Empire Wineries, LLC

Trademark Trial and Appeal Board

Jul 30, 2008

No. 77071981 (T.T.A.B. Jul. 30, 2008)

Mailed: July 30, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Empire Wineries, LLC
________

Serial No. 77071981
_______

Scott W. Petersen of Holland & Knight for Empire Wineries,
LLC.

Aretha Sommerville, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
_______

Before Hairston, Taylor and Bergsman, Administrative
Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:

Empire Wineries, LLC dba Empire Winery and Distillery
has filed an application to register on the Principal
Register the mark LEMONELA (in standard character format)
for “liqueurs” in Class 33.1
The examining attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on

1 Application Serial No. 77071981 filed December 27, 2006 and
asserting August 16, 2006 as the date of first use and first use
of the mark in commerce.
THIS DISPOSITION
IS NOT A PRECEDENT
OF THE TTAB
Ser No. 77071981

2
the ground that applicant’s mark is confusingly similar to
the registered mark LEMONEL (in standard character format)
for “distilled spirits, distilled spirits containing fruit;
liqueurs, lemon liqueurs,” in Class 33.2
After the refusal was made final, applicant requested
reconsideration of the refusal, which was denied on
December 2, 2006. Applicant subsequently appealed. Both
applicant and the examining attorney filed briefs.3 For the
reasons discussed below, we affirm the refusal to register.
Our determination of the issue of likelihood of
confusion is based on an analysis of all 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 Company, 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 and/or

2 Registration No. 3231111 issued April 17, 2007.

3 The evidence attached to applicant’s brief is the same as that
previously submitted. Accordingly, it is already of record as
part of the application file, and its submission was unnecessary.
See ITC Entertainment Group Ltd. v. Nintendo of America Inc., 45
USPQ2d 2021, 2022-23 (TTAB 1998) (submission of duplicative
papers is a waste of time and resources, and is a burden upon the
Board).
Ser No. 77071981

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services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first consider the goods. It is well settled that
the question of likelihood of confusion must be determined
based on an analysis of the goods recited in applicant’s
application vis-à-vis the goods identified in the cited
registration. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1783 (Fed. Cir. 1992). Where the goods in the application
at issue and/or in the cited registration are broadly
identified as to their nature and type, such that there is
an absence of any restrictions as to the channels of trade
and no limitation as to the classes of purchasers, it is
presumed that in scope the identification of goods
encompasses not only all the goods of the nature and type
described therein, but that the identified goods are
offered in all channels of trade which would be normal
therefore, and that they would be purchased by all
potential buyers thereof. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). In the present case, the identified goods of
applicant and those of the cited registrant have an
identical item in common (i.e., liqueurs), and the
additional goods in the cited registration (i.e., distilled
Ser No. 77071981

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spirits, distilled spirits containing fruit and lemon
liqueurs) are otherwise closely related alcoholic
beverages.
Applicant argues that the identification in the cited
registration “qualifies” the goods by adding “containing
fruit,” while its identification has no such limitation.
We note, however, that although the identification in the
registered mark includes certain spirits and liqueurs
containing fruit, as applicant acknowledges in its reply
brief, “the word ‘liqueurs’ is admittedly used.” (Reply
brief, p. 2). In addition, as identified, applicant’s
liqueurs could encompass those containing fruit.
Thus, we must presume that both applicant’s goods and
registrant’s goods will be sold in the same channels of
trade and will be bought by the same classes of purchasers.
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).
In view of the above, the du Pont factors of the
similarity of the goods and the channels of trade strongly
favor a finding of likelihood of confusion as to the cited
registration.
We now turn to a consideration of the marks, keeping
in mind that when marks would appear on identical goods, as
Ser No. 77071981

5
they do here in part, the degree of similarity necessary to
support a conclusion 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). In determining
the similarity or dissimilarity of marks, we must consider
the marks in their entireties in terms of sound,
appearance, meaning and commercial impression. See Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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
impressions 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). That is, the
purchaser’s fallibility of memory over a period of time
must be kept in mind. See Grandpa Pidgeon’s of Missouri,
Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA
1973); and Spoons Restaurant Inc. v. Morrison Inc., 23
USPQ2d 1735 (TTAB 1991); aff’d unpub’d (Fed. Cir., June 5,
1992).
Ser No. 77071981

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Applicant’s mark is LEMONELA and the cited mark is
LEMONEL. We find these marks to be substantially similar
in sound, appearance, connotation and commercial
impression. As regards appearance, not only do both marks
arguably share the word “Lemon” as applicant suggests, but
they share the first seven letters. More precisely,
applicant’s mark incorporates the entirety of opposer’s
mark. Likelihood of confusion has frequently been found
where one mark incorporates the entirety of another mark.
See Johnson Publishing Co. v. International Development
Ltd., 221 USPQ 155, 156 (TTAB 1982)(EBONY for cosmetics and
EBONY DRUM for hairdressing and conditioner); and In re
South Bend Toy Manufacturing Company, Inc., 218 USPQ 479,
480 (TTAB 1993)(LIL’ LADDY BUG for toy doll carriages and
LITTLE LADY for doll clothing). The only difference
between applicant’s mark and registrant’s mark is the
addition of the letter “a” to the end of applicant’s mark.
Contrary to applicant’s contention, this additional letter
is not likely to be remembered by purchasers when seeing
these marks at different times and thus does not serve to
distinguish them.
As regards the similarity in sound, applicant argues
that its mark has four syllables and the cited mark three,
that its mark has an implied accent on the “EL” whereas
Ser No. 77071981

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“the cited registration gives no clue as to where the
accent should be (LEM-oh-nell; Lem-OH-nell; lem-oh-NELL”4;
and that its mark has an Italian or Spanish sound while the
cited registration is indecipherable as to origin. (Brief,
p. 2). However, as there is no correct way to pronounce a
particular trademark5, and because there is nothing in the
record as to how the public pronounces registrant’s mark,
the public may, in fact, pronounce the LEMONEL mark in a
manner consistent with applicant’s asserted pronunciation
of its mark, i.e., in a manner that highlights the “EL”
portion.
As regards the connotation and commercial impressions
of the marks, as pointed out by applicant,
[i]t is of critical importance to note
that both of these marks [LEMONELA and
LEMONEL] are contrived words (they are
not in the dictionary). Both have no
obvious meaning and hence each has to
be viewed as having an inherently
distinctive quality (emphasis in
original).

(Brief, p. 4). While we agree that both applicant’s mark
and the cited mark are arbitrary for liqueurs, we
nonetheless find that the connotation and commercial

4 (Brief, p. 2).

5 See e.g., Kabushiki Kaisha Hattori Tokeiten v. Scuotto, 228
USPQ 461 (TTAB 1985).
Ser No. 77071981

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impressions of the marks are similar due to their
similarity in appearance and sound.
Due to the similarities in appearance, sound,
connotation and commercial impression, the du Pont factor
of similarity of the marks favor a finding of likelihood
confusion.
Before leaving this discussion, we address applicant’s
contention that there is no likelihood of confusion because
its applied-for mark, LEMONELA, is part of a family of
marks owned by applicant. Applicant bases this claim on
its ownership of applications for the marks LIMONELA and
ORANGELA which have been approved for publication. We find
this claim unavailing. Mere ownership of an application
does not show that the public is familiar with the use of
the marks shown therein, and there is no evidence in the
record that demonstrates that applicant has a family of
marks. Compare J & J Snack Foods Corp. v. McDonald’s, 932
F.2d 1460, 18 USPQ2d 1899 (Fed. Cir. 1991). Moreover, even
if applicant had proven the existence of a family of marks,
this appeal involves the registrability of applicant’s
particular mark, LEMONELA. Applicant’s ownership of other
marks that resemble its applied-for mark is not relevant to
the specific likelihood of confusion issue involving the
registered mark LEMONEL. See, Hornblower & Weeks Inc. v.
Ser No. 77071981

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Hornblower & Weeks Inc., 60 USPQ2d 1733, 1737 (TTAB 2001);
Baroid Drilling Fluids v. Sun Drilling Products, 24 USPQ2d
1048, 1052 (TTAB 1992); and In re Lar Mor International,
Inc., 221 USPQ 180, 183 (TTAB 1983).
Applicant also asserts that there are at least 55
“Lemon” trademarks which have been applied for and
registered in Class 33 and that “[t]he bottom line seems to
be that an abundance of ‘Lemon’ trademarks can peacefully
coexist on the Federal Register6 in Class 33 so long as
there is some – however minor – distinguishing feature.”
(Brief, p. 8). We presume by this that applicant is
arguing that “Lemon” is so frequently used in trademarks
for distilled spirits and liqueurs that its use in both the
LEMONEL and LEMONELA marks is not likely to lead to
consumer confusion. In support of its position, applicant
submitted, with its response to the Office Action issued
April 18, 2007, a list of third-party applications and
registrations (consisting of the serial and registration
numbers, the mark, and whether the application is “Live” or
“Dead”) for marks containing the word “Lemon” in Class 33
obtained from the TESS database of the United States Patent
and Trademark Office (USPTO). Although this evidence is in

6 We assume that applicant is referencing the Principal
Register.
Ser No. 77071981

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an improper format, because the examining attorney did not
object to the list or advise applicant that copies of the
registrations were necessary, we will consider the list as
being of record. TMBP § 1208.02 (2d ed. rev. 2004), and
the authorities cited therein. However, a mere listing of
third-party registrations which include the mark and the
registration number, without any accompanying indication of
the goods and/or services associated therewith, has
virtually no probative value. See TBMP § 1208.02 (2d ed.
rev. 2004). Further, the expired registrations and pending
and abandoned applications have no value in this appeal.
Action Temporary Services 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”), and the applications show only that they
have been filed. See Interpayment Services Ltd. v. Docters
& Thiede, 66 USPQ2d 1463 (TTAB 2003).
Nonetheless, we note that even if “LEMONEL” was
considered to be weak due to an asserted degree of common
usage of marks including “lemon,” even weak marks are
entitled to protection where confusion is likely. See
Matsushita Electric Company v. National Steel Co., 442 F.2d
1383, 170 USPQ 98, 99 (CCPA 1971) [“Even though a mark may
be ‘weak’ in the sense of being a common word in common use
Ser No. 77071981

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as a trademark, it is entitled to be protected sufficiently
to prevent confusion from source arising”]. Here,
notwithstanding any alleged weakness in the registered
mark, it is still similar in sound, appearance, connotation
and commercial impression to applicant’s mark. We
accordingly find this du Pont factor is neutral.
One final argument made by applicant must be
addressed. Applicant contends that:
One must enter into an examination of this
application with a foreknowledge that
consumers will be reasonably sophisticated.
If one is seeking a bottle of LEMONEL fruit
liqueur, he or she will not mistakenly grab
a bottle of LEMONELA (or vice versa).

(Brief, pp. 5-6). Applicant also contends that “[a]fter
dinner tipplers [drinkers] are generally more knowledgeable
about their likes or dislikes.” (Brief, p. 5). There is
nothing in the record to show that either applicant’s
liqueurs or registrants distilled spirits and liqueurs will
be purchased by consumers who will exercise more than
ordinary care in making their purchases. However, even if
these consumers exercise some degree of care in their
purchasing decisions, even careful purchasers of goods can
be confused as to source under circumstances where
substantially similar marks are used on identical or
closely related goods. See In re Research Trading
Ser No. 77071981

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Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986)
citing Carlisle Chemical Works, Inc. v. Hardman & Holden
Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970).
We conclude that purchasers familiar with registrant’s
distilled spirits, distilled spirits containing fruit;
liqueurs and lemon liqueurs, sold under the mark LEMONEL
would be likely to believe, upon encountering applicant’s
mark LEMONELA for liqueurs, that the goods originate from
or are associated with or sponsored by the same source.

Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.