Anselmi S.R.L.

Trademark Trial and Appeal Board

Dec 3, 2004

No. 78154141 (T.T.A.B. Dec. 3, 2004)

Mailed: December 3, 2004
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Anselmi S.R.L.
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Serial No. 78154141
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David A. Weinstein, Esq. for Anselmi S.R.L.
Scott M. Oslick, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
_______
Before Seeherman, Chapman and Rogers, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
On August 14, 2002, Anselmi S.R.L. (an Italian joint
stock company) filed an application to register on the
Principal Register the mark ANSELMI for “wines, sparkling
wines, brandy, grappa, liqueurs, rum, vodka, whiskey,
alcoholic fruit distillates, alcoholic grape distillates,
wine distillates.” The application is based on a claimed
date of first use and first use in commerce of December 31,
1976.
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 78154141
2
In response to a refusal to register the mark on the
basis that it is primarily merely a surname, applicant
amended the application to include a claim of acquired
distinctiveness under Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f). The Examining Attorney accepted
applicant’s claim of acquired distinctiveness and withdrew
his refusal on the basis of Section 2(e)(4) of the
Trademark Act, 15 U.S.C. §1052(e)(4).
The Examining Attorney made final his refusal to
register the mark under Section 2(d) of the Trademark Act,
15 U.S.C. §1052(d), on the ground that applicant’s mark,
when applied to its identified goods, so resembles the
registered mark shown below
for “wines,”1 as to be likely to cause confusion, mistake or
deception.
Applicant appealed, and briefs have been filed, but an
oral hearing was not requested.
1 Registration No. 1420369, issued December 9, 1986 to
Etablissements Brotte & Armenier (a company of France), Section 8
affidavit accepted, Section 15 affidavit acknowledged. The
registration includes the statement: “The English translation of
the words ‘Pere Anselme’ in the mark is ‘Father Anselme.’” The
claimed dates of first use and first use in commerce are 1930 and
1945, respectively.
Ser. No. 78154141
3
We affirm the refusal to register. In reaching this
conclusion, we have followed the guidance of the Court 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
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Applicant explains its position as follows
(applicant’s brief, p. 7):
Regardless that Applicant’s goods
include those the Cited registration
covers, differences between the marks
themselves are sufficient to avoid a
likelihood of confusion. This was and
is the case regarding the four
registered marks applicant cites,
noting they are all for the same or
similar goods.
Applicant specifically contends that the marks are
different in sound (two words compared to one word, one
beginning with a “P” and the other an “A”), appearance
(only one includes the beginning word “PÈRE”), meaning (one
meaning Father Anselme, who was assertedly “a celebrated
Ser. No. 78154141
4
French priest born in 1652” (applicant’s brief, p. 5) and
the other having no noted meaning of record) and commercial
impression; that the registered mark must be considered as
a whole, not dissected into two words; and that the
addition of the word PERE in the cited registration and the
differing last letter makes the marks different enough to
avoid a likelihood of confusion, as shown by four third-
party registrations made of record by applicant.2
These third-party registrations are (i) Registration
No. 1161223 for the mark PÈRE PATRIARCHE for “wines”; (ii)
Registration No. 1806327 for the mark CORON PÈRE & FILS (in
stylized lettering and with a design) for “wines and
brandies,” “The English translation of the words ‘PÈRE &
FILS’ is ‘father and son’”; (iii) Registration No. 2150451
for the mark PERE ALESSANDRO for “red and white wines,”
“The English translation of the mark is “Father Alexander”;
and (iv) Registration No. 2720657 for the mark FAMIGLIA
ANSELMA for “red wines, white wines, sparkling wines,
2 In its response filed December 26, 2003, applicant had argued
that the cited mark and applicant’s mark “have co-existed for a
number of years without conflict.” As evidence thereof applicant
refers to co-existence in Italy for 26 years and co-existing
International registrations for these marks in many countries
(e.g., Austria, Hungary, Monaco). To whatever extent this was
offered as an argument of no actual confusion, it is unpersuasive
because the co-existence in other nations is not relevant here.
There is no information in the record regarding co-existence of
applicant’s and registrant’s involved marks in the United States
without any consumer confusion.
Ser. No. 78154141
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distilled sprits, vermouths, aromatized wines, liquors,
brandys,” “The English translation of ‘FAMIGLIA’ is
‘family.’”
The Examining Attorney argues that the goods are
partially identical (“wines”) and are otherwise closely
related; and that the marks are highly similar in sound,
appearance, meaning and commercial impression.
Specifically, the Examining Attorney argues that the
dominant feature of the registered mark is ANSELME; that
the term “PÈRE,” meaning “Father,” functions merely to
identify an individual’s title, such as “Mr.” or “Mrs.”;3
that the only other difference is applicant’s mark ends in
an “I” and registrant’s in an “E”; that there is no correct
pronunciation of a trademark, although ANSELMI and ANSELME
could be pronounced the same; that both marks are similar
in meaning because both connote surnames; that the co-
existence of the four third-party registrations supports
the Examining Attorney’s position that the inclusion of the
title “PÈRE” has little impact on the commercial impression
3 The Examining Attorney requested in his brief (p. 4) that the
Board take judicial notice of The American Heritage Dictionary
(Third Edition 1992) definition of “father” as “10. Or Father.
A church father. 11. Abbr. Fr. a. A priest or clergyman in the
Roman Catholic or Anglican churches. b. Used as a title and form
of address with or without the clergyman’s name.” The Examining
Attorney’s request for judicial notice is granted. See TBMP
§704.12 (2d ed. rev. 2004).
Ser. No. 78154141
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created by a mark; that each case must be decided on its
own merits; and that these marks, ANSELMI and PÈRE ANSELME,
create similar commercial impressions.
We turn first to a consideration of applicant’s goods
and those of the cited registrant. We find that
applicant’s goods are in part identical (wines) and
applicant’s other listed goods are closely related to the
only item of goods in the cited registration. Applicant
did not argue to the contrary.
Likewise, applicant did not argue, and we do not find,
any differences in the channels of trade or purchasers for
the common goods, wines. We must presume, given the
identifications (neither of which is limited), that the
goods travel in the same channels of trade (e.g., liquor
stores, wine stores, grocery stores), and are purchased by
the same classes of purchasers (general public, wine
connoisseurs). See Canadian Imperial Bank of Commerce v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987).
“When marks would appear on virtually identical goods
or services, the degree of similarity 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. 78154141
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Turning then to a consideration of the marks, it is
well settled that marks must be considered in their
entireties because the commercial impression of a mark on
an ordinary consumer is created by the mark as a whole, not
by its component parts. This principle is based on the
common sense observation that the overall impression is
created by the purchaser’s cursory reaction to a mark in
the marketplace, not from a meticulous comparison of it to
others to assess possible legal differences or
similarities. See 3 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §23:41 (4th ed. 2001).
See also, Dassler KG v. Roller Derby Skate Corp., 206 USPQ
255 (TTAB 1980).
The proper test in determining likelihood of confusion
does not involve a side-by-side comparison of the marks,
but rather must be based on the similarity of the general
overall commercial impressions engendered by the involved
marks. That is, the test involves considering the likely
recollection of the average purchaser, who normally retains
a general rather than specific impression of the many
trademarks encountered; and a purchaser’s fallibility of
memory over a period of time must also be kept in mind.
See Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477
F.2d 586, 177 USPQ 573 (CCPA 1973); and Spoons Restaurants
Ser. No. 78154141
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Inc. v. Morrison, Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d
unpub’d (Fed. Cir. June 5, 1992). This is particularly
true for goods such as those involved herein which can be
inexpensive and may be purchased without great care.
In this case, there are specific differences in the
marks: the word PÈRE in registrant’s mark; the last letter
difference between registrant’s mark and applicant’s mark;
and the stylized lettering in registrant’s mark. Consumers
are not, however, likely to note the slight difference in
the last letters of the words ANSELMI and ANSELME. The
word PÈRE in registrant’s mark does not serve to
distinguish the marks; rather, consumers will regard PÈRE
ANSELME and ANSELMI simply as variant marks indicating
origin in a single source. See In re Dixie Restaurants
Inc., supra.
Because there is no “correct” pronunciation of a
trademark, someone who has heard (rather than seen) the
mark ANSELMI for wines and sees PÈRE ANSELME for wine may
well pronounce ANSELME the same as the word ANSELMI and,
again, believe that the marks are variants of each other.
See In re Belgrade Shoe, 411 F.2d 1352, 162 USPQ 227 (CCPA
1969); Interlego v. Abrams/Gentile Entertainment Inc., 63
USPQ2d 1862 (TTAB 2002); and In re Lamson Oil Co., 6 USPQ2d
1041 (TTAB 1987).
Ser. No. 78154141
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Although applicant asserts that Père Anselme was “a
celebrated French priest,” there is no evidence in the
record to support a finding that Père Anselme is a famous
historical figure that consumers would recognize, such
that, when viewing the mark PÈRE ANSELME, they would see it
as having the connotation of that individual. Because we
acknowledge that we are not aware of the historical figure,
we cannot take judicial notice that he was a famous
individual, or that consumers are likely to be aware of
him. Thus, we are not persuaded on this record that
consumers seeing PÈRE ANSELME for wines will think of a
particular historical figure.
When considered in their entireties, we find that the
respective marks are sufficiently similar in overall
commercial impression that, when used on the identical
goods involved herein, confusion as to source is likely.
See In re Azteca Restaurant Enterprises Inc., 50 USPQ2d
1209 (TTAB 1999).
With regard to the third-party registrations submitted
by applicant, the three which include the word PERE (or
PÈRE) reinforce our view that it is the other words, and
not PERE, that differentiate those marks from one another.
In any event, as to all four third-party
registrations, as often noted by the Board and the Courts,
Ser. No. 78154141
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each case must be decided on its own merits. We are not
privy to the records of the third-party registration files
and, moreover, the determination of registrability of those
particular marks by Trademark Examining Attorneys cannot
control the merits in the case now before us. See In re
Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001). See also, In re Kent-Gamebore Corp., 59
USPQ2d 1373 (TTAB 2001); and In re Wilson, 57 USPQ2d 1863
(TTAB 2001).
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.