E. & J. Gallo Wineryv.Kinney Family Vintners LLC d/b/a Occasio Winery

Trademark Trial and Appeal Board

Mar 10, 2015

No. 91207656 (T.T.A.B. Mar. 10, 2015)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: March 10, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

E. & J. Gallo Winery

v.

Kinney Family Vintners LLC d/b/a Occasio Winery
___

Opposition No. 91207656
to Application Serial No. 85519705
___

Steven M. Weinberg of Holmes Weinberg, PC for E. & J. Gallo Winery.

Daniel W. Celander of Celander Law Firm Ltd. for Kinney Family Vintners LLC
d/b/a Occasio Winery.
______

Before Zervas, Taylor and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:

Kinney Family Vintners LLC d/b/a Occasio Winery (“Applicant”) seeks
registration of APOTHEOSIS, in standard characters, for “Red wine; Red wines;
Table wines; Wine; Wines derived from grapes grown in Livermore AVA, labeled
and advertised in compliance with TTB and CA ABC laws for California.”1 In its

1 Application Serial No. 85519705, filed January 18, 2012 based on an intent to use the
mark in commerce under Section 1(b) of the Trademark Act.
Opposition No. 91207656

2

notice of opposition, E. & J. Gallo Winery (“Opposer”) alleges prior use of APOTHIC
for wine and that use of Applicant’s mark would be likely to cause confusion with
Opposer’s mark.2 In its answer, Applicant denies the salient allegations in the
notice of opposition and asserts the affirmative defenses of “laches” and “unclean
hands,” but failed to explain, pursue or prove these asserted defenses at trial, which
are accordingly waived.3 Miller v. Miller, 105 USPQ2d 1615, 1616 n.3 (TTAB 2013);
Baroness Small Estates Inc. v. American Wine Trade Inc., 104 USPQ2d 1224, 1225
n.2 (TTAB 2012).
The Record
The record consists of the pleadings, the file of the involved application, and
the following:
Opposer’s Notice of Reliance (“Opposer’s NOR,” TTAB
Dkt. No. 16) on printouts from Opposer’s website,
Applicant’s responses to Opposer’s first set of
interrogatories, the discovery deposition of John Kinney,
Applicant’s sole member and executive and the exhibits
thereto (“Kinney Disc. Tr.”), and dictionary and thesaurus
entries.4

2 Opposer also pleaded ownership of registrations for APOTHIC (Registration No. 4093343)
and APOTHIC RED (Reg. No. 3713187), but failed to make these registrations of record.
While Applicant’s involved application is automatically of record, a plaintiff must properly
introduce its pleaded registration(s). Compare Trademark Rule 2.122(d) and TBMP
§ 704.03(b)(1)(A) (2014), addressing plaintiffs’ registrations with Trademark Rule
2.122(b)(1) and TBMP § 704.03(a) addressing defendants’ applications.
3 Applicant also asserted that the parties’ marks are not confusingly similar, which is
merely an amplification of its denials of Opposer’s allegations, and that the notice of
opposition fails to state a claim upon which relief may be granted, which we need not
consider at this stage because it was not supported by a timely motion. See Alcatraz Media,
Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1753 n.6 (TTAB 2013), aff’d 565
Fed. Appx. 900 (Fed. Cir. 2014) (mem.).
4 Opposer unnecessarily filed separate notices of reliance on/for each piece of evidence
included in TTABVue Dkt. No. 16, but for convenience we will simply cite “Opposer’s NOR”
for all materials submitted with that filing.
Opposition No. 91207656

3

Applicant’s first Notice of Reliance (“Applicant’s NOR No.
1,” TTABVue Dkt. No. 17) on the April 24, 2012 Office
Action issued in connection with the involved application,
Opposer’s responses to Applicant’s first and second sets of
interrogatories, dictionary entries, printouts from
Opposer’s website, the Department of Treasury’s Alcohol
and Tobacco Tax and Trade Bureau’s (“TTB”) website and
“latinlexicon.org”’s website, and printouts of Google
search results.

Applicant’s second Notice of Reliance (“Applicant’s NOR
No. 2,” TTABVue Dkt. No. 18) on Urban Dictionary
entries and printouts from the “orthodoxwiki.org” and
TTB websites.

Opposer’s testimony deposition of Katie Griesbeck
(TTABVue Dkt. No. 20), its Marketing Manager for
APOTHIC wine and the exhibits thereto (“Griesbeck Tr.”).

Applicant’s testimony deposition of Mr. Kinney (TTABVue
Dkt. No. 25) and the exhibits thereto (“Kinney Test. Tr.”).

Standing and Priority
Opposer established, and Applicant does not dispute, that it has used
APOTHIC for wine since at least as early as 2010. Griesbeck Tr. at 15-16, 27, 29
and Exs. 1-3, 12. This establishes Opposer’s standing. Giersch v. Scripps Networks,
Inc., 90 USPQ2d 1020, 1022 (TTAB 2009) (“Petitioner has established his common-
law rights in the mark DESIGNED2SELL, and has thereby established his
standing to bring this proceeding.”) and Syngenta Crop Prot. Inc. v. Bio-Chek LLC,
90 USPQ2d 1112, 1118 (TTAB 2009) (testimony that opposer uses its mark “is
sufficient to support opposer’s allegations of a reasonable belief that it would be
damaged …” where opposer alleged likelihood of confusion). It also establishes that
Opposer has priority, because the filing date of Applicant’s intent to use application
Opposition No. 91207656

4

was January 18, 2012, and Applicant has not claimed or established any use prior
to that date. Opposer’s Notice of Reliance (Applicant’s response to Opposer’s
Interrogatory No. 11) (“APPLICANT’S MARK has not been used in commerce and
… no goods bearing APPLICANT’S MARK exist …”).
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, 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). Opposer bears the burden of establishing that there is a likelihood of
confusion by a preponderance of the evidence. Cunningham, 222 F.3d at 943, 55
USPQ2d at 1848. We consider the likelihood of confusion factors about which the
parties introduced evidence, and treat the remaining factors as neutral.
Goods, Channels of Trade and Classes of Purchasers
Opposer uses its mark for wine. Griesbeck Tr. at 15-16, 27, 29 and Exs. 1-3,
12. Applicant seeks registration for, inter alia, “wine.” The goods are therefore
identical. Furthermore, because the goods are identical, we must presume that the
channels of trade and classes of purchasers are as well. In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence
Opposition No. 91207656

5

regarding channels of trade and classes of consumers, the Board was entitled to rely
on this legal presumption in determining likelihood of confusion); American
Lebanese Syrian Associated Charities Inc. v. Child Health Research Institute, 101
USPQ2d 1022, 1028 (TTAB 2011).
To the extent Applicant relies on evidence about its “membership” system
and other methods of sale, the pricing of its wine, or the sophistication of its or
Opposer’s customers, this evidence is irrelevant. None of these alleged differences
are reflected in Applicant’s identification of goods, which includes “wine,” without
qualification or limitation. See, Stone Lion Capital Partners, LP v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014)
The legal identity of Opposer’s and Applicant’s goods and their overlapping
channels of trade and classes of purchasers not only weigh heavily in favor of
finding a likelihood of confusion, but also reduce the degree of similarity of the
marks necessary to find a likelihood of confusion. In re Viterra, 101 USPQ2d at
1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010);
In re Max Capital Group Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).
The Fame/Strength of Opposer’s Mark
Opposer argues that its mark is “very well known,” and cites cases
concerning and makes references to “fame.” We therefore assume that Opposer is
claiming that APOTHIC is a “famous” mark.
Where fame exists, it “plays a ‘dominant role in the process of balancing the
DuPont factors,’ … and ‘[f]amous marks thus enjoy a wide latitude of legal
Opposition No. 91207656

6

protection.’” Bose Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d
1303, 1305 (Fed. Cir. 2002) (quoting Recot, Inc. v. Benton, 214 F.3d 1322, 54
USPQ2d 1894, 1897 (Fed. Cir. 2000)). In fact, it is settled that a strong mark “casts
a long shadow which competitors must avoid.” Kenner Parker Toys, Inc. v. Rose Art
Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
While consumer surveys may provide direct evidence of fame, “fame of a
mark may be measured indirectly, among other things, by the volume of sales and
advertising expenditures of the goods traveling under the mark, and by the length
of time those indicia of commercial awareness have been evident.” Bose, 293 F.3d at
1367, 63 USPQ2d at 1305. Other relevant factors include “length of use of the
mark, market share, brand awareness, licensing activities, and variety of goods
bearing the mark.” Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1720 (Fed. Cir. 2012). Opposer bears the burden of clearly
proving fame. Id. Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d
1901, 1904 (TTAB 2007).
Here, while Opposer has designated most of its evidence of fame/strength as
“confidential,” and we therefore only discuss it generally, suffice it to say that
APOTHIC wines are popular, apparently increasingly so, have enjoyed significant
sales by any measure and Opposer has spent liberally on advertising and
promotion. Opposer’s APOTHIC wines have received media attention, including
favorable reviews. Furthermore, Opposer has successfully promoted APOTHIC
wines via social media, and there are over 150,000 fans of APOTHIC wines on
Opposition No. 91207656

7

Facebook. However, “[w]e have no context for opposer’s advertising and sales
figures,” or its social media efforts, “such as how the figures for the [APOTHIC
wine] compare with that for other brands of” wine. Lebanon Seaboard Corp. v. R&R
Turf Supply Inc., 101 USPQ2d 1826, 1831 (TTAB 2012); see also, Bose, 63 USPQ2d
at 1309 (“some context in which to place raw statistics is reasonable”).5 Moreover,
Opposer has only used APOTHIC since 2009 at the earliest.
Accordingly, Opposer has not “clearly proven” that APOTHIC is a “famous”
mark. However, Applicant has provided no evidence that Opposer’s mark is
commercially or conceptually weak, and Opposer’s evidence is sufficient to establish
that APOTHIC is at least a fairly strong mark and entitled to a concomitantly
broad scope of protection. This factor also weighs in favor of a finding of likelihood of
confusion.6
The Marks
Turning to the parties’ marks, we must compare them “in their entireties as
to appearance, sound, connotation and commercial impression.” Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73

5 Ms. Griesbeck’s testimony about “brand health data,” tracked online, is insufficient to
establish fame, even though the data apparently reveals that a significant number of those
surveyed were aware of the APOTHIC brand. Indeed, there is no evidence about the details
of these surveys, who exactly was questioned, what the specific questions and responses
were, or any other information traditionally required before surveys are accorded
evidentiary weight. See, American Flange & Manufacturing Co., Inc. v. Rieke Corp., 80
USPQ2d 1397, 1414 (TTAB 2006), withdrawn after settlement, 90 USPQ2d 1127 (TTAB
2009); Ava Enterprises, Inc. v. Audio Boss USA, Inc., 77 USPQ2d 1783, 1786-87 (TTAB
2006); J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 32:187
(4th ed. 2014).
6 We hasten to add, however, that even if Opposer had not established that its mark is
strong, our ultimate decision on likelihood of confusion would be the same.
Opposition No. 91207656

8

USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). That is,
we may not dissect the marks into their various components. In re Nat’l Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v.
Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981). However, one
feature of a mark may be more significant than another, and it is not improper to
give more weight to the dominant feature of a mark in determining its commercial
impression. In re Nat’l. Data Corp., 224 USPQ at 751 (“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 consideration of the
marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”).
Here, the parties’ marks not only share, but begin with, the same five letters:
“APOTH.” Consumers are likely to focus on the first part of the parties’ marks. See
Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(“[I]t is often the first part of a mark which is most likely to be impressed upon the
mind of a purchaser and remembered”); see also Brown Shoe Co. v. Robbins, 90
USPQ2d 1752 (TTAB 2009) (PALOMITA likely to be confused with PALOMA). The
marks look and sound similar as a result of sharing the same five initial letters.
As for the marks’ connotations, Applicant’s mark APOTHEOSIS is a word
which means “the perfect form or example of something,” “the highest or best part of
something,” “elevation to divine status” and “the perfect example.” Applicant’s NOR
No. 1 (definitions from Free Merriam-Webster Dictionary); see also, Griesbeck Tr. at
78 (“Some of the definitions that I’ve seen are the highest pinnacle, the culmination,
Opposition No. 91207656

9

the ultimate point.”); Kinney Test. Tr. at 11 (“It means to raise to a higher
standard. It means pinnacle. The top of one’s work. And it means to achieve or to
almost make devine (sic) in status.”).
Opposer’s bottle labels and website indicate that Opposer’s mark is derived
from the word “Apotheca”: “More than 800 years ago, vintners blended and stored
their most coveted concoctions in a mysterious place called Apotheca. In late 2005, a
Master Winemaker envisioned an epic red wine that would combine Old World
blending traditions with a markedly New World Style.” Opposer’s NOR (printouts
from Opposer’s website “apothic.com”); see also, Applicant’s NOR No. 1 (printout
from TTB website including label for Apothic Red). In a “Brand Overview”
document created in 2011, prior to Applicant’s filing date, Opposer explained “The
Origin of the Name” APOTHIC as follows: “Apotheca + Epic = Apothic.” Griesbeck
Tr. at 11-14 and Ex. 1. The same document defines the word “epic,” as used in this
equation, as “Surpassing the usual or ordinary. Heroic and impressive in quality.”
Id.
While Opposer apparently intends for its mark to be perceived as “Apotheca +
Epic,” there is no evidence that consumers will understand APOTHIC to include the
word “epic” or its meaning; we cannot presume that consumers will perceive this
meaning from the mere inclusion of the letters “ic” at the end of Opposer’s mark, or
otherwise. Therefore, we cannot find that the marks convey similar meanings. At
the same time, however, we agree with Opposer that because “apotheosis” is not a
commonly-used word, to many consumers Applicant’s mark would not connote
Opposition No. 91207656

10

anything, and its meaning would therefore not necessarily be a basis to distinguish
it from Opposer’s mark, especially where both marks begin with the letters
“APOTH.”
The evidence reveals that Opposer has expanded its use of APOTHIC to
several different types of wine, including APOTHIC RED, APOTHIC WHITE,
APOTHIC ROSE and APOTHIC DARK. Griesbeck Tr. at 20-21, 37, 48-52, 57-58
and 74 and Exs. 1, 2, 8, 14 and 28. Consumers familiar with Opposer’s expanding
use of the APOTHIC mark may be likely to assume that APOTHEOSIS is another
expansion, or variation, of Opposer’s use of APOTHIC.
Considering the marks in their entireties, we find that they are more similar
than dissimilar, especially because where, as here, trademarks would appear on
identical goods, the degree of similarity necessary to support a finding 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). The marks’ similarities in
appearance and sound are more significant than any perceived differences in
connotation, especially because they both begin with the letters “APOTH” and
consumers are familiar with Opposer’s expanding use of its mark. This factor
therefore also weighs in favor of a finding of likelihood of confusion.7
Conclusion

7 Applicant’s focus on Opposer’s use of its “A” design mark is misplaced. The issue is
whether there is a likelihood of confusion between Applicant’s mark and Opposer’s pleaded
APOTHIC mark. In any event Opposer at times uses APOTHIC alone, apart from the “A”
design mark, and the media often refers to Opposer’s mark APOTHIC alone, apart from the
“A” design. Griesbeck Tr. at 79 and 93 and Exs. 10-12.
Opposition No. 91207656

11

The parties’ goods, channels of trade and classes of purchasers are identical,
their marks are more similar than dissimilar and Opposer’s mark is somewhat
strong. Opposer has therefore established its claim of priority and likelihood of
confusion by a preponderance of the evidence.
Decision: The opposition is sustained and registration of Applicant’s mark is
refused under Section 2(d) of the Trademark Act.