Billington Imports

Trademark Trial and Appeal Board

Sep 13, 2007

No. 76638379 (T.T.A.B. Sep. 13, 2007)

Mailed: September 13, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Billington Imports
________

Serial Nos. 76638379 and 766383811
_______

Kevin Oliveira of Odin, Feldman & Pittleman, P.C. for
Billington Imports.

Martha L. Fromm, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Seeherman, Quinn and Kuhlke, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Billington Imports, applicant, has filed applications
to register the marks BIG TATTOO RED2 (in standard character
form) and BIG TATTOO3 (in standard character form) for
“wine” in International Class 33.

1 Inasmuch as these appeals involve common issues, we address
them in a single decision.

2 Serial No. 76638379, filed May 11, 2005, alleging first use and
use in commerce on March 14, 2002, under Trademark Act Section
1(a), 15 U.S.C. §1051(a).

3 Serial No. 76638381, filed May 11, 2005, alleging first use and
use in commerce on March 14, 2002, under Trademark Act Section
1(a), 15 U.S.C. §1051(a).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser Nos. 76638379 and 76638381
2
Registration has been refused, in each application, under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant’s marks, when used in connection
with its identified goods, so resembles the registered mark
TATTOO (in typed form) for “alcoholic beverages, namely,
distilled spirits” in International Class 33,4 as to be
likely to cause confusion, mistake or deception. In
addition, registration of the mark BIG TATTOO RED in Serial
No. 76638379 has been refused pursuant to Section 6(a) of
the Trademark Act, 15 U.S.C. §1056(a), based on applicant’s
failure to comply with the requirement to disclaim the
descriptive term RED on the ground that it is merely
descriptive of applicant’s goods within the meaning of
Section 2(e)(1) of the Trademark Act, 15 U.S.C. 1052(e)(1).
When the refusals were made final, applicant appealed,
and briefs have been filed. We affirm the refusals.
Disclaimer Requirement
We turn first to the examining attorney’s final
refusal based on the requirement that applicant provide a
disclaimer for the word RED. An examining attorney may
require an applicant to disclaim an unregistrable component
of a mark otherwise registrable. Trademark Act Section
6(a). Merely descriptive terms are unregistrable, under

4 Registration No. 2975653, issued July 26, 2005.
Ser Nos. 76638379 and 76638381
3
Trademark Act Section 2(e)(1), and, therefore, are subject
to disclaimer if the mark is otherwise registrable.
Failure to comply with a disclaimer requirement is grounds
for refusal of registration. See In re Omaha National
Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re
Richardson Ink Co., 511 F.2d 559, 185 USPQ 46 (CCPA 1975);
In re National Presto Industries, Inc., 197 USPQ 188 (TTAB
1977); and In re Pendleton Tool Industries, Inc., 157 USPQ
114 (TTAB 1968).
A term is deemed to be merely descriptive of goods or
services, within the meaning of Section 2(e)(1), if it
forthwith conveys an immediate idea of an ingredient,
quality, characteristic, feature, function, purpose or use
of the goods or services. See, e.g., In re Gyulay, 820
F.2d 1216, 3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor
Development Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978).
A term need not immediately convey an idea of each and
every specific feature of the applicant’s goods or services
in order to be considered merely descriptive; it is enough
that the term describes one significant attribute, function
or property of the goods or services. See In re
H.U.D.D.L.E., 216 USPQ 358 (TTAB 1982); In re MBAssociates,
180 USPQ 338 (TTAB 1973).
Ser Nos. 76638379 and 76638381
4
Whether a term is merely descriptive is determined not
in the abstract, but in relation to the goods or services
for which registration is sought, the context in which it
is being used on or in connection with those goods or
services, and the possible significance that the term would
have to the average purchaser of the goods or services
because of the manner of its use. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
In support of the refusal, the examining attorney
submitted excerpts from the online dictionary ENCARTA
containing the following definitions:
Red: adjective 5. describes wine made from black
grapes;

Syrah: noun 2. a black grape variety. Use: to
make syrah wine; and

Cabernet Sauvignon: noun 1. red wine: a dry red
wine made from a variety of black grape
originally grown in southwestern France.

encarta.msn.com
We find that the examining attorney has made a prima
facie case that the word RED used in connection with
applicant’s wine is descriptive. Applicant did not present
argument against the disclaimer in its brief; however, in
response to an Office action applicant argued that “it does
not concede that the use is descriptive as while this
Ser Nos. 76638379 and 76638381
5
specimen related to a ‘red’ wine, [a]pplicant may also use
the mark BIG TATTOO RED on other wine varieties in the
future including wine varieties that may be wine from
grapes other than black grapes.” June 12, 2006 Response p.
11. We are not persuaded by this argument. This word
clearly describes a type of wine that is encompassed by
applicant’s identification, namely, red wine.5 Thus, the
disclaimer requirement is appropriate. In view of the
above, the requirement to provide a disclaimer for the word
RED is affirmed.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion 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 & 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.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie

5 We further note that to the extent applicant may use this term
in connection with other types of wine, e.g., white wine, it
Ser Nos. 76638379 and 76638381
6
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We turn first to the du Pont factor of whether
applicant’s marks, BIG TATTOO RED and BIG TATTOO, and
registrant’s mark, TATTOO, 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 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 specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
In considering the similarity of the marks 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. In re

could be misdescriptive.
Ser Nos. 76638379 and 76638381
7
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). In both of applicant’s marks TATTOO is the
dominant element. While BIG serves to modify the term
TATTOO it does not serve to distinguish these marks
sufficiently to avoid a likelihood of confusion, but rather
merely emphasizes the same connotation of the word TATTOO.
We have already determined the term RED to be descriptive
and as such it has little to no source identifying
significance. See In re National Data Corp., supra at 751
(“[t]hat a particular feature is descriptive ... with
respect to the involved goods ... is one commonly accepted
rationale for giving less weight to a portion of a mark.”)
Applicant cites In re Hearst Corp., 982 F.2d 493, 25
USPQ2d 1238 (Fed. Cir. 1992) in support of its contention
that the examining attorney has not given sufficient weight
to the other elements in applicant’s marks. However, the
Court in Hearst explicitly recognized that the weight to be
given terms in a mark is “not entirely free of
subjectivity” and provided examples to “illustrate the
fact-dependency of such determinations.” Id. at 1239. The
Court confirmed, in In re Chatam International Inc., 380
F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004), that the
determination is highly fact-specific (affirming the
Board’s decision that JOSE GASPAR GOLD for tequila was
Ser Nos. 76638379 and 76638381
8
likely to cause confusion with GASPAR’S ALE for beer and
ale).
The dominant element in applicant’s marks is identical
in sound and appearance to the entirety of registrant’s
mark. Moreover, the word TATTOO would have the same
connotation when used with the respective goods. We also
find that the marks have the same overall commercial
impression.
Applicant’s argument regarding the actual use of
registrant’s mark in combination with a house mark is not
relevant for our purposes. We must consider the mark as it
appears in the registration. The mark in the registration
is for the word TATTOO by itself and is not limited by the
presence of a house mark.
Applicant’s argument that the mark TATTOO is weak is
not supported by the record. Applicant states that the
word TATTOO “is broadly used by numerous applicants and
registrants in respect to numerous products and services in
numerous channels and trade [sic]. Such is demonstrated by
recourse to the database of registrations at the USPTO for
which the examining attorney can reasonably access and, of
which, take notice during prosecution and for which this
appellate body can take judicial notice.” Br. p. 7.
Ser Nos. 76638379 and 76638381
9
It is well established that the Board does not take
judicial notice of third-party registrations. In re Wada,
48 USPQ2d 1689, 1689 n. 2 (TTAB 1998), aff’d, 194 F.3d
1297, 52 USPQ2d 1539 (Fed. Cir. 1999). Therefore, there is
nothing in the record to support applicant’s contention
that the term TATTOO is weak or has a suggestive meaning
when used in connection with wine. See AMF Inc. v.
American Leisure Products, Inc., 474 F.2d 1403, 1406, 177
USPQ 268, 269-70 (CCPA 1973). In view thereof, we must
treat the mark as an arbitrary mark without any limitations
as to the scope of protection to be accorded the mark.
In view of the above, we find the marks to be similar
and this factor weighs in favor of a finding of likelihood
of confusion.
We turn next to a consideration of the goods
identified in the applications and the cited registration.
We must consider the cited registrant’s goods as they are
described in the registration and we cannot read
limitations into those goods. See Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed.
Cir. 2002); and Octocom Systems Inc. v. Houston Computer
Services Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir.
1987). If the cited registration describes goods broadly,
and there is no limitation as to the nature, type, channels
Ser Nos. 76638379 and 76638381
10
of trade or class of purchasers, it is presumed that the
registration encompasses all goods of the type described,
that they move in all channels of trade normal for these
goods, and that they are available to all classes of
purchasers for the described goods. See In re Linkvest
S.A., 24 USPQ2d 1716 (TTAB 1992).
In support of her contention that applicant’s “wine”
is related to registrant’s “alcoholic beverages, namely,
distilled spirits,” the examining attorney submitted third-
party use-based registrations to show that numerous
entities have adopted a single mark for wine and for
distilled spirits. See, e.g., Reg. No. 2099825 (KITTLING
RIDGE ESTATES for alcoholic beverages, namely, wines and
distilled spirits); Reg. No. 2567847 (ROCKLEDGE VINEYARDS
for, inter alia, wines, sparkling wines, distilled
spirits); Reg. No. 2472217 (WESTERLY VINEYARDS for, inter
alia, wines and distilled spirits); Reg. No. 2709874
(BRADFORD MOUNTAIN for, inter alia, wine and distilled
spirits); Reg. No. 2745943 (REDWOOD VINEYARDS for, inter
alia, wines and distilled spirits); Reg. No. 2676913
(GEORGIA – CRADLE OF WINE for wine and distilled spirits);
Reg. No. 2798817 (BUNRATTY CASTLE for wines and distilled
spirits); and Reg. No. 2860948 (DUCHAMP WINERY for wine and
distilled spirits). In addition, the examining attorney
Ser Nos. 76638379 and 76638381
11
submitted excerpts of websites that sell various alcoholic
beverages, including wine and distilled spirits. See,
e.g., www.www.nashobawinery.com; www.cbrands.com;
www.recharche.bluewine.com; and www.charbay.com.
We find the examining attorney’s third-party
registrations persuasive evidence as to the factor of the
relatedness of the goods. See In re Albert Trostel & Sons
Co., 29 USPQ2d 1783 (TTAB 1993). The website excerpts
serve to bolster that evidence by showing wines and
distilled spirits being sold under, at least, the same
house mark and being offered on the same specialty
websites. In addition to the websites, these goods would
be sold in the same specialized retail outlets. Therefore,
given that there are no limitations in the identifications
in the applications or registration, we find that the
channels of trade and class of purchasers overlap. See
Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813 (Fed. Cir. 1987); and In re Smith and
Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
Applicant’s argument that the goods are unrelated
because “they are manufactured differently from different
ingredients, are used differently and consumed differently”
(br. p. 8.) is misplaced given that it is well settled that
the fact that the goods may differ is not controlling. The
Ser Nos. 76638379 and 76638381
12
issue to be determined is whether there is a likelihood of
confusion as to the source of the goods, not as to the
goods themselves. In re Rexel Inc., 223 USPQ 830, 831
(TTAB 1984).
The cases cited by applicant as examples where courts
found no likelihood of confusion or infringement “when
apparently similar marks were used, respectively, in
connection with wine and brandies” (br. p. 9) are
distinguishable from the facts of this case. Two of the
cases involved agreements. In the first one, a prior
agreement between the parties was considered by the Court
in its determination. Peyrat et al. dba Societe Saint-
Louvent Peyrat & Cie et al. v. L.N. Renault & Sons, Inc. et
al., 148 USPQ 77 (SDNY 1965). In the other case, the Court
considered an agreement between the applicant and the cited
registrant in its determination of no likely confusion.
See In re National Distillers and Chemical Corp., 132 USPQ
271 (CCPA 1962). In the third case, the word elements in
the marks were not identical, BUITONI and BUTON, and the
court considered the manner in which the marks were
displayed in making its determination of no likely
confusion in the context of an infringement case. See
Buitoni Foods Corp. v. Gio. Buton & C.S.p.A., 216 USPQ 558
(2d Cir. 1982).
Ser Nos. 76638379 and 76638381
13
In view thereof, the du Pont factors of the
relatedness of the goods, the channels of trade and class
of purchasers favor a finding of a likelihood of confusion.6
Moreover, because applicant’s goods and channels of
trade are not limited, we must consider applicant’s
potential purchasers to include all usual purchasers of the
goods. In this case that would include members of the
general public who are ordinary purchasers. In re Bercut-
Vandervoort & Co., 229 USPQ 763, 765 (TTAB 1986) (average
ordinary wine consumer must be looked at in considering
source confusion).

6 We note the Board and other tribunals have often found various
alcohol products to be related and have overlapping channels of
trade. See, e.g., 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
at 1204 (brewed malt liquor and distilled tequila similar “by
virtue of the fact that both are alcoholic beverages that are
marketed in many of the same channels of trade to many of the
same consumers”); The Fleischmann Distilling Corp. v. Maier
Brewing Co., 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”).
Ser Nos. 76638379 and 76638381
14
In conclusion, we find that because of the related
goods, the overlap in the trade channels, and the
similarities in the marks, confusion is likely between
applicant’s marks and the mark in the cited registration.
To the extent there are any doubts, we resolve them, as we
must, in registrant’s favor. In re Hyper Shoppes (Ohio),
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988).

Decision: The refusals to register under Section
2(d) of the Trademark Act in application Serial Nos.
76638379 and 76638381 are affirmed. The requirement
for a disclaimer of RED in application Serial No.
76638379 is also affirmed.