E. & J. Gallo Wineryv.Thunder Road Brands, LLC

Trademark Trial and Appeal Board

Dec 6, 2018

No. 91222284 (T.T.A.B. Dec. 6, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: December 6, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

E. & J. Gallo Winery
v.
Thunder Road Brands, LLC
_____

Opposition No. 91222284
_____

Steven M. Weinberg and Michael J. Salvatore of Holmes Weinberg, PC,
for E. & J. Gallo Winery.
Dorian B. Kennedy of Baker, Donelson, Bearman, Caldwell & Berkowitz, P.C.,
for Thunder Road Brands, LLC.
_____

Before Zervas, Wellington and Heasley,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Thunder Road Brands, LLC (“Applicant”) seeks to register the mark THUNDER
ROAD in standard character form on the Principal Register for “alcoholic beverages,
namely, Tennessee sour mash whiskey and moonshine” in International Class 33. 1

1 Application No. 77859042, filed on October 28, 2009 under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1501(b), based upon Applicant’s allegation of a bona fide intention to use the
mark in commerce.
Opposition No. 91222284
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E. & J. Gallo Winery (“Opposer”) has opposed registration of Applicant’s mark on
the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d), pleading in its Notice of Opposition,2 (i) common law use of the mark
THUNDERBIRD on wine since 1957; and (ii) ownership of Registration Nos. 0656907
and 3853584, both for the mark THUNDERBIRD, one in standard character form
and the other in stylized form for “wines” in International Class 33;3 and
(iii) ownership of Registration No. 4403211 for the mark THUNDERBIRD in
standard character form for “alcoholic beverages except beers” in International
Class 33.4
Applicant, in its Answer,5 denied the salient allegations of the Notice of Opposition
and raised several “defenses,” which are amplifications of its denials and equitable
defenses. Both parties filed trial briefs and Opposer filed a reply brief.
I. The Trial Record
In addition to the pleadings, the trial record automatically includes the involved
application file pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b). The trial
record also includes the following:
A. The summary judgment record created in connection with Applicant’s
motion (filed January 23, 2017) for summary judgment, pursuant to a
stipulation submitted by the parties on November 7, 2017 and approved by the
Board on the same date, submitting:

2 1 TTABVUE.
3 Registration Nos. 0656907, registered January 7, 1958, and Registration No. 3853584,
registered September 28, 2010.
4 Registration No. 4403211, registered September 17, 2013.
5 10 TTABVUE.
Opposition No. 91222284
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1. The January 23, 2017 Declaration of William H. Blalock, Jr., one
of Applicant’s principals (no exhibits);6

2. Declaration of Peter L. Brewer, Applicant’s attorney, and
exhibits;7

3. Declaration of Maia T. Woodhouse, Applicant’s attorney, and
exhibits;8

4. Applicant’s “Request to take Judicial Notice …” referring to, and
providing web addresses for, the following documents, which were
submitted with Ms. Woodhouse’s and Mr. Brewer’s declarations; (i) a
dictionary definition of “thunderbird” from Merriam Webster Online
Dictionary, (ii) Washington Post and Mountain Xpress Asheville, NC
articles, and (iii) Washington State government webpages
(http://lcb.wa.gov);9

5. Applicant’s Statement of Undisputed Facts, only some of which
Opposer admitted (Opposer admitted paragraphs 1-2, 6, 8-10, 30-32 and
38-39 thereof);10

6. Declaration of Tim Cannon, Opposer’s Director of Marketing, and
exhibits, including two brand equity studies, one from 2014 and the
other from 2015;11 and

7. Declaration of Michael J. Salvatore, Opposer’s attorney, and
exhibits.12

B. The parties’ stipulation (filed August 17, 2017) that certain documents
identified by USPTO Registration/Application Number and/or Bates Number,
be admitted into evidence, approved by the Board on November 7, 2017.13

6 17 TTABVUE 30-32.
7 17 TTABVUE 33-162.
8 18 TTABVUE.
9 17 TTABVUE 27.
10 17 TTABVUE 3-14.
11 21 TTABVUE 27-59.
12 21 TTABVUE 60-386.
13 25 TTABVUE. These documents, which were not submitted with the stipulation, include
Reg. Nos. 0656907, 3853584 and 4403211, and App. Serial No. 77859042. App. Serial No.
77859042 is the application involved in this proceeding and its prosecution record is
Opposition No. 91222284
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C. Opposer’s notices of reliance submitting:

1. Applicant’s responses to Opposer’s interrogatories and requests
for admission;14
2. Documents from USPTO records;15 and
3. Webpage printouts.16
D. Testimony Depositions of Messrs. Cannon and Mitchum (another of
Applicant’s principals, and Applicant’s majority member) and exhibits.17
E. Applicant’s notices of reliance submitting:
1. Opposer’s responses to Applicant’s requests for admission and
interrogatories;18
2. Webpage printouts;19 and
3. Documents from USPTO and state records.20
F. Mr. Blalock’s December 6, 2017 declaration.21
II. Evidentiary Issues
Opposer has objected in its reply brief to certain evidence submitted by Applicant.
Objections raised for the first time in a reply brief are untimely (and hereby denied)
because they effectively foreclose the adverse party from responding to the objections.

automatically of record pursuant to Trademark Rule 2.122(b). The parties have not indicated
where the remaining documents appear in the record.
14 26 and 27 TTABVUE (designated confidential); 29 TTABVUE.
15 28, 30-32 TTABVUE.
16 14 TTABVUE.
17 50 TTABVUE (confidential materials at 52 and 53 TTABVUE).
18 42 and 43 TTABVUE.
19 44 and 48, 49 TTABVUE.
20 45-47 TTABVUE.
21 54 TTABVUE.
Opposition No. 91222284
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Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d
1921, 1928 (TTAB 2011); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100,
1104 (TTAB 2007). If Opposer raised some of these objections during the trial period,
its objections were not repeated in Opposer’s trial brief and therefore are deemed to
have been waived.
Mindful of any objections, we have accorded the evidence whatever probative
value (if any) it merits. Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121
USPQ2d 1477, 1479 (TTAB 2017).
With regard to Applicant’s request to take judicial notice of certain documents,
because Applicant submitted these documents with Mr. Brewer’s and Ms.
Woodhouse’s declarations, they are already part of the evidentiary record.
III. Standing
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. To establish standing in an opposition or cancellation proceeding, a
plaintiff must show “both a ‘real interest’ in the proceedings as well as a ‘reasonable
basis’ for its belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753
F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports,
Inc., v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012)); Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
Opposer’s standing is established by its three pleaded registrations, which are
mentioned in the parties’ August 17, 2017 stipulation and which Opposer’s attorney
Opposition No. 91222284
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indicated in Mr. Cannon’s trial deposition have been “stipulated into the record.”22
See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.
Cir. 2000) (party’s ownership of pleaded registration establishes standing). Applicant
does not dispute in its main brief that the three pleaded registrations are in the record
or that Opposer has standing to oppose registration of Applicant’s mark.
IV. Priority
Because Opposer’s pleaded registrations are of record pursuant to the parties’
August 17, 2017 stipulation, and because there is no pending counterclaim to cancel
these registrations, priority is not at issue with respect to marks and goods covered
by the registrations. See Cunningham v. Laser Golf Corp., 55 USPQ2d at 1844; King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA
1974); Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998).
V. Likelihood of confusion
We now consider Opposer’s claim of likelihood of confusion under Section 2(d) of
the Trademark Act. As the plaintiff in this proceeding, Opposer bears the burden of
proof, which encompasses the obligation of going forward with sufficient proof of the
material allegations of its complaint. Sanyo Watch Co., Inc. v. Sanyo Elec. Co., Ltd.,
691 F.2d 1019, 215 USPQ 833, 834 (Fed. Cir. 1982) (in a proceeding to test likelihood
of confusion opposer “bears the burden of proof which encompasses not only the
ultimate burden of persuasion, but also the obligation of going forward with sufficient

22 33 TTABVUE 15. In addition, Mr. Cannon’s February 21, 2017 declaration states at
paragraph 12 that Opposer is the owner of these three registrations and that Registration
Nos. 0656907 and 3853584 are incontestable. 21 TTABVUE 29.
Opposition No. 91222284
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proof of the material allegations of the Notice of Opposition….”); see also Yamaha
Int'l Corp. v. Hoshino Gakki Co., 840 F.2d 1572, 6 USPQ2d 1001, 1007 (Fed. Cir.
1988) (because § 2(d) of the Trademark Act “provides that no trademark shall be
refused unless it is shown that there is a likelihood of confusion with another mark,
the requirement that the opposer both establish a prima facie case of likelihood of
confusion and carry the ultimate burden of persuasion on that issue is proper….”).
Our determination is based on an analysis of all of the facts in evidence that are
relevant to the factors bearing on the issue of likelihood of confusion. In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“du Pont”);
see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir.
2003). 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 and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976). “[W]e need to consider only the factors that are relevant and of record.”
M2 Software Inc. v. M2 Commc’ns Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed.
Cir. 2006).
We focus on Opposer’s pleaded Registration No. 4403211 for the mark
THUNDERBIRD in standard character form for “alcoholic beverages except beers.”
If we find confusion likely between this mark and Applicant’s mark for their
respective goods, we need not consider the likelihood of confusion between Applicant’s
mark and Opposer’s other pleaded marks for their respective goods. On the other
Opposition No. 91222284
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hand, if we find no likelihood of confusion between Applicant’s mark and the mark of
Registration No. 4403211 for their respective goods, we would not find confusion
likely between Applicant’s mark and Opposer’s other pleaded marks for their
respective goods, which are less similar to Applicant’s mark for its identified goods.
In re Max Capital Grp., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. The Fame of Opposer’s Mark.
We first address Opposer’s contention that its mark THUNDERBIRD is “a very
strong, if not, famous mark.”23 Fame, if it exists, plays a dominant role in the
likelihood of confusion analysis because famous marks enjoy a broad scope of
protection. A famous mark has extensive public recognition and renown. Bose Corp.
v. QSC Audio Prods. Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002);
Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000);
Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453,
1456 (Fed. Cir. 1992). For purposes of analysis of likelihood of confusion, fame is not
an “all-or-nothing factor”; rather, it “varies along a spectrum from very strong to very
weak.” Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122
USPQ2d 1733, 1734 (Fed. Cir. 2017) (internal quotations omitted). Fame is
“determined from the viewpoint of consumers of like products,” and not from the
viewpoint of the general public. Id. at 1735. Because of the extreme deference that
we accord a famous mark in terms of the wide latitude of legal protection it receives,

23 59 TTABVUE 17.
Opposition No. 91222284
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and the dominant role fame plays in the likelihood of confusion analysis, “[i]t is the
duty of the party asserting that its mark is famous to clearly prove it.” Leading
Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007).
To demonstrate the fame of its mark, Opposer relies on its continuous use of its
mark since 1957, and pertinent financial and advertising data. The data includes the
retailers who offer Opposer’s THUNDERBIRD wine in the United States, and annual
sales volume and revenue for the years 2009 through 2016.24 Mr. Cannon testified
that Opposer currently does not advertise the THUNDERBIRD product, but did so
until about eighteen years ago.25 The advertising expenditures for THUNDERBIRD
branded goods for the period from 2009-2015 are minimal.26 Opposer notes that there
are two YouTube videos featuring THUNDERBIRD television advertisements which
have over 221,000 combined views;27 the slogan “What’s the word? THUNDERBIRD!”
is the title of a rock and roll song performed by a number of artists including ZZ Top;28
and the musical group The Beastie Boys references “Thunderbird” in the song “Hold
It Now, Hit It.”29
There is no information, however, indicating that these songs were widely
distributed by the artists or were popular at the time of trial. One unsolicited article

24 Opposer’s Resp. Interrog. No. 8, 43 TTABVUE 69, designated confidential.
25 Cannon Depo. at 43, 33 TTABVUE 46 (“we haven’t done a whole lot of recent advertising
and most of the advertising was done prior to 2000.”).
26 Opposer’s Resp. Interrog. No. 6, 43 TTABVUE 68, designated confidential.
27 32 TTABVUE.
28 32 TTABVUE 4.
29 32 TTABVUE 23.
Opposition No. 91222284
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from 2003, part of a handful of unsolicited articles in the record, states that
THUNDERBIRD wine was in its glory days thirty years ago, characterizes
THUNDERBIRD as an “old brand,” and states that “ten years ago, Gallo sold 3
million cases a year; now it sells only 300,000 ….”30 The Washington State Liquor
Control Board lists Thunderbird (having 17.5 % alcohol content by volume) as a
banned product as of May 7, 2015 for “Olympia’s Downtown Alcohol Impact Area.”31
Turning to Opposer’s advertising and sales figures, they are not impressive in and of
themselves, and Opposer has not placed such figures in any context. C.f., Omaha
Steaks Int’l, Inc. v. Greater Omaha Packing Co., __ F.3d __, 128 USPQ2d 1686, 1690
(Fed. Cir. 2018) (not requiring contextual evidence for advertising and sales figures
when plaintiff had evidence that it spent over $45 million in one year to advertise its
goods and processed over 100,000 orders per day during December holiday season,
along with testimony on how it promoted its products to the public). The YouTube
videos featuring THUNDERBIRD television advertisements indicate that they were
first published in 2008, over ten years ago, and the evidence does not indicate how
many of such views were recent. Fame, if it exists, is determined at the time of trial.
See General Mills Inc. v. Fage Dairy Processing Indus. S.A., 100 USPQ2d 1584, 1595
n.13 (TTAB 2011). Also, one Youtube comment states, “[i]t’s been so long, I didn’t

30 C. Brown, “Last call for Thunderbird” (Los Angeles Times January 8, 2003), Applicant’s
Not. of Rel. Exh. IIII, 50 TSDR 6. Of course, we do not rely on the truth of any assertions
made in the article about Applicant’s sales or goods in reaching our findings. It reflects the
public perception of the THUNDERBIRD mark.
31 Woodhouse Decl. Exh. 11, 18 TTABVUE 59.
Opposition No. 91222284
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think they made that crap anymore, guess they do,”32 suggesting a lack of notoriety
of the THUNDERBIRD brand.33
Opposer relies on two brand awareness studies of THUNDERBIRD wines that
indicate a sizable percentage of consumers within a particular age range who
participated in the studies are aware of such wines.34 These studies have limited
probative value on the question of fame because no witness with first-hand knowledge
testified about the studies. See Coach Services, Inc. v. Triumph Learning LLC, 96
USPQ2d 1600, 1607 (TTAB 2010), aff’d in relevant part, 668 F.3d 1356, 101 USPQ2d
1713 (Fed. Cir. 2012). Mr. Cannon stated he did not work on them and was working
on another brand at the time the studies were conducted.35 Their probative value on
the question of fame is also diminished by the fact that they are not particularly
recent. See Royal Crown Co. v. Coca-Cola Co., 892 F.3d 1358, 127 USPQ2d 1041, 1049
(Fed. Cir. 2018) (the court discounted survey stating, “this survey is not
contemporaneous with the question of whether registration should be permitted
here.”)
In light of the limitations in the evidence noted above, we find that the strength
of Opposer’s mark does not reach a level of fame sufficient to play “a ‘dominant’ role

32 32 TTABVUE 12.
33 The comment bears the notation “three months ago,” ostensibly three months prior to
March 23, 2017, the print date reflected on the webpage.
34 Cannon Testimony at 42-69, Exhs. 23-24, 33 TTABVUE 46-72, 34 TTABVUE 135-209.
Because portions of the testimony and exhibits have been designated confidential, we do not
provide details about the studies.
35 Cannon Depo. at 44, 34 TTABVUE 47.
Opposition No. 91222284
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in the process of balancing the du Pont factors.” Recot v. Becton, 54 USPQ2d at 1897.
See also Packard Press Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351,
1356 (Fed. Cir. 2000). On balance, however, we find that Opposer has demonstrated
a moderate degree of renown for “alcoholic beverages except beers” and particularly
in connection with low-priced wine with a high alcohol content, and hence some
strength in its mark that continues today, despite its minimal advertising
expenditures. Opposer’s mark is entitled to a broader than normal scope of protection
for such goods. See Joseph Phelps Vineyards v. Fairmont Holdings, LLC, 122 USPQ2d
at 1734 (stating that likelihood of confusion fame varies along a spectrum from very
strong to very weak).
B. Similarity of Goods, Channels of Trade, Classes of Purchasers
Opposer has registered its mark for “alcoholic beverages except beers” which
encompass the “alcoholic beverages, namely, Tennessee sour mash whiskey and
moonshine” identified in Applicant’s application. The parties’ goods are therefore
legally identical.
In view of the legal identity of goods, we can presume that the channels of trade
and classes of purchasers for those goods are the same. See In re Viterra Inc., 671
F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no
evidence regarding channels of trade and classes of consumers, the Board was
entitled to rely on this legal presumption in determining likelihood of confusion); In
re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the same channels of trade, and
Opposition No. 91222284
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be sold to the same class of purchasers.”). The ultimate purchaser of Opposer’s and
Applicant’s goods is an adult member of the general purchasing public who consumes
alcoholic beverages.
C. Purchasing Conditions.
“When the products are relatively low-priced and subject to impulse buying, the
risk of likelihood of confusion is increased because purchasers of such products are
held to a lesser standard of purchasing care.” Recot v. Becton, 54 USPQ2d 1899. Mr.
Cannon testified that Opposer’s fortified wine sells for $5.00,36 and that it is subject
to impulse purchasing.37 The BevMo! webpage advertises moonshine for $2.99 for a
50 mL bottle.38 Thus, Opposer’s and Applicant’s goods are not only legally identical;
they are sold through identical trade channels to identical classes of consumers, who
are likely to exercise a relatively low degree of care when making purchasing
decisions, all of which increases the likelihood of confusion. See, e.g., In re Majestic
Distilling Co., 65 USPQ2d at 1205 (affirming Board finding that malt liquor and
tequila are both relatively inexpensive products likely to be purchased on impulse).

36 Cannon Depo. at 72, 33 TTABVUE 75.
37 Cannon Depo. at 64-65, 34 TTABVUE 67-68 (“those lower price points are essentially
impulse purchases. They’re not something that people are spending a lot of thought on.”).
This testimony has been marked confidential by Opposer, but does not constitute trade secret
or commercially sensitive information. Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g),
provides, in part, that “[t]he Board may treat as not confidential that material which cannot
reasonably be considered confidential, notwithstanding a designation as such by a party.”
Accordingly, we will not be bound by the parties’ designation.
38 31 TTABVUE 19.
Opposition No. 91222284
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D. Third-Party Marks on Similar Goods.
To counter Opposer’s claim that its mark is strong, Applicant submitted evidence
of third-party use and registration of THUNDER-formative marks for alcoholic
beverages including beer. Third-party registrations may be relevant to show the
sense in which a mark is used in ordinary parlance; that is, an element common to
both parties’ marks may have a normally understood and well-recognized descriptive
or suggestive meaning, leading to the conclusion that that segment is inherently
relatively weak as a source indicator. Jack Wolfskin Ausrustung Fur Draussen GmbH
& Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129,
1136 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 982 (2016) (“Jack Wolfskin”); see also In
re Dayco Products-Eaglemotive, Inc., 9 USPQ2d 1910, 1912, (TTAB 1988) (third-party
registrations may be “useful to demonstrate the sense in which a term is used in
ordinary parlance and they can show that a particular term has been adopted by
those engaged in a certain field or industry and that said term has less than arbitrary
significance with respect to certain goods or services.”). Additionally, third-party uses
may show that customers have become so conditioned by a plethora of such similar
marks that customers have been educated to distinguish between different marks on
the bases of minute distinctions. Omaha Steaks v. Greater Omaha Packing, 128
USPQ2d at 1693; Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1674 (Fed. Cir. 2015); Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005). The “relevant du Pont inquiry is ‘[t]he number and nature of similar marks in
Opposition No. 91222284
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use on similar goods.’” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d
874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992) (quoting Weiss Assocs., Inc. v. HRL
Assocs., Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842 (Fed. Cir. 1990)).
Some of the evidence Applicant relies on has little, if any, probative value.
Specifically, the pending applications are evidence only that an application was filed
on a certain date; they are not evidence of use of the marks. Nike Inc. v. WNBA Enters.
LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007); Interpayment Servs. Ltd. v. Docters &
Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). The cancelled registrations are not
evidence of anything except that they issued. See Action Temporary Servs. Inc. v.
Labor Force Inc., 870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989) (“[A]
cancelled registration does not provide constructive notice of anything”); Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1654 n.6 (TTAB 2002). Also, the
statements of use and related specimens of use taken from third-party USPTO
registration files do not establish that the subject marks are in use or demonstrate
the extent of their use. See Trademark Rule 2.122(b)(2), 37 C.F.R. § 2.122(b)(2), which
states in relevant part:
The allegation in an application for registration, or in a
registration, of a date of use is not evidence on behalf of the
applicant or registrant; a date of use of a mark must be
established by competent evidence. Specimens in the file of
an application for registration, or in the file of a
registration, are not evidence on behalf of the applicant or
registrant unless identified and introduced in evidence as
exhibits during the period for the taking of testimony.
Statements made in an affidavit or declaration in the file
of an application for registration, or in the file of a
registration, are not testimony on behalf of the applicant or
registrant.
Opposition No. 91222284
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Turning to the remaining third-party registrations and uses for THUNDER-
formative marks, a large percentage of such registrations and uses are for beer. These
registrations and uses for beer are relevant because beer is a good similar to wine,
whiskey and moonshine. First, they are all alcoholic beverages. Second, the record
establishes that these goods are marketed in the same trade channels to the same
purchasers.39 Third, Opposer’s September 30, 2014 “Boone’s Farm and Thunderbird
Brand Equity” study, marked “Confidential-For Attorneys’ Eyes Only” and submitted
under seal as Exhibit F to the declaration of Mr. Cannon, Opposer’s witness, contains
conclusions and statements from study participants that indicate associations with
beer.40 Fourth, this finding of similarity is consistent with In re Majestic Distilling,
65 USPQ2d at 1204, where the court considered articles demonstrating that malt
liquor and tequila are occasionally found in some of the same places, the court stating
“we agree, that malt liquor and tequila are 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.”41

39 See ThunderRoad Wines & Spirits webpage, listing “Wine, Shine, Spirits, & Brew” and
offering both moonshine and beer, Woodhouse Decl. Exh. 66, 18 TTABVUE 645; Thunder
Liquors webpages offering liquor and showing signage for Coors, Lite and Corona in store
photographs, Woodhouse Decl. Exh. 66, 18 TTABVUE 635-644; Regency Wine & Liquor
webpage offering wine and beer, Woodhouse Decl. Exh. 18, 18 TTABVUE 194; ShopRite
Liquors webpages offering wine and beer, Woodhouse Decl. Exh. 18, 18 TTABVUE 201-203;
MC’s Wine & Liquor webpage offering whiskey, wine and beer, Woodhouse Decl. Exh. 18, 18
TTABVUE 207; and BevMo webpages offering wine and beer, Opposer’s Not. of Rel., 31
TTABVUE 4.
40 See 20 TTABVUE 84 and 95. These statements are proper for our consideration under Fed.
R. Evid. 801(d)(2)(B).
41 Opposer cited E. & J. Gallo Winery v. Wade, Canc. No. 92063116, 2017 WL 2876830, *3-4
(TTAB June 7, 2017) (nonprecedential) in its main brief. There, the Board agreed with
Opposition No. 91222284
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Accordingly, we consider the following:
● Third-party registrations:
TENNESSEE THUNDER, Reg. No. 4818189 alcoholic
beverages except beers;
CAJUN THUNDER, Reg. No. 4187586 for alcoholic
beverages, namely, prepared alcoholic cocktails;
THUNDERSNOW, Reg. No. 4764461 for beer;
THUNDERHEAD, Reg. No. 3102282 for beer and ale;
THUNDERWEIZEN ALE, Reg. No. 4417434 for beer;
THUNDERHOP, Reg. No. 3986879 for beer;
THUNDER ROAD, Reg. No. 4416317 for beer;
THUNDER FUNK, Reg. No. 5065971 for beer;
THUNDER ANN, Reg. No. 4168008 for ales, beer, lager,
stout and porter, beers, and pale beer;
THUNDER ANN AMERICAN PALE ALE and design, Reg.
No. 4963402 for beer;
THUNDER RIVER, Reg. No. 4178720 for beer;
THUNDER CANYON BREWERY, Reg. No. 2345077 for
beer, ale, porter;
THUNDER CANYON BREWERY RESTAURANT & PUB
and design, Reg. No. 2521553 for beer, ale, porter;
THUNDERLIPS INDIA PALE ALE THUNDER, Reg. No.
4712650 for beer, ale, lager, stout, porter, shandy;
MOO THUNDER, Reg. No. 4060039 for beer;
MOO THUNDER STOUT FARMHOUSE ALE ALL MALT
and design, Reg. No. 4066770 for beer;

Opposer’s argument that beer and wine are related goods based in part on third-party
websites offering wine and beer under the same mark at the same establishment.
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SILVER THUNDER, Reg. No. 1369382 for malt liquor;
SILVER THUNDER and design, Reg. No. 1388485 for malt
liquor;
GOD OF THUNDER, Reg. No. 4891358 for beer;
GOURD OF THUNDER, Reg. No. 4564267 for beer;
CHOCOLATE THUNDER, Reg. No. 4868468 for beer, craft
beer, craft beer brewed on the premises;
BLACK THUNDER, Reg. No. 4932310 for beer;
FEATHER FALLS CASINO BREWING COMPANY
THUNDER ALE APRICOT WHEAT ALE and design, Reg.
No. 4358204 for beer;
THUNDER HOLE ALE, identified as application Serial
No. 87141766, now registered as Registration No. 5239901
for beer; and
THUNDERHAWK ALEMENTS, application Serial No.
86429219 now registered as Registration No. 5475793 for
beer.
● Internet uses for beer:42
THUNDERHAWK, THUNDERSNOW, THUNDERHEAD,
THUNDERWEIZEN ALE, THUNDERHOP IPA, THUNDER ROAD,
THUNDER FUNK IPA, THUNDER ANN AMERICAN PALE ALE,
THUNDER CANYON BREWERY, THUNDERLIPS, MOO THUNDER, GOD
OF THUNDER, GOURD OF THUNDER CHOCOLATE THUNDER, BLACK
THUNDER and THUNDER ALE.

● Internet uses for wineries and/or wine products:43
THUNDER OAK, THUNDER MOUNTAIN WINERY, THUNDER BAY
WINERY, THUNDER RIDGE VINEYARDS, SWEET THUNDER AMERICAN
REISLING and PRAIRIE THUNDER.

42 Woodhouse Decl. Exhs. 47-62; 18 TTABVUE 463-578.
43 Woodhouse Decl. Exh. 63, 18 TTABVUE 580-594.
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● Internet uses for breweries and/or beer products:44
THUNDER ISLAND BREWING CO. THUNDER FOAM, BALTIC
THUNDER, RED THUNDER, THUNDERHEAD BREWING COMPANY and
TROPIC THUNDER RADLER.

● Internet uses for distilled spirits products:45
TROPICAL THUNDER, TENNESSEE THUNDER, THUNDER VODKA and
GLEN THUNDER.

● Internet uses for liquor stores:46
THUNDER LIQUORS and THUNDER ROAD WINE AND SPIRITS.
● Internet use for a cocktail recipe with bourbon:47
CAJUN THUNDER.
Several internet uses are for the same marks as those identified in the
registrations. Discounting duplicate marks, we count 25 registrations and 13 internet
uses, totaling almost 40 THUNDER-formative marks.
We find these third-party registrations and uses establish weakness of the term
THUNDER as a source indicator for alcoholic beverages. See Juice Generation, 115
USPQ2d at 1675 (weakness shown by at least 26 third-party uses and registrations
containing the same phrase for the same services); Jack Wolfskin, 116 USPQ2d at
1136 (third-party weakness evidence characterized as “voluminous”). The evidence
demonstrates that relevant customers have been exposed to so many different

44 Woodhouse Decl. Exh. 64, 18 TTABVUE 596-624.
45 Woodhouse Decl. Exh. 18, 19 and 65, 18 TTABVUE 190-226, 626-633.
46 Woodhouse Decl. Exh. 66; 18 TTABVUE 635-666.
47 Woodhouse Decl. Exh. 20; 18 TTABVUE 215-226.
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THUNDER-formative marks in connection with alcoholic beverages that they likely
have become alert to “minute distinctions” among the various marks. Palm Bay Imps.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1691. A mark
having the term THUNDER in connection with alcoholic beverages therefore should
be given a restricted scope of protection, and the THUNDERBIRD mark is not
entitled to such a broad scope of protection that it is a bar to the registration of any
mark comprising in part, the word “thunder.” We arrive at this finding even though
none of the third-party registrations and uses is for the single term THUNDERBIRD.
We recognize too that THUNDERBIRD is an arbitrary mark for Opposer’s goods,
defined in The Merriam Webster Dictionary as “a bird that causes lighting and
thunder in American Indian myth.”48 Further, it has not escaped our notice that only
one third-party use and no third-party registrations contain the word THUNDER
followed by the name of a bird.
E. The Similarity or Dissimilarity of the Marks.
We now turn to the du Pont factor concerning the similarities or dissimilarities of
the marks, and compare the marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay Imps. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692. While marks must be
compared in their entireties and the analysis cannot be predicated on dissecting the
marks into their various components, different features may be analyzed to

48 Woodhouse Decl. ¶ 6, Ex. 5; 18 TTABVUE 4, 33.
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determine whether the marks are similar. See In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985); Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”); Joel Gott Wines LLC v. Rehoboth Von Gott Inc.,
107 USPQ2d 1424, 1430 (TTAB 2013) (citing Price Candy Co. v. Gold Medal Candy
Corp., 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955)). Similarity in any one of the
elements of sound, appearance, meaning, or commercial impression is sufficient to
support a determination of likelihood of confusion. See, e.g., Krim-Ko Corp. v. Coca-
Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968); In re Mr. Recipe, LLC, 118
USPQ2d 1084, 1089 (TTAB 2016); Eveready Battery Co. v. Green Planet Inc., 91
USPQ2d 1511, 1519 (TTAB 2009 ).
In addition, Opposer reminds us that when the goods at issue are legally identical,
as they are here, the similarity for likelihood of confusion declines, citing In re Hitachi
High-Technologies Corp., 109 USPQ2d 1769, 1773 (TTAB 2014) (“the more similar
the goods at issue, the less similar the marks need to be for the Board to find a
likelihood of confusion.”).49
The marks THUNDERBIRD and THUNDER ROAD are similar in that they both
begin with the term THUNDER, are three syllables in length and have the letter “D”
as the terminal component. Opposer argues that THUNDER, the initial term in each
mark, is the dominant term in each mark and entitled to greater weight in our

49 Opposer’s brief at 11, 59 TTABVUE 12.
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analysis. Even if it is the dominant term by virtue of its position as the first term in
each mark, due to our finding that the term THUNDER is a weak source indicator in
connection with alcoholic beverages, consumers will look to other parts of marks to
distinguish the source of the goods.
Of particular significance in our analysis is the meaning of the marks considered
as a whole. A “thunderbird” is a mythical bird, while THUNDER ROAD on its face
refers to the name of a road. “Thunder Road” may also be associated with the name
of a movie released in 1958 starring Robert Mitchum, the father of Applicant’s
principal James Mitchum,50 or the name of a song by Bruce Springsteen from 1975.51
The marks have entirely different connotations and hence different commercial
impressions.
Opposer mentions that it has leveraged its association with the term THUNDER
through its line extensions of THUNDERBIRD. Mr. Cannon testified, “[w]e leveraged
the strength of the ‘Thunder’ with the brand and leveraged that into Thunder Tropics
… [Thunderbird with fruit juice] and then Thunder Cola, so really took the equity of
Thunderbird and brought that into two line extensions.”52 And when asked why
“thunder “was used, Mr. Cannon responded:

50 Mitchum Depo. at 10, 51 TTABVUE 13; Brewer Decl. ¶¶ 7-9 and 11, 17 TTABVUE 34-35.
51 Elliott, Joe, “Thunder Road: Remembering the making of a cult classic in Asheville,”
(May 4, 2016) (accessed at http://mountainx.com/movies/thunder-road-remembering-the-
making-of-a-cult-classic-in-asheville/), Jan. 23, 2017 Blalock Decl. Exh, F, 17 TTABVUE 107-
119. (“Embedding [Thunder Road] even more deeply in the popular culture was Bruce
Springsteen’s 1970s rock anthem ‘Thunder Road;’ the title of which he took from the movie
poster.”).
52 Cannon Depo. at 36, 33 TTABVUE 38.
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The strength of Thunder. Thunder, obviously this brand
had been established at this point it would have been
nearly 40 years of history and a very strong brand but
bringing the equity of Thunder into new usage as a fruit
product, fruit juice product, and as a cola, but bringing the
strength of the Thunder brand into a line extension.53
The evidentiary record undercuts these claims of strength and association of
THUNDER with Opposer. Moreover, Opposer has not pleaded or proven that any of
these THUNDER-formative marks are part of a family of marks.
In sum, in light of the differences in meanings and commercial impression, we find
that the differences in the marks outweigh any similarities (primarily from the
shared initial term THUNDER in both marks, which we have found is a weak term
as a source indicator for alcoholic beverages) and that the du Pont factor regarding
the similarity or dissimilarity of the marks weighs against a finding of likelihood of
confusion.
F. Lack of Actual Confusion.
Next, we assess Applicant’s argument that there has been concurrent use for over
eight years and there have been no instances of actual confusion.54
The Federal Circuit has noted that it is unnecessary to show actual confusion to
establish a likelihood of confusion. See, e.g., Herbko Int’l, Inc. v. Kappa Books, Inc.,
303 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)); Weiss Assocs. Inc. v. HRL
Assocs. Inc., 14 USPQ2d at 1842-43. The court has also stated that a “showing of

53 Cannon Depo at 36-37, 33 TTABVUE 38-39.
54 Applicant’s brief at 27, 60 TTABVUE 28; Mitchum Depo. at 140-41, 51 TTABVUE 143-144.
Opposition No. 91222284
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actual confusion would of course be highly probative, if not conclusive, of a high
likelihood of confusion. The opposite is not necessarily true, however. The lack of
evidence of actual confusion carries little weight.” In re Majestic Distilling Co., 65
USPQ2d at 1205. We consider the nature and extent of any actual confusion, in light
of the length of time and conditions under which there has been contemporaneous
use of the parties’ subject marks. du Pont, 177 USPQ at 567.
Opposer’s goods are sold nationally and Applicant has one distillery in Kodak,
Tennessee where some of its goods are sold.55 Royalty statements from 2015 - 2017,
marked as confidential Exhs. 18-2156 to Mr. Mitchum’s testimony deposition, reflect
sales that can neither be characterized as significant nor insignificant. The extent to
which the parties’ branded products have appeared in proximity to one another in the
marketplace is unclear. Also, there is no information from either party on how any
instances of actual confusion would be reported. See Nina Ricci S.A.R.L. v. E.T.F.
Ent., Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (absence of any
reported instances of actual confusion was not probative because the record failed to
establish that there was a reasonable opportunity for confusion to have occurred). We
are therefore at a disadvantage to gauge the opportunity for actual confusion to have
occurred in the marketplace. Consequently, the du Pont factors regarding the nature
and extent of any actual confusion, in light of the length of time and conditions under

55 Mitchum Depo. at 144, 51 TTABVUE 41.
56 53 TTABVUE 97-109.
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which there has been contemporaneous use of the parties’ subject marks, are neutral
in our analysis.
G. Conclusion.
We have considered all of the evidence of record pertaining to the likelihood of
confusion issue, as well as all of the arguments related thereto, including any
evidence or arguments not specifically discussed in this opinion. We have found that
the goods are legally identical, the trade channels and purchasers are the same, and
Opposer’s mark has some degree of strength in connection with low priced wine with
a high alcohol content. Due to weakness of the shared word “thunder,” as
demonstrated by numerous third-party registrations and uses, and the differences
between the marks particularly in meaning and commercial impression, we are not
persuaded that there is a likelihood of confusion between the parties’ marks.
Decision: The opposition is dismissed.