David Lucas

Trademark Trial and Appeal Board

Feb 12, 2003

No. 76308467 (T.T.A.B. Feb. 12, 2003)

Mailed:
Feb. 12, 2003
Paper No. 7
Bottorff
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re David Lucas
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Serial No. 76/308,467
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Basil B. Travis for David Lucas.
Wanda Kay Price, Trademark Examining Attorney, Law Office
111 (Craig Taylor, Managing Attorney).
_______
Before Cissel, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Bottorff, Administrative Trademark Judge:
Applicant seeks registration on the Principal Register
of the mark NOVA VINEYARD (in typed form) for “wine.”1
Applicant has disclaimed VINEYARD apart from the mark as
shown.
1 Application Serial No. 76/308,467, filed September 4, 2001.
The application is based on intent to use under Trademark Act
Section 1(b), 15 U.S.C. §1051(b).
Ser. No. 76/308,467
2
The Trademark Examining Attorney has refused
registration on the ground that applicant’s mark, as
applied to applicant’s goods, so resembles the mark NOVA,
previously registered for “vodka,”2 as to be likely to cause
confusion, to cause mistake, or to deceive. See Trademark
Act Section 2(d), 15 U.S.C. §1052(d).
When the refusal was made final, applicant filed this
appeal. Applicant and the Trademark Examining Attorney
have filed main briefs.3 Applicant did not file a reply
brief, nor did applicant request an oral hearing. We
affirm the refusal to register.
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
likelihood of confusion factors set forth in In re E.I. du
Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by §2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
2 Registration No. 1,536,647, issued April 25, 1989. Affidavits
under §§8 and 15 accepted and acknowledged.
3 We grant the Trademark Examining Attorney’s request for
acceptance of her untimely-filed brief, in view of the
circumstances stated in the request.
Ser. No. 76/308,467
3
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
We turn first to a determination, under the second du
Pont evidentiary factor, of the similarity or dissimilarity
of applicant’s and registrant’s respective goods. It is
not necessary that the respective goods or services be
identical or even competitive in order to support a finding
of likelihood of confusion. Rather, it is sufficient that
the goods or services are related in some manner, or that
the circumstances surrounding their marketing are such,
that they would be likely to be encountered by the same
persons in situations that would give rise, because of the
marks used thereon, to a mistaken belief that they
originate from or are in some way associated with the same
source or that there is an association or connection
between the sources of the respective goods or services.
See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d
1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991); In re International Telephone &
Telegraph Corp., 197 USPQ2d 910 (TTAB 1978).
We find that applicant’s “wine” and registrant’s
“vodka” are sufficiently related that confusion is likely
to result if the goods are marketed under similar marks.
Ser. No. 76/308,467
4
The Trademark Examining Attorney has made of record twenty-
three third-party registrations in which “wine” and “vodka”
are both included in the identification of goods. Although
these registrations are not evidence that the marks shown
therein are in commercial use, or that the public is
familiar with them, they nevertheless are probative
evidence to the extent that they suggest that the goods or
services identified therein are of a type which may emanate
from a single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In
re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).
We find that this evidence suffices to establish that wine
and vodka are related goods, for purposes of the second du
Pont evidentiary factor. We note as well that the Board
previously has specifically held that wine and vodka are
related goods. See Monarch Wine Co Inc. v. Hood River
Distillers, Inc., 196 USPQ 855 (TTAB 1977). Cf. In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003)(malt liquor and tequila are related
goods).
We next find, under the third du Pont factor, that
wine and vodka are marketed in the same trade channels and
to the same classes of purchasers. Neither applicant’s nor
registrant’s identification of goods includes any
Ser. No. 76/308,467
5
restrictions or limitations as to trade channels or classes
of purchasers, and we accordingly presume that applicant’s
and registrant’s goods are marketed in all normal trade
channels for such goods (including liquor stores and other
beverage retailers) and to all normal classes of purchasers
for such goods (including ordinary consumers). See In re
Elbaum, 211 USPQ 639 (TTAB 1981).
Finally, we turn to a determination of whether
applicant’s mark and opposer’s mark, when compared in their
entireties in terms of appearance, sound and connotation,
are similar or dissimilar in their overall commercial
impressions. The test 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). Furthermore, although the marks at issue must be
considered in their entireties, it is well settled that one
feature of a mark may be more significant than another, and
it is not improper to give more weight to this dominant
Ser. No. 76/308,467
6
feature in determining the commercial impression created by
the mark. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985).
Applying these principles in the present case, we find
that applicant’s mark NOVA VINEYARD is confusingly similar
to the cited registered mark NOVA. Given the merely
descriptive significance of the term VINEYARD, we find that
NOVA is the dominant feature in the commercial impression
created by applicant’s mark, i.e., the feature of
applicant’s mark which is most likely to be perceived and
recalled by purchasers as a source indicator. Indeed, in
view of the fact that applicant’s goods are identified as
“wine,” the word VINEYARD in applicant’s mark is somewhat
superfluous in terms of its contribution to the commercial
impression created by applicant’s mark. Thus, although we
do not disregard the word VINEYARD in applicant’s mark, we
find that it is entitled to less weight in our comparison
of the marks. See In re National Data Corp., supra. The
dissimilarities between the marks which result from the
presence of the term VINEYARD in applicant’s mark (and the
absence of that term from the cited registered mark) simply
do not suffice to overcome the overall similarity between
the marks which results from the presence in both marks of
the arbitrary term NOVA.
Ser. No. 76/308,467
7
The record shows that vodka and wine are types of
goods which may emanate from a single source under a single
mark. See discussion supra. In view thereof, and in view
of the arbitrary nature of the term NOVA as applied to
these goods, we find that purchasers are likely to assume
that a single entity produces both NOVA vodka and NOVA
VINEYARD wine. Purchasers are likely to understand that
the presence or absence of the term VINEYARD from the
respective marks is a result of the difference in the goods
themselves, i.e., that the entity which produces NOVA brand
alcoholic beverages would use the generic term VINEYARD in
the mark for its wine, but not in the mark for its vodka.
Conversely, we find that purchasers are not likely to
assume, merely from the presence of the generic term
VINEYARD in the mark for wine and despite the presence in
both marks of the arbitrary term NOVA, that NOVA brand
vodka and NOVA VINEYARD brand wine originate from different
sources.
In summary, we find that applicant’s mark NOVA
VINEYARD and registrant’s mark NOVA are similar rather than
dissimilar when considered in their entireties; applicant
has taken registrant’s mark whole and simply added the
merely descriptive term VINEYARD. We further find that
wine and vodka are related goods which are marketed in the
Ser. No. 76/308,467
8
same trade channels to the same classes of purchasers.
Based on these findings, we conclude that confusion is
likely, and that registration of applicant’s mark is barred
by Trademark Act Section 2(d). See In re Majestic
Distilling Company, Inc., supra.4
Decision: The refusal to register is affirmed.
4 In the last section of its brief, applicant quotes the
statutory definition of “trademark” and contends that its mark
“complies” with that definition because it “identifies and
distinguishes the source of his wine as NOVA VINEYARD while NOVA
for vodka does not but is merely a product name.” To the extent
that applicant, by this argument, is contending that the cited
registered mark is not a “trademark” within the statutory
definition of that term because it does not identify “source” but
instead is “merely a product name,” we reject the argument as
unpersuasive on its merits and because it constitutes an attack
on the validity of the cited registration which is not
permissible in this ex parte proceeding.