Brix Cellars LLC dba Brix Wine Cellars

Trademark Trial and Appeal Board

Jan 25, 2013

No. 85111647 (T.T.A.B. Jan. 25, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: January 25, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Brix Cellars LLC dba Brix Wine Cellars
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Serial Nos. 85111647, 85111682 and 85112408
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Michael G. Fletcher of Fletcher Yoder PC,
for Brix Cellars LLC.
Jeffery C. Coward, Trademark Examining Attorney, Law Office 106,
Mary I. Sparrow, Managing Attorney.
_____

Before Seeherman, Bucher and Masiello,
Administrative Trademark Judges.

Opinion by Bucher, Administrative Trademark Judge:
Brix Cellars LLC dba Brix Wine Cellars (“applicant”) seeks registration on the
Principal Register of the marks Brix Wine Cellars and Brix Cellars (both in stand-
ard character format) and the following special form mark:

Serial Nos. 85111647, 85111682 and 85112408

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for services recited as “bar and restaurant services; restaurant; restaurant and bar
services; wine bars” in International Class 43.1 The terms “Wine Cellars” and “Cel-
lars” have been disclaimed in the various applications as appropriate.
The examining attorney has refused registration under Section 2(d) of the
Trademark Act on the ground that applicant’s marks, when applied to applicant’s
services, so resemble the marks in the following two registrations owned by the
same party, as to be likely to cause confusion, to cause mistake or to deceive:

BRIX for “restaurant and bar services”2 and
BRIXX for “restaurant services.”3

When the refusals were made final, applicant appealed and requested reconsid-
eration. After the examining attorney denied the requests for reconsideration, the
appeals were resumed. Because the issues in each appeal are substantially the
same, we have consolidated all three appeals and are issuing a single opinion, tak-
ing into consideration the differences in the three marks as appropriate. We affirm
all three refusals to register.

1 Application Serial Nos. 85111647 (Brix Wine Cellars) and 85111682 (Brix Cellars) were filed
on August 19, 2010, and application Serial No. 85112408 (Brix Wine Cellars and design) was
filed on August 20, 2010, all based upon applicant’s claim of use anywhere and use in com-
merce since at least as early as March 6, 2008.
2 Registration No. 2070071 issued on June 10, 1997; renewed.
3 Registration No. 3005545 issued on October 11, 2005; Section 8 affidavit accepted and
Section 15 affidavit acknowledged.
Serial Nos. 85111647, 85111682 and 85112408

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Likelihood of Confusion
Our determination under Trademark Act § 2(d) is based upon 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 evi-
dence 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 [or services] 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).
A. Relationship of the Services
We turn our attention first to the relationship of the services as they are recited
in the applications and registrations. In re Dixie Rests. Inc., 41 USPQ2d at 1534.
Here, the services recited in all of the applications and registrations include “res-
taurant services.” For purposes of our determination under this du Pont factor, the
services are deemed to be legally identical.
Accordingly, we are not persuaded by applicant’s arguments about aesthetic dif-
ferences between the establishments of applicant and registrant. For example, ap-
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plicant argues that its wine bar “is somewhat dark and sophisticated and has a rel-
atively enclosed atmosphere,” while registrant’s establishment “has a relatively
light and airy atmosphere overlooking outdoor vistas.” Apparently applicant’s wine
bar prominently features wines, with a select choice of food items available upon re-
quest. Applicant argues that by contrast, registrant “is primarily a restaurant” also
having wines available. Nonetheless, given the lack of restrictions in any of appli-
cant’s recitations of services, we must presume that applicant’s services encompass
restaurant, bar and wine bar services of all types. See Octocom Systems Inc. v. Hou-
ston Computers Services, Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir.
1990).
Finally, the examining attorney has also demonstrated with thirty representa-
tive third-party registrations that “restaurant and bar services” and “wine bars,”
are of a kind that may emanate from a single source under a single mark.
Accordingly, this critical du Pont factor weighs in favor of a finding of likelihood
of confusion.
B. Trade channels
Applicant argues that registrant operates a restaurant, garden, and wine shop
in Napa, California, while by contrast, applicant markets wine bar and restaurant
services to customers in Houston, Texas. Furthermore, applicant contends that nei-
ther has plans to expand into the territory of the other.
Of course, as noted by the examining attorney, applicant seeks geographically
unrestricted registrations. As with registrant’s cited registrations, the owner of a
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registration without specified limitations enjoys a presumption of exclusive right to
nationwide use of the registered mark under Trademark Act Section 7(b), 15 U.S.C.
§ 1057(b), regardless of its actual extent of use. Giant Food, Inc. v. Nation’s Food-
service, Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed. Cir. 1983). As a result, noth-
ing precludes either applicant or registrant from expansion into any geographic lo-
cation in the United States. Thus, the geographical extent of applicant’s and regis-
trant’s current restaurant services is not relevant to our ex parte likelihood of confu-
sion determination. Rather, because the services are legally identical, they are pre-
sumed to be rendered in the same channels of trade which would be normal there-
for. In re Elbaum, 211 USPQ 639 (TTAB 1981). Accordingly, this related du Pont
factor weighs in favor of a finding of likelihood of confusion.
C. Conditions of Sale
Applicant argues at some length that another du Pont factor – the conditions of
sale – outweighs the factors focused on the relationship of the services and the
channels of trade. Specifically, applicant argues there can be no likelihood of confu-
sion because the potential customers of the services of both applicant and registrant
are quite careful and sophisticated. Applicant argues as follows:
For example, wine purchasers typically do not buy on im-
pulse, as wines can be quite expensive. In addition, these
establishments (i.e., wine bars and restaurants) often
pride themselves on carrying a variety of good wines. Sim-
ilarly, customers who frequent wine bars and restaurants
are often very knowledgeable with respect to wines, and
very infrequently select wine bars and restaurants (or
wines, for that matter) on impulse. Rather, they often put
much thought into not only which wine bars and restau-
rants to go to, but also which wines to purchase at the
Serial Nos. 85111647, 85111682 and 85112408

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wine bars and restaurants, as the wines can be quite ex-
pensive.
… This sort of heightened awareness [in selecting wines
and wine establishments] certainly reduces the possibility
of confusion between competing marks insofar as the con-
sumer will be more likely to question differences that are
perceived between competing marks. Therefore, the de-
gree of sophistication of potential consumers should cer-
tainly be considered as an important factor when ascer-
taining likelihood of confusion between competing marks
and, in this instance, suggests a lower likelihood of confu-
sion between the registered marks BRIX and BRIXX and
Applicant’s mark “Brix Wine Cellars.”
Again, the recitation of services in no way excludes from the potential class of
consumers less sophisticated purchasers from within the purchasing universe, who
will exercise only an ordinary degree of care. Because restaurant and bar services
can run the gamut in terms of cost and clientele, we cannot accept applicant’s posi-
tion that only sophisticated individuals will be the patrons of either applicant’s or
registrant’s establishments.
Furthermore, even if we assume, arguendo, that the purchasers of applicant’s
services will be careful and discriminating, it does not serve to obviate the likeli-
hood of confusion. The only difference in the marks, as discussed infra, is the pres-
ence/absence of words such as “Cellars” and “Wine Cellars,” terms having little
source-identifying capacity when used in the context of a wine bar. Therefore, even
careful, discriminating consumers are not likely to regard the presence or absence of
these words as indicating a difference in the source of the respective services. See
Weiss Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840,
1841-42 (Fed. Cir. 1990) (even sophisticated purchasers can be confused by very
Serial Nos. 85111647, 85111682 and 85112408

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similar marks). Accordingly, this related du Pont factor is, at best for applicant,
neutral in our determination of likelihood of confusion.
D. Comparison of the Marks
In comparing the marks, we are mindful that where, as here, the services are
identical, the degree of similarity necessary to find likelihood of confusion need not
be as great as where there is a recognizable disparity between the services. Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85 USPQ2d 1104, 1108
(TTAB 2007); and Schering-Plough HealthCare Products Inc. v. Ing-Jing Huang, 84
USPQ2d 1323, 1325 (TTAB 2007).
Applicant has applied to register the marks Brix Wine Cellars, Brix Cellars,
. The registered marks are BRIX and BRIXX, both owned by and
Yountville Partners, Inc., of Napa, CA. Based upon the totality of the record, we
conclude that the word “Brix” (or “Brixx”) is arbitrary for these restaurant and bar
services, and presents as a strong mark, both conceptually and commercially.
In comparing the marks, we must consider the marks in their entireties as to
appearance, sound, connotation and commercial impression, to determine the simi-
larity or dissimilarity between them. Palm Bay, 73 USPQ2d at 1692. 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 or services offered under the respective marks is likely to result. Because the
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similarity or dissimilarity of the marks is determined based on the marks in their
entireties, the analysis cannot be predicated on dissecting the marks into their vari-
ous components; that is, the decision must be based on the entire marks, not just
part of the marks. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985).
On the other hand, different features may be analyzed to determine whether
the marks are similar. Price Candy Company v. Gold Medal Candy Corporation,
220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955). In fact, there is nothing improper
in stating that, for rational reasons, more or less weight has been given to a particu-
lar feature of a mark, provided the ultimate conclusion rests on a consideration of
the marks in their entireties. In re National Data Corp., 224 USPQ at 751. The fo-
cus 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).
Applicant argues that the commercial impressions of applicant’s two-word
(“Brix Cellars”) and three-word (“Brix Wine Cellars”) marks are substantially different
from the commercial impressions engendered by registrant’s cited one-word regis-
tered marks, BRIX and BRIXX. Applicant takes the position that with its mark, po-
tential customers would be left with the distinct impression of a high-scale wine es-
tablishment, while registrant’s marks, BRIX or BRIXX, connote nothing other than
the meaning that may be ascribed to these individual words.
Serial Nos. 85111647, 85111682 and 85112408

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The examining attorney disagrees with this conclusion, and contends that in
the context of restaurant and bar services, the addition of largely non-distinctive
words like “Cellars” or “Wine Cellars” does not obviate the overall similar commer-
cial impressions shared with the cited, entirely arbitrary registered marks. Alt-
hough the additional words “Cellars” or “Wine Cellars” in applicant’s marks result
in some differences in appearance and pronunciation, these differences are insuffi-
cient to distinguish the marks. Although the words “Cellars” and “Wine Cellars”
provide additional information about applicant’s services, because they are descrip-
tive, applicant’s marks and registrant’s marks have essentially the same meaning
and convey the same commercial impression. This is true inasmuch as the term
BRIX retains its identity as a separately identifiable term in all of applicant’s
marks, and, indeed, as the sole term with any real source-identifying significance.
The addition of the wording “Cellars” or “Wine Cellars” to registrant’s “Brix” mark
in the context of restaurant and bar services is not enough to overcome a likelihood
of confusion herein. Accordingly, this critical du Pont factor weighs in favor of a
finding of likelihood of confusion.
E. Lack of Actual Confusion
Applicant also maintains that there has been no actual confusion between ap-
plicant’s marks and the cited marks over three years of contemporaneous usage, de-
spite applicant’s prominent and extensive use of its applied-for marks. Of course,
actual confusion is not necessary to show a likelihood of confusion. See Weiss Asso-
ciates Inc. v. HRL Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990);
Serial Nos. 85111647, 85111682 and 85112408

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and Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F.2d 1565, 1571, 218 USPQ
390, 396 (Fed. Cir. 1983). Moreover, the lack of actual confusion carries little
weight, especially in an ex parte context. J.C Hall Co. v. Hallmark Cards, Inc., 340
F.2d 960 144 USPQ 435, 438 (CCPA 1965). In this ex parte proceeding, we have had
no opportunity to hear from the registrant as to whether it has encountered any in-
stances of confusion. As noted by our primary reviewing Court:
With regard to the seventh du Pont factor, we agree with
the Board that Majestic’s uncorroborated statements of no
known instances of actual confusion are of little eviden-
tiary value. See In re Bissett-Berman Corp., 476 F.2d 640,
177 USPQ 528, 529 (CCPA 1973) (stating that self-
serving testimony of appellant’s corporate president’s un-
awareness of instances of actual confusion was not con-
clusive that actual confusion did not exist or that there
was no likelihood of confusion). A showing of actual confu-
sion would of course be highly probative, if not conclusive,
of a high 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), especially in
an ex parte context.
In re Majestic Distilling Co., 65 USPQ2d at 1205. Thus, applicant’s assertion of the
absence of actual confusion is of little probative value in our determination on the
issue of likelihood of confusion, and this du Pont factor is neutral in this case.
F. Balancing the factors
In view of the facts that the cited marks are both conceptually and commercially
strong, that the services are legally identical, are offered through the same channels
of trade, and that the respective marks are quite similar, we find that applicant’s
registration of these three marks is likely to cause confusion. To the extent that the
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record provides any credible evidence on the conditions of sale and the absence of
actual confusion, we find these factors are, at best for applicant, neutral.
G. Applicant’s request for registration on the Supplemental Register
Applicant contends in its initial appeal brief that, at the very least, its marks
should be registered on the Supplemental Register. However, applicant did not
amend its applications to the Supplemental Register, and therefore the question of
their registrability on this Register is not an issue in this appeal.4
Decision: All three refusals to register applicant’s marks under Trademark Act
§ 2(d) are hereby affirmed.

4 In any event, applicant should note that marks are not eligible on the Supplemental Reg-
ister if they are eligible for registration on the Principal Register, and furthermore, marks
may not be registered on either the Principal Register or the Supplemental Register if they
are likely to cause confusion with a registered mark.