Alphonse Capone Enterprises, Inc.

Trademark Trial and Appeal Board

Apr 19, 2013

No. 85453371 (T.T.A.B. Apr. 19, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: April 19, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

In re Alphonse Capone Enterprises, Inc.
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Serial No. 85453371
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F. William McLaughlin of Wood Phillips Katz Clark & Mortimer,
for Alphonse Capone Enterprises, Inc.
Andrew Leaser, Trademark Examining Attorney, Law Office 112,
Angela Bishop Wilson, Managing Attorney.
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Before Bucher, Taylor and Gorowitz,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Alphonse Capone Enterprises, Inc. (“applicant”) seeks registration on the Prin-
cipal Register of the mark ROARING 20’S BOOTLEG (in standard character for-
mat) used in connection with “distilled spirits” in International Class 33.1
The examining attorney has refused registration of applicant’s mark pursuant
to Trademark Act Sections 1 and 45, 15 U.S.C. §§ 1051, 1127, on the ground that
applicant seeks registration of more than one mark.

1 Application Serial No. 85453371 was filed on October 21, 2011, based upon applicant’s
claim of use anywhere at least as early as June 1, 2003, and use in commerce since at least
as early as January 2004.
Serial No. 85453371
2

When the refusal to register was made final, applicant appealed and requested
reconsideration. After the examining attorney denied the request for reconsidera-
tion, the appeal was resumed. Applicant and the examining attorney have filed
main briefs, and applicant has filed a reply brief. For all the reasons discussed be-
low, we reverse the refusal to register.
The application contained the following specimen:

During prosecution, applicant also made of record copies of earlier speci-
mens filed with the Office in connection with two previously-registered marks:
Serial No. 85453371
3

Marks Goods

ROARING
20’s
DIXIELAND

for “wine and dis-
tilled spirits” in
International
Class 33;2 and

ROARING
20’s
BOOTLEG

for “wine and dis-
tilled spirits” in
International
Class 33.3

Finally, applicant claims ownership of two other previously-issued registrations
for ROARING 20’s4 and ROARING 20’s PROHIBITION.5
The Lanham Act, the Trademark Rules and the Trademark Manual of Examin-
ing Procedure are all firmly grounded on the principle that a trademark applicant
may obtain registration of only a single mark in any one application. When the
specimen discloses that applicant seeks to register two marks in one application,
refusal of registration is proper. When determining whether the composite sought to
be registered projects a single commercial impression, “[e]verything depends on the
specimens.” In re Audi NSU Auto Union AG, 197 USPQ 649, 650 (TTAB 1977).
While it is clear that the alpha-numeric symbols making up the designations
“ROARING,” “20’s,” and “BOOTLEG” do appear on the specimens in different orien-
tations, colors, and sizes, that should not preclude a finding that the three designa-

2 Registration No. 2848861 issued on June 1, 2004; Section 8 affidavit (six-year) accepted
and Section 15 affidavit acknowledged.
3 Registration No. 2907044 issued on November 30, 2004; cancelled Sec. 8 (July 2011)
4 Registration No. 2772178 issued on October 7, 2003; Section 8 affidavit (six-year) accept-
ed and Section 15 affidavit acknowledged.
5 Registration No. 2938615 issued on April 5, 2005; Section 8 affidavit (six-year) accepted
and Section 15 affidavit acknowledged.
Serial No. 85453371
4

tions together comprise a single mark. For example, in New England Fish Company
v. The Hervin Company, 179 USPQ 743 (TTAB 1973), where the words BLUE
MOUNTAIN (in one type style) ap-
peared directly above KITTY O’S (in a
very different type style), this was
held to be a single, composite mark.
By contrast, in the Audi case, the word
“AUDI” represented applicant’s house mark and
“FOX” was the name for a particular line of ap-
plicant’s cars. In spite of the fact that members
of the relevant purchasing public had been conditioned to expect dual designations
in the context of the automobile industry, the determination that this consisted of
two marks was based largely on the wide space on the auto’s trunk lid between the
word “Audi” and the word “Fox” (and fox design). While sympathetic to applicant’s
explanation that this spacing results from aesthetic and engineering considerations,
the Board held based upon this specimen, that applicant was not permitted to regis-
ter “Audi Fox” and design as a single mark. In re Audi, 197 USPQ at 650.
Similarly, when Jordan Industries sought to register JORDAN JIF-LOK based on
the presentation of these terms on the front of the following specimen (center im-
age), the board held that the designation JIF-LOK was likely to be perceived as part
of the larger phrase “JIF-LOK ‘MIRACLE’ FASTENER,” and not as part of a single,
composite mark, including applicant’s somewhat larger and separated house mark,
JORDAN. In re Jordan Industries, Inc., 210 USPQ 158 (TTAB 1980):
Serial No. 85453371
5

Acknowledging the limitation of non-precedential Board
decisions, the examining attorney analogized to In re Auto
Value Assocs., Inc., Serial. No. 75338335, 2000 TTAB LEXIS 587
(TTAB Aug. 30, 2000) where the applicant sought to register
PARTS MASTER ULTRA based upon the specimen at right.
The examining attorney in Auto Value contended that this specimen did not evi-
dence use of a single mark, “Parts Master Ultra,” as depicted on applicant’s drawing
of record. Rather, she argued that consumers would perceive “Parts Master” and
“Ultra” as two distinct marks inasmuch as (1) they are physically separated by
space; (2) they are separated by the wording in the tagline, “The Ultimate Replace-
ment Parts,” and (3) they appear on the specimens in two different type styles, sizes
and colors. The Board, in that case, agreed with the overall position of the examin-
ing attorney, and was not persuaded otherwise by the argument that the applicant’s
similar specimens had been accepted in the past by other examining attorneys.
Rather, the Board was persuaded that it was significant that the word ULTRA
was separated from the words PARTS MASTER by the intervening words, “The Ul-
timate Replacement Parts,” and that the words ULTRA (in red lettering) is conspic-
uously excluded from the large, separate blue area (made up of three parallel blue
Serial No. 85453371
6

rectangles) – within which the words PARTS MASTER and “The Ultimate Re-
placement Parts” appear in contrasting white lettering on a blue background.
Critical to our decision in the case at bar is the fact that the look and feel of the
entire label is critical to the commercial impression it creates. An enterprise deriv-
ing its name from gangster Al Capone has presented imagery on its bourbon label of
a dancer from the Roaring 20s in a flapper dress above the depiction of an Old Town
Chicago speakeasy prominently featuring large neon signage with a marquee tout-
ing the appearance of a Dixieland jazz band. Unlike the specimens in “AUDI FOX,”
“JORDAN JIF-LOK,” and “PARTS MASTER ULTRA,” we find that the designations “ROAR-
ING 20’S” and “BOOTLEG” are close spatially, they stand out visually from competing
matter appearing on the label, and the intervening verbiage on the marquee is
simply part of the visual trade dress of the label (presenting informational lettering
of the size and proportion one would expect to see on an active marquee). Moreover,
we conclude that the relevant consumers will immediately perceive this composite,
ROARING 20’s BOOTLEG, as a single mark upon viewing this bourbon label. This
observation is entirely consistent with the dual designations (combined house mark
and product mark) that such purchasers have come to expect in the branding of dis-
tilled spirits. For example, we see within this record that applicant consistently us-
es “ROARING 20’s” as its house mark, in each case paired with its various product
marks (e.g., BOOTLEG bourbon, DIXIELAND vodka and PROHIBITION whiskey).
Serial No. 85453371
7

Furthermore, applicant has pointed out that over the past decade, as shown
above, at least two different examining attorneys6 have permitted the registration
of the marks ROARING 20’s DIXIELAND and ROARING 20’s BOOTLEG based, re-
spectively, upon one substantially similar, and another identical specimen. While
we do not find ourselves bound by these earlier determinations, we also recognize:
(1) that an applicant should be permitted some latitude in selecting the mark that it
wishes to register; (2) that while this is a most subjective determination, permitting
registration of ROARING 20’s BOOTLEG based upon this specimen is not an unrea-
sonable view of the label’s commercial impression; and finally, (3) that the position
the examining attorney has taken in refusing registration in this case is clearly in-
consistent with what this applicant had come to expect from the United States Pa-
tent and Trademark Office over the past decade of prosecuting several similar ap-
plications, and even one identical application.
Decision: The refusal to register the applied-for matter because applicant seeks
registration of more than one mark is hereby reversed.

6 Based on this record, we do not know if this was also the case with the specimen in sup-
port of the registration of ROARING 20’s PROHIBITION whiskey.