Geo. G. Sandeman Sons & Co.v.Narmada Winery LLC

Trademark Trial and Appeal Board

Sep 12, 2013

No. 91198088 (T.T.A.B. Sep. 12, 2013)

THIS OPINION IS NOT
A PRECEDENT OF
THE TTAB

Mailed: September 12, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Geo G. Sandeman Sons & Co.
v.
Narmada Winery LLC
_____

Opposition No. 91198088
to application Serial Nos. 85082021 and 85082022
_____

Ryan A. McGonigle and John Rannells of Baker and Rannells PA
for Geo G. Sandeman Sons & Co.

Clifford D. Hyra of Symbus Law Group LLC for Narmada Winery
LLC.
______

Before Bucher, Cataldo and Masiello,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
On July 10, 2010, applicant, Narmada Winery, LLC, filed
application Serial Nos. 850820211 and 850820222 under
Section 1(a) of the Trademark Act to register on the
Principal Register the following marks:

1 May 23, 2007 is asserted as the date of first use of the mark
anywhere and in commerce.

2 June 20, 2008 is asserted as the date of first use of the mark
anywhere and in commerce. Color is not claimed as a feature of
the mark. The mark consists of a peacock above the word
“Narmada,” which in turn is above the word “Winery.”

Opposition No. 91198088

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NARMADA WINERY
(standard characters, “Winery” disclaimed); and

(“Winery” disclaimed), both reciting “wines” in
International Class 33 as their identified goods.
Registration has been opposed by Geo. S. Sandeman Sons
& Co. (“opposer”). As grounds for opposition, opposer
asserts that it is the owner of the following mark,
previously used and registered on the Principal Register:

reciting “sherry wine” in International Class 33 as the
identified goods.3
Opposer argues in its amended notice of opposition that
it has used the mark in its pleaded registration in
connection with the above listed goods since long prior to
the filing date of applicant’s involved applications; that
applicant’s marks, when used on applicant’s goods so

3 Registration No. 0090925 issued on April 1, 1913. Color is not
claimed as a feature of the mark. Sixth renewal.

Opposition No. 91198088

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resemble opposer’s mark for its recited goods as to be
likely to cause confusion, to cause mistake, or to deceive
under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d); and that opposer will be damaged thereby. In
addition, opposer asserts that applicant’s marks are
geographically deceptive under Section 2(a), 15 U.S.C.
§ 1052(a), and primarily geographically deceptively
misdescriptive under Section 2(e)(3), 15 U.S.C.
§ 1052(e)(3).
Applicant’s amended answer consists of a general denial
of the allegations contained in the amended notice of
opposition.4
Evidentiary Objections
Opposer has objected to applicant’s First, Fourth,
Seventh, Ninth, Eleventh, Twelfth, and Fifteenth Notices of
Reliance. Most of opposer’s objections relate to relevance
and probative value. However, we see no reason to discuss
each objection, as none of them is outcome determinative.
Rather, we have considered the entire record in making our
decision, keeping in mind opposer’s various objections, and
have accorded whatever probative value the subject evidence
merits. See Krause v. Krause Publications Inc., 76 USPQ2d

4 In addition, applicant asserted certain affirmative defenses
but did not pursue them at trial and further waived them in its
brief (p. 39, n. 5). Accordingly, they will be given no
consideration.

Opposition No. 91198088

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1904, 1907 (TTAB 2005) (“[w]here we have relied on testimony
to which respondent objected, it should be apparent to the
parties that we have deemed the material both admissible and
probative to the extent indicated in the opinion.”).
The Record
The record in this case consists of the pleadings and
the files of the involved applications. In addition,
opposer filed the following evidence by notice of reliance:
1. Certified status and title copy of its pleaded
Registration No. 90925;
2. Excerpts from certain of applicant’s responses to
Interrogatory Nos. 3, 5, 7-8, 13-15 and 17;
3. Excerpts from certain of applicant’s responses to
Requests for Admission Nos. 3-5, and 8-10;
4. Copies of official records downloaded and printed
from the U.S. Alcohol and Tobacco Tax and Trade Bureau’s
(“TTB”) database, namely, copies of COLA Registry Label
Approvals for applicant’s goods bearing applicant’s marks;
5. Copies of printouts downloaded and printed from
applicant’s Internet website;
6. Copies of printouts from Internet websites related
to the Indian wine industry and the Narmada River, namely,
printouts downloaded and/or printed from: (a) Wine Producing
Regions in India; (b) Narmada River; (c) Indian Grape
Processing Board (Ministry of Food Processing Industries);
Opposition No. 91198088

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(d) Harvesting Wine Grapes in India; (e) Narmada River
Basin: An Overview (map); (f) Madhya Pradesh Grape
Processing Industrial Policy 2006; (g) India Rivers (Map);
(h) India's Longest Rivers (Map); (i) Insight Guides: India
(2011 Apa Publications UK Ltd); (j) Oxford Atlas of the
World (18th ed. Oxford Univ. Press, 2011); and (k) India: DK
Eyewitness Travel Guide (2011 Dorling Kindersley
Limited).
Applicant, for its part, submitted the following
evidence by notice of reliance:
1. Copy of applicant’s response to Interrogatory No. 3;
2. Copies of excerpts from printed publications and
printouts from Internet websites, namely (a) 1000 Great
Everyday Wines from The World’s Best Wineries (2011 DK
Publishing); (b) The Everything Guide to Wine (2010 F+W
Media, Inc.); and (c) Brittania Online Encyclopedia;
3. Copies of dictionary definitions from The American
Heritage Desk Dictionary (5th ed. 2013, Houghton Mifflin
Harcourt Publishing Company);
4. Excerpts from (a) opposer’s responses to certain
Requests for Admission, Request Nos. 3-5, 12 and 14; and (b)
opposer’s response to certain Interrogatories, namely,
Interrogatory Nos. 2, 4-5, 8, and 14-15;
5. Copies of excerpts from printed publications and
printouts from Internet websites, namely (a) India, The
Opposition No. 91198088

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Pristine Beauty; (b) World River Map; (c) Principal Rivers
of the World; and (d) DK Eyewitness Travel India (2011
Dorling Kindersley Limited);
6. Copies of printouts from Internet websites, namely
(a) Search Results for Narmada in the United States; (b) Get
a People Search Report on Narmada; (c) White Pages;
7. Copies of (a) third party Registration No. 2755142
for the mark ARMADOR for “wines;” (b) the website of Chile-
based Odfjell Vineyards; and (c) TTB COLA Registry Label
Approvals for ARMADOR;
8. Copies of printouts of various pages downloaded from
opposer’s Internet website;
9. Copies of a TTAB document for a Request for Initial
Sixty-Day Extension of Time to Oppose Odfjell Vineyards
S.A.’s ARMADOR mark;
10. Copies of reviews for Narmada Winery downloaded and
printed from Yelp.com;
11. Copies of printed publications, namely, (a) The
American Heritage Desk Dictionary (2013 Houghton Mifflin
Harcourt Publishing Company); (b) The Oxford English
Dictionary (1989, Vol. X, Oxford Univ. Press); (c) Random
House Webster's College Dictionary (2001 Random House); and
(d) Webster's New Explorer College Dictionary (2007 Merriam-
Webster);
Opposition No. 91198088

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12. Copies of printouts from Internet websites, namely:
(a) Armida.com; (b) Melandrose.com; and (c) a TTB COLA
Registry Label Approval for ARMIDA;
13. Copies of printouts from an Internet website,
namely, Blue Ridge Wine Way;
14. Copies of printouts from an Internet website,
namely, Swirl, Sip, Snark;
15. Copies of third-party registrations for the marks
(a) ARCATA (Reg. No. 2805972); (b) ALBADA and design (Reg.
No. 3372023); (c) ARIANA (Reg. No. 3642267); (d) ARMAN (Reg.
No. 3817479); (e) ARUNDA (Reg. No. 3194649); (f) AYMARA
(Reg. No. 3119558); and (g) TAMADA (Reg. No. 3761760).
Opposer and applicant filed main briefs on the case.
Opposer’s Standing and Priority of Use
Because opposer has properly made its pleaded
registration of record, and further because opposer has
asserted a plausible likelihood of confusion claim, opposer
has established its standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982). Moreover, because opposer’s pleaded
registration is of record, Section 2(d) priority is not an
issue in this case as to the mark and goods covered thereby.
Opposition No. 91198088

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See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108 (CCPA 1974).5
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue, even those not specifically discussed in
this decision. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The Goods, Channels of Trade, and Classes of Consumers
In the present case, opposer’s goods, identified as
“sherry wine,” are encompassed and subsumed by applicant’s
more broadly identified goods, namely, “wines.”6 Because we
must presume that applicant’s “wines” include “sherry wine,”
the parties’ goods are legally identical for purposes of our
likelihood of confusion determination.

5 In addition, applicant concedes opposer’s priority. (brief, p.
15, fn 1).

6 Applicant concedes that the goods are “related.” Id.

Opposition No. 91198088

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Where the goods in the involved applications or pleaded
registration are broadly identified as to their nature and
type (as is the case herein), 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
not only that in scope the identification of goods
encompasses 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 therefor, and that
they would be purchased by all potential buyers thereof.
See Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d
1910 (TTAB 2000). Because there are no restrictions as to
channels of trade or classes of purchasers recited in the
involved applications or the pleaded registration, again we
must presume that applicant’s “wines” are offered in all
channels of trade normal therefor, including those channels
of trade in which opposer’s “sherry wine” is encountered,
and to the same classes of consumers.
As a result, these du Pont factors favor a finding of
likelihood of confusion.
Strength of Opposer’s Mark
Turning to the strength of opposer’s ARMADA mark, we
observe that while opposer does not argue that its mark is
famous, it nonetheless has been registered for a century.
Further, the term “armada” is defined as “a fleet of
Opposition No. 91198088

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warships.”7 There is no evidence of record that the term
“armada” possesses any meaning or significance in relation
to opposer’s goods. As such, ARMADA appears to be arbitrary
as applied to the goods identified in opposer’s
registrations. Thus, the ARMADA mark appears to be
conceptually strong.
On the other hand, applicant submitted evidence8 of a
single third party’s use of the mark ARMIDA WINERY and
design for wine. However, the extent to which this third
party has used the ARMIDA WINERY and design mark is not
clear from the record. In addition, applicant submitted
evidence9 in the nature of copies of the following eight
third-party registrations for marks for wine and other
alcoholic spirits: ARMADOR (Reg. No. 2755142); ARCATA (Reg.
No. 2805972); ALBADA and design (Reg. No. 3372023); ARIANA
(Reg. No. 3642267); ARMAN (Reg. No. 3817479); ARUNDA (Reg.
No. 3194649); AYMARA (Reg. No. 3119558; and TAMADA (Reg. No.
3761760). However, the probative value of the registration
evidence is very limited because applicant presented no
evidence concerning the extent to which the marks in these
third-party registrations are used in commerce. See Palm

7 Applicant’s 3rd Notice of Reliance, The American Heritage® Desk
Dictionary, (5th ed. 2013).

8 Applicant’s 12th Notice of Reliance.

9 Applicant’s 7th, 12th and 15th Notices of Reliance.

Opposition No. 91198088

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Bay Imports Inc., 73 USPQ2d at 1693. Moreover, a review of
the third-party registrations reveals that none of the marks
are as similar to the marks at issue in this case as the
marks at issue are to each other. Thus, applicant’s
evidence, consisting of use of the mark ARMIDA WINERY by a
single third party, does not establish that there is
widespread use of similar marks for wine such that opposer’s
mark is weak and entitled to only a narrow scope of
protection.
This factor, therefore, is at best neutral or favors a
finding of likelihood of confusion.
The Marks
Thus, we turn to the similarity or dissimilarity of the
marks. In making our determination under the first du Pont
factor, we consider whether applicant’s marks and opposer’s
mark are similar or dissimilar when viewed in their
entireties in terms of appearance, sound, connotation and
overall commercial impression. See Palm Bay Imports, Inc.
v. Veuve Clicquot, 73 USPQ2d at 1692. The test, under this
du Pont factor, 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. Because the involved goods would
Opposition No. 91198088

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be marketed to the general public, our 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).
In this case, opposer’s mark is

and applicant’s marks are NARMADA WINERY and

Turning first to a comparison of applicant’s NARMADA
WINERY mark and opposer’s ARMADA mark depicted above, we
observe that the marks are similar in appearance inasmuch as
the term NARMADA encompasses the entirety of opposer’s
ARMADA mark. The disclaimed term WINERY in applicant’s mark
clearly is, at best, highly descriptive of applicant’s goods
and contributes little to the mark’s overall impression.
Thus, the distinctive term NARMADA in applicant’s mark is
nearly identical in appearance to opposer’s ARMADA mark.
Furthermore, it is well-settled that there is no “correct”
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pronunciation for the terms comprising a mark. In re
Teradata Corporation, 223 USPQ 361, 362 (TTAB 1984) (“as we
have said many times, there is no ‘correct’ pronunciation of
a trademark”). Thus, on the record before us, the terms
NARMADA and ARMADA, which are highly similar in appearance
and spelling, would appear to be highly similar in
pronunciation. With regard to connotation, as discussed
above the term ARMADA connotes a large fleet of warships.
Opposer and applicant agree that the term NARMADA in
applicant’s NARMADA WINERY mark identifies one of the seven
holy rivers in India, while applicant contends in addition
that the term is also the name of the mother of applicant’s
founder, and a surname in the United States.10 Thus, the
marks have different meanings. However, it is not at all
clear on this record the extent to which any of the asserted
meanings of NARMADA would be apparent to consumers in the
U.S. Accordingly, we take into consideration the
possibility that consumers may perceive NARMADA as a coined
term having no meaning. Because it is not clear whether
consumers would be aware of the meanings of the term
NARMADA, the difference in meanings between the marks may
not be as significant as the similarities in appearance and
sound.

10 Opposer’s 2nd Notice of Reliance. Applicant’s 1st and 2nd
Notices of Reliance.

Opposition No. 91198088

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Based upon the foregoing, we find that opposer’s ARMADA
mark and applicant’s NARMADA WINERY mark are highly similar
in appearance and sound, and different in meaning. However,
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 Krim-Ko Corp.
v. The Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA
1968) (“It is sufficient if the similarity in either form,
spelling or sound alone is likely to cause confusion”); and
In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (“In
appropriate cases, a finding of similarity as to any one
factor (sight, sound or meaning) alone ‘may be sufficient to
support a holding that the marks are confusingly similar’”
(citations omitted)). Therefore, even if the marks have
different meanings, it does not necessarily mean there is no
likelihood of confusion. In this case, we find that the
strong similarities in the marks’ appearance and sound
outweigh the differences in meaning and that, when viewed as
a whole, the marks convey highly similar commercial
impressions.
Turning next to a comparison of opposer’s mark

with applicant’s mark
Opposition No. 91198088

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based upon the above discussion we find that the wording
ARMADA and NARMADA WINERY to be highly similar in appearance
and sound, although different in meaning. The stylization
of the wording in the marks is different; however, neither
mark features such highly stylized lettering that the
differences between them would be sufficient to distinguish
the marks. In addition, applicant’s mark includes the
stylized design of a peacock. 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 National 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 23,
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. Price
Opposition No. 91198088

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Candy Company v. Gold Medal Candy Corporation, 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 National Data Corp.,
224 USPQ at 751.
In this regard, there are a number of cases that
reflect the principle that if a mark comprises both a word
and a design, the word is normally accorded greater weight
because it would be used by purchasers to request the goods
or services. See In re Appetito Provisions Co., 3 USPQ2d
1553, 1554 (TTAB 1987); and Kabushiki Kaisha Hattori
Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985). In this
case, we find that the word portion of applicant’s mark is
the dominant element thereof because consumers would use it
to call for the goods identified thereby. In so
determining, we do not discount or ignore the peacock design
element in applicant’s mark. The peacock design is
relatively prominent in size and appears distinctive as
applied to the goods. Nonetheless, the pictorial design
would not be used by consumers to call for applicant’s
goods. Rather, the term NARMADA, displayed in large,
prominent letters below the design, and to a lesser extent
Opposition No. 91198088

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the term WINERY, is far more likely to be articulated by
consumers requesting applicant’s goods.
In view of the foregoing, we find that opposer’s ARMADA
mark and applicant’s mark, NARMADA WINERY and design, are
more similar than dissimilar in appearance, sound, and
connotation and, when viewed as a whole, convey highly
similar overall commercial impressions.
As a result, this du Pont factor favors a finding of
likelihood of confusion as to the marks in both of the
involved applications.
Actual Confusion
Another du Pont factor briefly discussed by the parties
is the existence or lack of actual confusion. On this
record, we find that applicant’s mere reliance upon
contemporaneous use of the marks in the United States for
five and six years, respectively, is not probative. In that
regard, it has often been recognized that evidence of actual
confusion is very difficult to obtain. Lebanon Seaboard
Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1834 (TTAB
2012). Moreover, it is not necessary to show actual
confusion in order to establish likelihood of confusion.
See Weiss Associates Inc. v. HRL Associates Inc. 902 F.2d
1546, 223 USPQ 1025 (Fed. Cir. 1990). As a result, this du
Pont factor is neutral.
Opposition No. 91198088

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Summary
In view of the foregoing, we find that opposer has
established its standing to bring this proceeding; its
priority of use; and, upon balancing the du Pont factors of
which there is evidence of record, that a likelihood of
confusion exists between its mark and applicant’s marks, as
used in connection with the parties’ legally identical
goods.
DECISION: The opposition is sustained on the ground of
likelihood of confusion under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), and registration to applicant is
refused as to both applications.
In view thereof, we need not determine opposer’s
claims brought under Section 2(a), 15 U.S.C. § 1052(a), and
Section 2(e)(3), 15 U.S.C. § 1052(e)(3).