, In re Data Packaging Corp., 453
F.2d 1300, 1302 (CCPA 1972) [“It seems to be well
established that a single registration of a word mark may
cover all of its different appearances, potential as well
as actual”]. In this case, however, the literal portion of
registrant’s mark does not appear in stylized lettering.
Rather, it appears in a plain block style of lettering
under the more prominent design. Furthermore, rights
associated with a word mark in standard character (or
typed) form reside in the wording and not in any particular
Ser No. 77093221
5
display of the word. See Trademark Manual of Examining
Procedure (TMEP) §1207.01(c)(iii)(5th ed. 2007). Generally,
rights in the word would not be extended to include
protection for that word combined with, for example, other
words or a design element. See Fossil, Inc. v. The Fossil
Group, 49 USPQ2d 1451, 1454 (TTAB 1998) [“[O]pposer’s typed
drawing registrations of FOSSIL afford opposer a scope of
protection which encompasses all reasonable manners in
which the word FOSSIL could be depicted including, simply
by way of example, all lower case block letters, all upper
case block letters, a mixture of lower case and upper case
block letters and various script forms. However, opposer’s
registrations of the word FOSSIL in typed drawing form do
not afford opposer rights in the word FOSSIL combined with
other wording or with designs”]. In this case, it would
not be reasonable to assume that applicant’s VOLTA mark
would be presented with the design element appearing in
registrant’s mark. In sum, we find that the respective
marks are not similar in appearance.
As to sound, because the literal portion of the
registered mark begins with the term TERZA, this mark
sounds somewhat different from applicant’s mark.
With respect to connotation, the examining attorney
has offered several different meanings of the individual
Ser No. 77093221
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terms “terza” and “volta” in Italian. Regardless of the
various meanings, we find that the marks, as applied to the
respective goods, are arbitrary. In other words, neither
mark has any meaning as applied to the respective goods.
At best, applicant’s VOLTA mark may be considered a “play”
on the word “volt,” and suggest a “rush,” when applied to
applicant’s energy vodka infused with caffeine.
Registrant’s TERZA VOLTA and design mark, however, makes no
such suggestion when applied to registrant’s wines. In
short, we find that the respective marks do not have
similar connotations.
Finally, when we consider the marks in their
entireties, we find that they engender different commercial
impressions. The du Pont factor of the similarity of the
marks, therefore, favors applicant.
We next consider the goods, trade channels, and
purchasers. It is not necessary that 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
Ser No. 77093221
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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).
We find that the examining attorney has failed to
establish on this record that applicant’s goods and
registrant’s goods are related. There is no per se rule
that holds that all alcoholic beverages are related. See
G. H. Mumm & Cie v. Desnoes & Geddes Ltd., 917 F.2d 1292,
16 USPQ2d 1635 (Fed. Cir. 1990)[RED STRIPE and design for
beer was not confusingly similar to a design of a red
stripe for wines and sparkling wines]; National Distillers
and Chemical Corp. v. William Grant & Sons, Inc., 505 F.2d
719, 184 USPQ 34 (CCPA 1974) [DUET for prepared alcoholic
cocktails, some of which contained brandy, and DUVET for
French brandy and liqueurs not confusingly similar]. See
also, TMEP §1207.01(a)(iv) [“there can be no rule that
certain goods or services are per se related, such that
there must be a likelihood of confusion from the use of
similar marks in relation thereto”].
The examining attorney submitted excerpts from
several Internet websites showing that (1) vodka and wine
Ser No. 77093221
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are offered on the same website to the same consumers, and
(2) there are several vodkas which are made with wine
grapes. This evidence, however, is hardly sufficient to
convince us that applicant’s energy vodka infused with
caffeine and registrant’s wines are related. There is no
evidence that vodka, much less applicant’s specific type of
vodka, and wine emanate from a single source under a single
mark. Also, there is no evidence that energy vodka infused
with caffeine and wine are ingredients for any particular
cocktails such that we could consider them complementary
products that would be bought and used together. Although
vodka and wine may both be described generally as
“alcoholic beverages,” this is insufficient to establish
that applicant’s and registrant’s goods are related. See
General Electric Company v. Graham Magnetics Inc., 197 USPQ
690 (TTAB 1977) [It is not enough to find one term that may
generically describe the goods]. Furthermore, although we
may assume that vodka and wine are sold to the same class
of purchasers, namely persons of legal drinking age, this
is not a sufficient basis on which we may conclude that
such goods are related. In this case, the examining
attorney has failed to present evidence which establishes
that applicant’s energy vodka infused with caffeine and
registrant’s wines are related goods. The du Pont factor
Ser No. 77093221
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of the similarity of the goods, therefore, favors
applicant.
Balancing the du Pont factors in this case, we find
that notwithstanding that the respective goods travel in
the same channels of trade to the same class of purchasers,
confusion is unlikely because the marks are too dissimilar
and the goods have not been shown to be related.
Decision: The refusal to register under Section 2(d)
is reversed.