Barbara Whatley

Trademark Trial and Appeal Board

Nov 29, 2013

No. 85299521 (T.T.A.B. Nov. 29, 2013)

Mailed:
November 29, 2013

United States Patent and Trademark Office
Trademark Trial and Appeal Board
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In re Whatley
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Serial No. 85299521
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Mona J. Geidl of Minnick-Hayner, representing Barbara Whatley.
Ingrid C. Eulin, Trademark Examining Attorney, Law Office 111
(Robert L. Lorenzo, Managing Attorney).
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Before Bucher, Cataldo and Wolfson, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
Barbara Whatley (“applicant”) seeks registration on the Principal Register of
the mark WINERY DOGS (in standard characters) for
Printed material, namely, books, hard bound books,
picture books, pamphlets, brochures, newsletters,
journals, magazines, and booklets featuring dogs found on
wineries; note pads; note books; postcards; stationery;
blank cards; posters; portraits; greeting cards; calendars;
desk calendars; day planners for a year and multiple
years; photograph albums; books for holding photographs
in the nature of photo albums; photographs; photographic
prints, photographic prints that are reproductions; art
prints; mounted photographs; framed photographs;
framed art pictures; framed postcards; framed posters;
coasters in card form made of paper, coasters of
cardboard, coasters of paper, bookends, book markers
This Opinion is Not a
Precedent of the TTAB
Serial No. 85299521

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in International Class 16.1
The Trademark Examining Attorney has refused registration of applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), contending that
applicant’s use of its mark for its identified goods is likely to cause confusion with
the mark WINE DOGS (in standard character format) for
Printed material, namely, pamphlets, brochures,
newsletters, journals, magazines, booklets, note pads,
note books, postcards, stationery, blank cards, posters,
portraits, books, photo books, picture books, hard bound
books, greeting cards, calendars, desk calendars, year
planners, photograph albums, books for holding
photographs, address books, photographs, photographic
prints, photographic reproductions, art prints, mounted
photographs, framed photographs, framed pictures,
framed postcards, framed posters, framed prints, diaries,
desk diaries, coasters in card form made of paper, coasters
of cardboard, coasters of paper, bookends, bookmarkers,
all featuring dogs that live on wineries; mounts for
pictures that are made from paper; push pins; calendar
holders made of paper; calendar pad bases made of paper;
materials for book binding made of paper
in International Class 16.2
When the refusal was made final, applicant appealed and filed a request for
reconsideration. After the examining attorney denied the request, the appeal was
resumed. We affirm the refusal to register.3

1 Application Serial No. 85299521 was filed on April 20, 2011, based on an allegation of
first use and first use in commerce of January 1, 2007. On February 25, 2013, applicant
amended the application to seek registration under Section 1(b), intent-to-use.
2 Reg. No. 3500870; registered September 16, 2008. The word “DOGS” has been disclaimed.
3 During prosecution, the examining attorney raised additional grounds for refusal, namely,
that the mark is a phantom mark, that it is merely descriptive, and that the specimens do
not conform to the mark as presented in the drawing. Applicant submitted a declaration
that the mark has been in substantially continuous and exclusive use for the five years
preceding the declaration; the declaration was accepted and the refusal under Section
Serial No. 85299521

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Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. 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 Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
Turning first to the goods, among the many goods that are identified with
identical wording, are applicant’s “booklets featuring dogs found on wineries” and
registrant’s goods include “booklets … all featuring dogs that live on wineries.” As a
result, the goods are, in part, legally identical and otherwise include numerous
other closely related printed products. Further, because the goods are in part
legally identical, they are presumed to travel in the same channels of trade and be
sold to the same classes of consumers. In re Smith and Mehaffey, 31 USPQ2d 1531,
1532 (TTAB 1994). Although registrant is an Australian company whose products,

2(e)(1) was withdrawn. As for the refusal that the mark is a phantom mark, and the
requirement for a new specimen, these were raised after the initial Office action had issued
and were ultimately withdrawn before appeal. Because the refusal and requirement are no
longer before us, we will not give an advisory opinion on the merits thereof; suffice it to say,
however, that we cannot condone the piecemeal fashion in which they were raised.
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applicant argues, “are primarily available online,” Brief p. 6, the registration is not
restricted to online trade channels and therefore the goods must be presumed to
travel through all normal channels of trade for the goods, including “book stores
throughout the Pacific Northwest,” which applicant contends are her primary
marketing channels. Id. These two du Pont factors favor a finding of likelihood of
confusion.
We next consider the du Pont factor of the similarity of the marks, keeping in
mind that “[w]hen 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). Here, of course, the goods are legally identical in part.
Further, in comparing the marks, we must consider the marks in their entireties as
to appearance, sound, connotation and commercial impression, to determine the
similarity or dissimilarity between them. In re Viterra Inc., 671 F.3d 1358, 1362,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting du Pont); Palm Bay, 73 USPQ2d
at 1692; and TMEP §1207.01(b)-(b)(v) (April 2013). The test, under the first 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 impression 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
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specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Applicant’s mark is WINERY DOGS; the cited mark is WINE DOGS. The
marks differ only in that applicant’s mark uses the word WINERY to modify the
subject DOGS in the mark, while the cited mark uses the word WINE. However,
the word “winery” is derived from the word “wine” and their meanings are
interrelated. See Office action dated August 22, 2012, including a dictionary
definition of winery as “an establishment at which wine is made.”4 Applicant
argues that the marks are distinguishable because the “word ‘winery’ brings to
mind vineyards, tasting rooms and wine barrels” while “the word ‘wine’ connotes
the alcohol beverage itself.” Brief p. 4. To the contrary, images of vineyards,
tasting rooms and wine barrels, are evocative of images of wine. Moreover, we do
not consider the connotations and commercial impressions of the marks in a
vacuum but in relation to the goods with which they are associated. Both marks
suggest that the subject matter of a WINE(RY) DOGS book involves dogs that are
symbolized by their connection to a winery. When consumers familiar with
registrant’s “WINE DOGS” books encounter applicant’s “WINERY DOGS” book, it is
likely they will believe that both books emanate from the same entity.
Applicant notes that she began using her mark in 2007 and has not
encountered any instance of actual confusion. However, applicant’s assertion is of
little probative value because we have no evidence pertaining to the nature or
extent of any such use either by applicant or by registrant and “thus cannot

4 At http://education.yahoo.com/reference/dictionary/entry/winery.
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ascertain whether there has been ample opportunity for confusion to arise, if it were
going to.” In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). See also,
In re Majestic Distilling Co., 65 USPQ2d at 1205 (“uncorroborated statements of no
known instances of actual confusion are of little evidentiary value”). Inasmuch as
the test under Trademark Act § 2(d) is whether there is a likelihood of confusion, it
is unnecessary for the examining attorney to show actual confusion in establishing
likelihood of confusion. Moreover, a registrant has no chance to be heard in an
ex parte setting. Accordingly, this du Pont factor is considered neutral.
Applicant argues that the purchasers are likely to be careful in their selection
of applicant’s goods because the cost of applicant’s book is “about $38 due to the fact
that it is a hardcover, coffee table book.” Brief at 5. This argument is unavailing
for several reasons. First, these goods are legally identical and have not been
restricted to relatively expensive items, but may be purchased by less sophisticated
purchasers who will exercise only an ordinary degree of care. Secondly, registrant’s
books appear to be priced at similar price points; see applicant’s Response to Office
action dated November 28, 2011 (printout from registrant’s website). There is no
evidence to suggest that this is a relatively expensive price for a coffee table book or
that purchasers of such books are sophisticated or generally discerning. Moreover,
even sophisticated purchasers, when faced with substantially similar marks, may
be subject to source confusion. See In re Cynosure, Inc., 90 USPQ2d 1644 (TTAB
2009); In re Decombe, 9 USPQ2d 1812 (TTAB 1988); and In re Pellerin Milnor Corp.,
221 USPQ 558 (TTAB 1983).
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In view of the similarity of the marks and the fact that the goods are legally
identical in part and would be sold through similar channels of trade to the same
purchasers, we find that applicant’s registration of the mark WINERY DOGS is
likely to cause confusion with registrant’s mark WINE DOGS for the printed items
listed in the respective identification of goods for each mark.
Decision: The refusal to register applicant’s mark WINERY DOGS is
affirmed.