FN Cellars, LLC

Trademark Trial and Appeal Board

Sep 27, 2021

88872831 (T.T.A.B. Sep. 27, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: September 27, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re FN Cellars, LLC
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Serial No. 88872831
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Mark G. Kachigian of Head, Johnson, Kachigian & Wilkinson, PC
for FN Cellars, LLC

Candace W. Hays,1 Trademark Examining Attorney, Law Office 110,
Chris A.F. Pedersen, Managing Attorney.
_____

Before Kuczma, Heasley, and Coggins,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Applicant, FN Cellars, LLC, seeks registration on the Principal Register of the
mark LIGHTNING STRIKE (in standard characters) for “wine” in International
Class 33.2

1 Cierra McGill was the examining attorney responsible for the application during
prosecution.
2 Application Serial No. 88872831 was filed on April 15, 2020, based on a declared intention
to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b).

The TTABVUE and Trademark Status & Document Retrieval (“TSDR”) citations refer to the
docket and electronic file database for the involved application. All citations to the TSDR
database are to the downloadable .pdf version of the documents.
Serial No. 88872831
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the registered mark LIGHTNING BOLT (in standard
characters) for “wine” in International Class 33.3
The appeal is fully briefed. We affirm the refusal to register.
I. Likelihood of Confusion
Section 2(d) of the Trademark Act provides that an applied-for mark may be
refused registration if it “[c]onsists of or comprises a mark which so resembles a mark
registered in the Patent and Trademark Office, or a mark or trade name previously
used in the United States by another and not abandoned, as to be likely, when used
on or in connection with the goods of the applicant, to cause confusion, or to cause
mistake, or to deceive….” 15 U.S.C. § 1052(d).
To determine whether there is a likelihood of confusion between the marks under
Section 2(d), we analyze the evidence and arguments under the DuPont factors. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973)
(“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138, 113
USPQ2d 2045, 2049 (2015). We consider each DuPont factor for which there is
evidence and argument. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160,
1161-62 (Fed. Cir. 2019). “Not all DuPont factors are relevant in each case, and the
weight afforded to each factor depends on the circumstances. … Any single factor may
control a particular case.” Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955

3 Registration No. 4188151, issued on the Principal Register on Aug. 7, 2012; renewed.
Serial No. 88872831
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F.3d 994, 2020 USPQ2d 10341, *3 (Fed. Cir. 2020). “In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods and services.” Ricardo Media v. Inventive Software,
2019 USPQ2d 311355 at *5 (TTAB 2019) (citing In re Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004)).
A. Similarity of the Goods and Channels of Trade.

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration…,” and the third
DuPont factor concerns the “similarity or dissimilarity of established, likely-to-
continue trade channels.” DuPont, 177 USPQ at 567; Stone Lion Capital Partners, LP
v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014).
As the Examining Attorney correctly notes, the goods identified in the application
and registration are identical: wine. With no restrictions in the application and
registration, these identical goods are “presumed to travel in the same channels of
trade to the same class of purchasers,” in this case, general consumers who drink or
purchase wine. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) quoted in Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797,
1801 (Fed. Cir. 2018). Further, “where . . . the goods at issue are identical, the degree
of similarity necessary to support a conclusion of likely confusion declines.” Id.
Applicant does not dispute the identity of the goods.
The second and third DuPont factors thus weigh heavily in favor of finding a
likelihood of confusion.

Serial No. 88872831
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B. Similarity of the Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion Capital v. Lion Capital, 110 USPQ2d at 1160; Palm Bay Imps., Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient
to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d
1742, 1746 (TTAB 2018) aff’d, 777 Fed. App’x. 516 (Fed. Cir. 2019) (citing In re Davia,
110 USPQ2d 1810, 1812 (TTAB 2014)). “The marks ‘must be considered … in light of
the fallibility of memory’ and ‘not on the basis of side-by-side comparison.’” In re St.
Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San
Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1,
3 (CCPA 1977)). The proper focus is on the recollection of the average consumer, who
retains a general rather than specific impression of the marks. In re FabFitFun, Inc.,
127 USPQ2d 1670, 1675 (TTAB 2018).
Applicant argues that the Examining Attorney failed to compare the marks in
their entireties.4 “The greatest similarity between the marks of the Applicant and the
Registrant are that they both contain the commonly used term LIGHTNING,” it
argues, “The marks are otherwise dissimilar.”5 There is no reason to find
LIGHTNING the dominant term, it contends, as the second word in each mark is just

4 Applicant’s brief, 4 TTABVUE 6.
5 Id. 4 TTABVUE 8.
Serial No. 88872831
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as arbitrary in relation to wine.6 The second words differentiate the marks in sight,
sound, and commercial impression, Applicant maintains, despite the common term
LIGHTNING.7
We find that the Examining Attorney properly compared the marks in their
entireties and gave each term in the respective marks more or less weight depending
on its effect on overall commercial impression. See In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“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.”).
LIGHTNING is dominant, not only because it is arbitrary, but because it is placed
prominently as the lead word in each mark. See Century 21 Real Estate Corp. v.
Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon
encountering the marks, consumers will first notice the identical lead word); Presto
Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often
the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered”) quoted in TiVo Brands LLC v. Tivoli, LLC, 129 USPQ2d
1097, 1115-16 (TTAB 2018).
The trailing terms, STRIKE and BOLT, are arbitrary in relation to wine, but they
both modify LIGHTNING, referring potential purchasers back to the dominant first
term. Moreover, they mean essentially the same thing. A “lightning strike” is “an

6 Id., 4 TTABVUE 7.
7 Id., 4 TTABVUE 7-8.
Serial No. 88872831
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occurrence of something being hit by lightning” and a “bolt” is “a lightning stroke
(also THUNDERBOLT).”8 The virtually synonymous trailing terms thus enhance and
engender the same connotation and commercial impression.
In its Request for Reconsideration, filed on May 5, 2021 during the course of
prosecution, Applicant attached copies of seventeen third-party registration
certificates for marks containing the word “LIGHTNING”, for alcoholic beverages.9 It
attaches the same copies to its brief on appeal,10 arguing that “A showing of multiple
active third-party registrations can be used to prove that a mark or a portion of a
mark is so commonly used that the public will look to other elements to distinguish
the source of the goods or services.”11
Applicant’s third-party registration evidence suffers from several deficiencies.
First, Applicant did not submit evidence “showing the current status and title of the
registration(s).” TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(TBMP) § 1208.02 (2021). Second, it submitted the third-party registrations at the
very end of the examination process, in its Request for Reconsideration. See In re 1st
USA Realty Pros. Inc., 84 USPQ2d 1581, 1583 (TTAB 2007) (listing of third-party
registration information submitted with request for reconsideration not considered
because at the time it filed the list, applicant no longer had an opportunity to add to
the record of the application and correct the evidentiary insufficiency of the

8 Merriam-Webster.com, Nov. 24, 2020 Office Action at TSDR 8, 10.
9 Applicant’s May 5, 2021 Response to Office Action (Request for Reconsideration) at 9-27.
10 Applicant’s brief, 4 TTABVUE 10-28.
11 Id., 4 TTABVUE 5.

Serial No. 88872831
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submission). Third, Applicant filed its Notice of Appeal, along with its brief, before
the Examining Attorney had an opportunity to respond to the Request for
Reconsideration.12 The Examining Attorney therefore cannot be faulted for failing to
advise Applicant of the insufficiency of its third-party registration evidence. See
generally In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1586 (TTAB 2018); In re
ActiveVideo Networks, Inc., 111 USPQ2d 1581, 1594 n.40 (TTAB 2014) (examining
attorney must advise applicant of inadmissibility of third-party registration evidence
when there is still time to correct the error).
The Examining Attorney has, however, addressed the substance of Applicant’s
third-party registration evidence in her brief, so we shall do the same, treating them
as though they were of record. See In re Olin Corp., 124 USPQ2d 1327, 1335 n.22
(TTAB 2017) (because the examining attorney addressed applicant’s registrations in
her brief and did not object to its discussion, Board treated the registrations as though
they were of record) cited in In re MK Diamond Prods., Inc., 2020 USPQ2d 10882, at
*1 n.5 (TTAB 2020). “However, the Board will not consider more than the information
provided by the applicant,” TBMP § 1208.02—in this case, a series of registration
certificates with no indication of whether they are now subsisting.
The Examining Attorney finds Applicant’s third-party evidence wanting, and so
do we. As the Examining Attorney notes, only four of the third-party registrations
identify or encompass wine:13 WIRRA WIRRA (English translation: “lightning”, for
“wine,” Reg. No. 2597293); LOSTREGO (English translation: “lightning”, for “wine”,

12 1, 4 TTABVUE.
13 Examining Attorney’s brief, 6 TTABVUE 11.
Serial No. 88872831
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Reg. No. 4806125); EVERCLEAR LIGHTNIN’ (for “alcoholic beverages except beer,”
Reg. No. 4267266); RED LIGHTNING (for “alcoholic beverages except beers”, Reg.
No. 5182569).14 The rest identify whiskey or other distilled spirits, for which the word
“lightning” conjures up the distinct impression of “white lightning,” i.e., “moonshine”
: “illegally distilled corn whiskey.”15 See Omaha Steaks Int’l, Inc. v. Greater Omaha
Packing Co., 908 F.3d 1315, 128 USPQ2d 1686, 1694 (Fed. Cir. 2018) (unrelated goods
less probative).
The four pertinent registered marks are unaccompanied by evidence of their use
in the marketplace, so we lack proof that LIGHTNING is so commonly used that
consumers have been educated to distinguish among LIGHTNING-formative marks
for wine based on minute differences. See, e.g., Juice Generation, Inc. v. GS Enters.
LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). The “existence of
[third-party] registrations is not evidence of what happens in the market place or that
customers are familiar with them....” AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d
1403, 177 USPQ 268, 269 (CCPA 1973) quoted in In re Inn at St. John’s, 126 USPQ2d
at 1746.
“[T]hird-party registration evidence that does not equate to proof of third-party
use may bear on conceptual weakness if a term is commonly registered for similar
goods or services.” Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043,

14 Applicant’s brief, Exhibit A, 4 TTABVUE 10-28.
15 Merriam-Webster.com, accessed 9/25/2021. The Board may take judicial notice of
dictionary definitions, including online dictionaries that exist in printed format. In re Cordua
Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d, 823 F.3d 594, 118 USPQ2d 1632
(Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14
(TTAB 2010).
Serial No. 88872831
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1057 (TTAB 2017). But the few third-party registrations adduced by Applicant fall
far short of this proof. See In re Inn at St. John’s, 126 USPQ2d at 1745-46 (two third-
party registrations for related but not identical services and two registrations for
identical services with a non-identical but similar mark were not sufficient to prove
Registrant’s mark was conceptually or inherently weak).
In its brief, Applicant asserts that there are “at least twenty more marks with the
term LIGHTNING registered in Class 32 for beers and ales and at least another
twenty for coffee.”16 But assertion is not proof. The Examining Attorney rightly
objects that Applicant has not made these asserted marks of record prior to filing its
appeal, and cannot do so in its brief on appeal, as that is untimely.17 Trademark Rule
2.142(d), 37 C.F.R. § 2.142(d). We agree, and sustain the objection.
Applicant finally alludes to a third-party registration that the Examining
Attorney initially cited, then withdrew, as a basis for refusing registration:
LIGHTNING for “wine” in Class 33 (Reg. No. 3995604). If the registered mark
LIGHTNING could coexist with LIGHTNING BOLT, Applicant argues, then its
applied-for mark, LIGHTNING STRIKE, should be able to do so, as well.18
As the Examining Attorney observes, however, “there are discernable differences
in commercial impression between the registered mark LIGHTNING and the marks
at issue on appeal—LIGHTNING STRIKE and LIGHTNING BOLT.”19 The nearly

16 Applicant’s brief, 4 TTABVUE 6.
17 Examining Attorney’s brief, 6 TTABVUE 4-5.
18 Applicant’s brief, 4 TTABVUE 5-6.
19 Examining Attorney’s brief, 6 TTABVUE 11.
Serial No. 88872831
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synonymous words STRIKE and BOLT draw the marks closer together in meaning
and commercial impression than the common term LIGHTNING alone. See In re I-
Coat Co., 126 USPQ2d 1730, 1735 (TTAB 2018) (“none of the [third-party] marks are
as similar to the mark in the cited registration as is Applicant’s mark.”); see also Inn
at St. John’s, 126 USPQ2d at 1745-46.
In sum, we find the third-party registration evidence insufficient to demonstrate
that LIGHTNING, the lead, dominant term in the cited registered mark
LIGHTNING BOLT, is so weak that it may be distinguished by the suffix in
Applicant’s LIGHTNING STRIKE.
For these reasons, the marks are more similar than dissimilar, and the first
DuPont factor weighs in favor of finding a likelihood of confusion.
II. Conclusion

We find that the marks are more similar than dissimilar, for use on identical
goods, wine, which are presumed to travel through the same channels of trade to the
same classes of consumers: general consumers who drink or purchase wine. The
applicable DuPont factors thus weigh in favor of finding a likelihood of confusion
under Section 2(d). 15 U.S.C. § 1052(d).
Decision: The refusal to register Applicant’s mark is affirmed.