Exquisyt, LLC

Trademark Trial and Appeal Board

Feb 13, 2019

EX (T.T.A.B. Feb. 13, 2019)

This Opinion is not a
Precedent of the TTAB

Mailed: February 13, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Exquisyt, LLC
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Serial No. 87361641

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Parameshwar Yanamandra, pro se,1
for Exquisyt, LLC.

Victor Cerda, Trademark Examining Attorney, Law Office 123,
Susan Hayash, Managing Attorney.
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Before Ritchie, Heasley, and Coggins,
Administrative Trademark Judges.

Opinion by Ritchie, Administrative Trademark Judge:
Exquisyt, LLC (“Applicant”) seeks registration on the Principal Register of the
standard character mark EXQUISYT for “Wine,” in International Class 33.2

1 After filing its appeal, and before filing its reply brief, Applicant submitted a “Change of
Correspondence Address” and a “Notice of Appearance,” both of which name Mr.
Yanamandra as Applicant’s new representative in this appeal. 11 TTABVUE, 12 TTABVUE.
The application indicates that Mr. Yanamandra is Applicant’s CEO.
2 Serial No. 87361641, filed on March 7, 2017, based upon Applicant’s allegation of a bona
fide intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15
U.S.C. § 1051(b).
Serial No. 87361641
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The Examining Attorney refused registration of Applicant’s mark under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a prior registration of the
mark EXQUISITE OREGON WINES, in standard characters, also for “Wine,” in
International Class 33.3 The registration includes a disclaimer of the term “OREGON
WINES” apart from the mark as shown.
After the Examining Attorney made the refusal final, Applicant filed a request for
reconsideration and an appeal. When the request for reconsideration was denied, the
appeal was resumed. Applicant and the Examining Attorney filed briefs, and
Applicant filed a reply brief.4 We affirm the refusal to register.
I. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on 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 Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In

3 Registration No. 4256832, registered December 11, 2012. Sections 8 and 15 affidavits
accepted and acknowledged.
4 Applicant filed two requests for reconsideration, on January 29, 2018 and February 3, 2018
(amended). Both were discussed together in a denial of request for reconsideration by the
Examining Attorney on February 23, 2018. At the time its reply brief was due, Applicant
filed a document labeled “Motion for Reconsideration.” 18 TTABVUE. To the extent Applicant
intended this to be a request for remand, Applicant has not demonstrated the required “good
cause,” and thus such request is denied. See TRADEMARK TRIAL AND APPEAL BOARD MANUAL
OF PROCEDURE (“TBMP”) § 1209.04, and cases cited therein. We note, nevertheless, that the
document appears to be Applicant’s reply brief, and we treat it as such.
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considering the evidence 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 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 Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). “Not all of
the [du Pont] factors are relevant to every case, and only factors of significance to the
particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed. Cir. 2012) (quoting In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir 2010)).
A. The Goods, Trade Channels and Purchasers
We consider first the similarities or dissimilarities between the respective goods
as identified in the application and the cited registration. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014) (goods as identified in involved application and cited registration compared).
Both the application and the cited registration identify, simply, “wine.” Thus the
goods are identical.
As for the channels of trade, when as here, the respective identifications of goods
are identical, without restrictions as to nature, type, channels of trade, or classes of
purchasers, the identified goods are presumed to travel in the same channels of trade
to the same class of purchasers. In re Viterra, Inc., 671 F.3d 1358, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012); (“[A]bsent restrictions in the application and registration,
goods and services are presumed to travel in the same channels of trade to the same
Serial No. 87361641
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class of purchasers.”). Thus, we must presume the trade channels and classes of
purchasers are the same for both Applicant’s and registrant’s wine.
We find that these factors weigh heavily in favor of finding a likelihood of
confusion.
B. Strength of the Cited Mark
Applicant makes several arguments regarding the strength or enforceability of
the registered mark. First, Applicant argues that the mark in the cited registration
is not enforceable against Applicant’s mark because “EXQUISITE OREGON WINES
is descriptive, and merely informational in nature, and falls short from the
requirement of being a source indicator.”5 To the extent Applicant is arguing that the
mark in the cited registration is not distinctive or that it fails to function as a mark,
we note that the registration is entitled to a presumption of validity that cannot be
challenged via this appeal. Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b).
Applicant acknowledges as much, adding in bold, “The Applicant is not
attempting an exparte attempt to cancel that particular mark, but if
EXQUISITE OREGON WINES fails to function as a mark, it cannot cause
confusion in the marketplace with the Applicant’s mark.”6 To the extent
Applicant is arguing that the mark in the cited registration is weak, we address
Applicant’s arguments and evidence.

5 7 TTABVUE 6. Applicant highlighted the thirteenth du Pont factor as one that it wished to
argue, but did not further elaborate. To the extent Applicant is making this argument under
the thirteenth du Pont factor, for the reasons stated herein, we find that factor to be neutral.
6 7 TTABVUE 6.
Serial No. 87361641
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With its June 30, 2017 Response to Office Action, Applicant included a chart with
a list of third-party registrations and applications. Some are listed as live and some
as dead, and there is no indication of their International Class or identifications of
goods or services. The Examining Attorney timely objected to the list in the August
10, 2017 Final Office Action. Applicant did not respond to the objection, and failed to
submit copies of the registrations. In its brief, Applicant then referred to three
registered third-party marks that include the term “EXQUISITE” in English or
Spanish, for alcoholic beverages. The Examining Attorney objected to these
references as well, since the registrations were not made of record during prosecution.
Both objections by the Examining Attorney are sustained. In order to make a
third-party registration of record, a copy of the registration, either a copy of the paper
USPTO record, or a copy taken from the electronic records of the Office should be
submitted. In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1456 n. 2 (TTAB 1998);
and In re Promo Ink, 78 USPQ2d 1301, 1304 (TTAB 2006) (citing In re Duofold Inc.,
184 USPQ 638, 640 (TTAB 1974)). Merely listing such registrations in a chart, as
applicant has done here, is insufficient to make them of record. In re Dos Padres Inc.,
49 USPQ2d 1860, 1861 n. 2 (TTAB 1998); see also TBMP § 1208.02. Accordingly, we
sustain the objection. Furthermore, as the Examining Attorney points out, the record
should be complete prior to the filing of an appeal. Trademark Rule 2.142(d), 37
C.F.R. § 2.142(d). Even if we were to consider Applicant’s references, the list does not
provide sufficient information on which to find weakness of the term “EXQUISITE”
for wine. Furthermore, the three registrations cited in Applicant’s brief are for
Serial No. 87361641
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alcoholic beverages, but not wine, and the term “EXQUISITE” (or “EXQUISITO”) is
used in a longer phrase in each of the three marks, dissimilar to the use by either
Applicant or registrant.7
Applicant further argues that the mark in the cited registration is not famous,
arguing, “Registration No. 4256832 is not a ‘famous’ mark in that there has been no
known judicial finding confirming the same, and there has been no showing by the
Examiner that any actual confusion has taken place in the marketplace.”8 In
accordance with our precedent, “[A]pplicant is correct in noting that there is no
evidence that the cited registered mark is famous. However, it is settled that the
absence of such evidence is not particularly significant in the context of an ex parte
proceedings.” In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1204 (TTAB 2009) (cites
omitted).9
Overall, and considering all of the arguments and evidence of record, we find that
the mark in the cited registration, EXQUISITE OREGON WINES may be suggestive
of registrant’s goods, but it is nevertheless inherently distinctive, and it has not been
shown to be weak. Cf. Anthony’s Pizza & Pasta Int’l Inc. v. Anthony’s Pizza Holding

7 Since Applicant did not include copies of the registrations cited in its brief, but merely
referred to the registrations in the text of the brief, we cannot be certain if the information
provided by Applicant is correct. Nevertheless, according to Applicant’s submitted
information, none of the registrations is for “wine.” It appears that wine was included in the
identification of one of the registrations, but has since been removed from the identification.
8 7 TTABVUE 13.
9 In this regard, lack of evidence of actual confusion in an ex parte case is similarly
unavailing, particularly where, as here, the application is not use-based. In re Majestic
Distilling, 65 USPQ2d at 1205 (citations omitted). To the extent Applicant is arguing the
seventh du Pont factor, we find the lack of showing of actual confusion in this case to be
neutral.
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Co., 95 USPQ2d 1271 (TTAB 2009) (evidence of dozens of uses of shared term). We
find the strength of registrant’s mark to be neutral in our analysis of likelihood of
confusion.
C. The Marks
We next compare the marks in their entireties for similarities and dissimilarities
in appearance, sound, connotation and commercial impression. Palm Bay Imps., 73
USPQ2d at 1692. 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. Coach Servs., Inc.
v. Triumph Learning LLC, 101 USPQ2d at 1721. Under actual marketing conditions,
consumers do not necessarily have the luxury of making side-by-side comparisons
between marks, and must rely upon their imperfect recollections. Dassler KG v. Roller
Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980). The focus is on the recollection
of the average purchaser, who normally retains a general rather than a specific
impression of trademarks. In re Assoc. of the U.S. Army, 85 USPQ2d 1264, 1268
(TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
Here, the average purchaser includes any consumer of wine.
In this case, Applicant’s mark EXQUISYT is the phonetic equivalent of the first
term of the mark in the cited registration. See In re SnoWizard, Inc., 129 USPQ2d
1001, 1004, n.6 (TTAB 2018) (finding SNOBALLS to be phonetic equivalent of
SNOWBALLS); In re Tapco Int’l Corp., 122 USPQ2d 1369, 1372 (TTAB 2017) (finding
Serial No. 87361641
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KLEER to be phonetic equivalent of CLEAR). Although the spelling of the
EXQUISYT and EXQUISITE terms is slightly different, both marks have similarities
in appearance, and would likely be pronounced the same. In addition, consumers are
generally more inclined to focus on the first word, prefix, or syllable in any trademark
or service mark, which in this case, are nearly identical. See Palm Bay Imps., 73
USPQ2d at 1692 (“VEUVE … remains a ‘prominent feature’ as the first word in the
mark and the first word to appear on the label”).
Because the 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 various components; that is, the decision must be based on the entire
marks, not just part of the marks. 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) (“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.”). On the other hand, different features may be
analyzed to determine whether the marks are similar. 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)). In fact,
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 a consideration of the marks in their entireties. In re Nat’l Data Corp., 224
USPQ at 751. Moreover, where, as in the present case, the marks appear on goods
Serial No. 87361641
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that are identical, the degree of similarity between the marks necessary to support a
finding of likely confusion declines. Bridgestone Ams. Tire Operations LLC v. Fed.
Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Century 21 Real
Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992).
As the term “OREGON WINES” is descriptive and disclaimed in the mark in the cited
registration, we find the term “EXQUISITE” to be the dominant portion of the cited
mark while, of course, the phonetic equivalent “EXQUISYT” is the sole term in
Applicant’s mark.
In considering the marks as a whole, we find the commercial impressions to be
very similar. Applicant’s mark refers suggestively to “exquisyt” or “exquisite” wines,
while the mark in the cited registration refers more specifically to “exquisite” wines
deriving from the state of Oregon. With identical goods, and highly similar marks,
consumers are likely to believe that the marks are variations of each other.
We find this first du Pont factor to also favor finding a likelihood of confusion.
D. Conditions of Sale
Applicant urges us to consider the sophistication and degree of purchaser care
likely to be exercised by the relevant consumers. However, there is no evidence of
record that would support finding that general consumers of wine would exercise a
heightened degree of care. Rather, we must consider the degree of care that would be
exercised by the least sophisticated consumers, which here includes ordinary wine
purchasers. See Stone Lion Capital 110 USPQ2d at 1163 (affirming that the Board
properly considered all potential purchasers for recited services, including both
Serial No. 87361641
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sophisticated and unsophisticated investors, since precedent requires consumer care
for likelihood-of-confusion decision be based “on the least sophisticated potential
purchasers”).
Applicant argues that its consumers will include “millennial buyers who want to
try different varieties each month and are comfortable drinking from a plastic glass,
as the wine is sold in drinking glass shaped plastic containers.”10 However,
Applicant’s identification of goods is not so limited, and there is no evidence that
consumers would exercise a heightened degree of care in purchasing plastic cups of
wine. Applicant included with its reply brief a snapshot of such goods:11

Applicant’s identification of goods is not limited to any particular type or presentation
of “wine” however (nor is the identification of goods in the cited registration), and
there is no evidence that consumers would exercise a heightened degree of care in

10 7 TTABVUE 13.
11 18 TTABVUE 9.
Applicant’s Usage
Serial No. 87361641
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purchasing plastic cups of wine. See also In re Opus One Inc., 60 USPQ2d 1812, 1817
(TTAB 2001) (Finding that wine purchasers are not necessarily sophisticated or
careful in making their purchasing decisions.).
Overall, we find this factor to be neutral.
II. Conclusion
After considering all of the arguments and evidence of record as they pertain to
the relevant du Pont factors, we find that the goods are identical, and presume that
they would travel through the same channels of trade to some of the same general
consumers, who may not be expected to exercise appreciable sophistication or care in
their purchases. We further find that the marks as a whole are highly similar in sight,
sound, connotation, and commercial impression. Accordingly, we find a likelihood of
confusion between Applicant’s mark EXQUISYT and the registrant’s mark
EXQUISITE OREGON WINES, both for wine.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.