Acorn Alegria Wineryv.Sweely Holdings, LLC

Trademark Trial and Appeal Board

Apr 11, 2008

No. 91168790 (T.T.A.B. Apr. 11, 2008)

Hearing: December 19, 2007

Mailed: April 11, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Acorn Alegria Winery
v.
Sweely Holdings, LLC
_______

Opposition No. 91168790
to Application Nos. 78497110, 78497114 and 78497107
_______

Gregory N. Owen of Owen, Wickersham & Erickson for Acorn
Alegria Winery.

Jonathan F. Ariano of Osborn Maledon for Sweely Holdings,
LLC.
_______

Before Walters, Grendel and Wellington, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Acorn Alegria Winery filed its opposition to the
applications of Sweely Holdings, LLC to register the marks
ACORN HILL ESTATE,1 ACORN HILL VINEYARDS2 and ACORN HILL

1 Application Serial No. 778497110, filed October 8, 2004, based upon an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods. The application includes a
disclaimer of ESTATE apart from the mark as a whole.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Opposition No. 91168790
2
WINERY3 for “wine and potable spirits,” in International
Class 33.
As grounds for opposition, opposer asserts that
applicant’s mark, when applied to applicant’s goods so
resembles opposer’s previously used and registered mark
ACORN for “wine”4 and the previously used trade name ACORN
WINERY as to be likely to cause confusion, under Section
2(d) of the Trademark Act.
Applicant, in its answer, denied the salient
allegations of the claim.
The Record
The record consists of the pleadings; the file of the
involved applications; a certified status and title copy of
Registration No. 2061738, opposer’s pleaded registration,
and certified status and title copies of Registration Nos.
3158120 and 3180315, owned by applicant, and various
specified responses and supplemental responses by applicant
to opposer’s interrogatories, all made of record by the
parties’ notices of reliance. The record also includes the

2 Application Serial No. 78497114, filed October 8, 2004, based upon an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods. The application includes a
disclaimer of VINEYARDS apart from the mark as a whole.

3 Application Serial No. 78497107, filed October 8, 2004, based upon an
allegation of a bona fide intention to use the mark in commerce in
connection with the identified goods. The application includes a
disclaimer of WINERY apart from the mark as a whole.

4 Registration No. 2061738, issued May 13, 1997, in International Class
33. Renewed for a period of ten years as of May 13, 2007; Section 15
affidavit filed and acknowledged.
Opposition No. 91168790
3
discovery and testimony depositions of William Nachbaur,
opposer’s president, and the testimony deposition of Jess
Sweely, applicant’s president, with accompanying exhibits.
Both parties filed briefs on the case.
We address, preliminarily, applicant’s motion to
exclude as hearsay pp. 65:25 to 66:25 of the Nachbaur
testimony deposition. Applicant also moves for exclusion of
section II.F of opposer’s main brief, alleging that it
relies on this testimony. In the referenced pages,
opposer’s witness, Mr. Nachbaur, recounts his experience at
a local wine supply provider and his conversation with an
employee there.
Hearsay is an out-of-court statement offered to prove
the truth of the matter asserted. Fed. R. Evid. 801(c).
Courts have responded to the hearsay objection in varying
ways. See generally, J.T. McCarthy, McCarthy on Trademarks
and Unfair Competition, § 23:15 (4th ed. 2008). Applicant’s
objection is overruled, and we have considered this portion
of Mr. Nachbaur’s testimony in the present case, as well as
the referenced portion of opposer’s brief. This testimony
is not hearsay for it is accepted not for the truth of the
statements made by the employee to Mr. Nachbaur, or the
reasons therefor, but rather for the fact that the
statements referred to in his testimony were, in fact, made
to him. See Toys "R" Us, Inc. v. Lamps R Us, 219 USPQ 340,
Opposition No. 91168790
4
346 (TTAB 1983); and Finance Co. of America Corp., 205 USPQ
1016, 1035 (TTAB 1979). Although the testimony is
admissible, the probative value is discussed infra.
Factual Findings
Opposer is a small vineyard and winery located in
Sonoma County, California, and owned and operated by William
Nachbaur and his wife. The operation consists of 31 acres,
of which 26 acres are planted with grapes, and a building
that includes the Nachbaur home, the Acorn Winery retail
outlet and tasting room, and the winery. The winery is open
to the public by appointment and during events. Opposer
usually makes about 200 cases of wine on-site annually and
the rest of its wine is made for it at other wineries.
Opposer plants a number of different types of grapes and
makes several different varietals, including cabernet franc,
sangiovese and zinfandel, among others.
Opposer harvests about 100 tons of grapes annually and
sells about 50% of its grape yield to other wineries to use
in making their own wines. These wineries will include, on
their bottle labels, a reference to opposer as the source of
the grapes.
Opposer’s first wine with an ACORN label was a 1994
sangiovese, which was available for sale in 1996. Opposer’s
first interstate sale was in 1996 to an individual in
Washington State. Opposer’s winery became profitable in
Opposition No. 91168790
5
2004 and, its gross annual revenue for 2005 was almost
$600,000, representing sales of 2500 cases of wine.
Opposer’s sales and revenues have increased each year since
2004. Fifty percent of opposer’s sales are directly to
consumers who visit the winery and/or place orders by phone
from throughout the United States. Opposer sells one third
of its wine through five distributors located in New
Hampshire, New York, Washington D.C., Texas and Japan.
Opposer also sells its wine to retailers and restaurants in
California.
Opposer uses “Alegria Vineyards” to identify its
vineyards and “Acorn Winery” to identify its winery and
sales operation. These designations appear on its
promotional and informational literature and the “Alegria
Vineyards” designation also appears on opposer’s wine
labels. Opposer uses the mark ACORN prominently on all of
its wine labels, followed by the particular varietal name,
for example, “Heritage Vines Zinfandel,” “Axiom Syrah” and
“1998 Dolcetto” (Nachbaur testimony deposition, Exh. 27).
In 2005, opposer spent just under $60,000 on marketing
its winery and its wines and opposer promotes its wines by
several different means. Opposer belongs to several
organizations, including the Family Winemakers of
California, the Russian River Valley Wine Growers and
Zinfandel Advocates and Producers. These organizations
Opposition No. 91168790
6
sponsor competitions and events, including tastings, that
are open, variously, to the trade and the public. Opposer
has won numerous awards for its wines. Opposer participates
in approximately ten trade shows and offsite events/tastings
for the public annually, including outside of California in
New Hampshire. Opposer also sends its wines to restaurants
and reviewers and has been favorably reviewed in a number of
publications, including The Wall Street Journal, the San
Francisco Chronicle and the Miami Herald, and wine/food
magazines such as Santé and The Wine Enthusiast. Opposer
has printed materials consisting of technical sheets for
each of its wines, which it gives to retailers as shelf-
talkers and includes with each bottle it sells. Opposer
also has a website and an email newsletter that it
distributes to all customers and visitors to its winery.
Applicant, Sweely Holdings, LLC, is a family-owned
investment company that holds real estate investments,
stocks and bonds, and is a majority partner in Acorn Hill
Winery and Vineyard. Jess Sweely, who testified on behalf
of applicant, is its managing director. Mr. Sweely states
that Acorn Hill Farm, Inc., of which Mr. Sweely’s wife is
the sole stockholder, has owned the Acorn Hill Farm
equestrian business since 1991; and that the Sweelys have
operated Acorn Hill Farm in the Charlottesville, Virginia,
area since the mid-1970’s. Acorn Hill Farm raises, sells,
Opposition No. 91168790
7
trains and shows horses, and currently owns approximately
150 horses for these purposes. Applicant owns two federal
registrations for the mark ACORN HILL FARM for “horse farms;
horse breeding and stud services,” in International Class 44
(registration no. 3180315), and for “horse training,
entertainment in the nature of equestrian competitions,” in
International Class 41 (registration no. 3158120).
In a separate location in the same general area as
Acorn Hill Farm, applicant owns a 300 acre parcel of land
where it has begun planting vineyards, having planted 20
acres two years ago and 12 acres last year. Applicant has
also constructed a cross-country course for its horses on 75
acres of this parcel and is in the process of building on
this parcel a 26,000 square foot wine production facility
and a 16,000 square foot tasting, banquet and gift facility.
Applicant plans to produce approximately 2000 cases of wine
from the vineyard’s 2006 harvest and will sell this wine
when its tasting, banquet and gift facility opens. The
horse facilities on this parcel will be visible from the
wine facilities and vice versa.
At the time of trial, applicant had not yet begun
advertising or selling its wines; although, applicant has
done some preliminary marketing of its winery in Virginia.
In November 2005, applicant had registered two domain names,
i.e., acornhillwinery.com and acornhillvineyard.com; and
Opposition No. 91168790
8
applicant had recently joined the Monticello Trail, an
organization promoting local wineries. In choosing marks
for its wines and vineyard, Mr. Sweely indicated that
applicant hopes to trade off the good will associated with
its equestrian business.
Analysis
Because opposer has properly made its pleaded
registration of record, we find that opposer has established
its standing to oppose registration of applicant’s marks.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Moreover, because opposer’s pleaded registration is of
record, Section 2(d) priority is not an issue in this case
as to the mark and goods covered by said registration. See
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974). Further, opposer has
established use of its trade name, Acorn Winery, since at
least 1996.
Our determination of likelihood of confusion under
Section 2(d) must be based on an analysis of all of the
probative 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). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Opposition No. 91168790
9
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Company,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also
In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209
(TTAB 1999) and the cases cited therein.
Before considering the goods and the marks, we note
applicant’s emphasis in both its evidence and brief on its
thirty-two years in the equestrian business and its
continuous use of its registered ACORN HILL FARM mark in
connection therewith, contending that it has developed
considerable fame throughout the United States and
internationally. Applicant characterizes its new wine
business as “an expansion,” noting its use of a horse design
on its proposed wine label, and stating its intention to
hold equestrian events at the cross-country course on the
same land parcel as the vineyards to concurrently promote
its winery. Applicant’s evidence about Acorn Hill Farm,
Opposition No. 91168790
10
Inc.’s equestrian business is relevant only insofar as that
business relates to applicant’s wine business. However, we
find that there is no relationship between these two
businesses. The fact that applicant has equestrian
facilities on the same parcel of land as its vineyard and
winery provides, at most, a potential marketing tool for
applicant to expose its equestrian business clients to its
winery. To the extent that applicant is arguing that the
goods are different or the marks are distinguishable
because, unlike opposer, applicant’s winery is operated by a
business that also offers equestrian services, applicant’s
arguments are unsupported by fact or law.
Turning, now, to the goods involved in this case, we
must consider the goods as identified in opposer’s
registration and in the involved applications. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed.”) See also Paula Payne
Products v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ
Opposition No. 91168790
11
76, 77 (CCPA 1973) (“Trademark cases involving the issue of
likelihood of confusion must be decided on the basis of the
respective descriptions of goods.”) There is no question
that the goods of the parties, i.e., “wine,” are identical.
This du Pont factor weighs strongly against applicant.
Applicant states that the wine business is largely
regional in nature, noting opposer operates a small regional
winery with limited wine production and that its wine is
promoted and distributed primarily in California; whereas,
applicant is located in Virginia and intends to promote and
sell its wine primarily in the mid-Atlantic region. Thus,
applicant contends, essentially, that the trade channels and
purchasers are different. This argument is not well taken.
The parties’ goods are identical and the identifications of
goods contain no limitations. The channels of trade and
classes of purchasers are identical. See Canadian Imperial
Bank v. Wells Fargo, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987). Further, opposer has a federal registration, which
is national in scope.
Applicant argues that the consumers of wine are more
sophisticated and careful than average consumers, and that
the region from which a wine originates is an important
focus for wine purchasers. Applicant also contends that the
varietals from these different regions are largely
different. The record contains no evidence to support
Opposition No. 91168790
12
applicant’s contentions about the significance of the region
in the purchasing decision or the growing regions of certain
grape varieties. Nor is this argument well taken. First,
neither the goods nor the marks involved contain any
limitations to wines produced from certain varieties grown
in certain regions. Second, there are no limitations in the
identifications of goods to a certain class of purchasers,
thus, the class of purchasers encompasses all usual
consumers of wine, which includes purchasers of all levels
of sophistication. See Canadian Imperial, supra.
Considering, now, the marks involved herein, we note
that where marks appear on identical goods, the degree of
similarity of the marks necessary to support a conclusion of
likelihood of confusion decreases. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992). Moreover, while we must base our
determination on a comparison of the marks in their
entireties, we are guided, equally, by the well established
principle that, in articulating reasons for reaching a
conclusion on the issue 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,
provided the ultimate conclusion rests on consideration of
the marks in their entireties.” In re National Data Corp.,
732 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Opposition No. 91168790
13
Opposer contends that applicant has incorporated
opposer’s mark, ACORN, into its marks in its entirety; that
ACORN is the first and dominant portion of applicant’s marks
and, thus, consumers are likely to shorten applicant’s marks
to ACORN in calling for the goods; that ACORN is an
arbitrary term in connection with wine; that ACORN is a
strong mark for opposer because, on this record, there are
no other uses of ACORN in connection with wine; and that
opposer’s ACORN mark is famous. Opposer also contends that
HILL is a weak term in connection with wine because land
formations such as “hill” and “mountain” are commonly used
in vineyard and winery names; that the additional terms,
ESTATE, VINEYARDS and WINERY, respectively, in applicant’s
marks are merely descriptive; and, thus, that the additional
terms in applicant’s mark do not serve to distinguish
applicant’s marks from opposer’s mark.
Applicant contends that the marks are dissimilar,
stating that opposer’s mark consists of only one word, while
each of its marks consists of three words; and that the
commercial impressions of the marks are “starkly
dissimilar.” Applicant states the following:
Opposer’s mark contains the word “Acorn” standing
alone. This solitary noun evokes thoughts of the
small fruit of an oak tree and, in common
vernacular, is used as a metaphor to truthfully
describe the size of a person or an object. … By
contrast, Acorn Hill is a whimsical reference to a
Knoll, mount, mound and/or topographical
prominence. Grammatically, the addition of the
Opposition No. 91168790
14
noun “Hill” converts the word Acorn from a noun
(as in opposer’s mark) to an adjective. … The
addition of the prominent noun, “Hill,” directs
the reader’s imagination to an idyllic rolling
landscape or scenic hillside.”
(Brief, p. 9-10.)

Considering applicant’s marks, we find that the
respective terms ESTATE, VINEYARDS and WINERY in applicant’s
marks are unquestionably merely descriptive in connection
with wine and, thus, of little significance in determining
the commercial impressions of applicant’s marks. We find
the remaining portion of each of applicant’s marks, ACORN
HILL, to be a unitary term connoting a place covered in
acorns due to the presence of many oak trees. However, our
analysis does not end here. We agree with opposer that
ACORN is an arbitrary term in connection with wines and it
is a strong mark, evidenced by the lack of third-party
registrations or uses in this record. Opposer’s mark also
suggests oak trees and, thus, a bucolic setting. It is
obvious that vineyards may have hills and, thus, both
parties’ marks are likely to evoke similar scenes in the
minds of consumers. In view of the strength of opposer’s
mark5 and the similar connotations, we find that the
similarities between the parties’ marks far outweigh their
dissimilarities. Thus, we find that this factor also favors
opposer.
Opposition No. 91168790
15
Applicant cites Champagne Louis Roederer S.A. v.
Delicato Vineyards, 148 F.3d 1373, 47 USPQ2d 1459 (Fed. Cir.
1998), in which the Court upheld the Board’s finding of no
likelihood of confusion between CRYSTAL CREEK and CRISTAL
and CRISTAL CHAMPAGNE, both for wines, because of the
dissimilarities of the marks, in particular, their different
connotations. In the underlying decision, the Board stated
that “while [CRISTAL] suggested the clarity of the wine
within the bottle or the glass of which the bottle itself
was made, [CRYSTAL CREEK] suggests a very clear (and hence
probably remote from civilization) creek or stream.” The
case before us is distinguishable on its facts as we find
the connotations of the marks to be substantially similar.
Opposer contends that actual confusion has occurred
even though applicant has not started selling wine to the
public under its marks. Opposer’s evidence of an isolated
incident with a supplier is not significant; however,
because applicant has not begun advertising and sales of its
wines, significant actual confusion is unlikely at this
time. Therefore, this du Pont factor is essentially
neutral.
When we consider the record and the relevant likelihood
of confusion factors, and all of the parties’ arguments

5 While opposer argues that its mark is famous, this allegation is not
supported by evidence in the record, nor is it necessary to our
determination.
Opposition No. 91168790
16
relating thereto, including those arguments not specifically
addressed herein, we conclude that in view of the similarity
in the commercial impressions of opposer’s mark, ACORN, and
applicant’s marks, ACORN ESTATE, ACORN VINEYARDS and ACORN
WINERY, their contemporaneous use on the identical goods
involved in this case is likely to cause confusion as to the
source or sponsorship of such goods.
Decision: The opposition is sustained.