Balencorp Inc.

Trademark Trial and Appeal Board

Sep 28, 2015

No. 86115113 (T.T.A.B. Sep. 28, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Balencorp Inc.
_____

Serial No. 86115113
_____

Amy Sullivan Cahill of Stites & Harbison PLLC
for Balencorp Inc.
Seth A. Rappaport, Trademark Examining Attorney, Law Office 103,
Michael Hamilton, Managing Attorney.
_____

Before Quinn, Taylor and Lykos,
Administrative Trademark Judges.

Opinion by Lykos, Administrative Trademark Judge:
On November 11, 2013, Balencorp Inc. (“Applicant”) filed an application to
register on the Principal Register the mark displayed below for services ultimately
identified as “spirits distillery services” in International Class 40 and “[e]ducation
and entertainment services, namely, conducting guided tours of a visitor's center
exhibiting the operation of a distillery” in International Class 41.1

1 Application Serial No. 86115113, filed under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b), alleging a bona fide intent to use the mark in commerce. The description of the
mark is as follows: “The mark consists of the wording ‘SILVER TRAIL DISTILLERY’ above
the wording ‘HARDIN, KENTUCKY,’ which appears inside a shaded rectangle. The
wording appears above a design of a vintage automobile driving down a road. There are
Serial No. 86115113
- 2 -

Applicant has disclaimed the words “DISTILLERY” and “HARDIN, KENTUCKY”
apart from the mark as shown.
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the ground
that Applicant’s mark so resembles the registered mark SILVER TRAIL (standard
characters) for “Alcoholic beverages except beers” in International Class 33,2 that,
when used on or in connection with Applicant’s Class 40 services,3 it is likely to
cause confusion or mistake or to deceive.
Applicant has appealed the final refusal to register the mark for the Class 40
services. The appeal is fully briefed. For the reasons set forth below, we affirm the
Section 2(d) refusal.

bushes on the side of the road. The wording and the design element appear inside an oval
with an open star at the top and center of the oval.” Color is not claimed as a feature of the
mark.
2 Registration No. 4406749, registered on September 24, 2013, alleging March 24, 2009 as
the date of first use anywhere and in commerce.
3 The refusal does not apply to the Class 41 services.
Serial No. 86115113
- 3 -
Likelihood of Confusion Analysis
We base our determination under Section 2(d) on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”). See
also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203
(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 In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d
1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). These factors and others are discussed below. See
M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944 (Fed. Cir.
2006) (even within du Pont list, only factors that are “relevant and of record” need
be considered).
The Marks
We commence with the first du Pont likelihood of confusion factor which involves
an analysis of the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. See Palm Bay Imports,
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side comparison of
the marks, but instead ‘whether the marks are sufficiently similar in terms of their
commercial impression’ such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs., Inc. v. Triumph
Serial No. 86115113
- 4 -
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting
Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d, 1901, 1905
(TTAB 2007)). The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks. In re
Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
That being said, our analysis cannot be predicated on dissection of the involved
marks. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1161 (Fed. Cir. 2014). Rather, we are obliged to consider the marks
in their entireties. Id. See also, Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). Nonetheless, 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 a consideration of the
marks in their entireties. Stone Lion, 110 USPQ2d at 1161.
Applicant argues that the design element, not the word portion, of Applicant’s
mark is dominant in terms of the mark’s overall commercial impression. Applicant
focuses on the vintage automobile with exhaust trailing behind on a bumpy road,
the thick circular border, and star apex as presenting “stark differences” with
Registrant’s word mark.
Serial No. 86115113
- 5 -
We acknowledge the differences in the marks pointed out by Applicant in terms
of graphics and wording. Nonetheless, we agree with the Examining Attorney’s
determination that the literal element SILVER TRAIL is the dominant feature of
Applicant’s mark, given the lesser significance we may attribute to the disclaimed
matter DISTILLERY and HARDIN, KENTUCKY and design elements. It is well
established that disclaimed matter generally will not constitute the dominant part
of a mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1846 (Fed. Cir. 2000) (quoting In re Nat'l Data Corp., 753 F.2d 1056, 224 USPQ 749,
752 (Fed. Cir. 1985)); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-
34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB
2001) (disclaimed matter is often “less significant in creating the mark’s commercial
impression”). It is equally well established that when a mark consists of a literal
portion and a design portion, the literal portion is usually more likely to be
impressed upon a purchaser’s memory and to be used in calling for the goods or
services; therefore, the literal portion is normally accorded greater weight in
determining whether marks are confusingly similar. See, e.g., In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012); In re Dakin’s Miniatures, Inc.,
59 USPQ2d 1593, 1596 (TTAB 1999). See also CBS Inc. v. Morrow, 708 F.2d 1579,
218 USPQ 198, 200 (Fed. Cir. 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d
1261, 1267-68 (TTAB 2011).
Thus, comparing Applicant’s mark as a whole to the registered mark we find
that consumers encountering Applicant’s and Registrant’s marks are more likely to
Serial No. 86115113
- 6 -
focus on the wording SILVER TRAIL as the first literal portion. See Palm Bay, 73
USPQ2d at 1692. Because the marks are similar in connotation and commercial
impression, the first du Pont factor weighs in favor of finding a likelihood of
confusion.
The Goods and Services
The next step in our analysis is a comparison of the Class 40 services identified
in Applicant’s application vis-à-vis the goods identified in the cited registration. See
Stone Lion, 110 USPQ2d at 1161; Octocom Sys., Inc. v. Houston Computers Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also, Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002).
The goods and services need not be identical or even competitive to find a likelihood
of confusion. See On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56
USPQ2d 1471, 1475 (Fed. Cir. 2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1898 (Fed. Cir. 2000). The respective goods and services need only be
“related in some manner and/or if the circumstances surrounding their marketing
[be] such that they could give rise to the mistaken belief that [the goods and/or
services] emanate from the same source.” Coach Servs., Inc., 101 USPQ2d at 1722
(quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)). See also
On-line Careline Inc. v. America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed.
Cir. 2000); In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289 (Fed. Cir. 1984). The issue here is not whether purchasers would confuse the
goods and services, but rather whether there is a likelihood of confusion as to the
Serial No. 86115113
- 7 -
source of these goods and services. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1439
(TTAB 2012); In re Rexel Inc., 223 USPQ 830 (TTAB 1984).
Applicant argues that the Examining Attorney has failed to meet the Office’s
burden of proving that Applicant’s “spirits distillery services” are related to
Registrant’s “alcoholic beverages except beers.” Applicant contends that whereas its
distillery services are offered to third parties who wish to produce distilled spirits
bearing their own trademarks, Registrant is selling alcoholic beverages, mainly
wine.
Applicant is correct that it is the Examining Attorney’s burden to establish that
the involved goods and services are related to support a finding of likelihood of
confusion. See, e.g., In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB
2009) (finding Office had failed to establish that wine and vodka infused with
caffeine are related goods). Evidence of relatedness may include news articles
and/or evidence from computer databases showing that the relevant goods/services
are used together or used by the same purchasers; advertisements showing that the
relevant goods/services are advertised together or sold by the same manufacturer or
dealer; and/or copies of prior use-based third-party registrations of marks listing
both goods/services of the type identified in the applicant’s application and the cited
registration. See, e.g., In re Davia, 110 USPQ2d 1810, 1817 (TTAB 2014) (finding
pepper sauce and agave related where evidence showed both were used for the same
purpose in the same recipes and thus consumers were likely to purchase the
products at the same time and in the same stores). We find that in this case, the
Serial No. 86115113
- 8 -
Examining Attorney has met the Office’s burden by making of record the following
used-based third-party registrations identifying both Applicant’s Class 40 services
and Registrant’s goods which are identified as “alcoholic beverages except beers”:
● Reg. No. 3738327 for the mark GEORGE WASHINGTON’S
DISTILLERY for “whiskey” and “distillery services.”

● Reg. No. 4111584 for the mark NEW HOLLAND ARTISAN SPIRITS
for “distilled spirits” and “spirits distillery services.”

● Reg. No. 4314461 for the mark FILIBUSTER for “whisky distillery
services” and “blended whisky; bourbon; bourbon whisky; malt whisky;
whiskey; whisky.”

● Reg. No. 4351244 for the mark HERITAGE DISTILLING COMPANY,
INC. for “alcohol distillery services” and “alcoholic beverages except beers,
wines and tequilas; alcoholic beverages, namely, flavor-infused whiskey.”

● Reg. No. 4292470 for the mark MY BATCH for “alcohol distillery
services” and “alcoholic beverage produced from a brewed malt base with
natural flavors; alcoholic beverages containing fruit; alcoholic beverages
except beers; alcoholic beverages of fruit; alcoholic beverages, namely,
digestifs; alcoholic beverages, namely, flavor-infused whiskey; alcoholic
bitters; alcoholic cocktail mixes; alcoholic extracts; alcoholic fruit cocktail
drinks; alcoholic mixed beverages except beers; Rum.”

See Final Office Action dated June 11, 2015. As a general proposition, although
third-party registrations alone are not evidence that the marks shown therein are
in use or that the public is familiar with them, they nonetheless may have probative
value to the extent they are based on use in commerce and may serve to suggest
that the goods are of a kind that emanate from a single source. See In re Infinity
Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., Inc., 6
Serial No. 86115113
- 9 -
USPQ2d 1467, 1470 n.6 (TTAB 1988).4 With regard to the third-party registrations,
the term “alcoholic beverages” in Registrant’s mark is sufficiently broad to
encompass other more specific types of alcoholic beverages such as bourbon and
whisky. Accordingly, the second du Pont factor also weighs in favor of finding a
likelihood of confusion.
Fame of the Prior Mark
We now turn to the fifth du Pont factor, the fame of the cited mark, as argued by
Applicant. Applicant erroneously states that because the record is devoid of fame of
the registered mark, this du Pont factor weighs in favor of finding no likelihood of
confusion. The absence of such evidence has minimal significance in an ex parte

4 The Examining Attorney also provided website evidence showing alcoholic distilleries
selling alcoholic beverages (excluding beer). See Final Office Action dated June 11, 2015,
Green Hat (http://greenhatgin.com), A. Smith Bowman Distillery
(http://asmithbowman.com), Copper Fox Distillery (http://copperfox.biz). As Applicant
correctly points out, it appears that none of the aforementioned entities are providing
alcohol distilling services to third parties. Rather, it appears from the materials that each
entity distills its own products for retail sale. For this reason, we have not relied on this
evidence in reaching our determination.

In addition we agree with Applicant’s objection that the majority of evidence submitted by
the Examining Attorney from the Catoctin Creek Distilling Company website
(http://catoctincreekdistilling.com) is illegible because it consists of blank pages in the color
black. While the evidentiary requirements in an ex parte appeal are less stringent, both
examining attorneys and applicants have a duty to ensure that their submissions are
legible. Cf. Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1404 (TTAB 1998)
(“It is reasonable to assume that it is opposer's responsibility to review the documents it
submits as evidence to ensure that such submissions meet certain basic requirements, such
as that they are legible … ,” finding that applicant's objections, raised for the first time in
its trial brief, to illegible exhibits submitted with opposer's notice of reliance, to be timely).
Nonetheless, we decline to strike the documents in their entirety because some portions are
legible. That being said, the Board can only review evidence that is clear and unobstructed
so we have considered only the legible portions for whatever value they may have. See
Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1758 (TTAB
2013), aff’d, 565 F. App’x 900 (Fed. Cir. 2014) (mem.).

Serial No. 86115113
- 10 -
appeal. See In re Thomas, 79 USPQ2d 1021, 1027 n.11 (TTAB 2006). This factor is
therefore neutral.
Actual Confusion and Contemporaneous Use
Applicant points to contemporaneous use of its mark for a number of years with
Registrant’s mark and the absence of evidence of actual confusion. Applicant asserts
this argument, despite the fact that its application was filed under Trademark Act
Section 1(b) (“intent to use”). We acknowledge that Applicant may in fact be using
its applied-for mark in commerce. Nonetheless, a showing of actual confusion would
of course be highly probative, if not conclusive, of a likelihood of confusion. The
opposite is not true, however. The lack of evidence of actual confusion carries little
weight. J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438
(CCPA 1965). The issue before us is the likelihood of confusion, not actual confusion.
Herbko Int’l Inc. v. Kappa Books Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed.
Cir. 2002) (actual confusion not required). Further, any suggestion that there has
been no actual confusion between the marks based on the coexistence of Applicant's
mark and the cited registration is entitled to little probative value in the context of
an ex parte appeal. In re Majestic Distilling Co., Inc., 65 USPQ2d at 1205. The
seventh and eighth du Pont factors are therefore neutral.
Applicant’s Intent in Adopting Its Mark
Lastly we note that Applicant argues that because the record does not show that
Applicant harbored malicious intent in adopting or filing its application, this favors
a finding of no likelihood of confusion. “[I]intent in adopting a mark is not decisive
Serial No. 86115113
- 11 -
on the issue of confusing similarity…” In re National Novice Hockey League, Inc.,
222 USPQ 638, 643 (TTAB 1984). Moreover, in the context of an ex parte appeal
where no discovery or testimony can be presented or taken, we cannot place any
probative value to the absence of bad intent on the part of an applicant. As such, we
deem this neutral in our analysis.
Conclusion
In the present case, the critical first and second du Pont factors each favor a
finding of likelihood of confusion. The other du Pont factors are neutral.
After considering all of the evidence properly of record and arguments pertaining
to the du Pont likelihood of confusion factors, we find that there is a likelihood of
confusion between Applicant’s applied-for and Registrant’s registered mark as to
Applicant’s services identified in Class 40.
Decision: The Section 2(d) refusal to register Applicant’s mark for the Class 40
services is affirmed. The applied-for mark will be forwarded for publication in the
Official Gazette for the services in Class 41.