Austin, Nichols & Co., Inc.v.Stichting Lodestar

Trademark Trial and Appeal Board

Jan 17, 2006

No. 91155165 (T.T.A.B. Jan. 17, 2006)

Oral Hearing: July 7, 2005 Mailed: January 17, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Austin, Nichols & Co, Inc.
v.
Stichting Lodestar
_____

Opposition No. 91155165
to application Serial No. 76074330
filed on June 20, 2000
_____

Louis S. Ederer of Torys LLP for Austin, Nichols & Co., Inc.

Gary J. Nelson of Christie, Parker & Hale, LLP for Stichting
Lodestar
______

Before Hairston, Holtzman and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Stichting Lodestar (a Netherlands company),
seeks registration of the mark WILD GEESE (in standard
character form) for goods identified in the application as
“beers, mineral and aerated waters; cola; soft drinks,
namely, pop; lemonade; carbonated soft drinks; low calorie
soft drinks; non-carbonated soft drinks; fruit drinks and
fruit juices; syrups and preparations for making beers,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91155165
2
mineral and aerated waters, cola, carbonated drinks, soft
drinks, lemonade, carbonated soft drinks, low calorie soft
drinks, non-carbonated soft drinks, fruit drinks and fruit
juices” in International Class 32; and “alcoholic beverages,
namely, wine, rum, gin, vodka, whiskey, alcoholic bitters,
brandy, hard cider, distilled spirits, distilled liquor,
alcoholic aperitif bitters, aperitif wines; aperitifs with a
distilled alcoholic liquor base; aperitifs with a wine base;
sake and prepared alcoholic cocktails” in International
Class 33.1
Opposer, Austin, Nichols & Co., Inc., opposed
registration of applicant’s mark, on the grounds that, as
applied to applicant’s goods, the mark so resembles
opposer’s previously used, registered and famous WILD TURKEY
marks2 for various alcoholic beverages as to be likely to
cause confusion, to cause mistake, or to deceive under
Trademark Act Section 2(d), 15 U.S.C. §1052(d).3

1 Serial No. 76074330, filed June 6, 2000. The application is
based on a foreign application under Trademark Act Section 44(d),
15 U.S.C. §1126. The bona fide intent-to-use basis under
Trademark Act Section 1(b), 15 U.S.C. §1051(b), was deleted
during prosecution.

2 Opposer pleaded six registrations which are discussed infra.

3 The notice of opposition also references a claim of false
suggestion of a connection under Section 2(a) of the Trademark
Act and dilution under Section 43(c) of the Trademark Act;
however these claims were not sufficiently pleaded and opposer
did not pursue these claims in its brief or at oral hearing. In
view thereof, the Board considers the false suggestion and
dilution claims to have been waived.
Opposition No. 91155165
3
Applicant filed an answer by which it denied the
salient allegations of the notice of opposition.
As a preliminary matter, we address two outstanding
motions filed after the briefing phase of this proceeding:
opposer’s motion (filed April 14, 2005) to accept opposer’s
late responses to applicant’s requests for admissions; and
opposer’s motion (filed May 27, 2005) to reopen the record
to introduce newly discovered evidence.
We construe opposer’s motion to accept its responses to
the requests for admissions as a motion to withdraw
admissions under Fed. R. Civ. 36(b). Applicant served 25
requests for admissions on May 20, 2003. By its late
responses, which were not served by opposer until October
24, 2003, opposer effectively admitted all of the requests
including the following:
No. 14. Admit that none of the WILD TURKEY-based
marks are used in association with whiskey.

No. 18. Admit that none of the WILD TURKEY-based
marks are used in association with distilled
spirits.

No. 19. Admit that none of the WILD TURKEY-based
marks are used in association with distilled
liquor.

No. 25. Admit that none of the WILD TURKEY-based
marks are used in association with prepared
alcoholic cocktails.

Opposer states that it was not aware of the requests,
served on May 20, 2003, until August 27, 2003 when, during a
conversation with applicant, applicant indicated it had not
Opposition No. 91155165
4
received responses to the requests. Opposer states that
upon further review of the case file, opposer discovered the
requests stapled to the back of the interrogatories, and
that on September 16, 2003, applicant wrote a letter
concerning the requests for admissions. In this letter,
applicant states that it “has been nearly one month since
[applicant’s counsel] had a telephone conference with one of
[opposer’s attorneys] regarding the above-identified WILD
GEESE trademark opposition. During that telephone
conference, I was informed that [opposer] would be promptly
responding to Stichting Lodestar’s First Request For
Admissions, originally served on [opposer] on May 20, 2003.
Please advise when we can expect to receive the responses.”
Opposer served its responses on October 24, 2003
concurrently with its responses to applicant’s second set of
interrogatories and requests for production of documents,
due on that date.
In arguing against opposer’s motion, applicant contends
that opposer has not shown that its failure to serve timely
responses was the result of excusable neglect, and that
allowing withdrawal of the admissions at the conclusion of
the trial would be prejudicial to applicant. In short,
applicant would have the Board dispense with this case
inasmuch as it has been admitted, by operation of the rules,
that whiskey is not sold under the mark WILD TURKEY.
Opposition No. 91155165
5
Fed. R. Civ. P. 36(b) provides that admissions may be
withdrawn upon motion if “the merits of the action will be
subserved thereby and the party who obtained the admission
fails to satisfy the court that withdrawal or amendment will
prejudice that party in maintaining the action or defense on
the merits.”
Cleary, the presentation of the merits will be
subserved by accepting the withdrawal of the four
admissions. Moreover, applicant did not show that
withdrawal of these four admissions will, in fact, prejudice
it in presenting its defense on the merits. Applicant
engaged in discovery on these very points, (see e.g.,
interrogatory no. 4 “Identify with particularity each
product or service Opposer has sold or intends to sell under
each of the WILD TURKEY-based marks,”) presented evidence
during trial, and argued its case on the merits. Moreover,
it is difficult to imagine how applicant could reasonably
rely on an admission under these circumstances where opposer
has several pleaded registrations for the mark WILD TURKEY
for use with whiskey. Applicant did not seek to cancel
these registrations by way of compulsory counterclaims, and
opposer has submitted status and title copies of these
registrations. Thus, opposer may rely on the presumptions
accorded to these registrations, namely that it uses WILD
TURKEY in connection with whiskey. In view thereof,
Opposition No. 91155165
6
opposer’s motion to withdraw its admissions is granted and
the denials to Request for Admissions Nos. 14, 18, 19 and 25
are accepted.
By its motion to reopen the record, opposer seeks to
introduce the decision from a court in New Zealand in a case
involving these parties. Opposer argues that this decision
serves as rebuttal evidence to applicant’s arguments and
evidence regarding trademark disputes between these parties
involving their respective marks in other foreign
jurisdictions, including Thailand. Inasmuch as applicant’s
arguments and evidence regarding foreign uses and trademark
disputes are irrelevant to this proceeding, the rebuttal
evidence is similarly irrelevant. Whether or not consumers
in Thailand may or may not likely be confused under Thai
trademark law is wholly irrelevant to whether or not there
is a likelihood of confusion in the United States. Foreign
use is ineffective to establish trademark rights in the
United States and is thus irrelevant to a determination of
likelihood of confusion here. See, Person’s Co., Ltd. V.
Christman, 900 F.2d 1565, 14 USPQ2d 1477 (Fed. Cir. 1990)
(foreign use has no effect on U.S. commerce and cannot form
the basis for a holding that appellant has priority here;
the concept of territoriality is basic to trademark law;
trademark rights exist in each country solely according to
that country’s statutory scheme); Fruit of the Loom Inc. v.
Opposition No. 91155165
7
Fruit of the Earth Inc., 3 USPQ2d 1531, 1534 (TTAB 1987);
and Lever Brothers Co. v Shaklee Corp., 214 USPQ 654, 657
(TTAB 1982). Cf. In re Bel Paese Sales Co., 1 USPQ2d 1233,
1235 (TTAB 1986) (foreign use is essentially of no probative
value absent other evidence showing that the foreign use had
a material or significant impact on perception of the term
by the relevant purchasing public in the United States); and
In re Men’s International Professional Tennis Council, 1
USPQ2d 1917 (TTAB 1986). In view thereof, opposer’s motion
to reopen the record is denied.
Further, applicant has pointed out that opposer’s main
brief on the case was filed two days late on February 18,
2005. Trademark Rule 2.128(a)(1) states: “The brief of the
party in the position of plaintiff shall be due not later
than sixty days after the date set for the close of rebuttal
testimony.” Notwithstanding that the rebuttal testimony
period in this case closed on a Saturday (December 18,
2004), opposer’s brief was due 60 days thereafter on
February 16, 2004. Barring the granting of an extension of
time by the Board, the plaintiff’s main brief is due 60 days
from the actual date on which the period for rebuttal
testimony closes, regardless of whether that date falls on a
weekend or a Federal Holiday. Opposer, in its mistaken
belief that its brief was timely filed, misconstrues the
Opposition No. 91155165
8
effect of Trademark Rule 2.196 on the dates in question.4
Trademark Rule 2.196 extends the time period to take some
action when that time period ends on a weekend or Federal
Holiday; it does not then also automatically extend the date
of subsequent dependent time periods unless those dates also
end on a weekend or Federal Holiday. However, we note that
this matter was raised merely as an informational statement
in applicant’s brief; that opposer’s explanation as to its
mistaken interpretation of the rules clearly demonstrates
that the delay was not willful; that the two-day delay in
filing opposer’s brief was minimal and has had no impact on
the proceedings; and that applicant has indicated no
prejudice as a result of the delay. Under the
circumstances, and because it benefits the Board in its
ability to make a just determination of the case to have the
briefs of both parties of record, opposer’s brief is
accepted.
Finally, before we turn to the merits of this
proceeding, we address those of applicant’s objections to
exhibits introduced during testimony that were maintained in

4 Opposer states that it “confirmed its analysis, and the
February 18, 2005 filing deadline, by telephone with the Board.”
Opposer’s Reply Br. p. 18. Opposer is advised that parties may
not rely on information obtained by telephone. Trademark Rule
2.191 provides in pertinent part: “The action of the Office will
be based exclusively on the written record. No attention will be
paid to any alleged oral promise, stipulations, or understanding
in relation to which there is disagreement or doubt.” See In re
Merck & Co., 24 USPQ2d 1317, 1318 n. 2 (Comm’r 1992).
Opposition No. 91155165
9
applicant’s brief. Applicant objects to opposer’s exhibits
nos. 11, 14, 43, 48, 49 and 50. Applicant argues that these
exhibits “should be excluded because they were not produced
in a timely manner.” Applicant’s Br. p. 16. Applicant did
not indicate in its brief whether or not it had requested
these documents during discovery, nor did applicant include
a copy of any request for production of documents.
Applicant did, however, submit under notice of reliance,
opposer’s responses to applicant’s first set of
interrogatories, and opposer, in response to some of the
objections, states that it produced related documents;
therefore, where possible, we will address these objections
on the merits.
Opposer, in response, argues as to exhibit nos. 11, 14
and 43 that “they relate to business activities after
January 2004 (and were created after the January 31, 2004
[discovery] cut-off date) and were produced to update
information of the same nature that had already been
produced during discovery.” Opposer’s Br. p. 17. With
regard to exhibits 49 and 50, opposer requests that the
Board take judicial notice of these exhibits, inasmuch as
they are official records of the USPTO.
Applicant’s objection to exhibit nos. 11 and 14 are
overruled. Exhibit no. 11 is opposer’s most recently
prepared “block chart.” This “block chart,” showing the
Opposition No. 91155165
10
budget plan for media spending in 2004 on a monthly basis,
was prepared by opposer’s media agency on August 1, 2004,
one month before it was produced, and the day before
opposer’s testimony deposition. Exhibit no. 14 is a series
of print advertisements from 2004. Applicant has not
presented argument as to how it would be prejudiced by the
submission of this recent, updated information, nor did
applicant indicate that no documents as to media spending or
print advertisements had been produced and, in fact, the
record contains such undisputed documents. Thus, we find
opposer’s explanation that it had produced such documents
and that these merely represent the most recent, updated
information sufficient to overcome the objection.
Applicant’s objection to exhibit no. 43 is sustained.
Interrogatory no. 9 reads: “Identify each person who is or
has ever been licensed or permitted by you to use any of the
WILD TURKEY-based Marks, and explain how you control the
nature and quality of each such use.” Opposer responded:
“None at the present time.” Exhibit no. 43 is a licensing
agreement between opposer and a third-party entered into in
May, 2004. While there is nothing in the record to show
that applicant requested the production of any licensing
agreements, applicant’s interrogatory requested essentially
the same information and opposer should have supplemented
its response to the interrogatory, in a more timely manner,
Opposition No. 91155165
11
by providing the name of the licensee prior to September 2,
2004, and the licensing agreement in exhibit no. 43 is tied
to the testimony regarding opposer’s licensee.
Applicant’s objection to exhibit no. 48 on the ground
that it was not timely produced is overruled. This exhibit
is a printout of a third-party website that was retrieved
and printed out by opposer’s attorney the day before
opposer’s testimony deposition. Applicant did not indicate
if it had requested this type of information during
discovery and in any event opposer was not obligated to
disclose the entirety of its proposed evidence. British
Seagull Ltd. V. Brunswick Corp., 28 USPQ2d 1197, 1201 (TTAB
1993, aff’d, Brunswick Corp. v. British Seagull Ltd., 35
F.3d 1527, 32 USPQ2d 1120 (Fed. Cir. 1994); and Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1657 (TTAB
2002). That being said, the witness attesting to this
evidence did not have personal knowledge of the source of
the printout and, therefore, was not competent to testify as
to its authenticity. Thus, the document is not admissible.
Applicant’s objection to exhibit no. 49 is overruled.
This exhibit consists of the USPTO Trademark Electronic
Search System (TESS) printouts of opposer’s pleaded
registrations, the status and title copies of which were
also submitted under notice of reliance.
Opposition No. 91155165
12
Applicant’s objection to exhibit no. 50 is overruled.
This exhibit consists of printouts of two of opposer’s
applications that were not pleaded. Applicant has not shown
the Board that it requested information or documents
pertaining to these marks.5
The evidence of record consists of the pleadings
herein; the file of the opposed application; the testimony
depositions (with exhibits, excluding exhibits nos. 43 and
48) of Mr. Joseph Uranga, Group Director for Wild Turkey
Bourbon with Pernod Ricard USA, and Mr. John Conway, in
house intellectual property counsel with Pernod Ricard USA.6
In addition, opposer submitted, under a notice of reliance,
status and title copies of five of opposer’s pleaded
registrations, and testified as to their ownership and
validity.7 Applicant submitted, by stipulation of the
parties, the declaration (with exhibits) of Deanna D. Crowe,
a paralegal with applicant’s outside counsel, Christie,
Parker & Hale, LLP. In addition, applicant submitted, under
a notice of reliance, TESS printouts of third-party
registrations, foreign registrations for the parties’

5 We note that applicant did not object on the basis that the
applications were not pleaded.

6 Pernot Ricard USA is a related company to opposer and handles
opposer’s sales, marketing and intellectual property matters.
(Uranga Dep. p. 7; Conway Dep. pp. 5-9).

7 Opposer did not make of record pleaded registration no.
1912713.
Opposition No. 91155165
13
respective trademarks, and opposer’s responses to
applicant’s interrogatories.
The pleaded registrations, all of which are in full
force and effect and owned by opposer, are summarized as
follows:
Registration No. 513549 for the mark

for whiskey in International Class 33, filed
January 30, 1946, issued August 16, 1949, section
8 accepted, section 15 acknowledged, renewed;

Registration No. 1085002 for the mark WILD
TURKEY (in standard character form) for liqueur in
International Class 33, filed November 22, 1976,
issued February 7, 1978, section 8 accepted,
section 15 acknowledged, renewed;

Registration No. 1299830 for the mark

(WILD TURKEY ONE-O-ONE and turkey design, ONE-O-
ONE disclaimed) for whiskey in International Class
33, filed October 19, 1983, issued October 19,
1984, section 8 accepted, section 15 acknowledged,
renewed;

Registration No. 1670450 for the mark

Opposition No. 91155165
14

(WILD TURKEY KENTUCKY LEGEND BEYOND DUPLICATION
and design) for distilled alcoholic beverages;
namely, whiskey in International Class 33, section
8 accepted, section 15 acknowledged, renewed;

Registration No. 2263231 for the mark WILD
TURKEY (in standard character form) for whiskey in
International Class 33, filed August 14, 1998,
issued July 20, 1999, section 8 accepted, section
15 acknowledged.

Because opposer has made its five pleaded registrations
of record, opposer has established its standing to oppose
registration of applicant’s mark, and its priority is not in
issue. See King Candy Co., Inc. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the factors set forth in In
re E. I. du Pont de Nemours and 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 and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
Opposition No. 91155165
15
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
Another key factor, is the fame of the prior mark. We
begin with this factor, because fame “plays a ‘dominant’
role in the process of balancing the du Pont factors.”
Recot Inc. v. Benton, 214 F.3d 1322, 54 USPQ2d 1894, 1897
(Fed. Cir. 2000). See also, Palm Bay Imports, Inc. v. Veuve
Clicquot, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir.
2005). In addition, fame “varies along a spectrum from very
strong to very weak.” In re Coors Brewing Co., 343 F.3d
1340, 68 USPQ2d 1059 (Fed. Cir. 2003).
Opposer’s testimony and evidence establish that opposer
started selling its whiskey under the WILD TURKEY trademark
in 1942; that sales of WILD TURKEY products in the United
States in 2002 and 2003 were approximately $65 million and
500,000 cases in total annual sales; that the WILD TURKEY
trademarks have been federally registered since 1949; that
opposer owns registrations for WILD TURKEY marks in
connection with various merchandise, including umbrellas,
duffel bags, clothing, watches, pens and pencils, golf
accessories, key chains, and barbecue sauce; that opposer
spends tens of millions of dollars annually on advertising
and promotion in the United States, $11.7 million in 2003,
through print ads in national magazines and trade
Opposition No. 91155165
16
publications, billboard advertising, local radio
advertising, and internet advertising; that opposer has a
“comprehensive brand strategy program” that educates
employees, distributors and retailers about the history of
WILD TURKEY, brand identity, and the objectives and strategy
for promoting and selling the brand that includes a “field
guide” and the “ambassador’s training program”; that WILD
TURKEY is used on consumer point-of-sale materials given or
displayed to consumers at liquor stores, bars and
restaurants and include baseball hats, golf shirts, golf
bags, watches, scratch card games, cufflinks, flashlights,
computer mouse pads, ceramic collectibles, promotional
cookbooks with WILD TURKEY recipes; that opposer also
promotes its WILD TURKEY whiskey through high profile
national sponsorships such as the Professional Bowler’s
Association and the National Turkey Federation and numerous
local sponsorships such as a crawfish festival in Biloxi,
Mississippi and a rodeo in Houston, Texas; and that the WILD
TURKEY brand receives extensive unsolicited media coverage
including reviews by wine and spirit writers, numerous
awards such as Gold and Silver places in the International
Wine & Spirit Competition and San Francisco World Spirits
Competition in 2000 and 2001, frequent mentions in a variety
of magazines, newspapers, and television shows (see, e.g.,
Uranga Dep. p. 78 “The biggest one was when David Letterman
Opposition No. 91155165
17
had [the turkey callers] on... . [T]he bottle spent about
20 minutes on his desk as he talked about the callers...”).
In addition, the record shows that opposer, as part of the
Pernod Ricard Group, jointly promotes its WILD TURKEY
whiskey with other Pernod Ricard Group brands (e.g.,
Bushmill’s Irish whiskey), and opposer has expanded its WILD
TURKEY whiskey product to include other premium bourbon and
non-bourbon whiskeys and other spirit products.
Applicant presented no evidence or argument to rebut
opposer’s evidence of fame.
As shown through the testimony and other evidence,
opposer has extensive sales under and advertising
expenditures in connection with the WILD TURKEY marks.
Moreover, opposer’s advertising and sales statistics are
placed in the context of a broad, organized and aggressive
marketing strategy that places its WILD TURKEY marks in
front of consumers in a variety of ways (e.g., point-of
sales displays, promotional events, sponsorships,
merchandising, radio advertising, national magazines with
wide circulation, billboards, etc.). The WILD TURKEY marks
have been used for over sixty years and are displayed
prominently on the product labels. WILD TURKEY whiskey has
been extensively promoted and heavily advertised in a
variety of media. There has also been promotion through
targeted outdoor billboard displays, extensive point-of-sale
Opposition No. 91155165
18
displays, and wide distribution of collateral merchandise.
On this record, we find that opposer’s WILD TURKEY marks are
famous and entitled to broad protection. Bose Corp. v. QSC
Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002) (“[T]he fame of a mark may be measured
indirectly, among other things, by the volume of sales and
advertising expenditures of the goods traveling under the
mark, and by the length of time those indicia of commercial
awareness have been evident.”).
We turn next to the second, third and fourth du Pont
factors, i.e., the similarities between opposer's and
applicant's goods and the similarities between opposer's and
applicant's trade channels and classes of purchasers of
these goods. We must make our determinations under these
factors based on the goods as they are recited in the
application and registrations, respectively. See In re
Elbaum, 211 USPQ 639 (TTAB 1981).
The goods need not be identical or directly competitive
in order for there to be a likelihood of confusion. Rather,
the respective goods need only be related in some manner or
the conditions surrounding their marketing be such that they
could be encountered by the same purchasers under
circumstances that could give rise to the mistaken belief
that the goods come from a common source. In re Martin's
Opposition No. 91155165
19
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289
(Fed. Cir. 1984).
Opposer’s registrations are for whiskey and liqueur.
Whiskey, as identified in applicant’s application, is
identical to whiskey, as identified in opposer’s
Registration Nos. 513549, 1299830, 1670450 and 2263231, and
closely related to opposer’s liqueur as identified in
opposer’s Registration No. 1085002. In addition, beer in
International Class 32 and the other alcoholic beverages in
International Class 33 as identified in applicant’s
application are closely related to opposer’s whiskey and
liqueur. The record shows that consumers of alcoholic
beverages are accustomed to seeing brands on new products,
including the crossover from distilled spirits to malt
beverages. Conway Rebuttal Dep. p. 12. Applicant has
presented no argument that its beer and other alcoholic
beverages are unrelated to opposer’s goods and, moreover,
has acknowledged that various alcoholic beverages, including
beer, are related. (Applicant’s Br. p. 34 “[A]lcoholic
beverages such as wine and beer, and the various types of
‘hard liquors’ such as whiskey, have been consistently
recognized as related goods for trademark purposes.”).8

8 See also, for example, In re Chatam International Inc., 380
F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (beer and tequila
closely related; Jose Gaspar Gold v. Gaspar’s Ale); In re
Majestic, supra (brewed malt liquor and distilled tequila similar
“by virtue of the fact that both are alcoholic beverages that are
Opposition No. 91155165
20
Given the absence of any restrictions or limitations in
the parties’ respective identifications of goods, the
parties’ identical and closely related alcoholic beverage
products are deemed to be marketed in the same trade
channels and to the same classes of purchasers. Kangol Ltd.
V. KangaROOS U.S.A. Inc., 974 F.2d 161, 23 USPQ2d 1945 (Fed.
Cir. 1992). In addition, the record establishes that sales
of alcoholic beverages in the United States are regulated by
the Alcohol, Tobacco and Trade Bureau which imposes a three-
tier system of distribution whereby suppliers (such as
opposer) sell to distributors who, in turn, sell to
retailers and the end-consumers purchase the products from
the retailers. Thus, the parties’ alcoholic beverages, in
fact, travel through the same channels of trade.
The parties’ respective goods are ordinary consumer
items which would be purchased without a great deal of care,

marketed in many of the same channels of trade to many of the
same consumers”); The Fleischmann Distilling Corporation et al.
v. Maier Brewing Co. et al., 314 F.2d 149, 160, 136 USPQ 508, 518
(9th Cir. 1963) (beer and whiskey “being both within the alcoholic
beverage industry, are ‘so related as to fall within the mischief
which equity should prevent.’”); White Horse Distillers, Ltd. V.
Ebling Brewing Co., Inc., 30 USPQ 238 (CCPA 1936) (scotch whiskey
and ale are “goods of the same descriptive properties within the
meaning of the statute”); Somerset Distilling Inc. v. Speymalt
Whiskey Distributors Ltd., 14 USPQ2d 1539, 1542 (TTAB 1989)
(“scotch whiskey, gin and vodka are all closely related, in that
they are what might be characterized as basic alcoholic
beverages”); and In re AGE Bodegas Unidas, S.A., 192 USPQ 326
(TTAB 1976) (“there is clearly a relationship between wine and
whiskey, both of which alcoholic beverages are sold through the
same specialized retail outlets to the same purchasers, and are
frequently bought at the same time”).

Opposition No. 91155165
21
by ordinary consumers. (Conway Dep. p. 31 lines 21-22 (“Our
consumers are not sophisticated”) and Conway Rebuttal Dep.
p. 9 (“...we are an impulse item”). See also, e.g., In re
Majestic, supra at 1205. Applicant points to opposer’s
testimony regarding brand loyalty and argues that brand
conscious consumers would distinguish between the marks;
however, there is no evidence that ordinary consumers of
alcoholic beverages are always brand conscious. These
findings under the second, third and fourth du Pont factors
all weigh significantly in opposer’s favor in our likelihood
of confusion analysis.
We turn next to the first du Pont factor, i.e., whether
applicant’s mark and opposer's mark are similar or
dissimilar when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
We make this determination in accordance with the following
principles. The test, under this du Pont factor, 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 terms of their overall commercial
impressions 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 a specific impression
of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
Opposition No. 91155165
22
USPQ 106 (TTAB 1975). Furthermore, if a mark comprises both
a word and a design, greater weight is often accorded to the
word, which would be used by purchasers in requesting the
goods or services. In re Appetito Provisions Co., Inc., 3
USPQ2d 1553, 1554 (TTAB 1987).
Applicant’s mark, WILD GEESE, is depicted in standard
character form. Two of opposer’s WILD TURKEY marks are in
standard character form and the other three are stylized,
two of which include design elements and additional wording.
The literal portions of the parties’ marks begin with the
identical word, WILD. The similarity of the marks continues
with the second word in each mark being a game bird.
Despite the difference in the words TURKEY and GEESE, the
commercial impression and general connotation of wild game
birds, creates a confusingly similar mark. Given the fame
and arbitrary nature of opposer’s WILD TURKEY marks, and the
broad scope of protection to which they are entitled, we
find that the similarities in the parties’ marks outweigh
their differences.
Similarity of connotation or commercial impression
alone is sufficient to support a finding of likelihood of
confusion between marks; and this is true even if the marks
exhibit aural and optical dissimilarity when they convey the
same general idea or stimulate the same mental reaction. H.
Sichel Sohne, GmbH v. Michel Monzain Selected Wines, Inc.,
Opposition No. 91155165
23
202 USPQ 62, 65 (TTAB 1979) (hereinafter Sohne I); and H.
Sichel Sohne, GmbH v. John Gross & Co., 204 USPQ 257 (TTAB
1979) (hereinafter Sohne II) (BLUE NUN and BLUE CHAPEL bring
to mind a similar religious connotation). This is true
especially where, as in this case, the marks are arbitrary.
United Rum Merchants Ltd. v. Fregal, Inc., 216 USPQ 217, 219
(TTAB 1982).
In arguing that the marks are dissimilar, applicant
dissects registrant’s marks and concludes that the common
term WILD is weak, in view of the numerous third-party
registrations and uses of the word WILD in connection with
various alcoholic and non-alcoholic beverages, and that the
word TURKEY is the dominant portion of registrant’s mark,
which is different from the word GEESE in applicant’s mark.
Applicant further argues that the word TURKEY should be
accorded narrow protection in view of the numerous
registrations and uses of bird names in connection with
various alcoholic and non-alcoholic beverages.
First, with regard to the evidence pertaining to the
word WILD, the third-party registrations are not evidence of
use and, thus, are of little probative value in an analysis
of the strength of the marks. Third-party registrations may
be “useful to demonstrate the sense in which a term is used
in ordinary parlance and they can show that a particular
term has been adopted by those engaged in a certain field or
Opposition No. 91155165
24
industry and that said term has less than arbitrary
significance with respect to certain goods or services.” In
re Dayco Products-Eaglemotive, Inc., 9 USPQ2d 1910, 1912,
(TTAB 1988) (IMPERIAL adopted by others in the vehicular
field to refer to that term’s ordinary significance as a
laudatory designation). However, the third-party
registrations submitted by applicant show a variety of
meanings of the term WILD (e.g., WILD PIG, DR. WILD,
WILDCATTER’S CRUDE, WILD RIVER, WILD CARD and SCREAMING WILD
BERRY) and do not lead to a conclusion that the term has an
“ordinary significance” in the field of beverages. The
examples of use also suffer from the same deficiency (e.g.,
THE WILD BUNCH, WILD THING, WILD PASSION and WILDCAT).
Moreover applicant’s argument does not rebut the facts of
this case where the word WILD has a specific significance as
used with TURKEY or GEESE in that it distinguishes the birds
from their domesticated relatives.
The third-party registrations and examples of use of
bird names for various beverages have even less probative
value under the Dayco analysis inasmuch as they present a
variety of names, do not point to ordinary usage of a
particular term, and do not show that the words in issue
here, TURKEY and GEESE are so widely used that consumers are
able “to discern between several competing products having
similar, but not identical, product names and bird images.”
Opposition No. 91155165
25
Applicant’s Br. p. 33. See Sohne I, supra at 66 (“We must
remember that the conflict herein is between “BLUE ANGEL”
and “BLUE NUN,” and the fact that others have used and/or
registered marks containing a certain feature in common with
these marks for similar goods cannot preclude a holding that
these marks as a whole are confusingly similar.”)
Applicant, in its analysis, improperly dissects the
marks and does not consider the marks in their entireties.
We note that despite applicant’s search of USPTO records and
the marketplace, applicant failed to find any example of
WILD plus a game bird in use in the United States for any of
the identified goods.9 See Crowe Decl. and Applicant’s
Notice of Reliance; see also Uranga Dep. p. 39 and Conway
Dep. p. 22. This may in fact be a result of opposer’s
policing efforts. See Conway Dep. p. 22 (“But the closer it
gets to a bird the more serious we take it. And if it’s a
game bird in particular that is one of our absolute red
flags for enforcement.”)10

9 With regard to the two examples of WILD with a bird allegedly
used in connection with wine that appear in printouts of website
pages introduced under the Crowe declaration, opposer’s
undisputed evidence shows that neither of those products are
being sold in the United States, and that one is in the process
of being acquired by opposer. Conway Rebuttal Dep. pp. 59-60,
67-73.

10 Applicant’s arguments regarding opposer’s “aggressive
enforcement program” have no relevance to the question of whether
applicant’s mark used in connection with the goods recited in its
application would be likely to cause confusion with the marks in
opposer’s registrations.
Opposition No. 91155165
26
As stated earlier, marks must be considered in their
entireties, and the commercial impression is derived from
the marks as a whole, and not from their elements separated
and considered in detail. Sohne I, supra at 65. We find
that the WILD TURKEY portion of opposer’s registered marks
is unitary and that TURKEY cannot be viewed as a separable
element of the marks. The handful of examples of use in the
record of TURKEY as a “nickname” for the brand are not
sufficient to diminish the unity of the WILD TURKEY marks in
issue here. However, even if TURKEY is the dominant part of
the mark, it does not change our conclusion that taken in
their entireties and given the strength and fame of
opposer’s WILD TURKEY marks, confusion is likely. We
consider the similarity of these marks where the word WILD
is followed by the name of a game bird to be significant.
We find, on balance, that the similarities in connotation
and commercial impression of the respective marks which are
enhanced by the identical first word, WILD, followed by the
name of a game bird outweigh the dissimilarities which
result from the sound and appearance of the second word.
Further, the stylization in Registration No. 513549, the
stylization, bird design and disclaimed wording ONE O ONE in
Registration No. 1299830, and the added tag line KENTUCKY
LEGEND BEYOND DUPLICATION and frame design in Registration
No. 1670450 do not serve to adequately distinguish these
Opposition No. 91155165
27
marks. The term WILD TURKEY is the dominant element in each
of these marks and the bird design further enhances the
mental impression and connotation of a game bird. We
conclude that the parties’ marks are substantially similar.
We do not find applicant’s attempt to distinguish the
United Rum and Sohne cases persuasive. In particular, with
regard to the Sohne cases, the Board emphasized that it
considered the marks BLUE NUN on the one hand, and BLUE
ANGEL and BLUE CHAPEL on the other, in their entireties and
rejected the applicant’s similar attempt to minimize the
importance of the identical element BLUE.
Considering the respective marks in their entireties,
we conclude that the evidence of record as it pertains to
the relevant du Pont factors clearly supports a finding of
likelihood of confusion as to the marks in opposer’s
Registration Nos. 513549, 1085002, 1299830, 1670450, and
2263231 and that registration of applicant’s mark,
therefore, is barred under Trademark Act Section 2(d).
Finally, to the extent there is any doubt with regard
to the question of likelihood of confusion, such doubt must
be resolved in favor of opposer, the prior registrant.
Hewlett-Packard Co. v. Packard Press, inc., 281 USPQ2d 1001,
1003 (Fed. Cir. 2002) (“This court resolves doubts about the
likelihood of confusion against the newcomer because the
newcomer has the opportunity and obligation to avoid
Opposition No. 91155165
28
confusion with existing marks”); In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir. 1988).
Decision: The opposition is sustained.