Grape Visions, LLCDownload PDFTrademark Trial and Appeal BoardMar 27, 2019EX (T.T.A.B. Mar. 27, 2019) Copy Citation Mailed: March 27, 2019 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Grape Visions, LLC _____ Serial No. 87659839 _____ Thomas J. Hoffmann for Grape Visions, LLC. LaShawnda Elliott, Trademark Examining Attorney, Law Office 125, Heather Biddulph, Managing Attorney. _____ Before Mermelstein, Wolfson, and Hightower, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: Applicant Grape Visions, LLC, applied to register on the Principal Register the mark MESSOR in standard characters for “wines” in International Class 33.1 The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the mark THE MESSER in standard characters for “wine” in International 1 Application Serial No. 87659839 was filed October 25, 2017 based on allegations of first use anywhere and in commerce as of February 25, 2016, pursuant to Trademark Act Section 1(a), 15 U.S.C. § 1051(a). This Opinion Is Not a Precedent of the TTAB Serial Nos. 87659839 - 2 - Class 332 as to be likely to cause confusion, to cause mistake, or to deceive. After the Examining Attorney made the refusal final, Applicant requested reconsideration and amended its identification to the current goods, “wines sold exclusively to members of the Stained Tooth Society wine club.”3 The Examining Attorney denied reconsideration and maintained the refusal. Applicant then appealed to this Board. We affirm the refusal to register. I. Evidentiary Matters We sustain the Examining Attorney’s objection to the new evidence submitted with Applicant’s brief on appeal. The record in the application should be complete before a notice of appeal is filed. Trademark Rule § 2.142(d), 37 C.F.R. § 2.142(d); see also In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018). Applicant’s brief also does not conform to our precedent and the Trademark Rules of Practice in other respects, undermining its utility to the Board. First, “[c]itation to evidence in briefs should be to the documents in the electronic application record by date, the name of the paper under which the evidence was submitted, and the page number in the electronic record.” Trademark Rule § 2.142(b)(3), 37 C.F.R. § 2.142(b)(3). Applicant has merely embedded images of evidence into its brief with no citation to the prosecution record. We have considered the entire record, but because Applicant has not established that the images in its brief are from evidence 2 Registration No. 5188243, issued April 18, 2017. 3 In its Request for Reconsideration, submitted July 16, 2018, Applicant’s counsel represented that Applicant does business as “Dusted Valley,” and the Stained Tooth Society is Dusted Valley’s membership wine club. Id. at TSDR 2. Serial Nos. 87659839 - 3 - properly submitted during examination, we give them no consideration. See In re Greenliant Sys., Ltd., 97 USPQ2d 1078, 1080 (TTAB 2010). Second, Applicant has included in its brief numerous links to Internet materials. This is improper. Providing only a web address or hyperlink is insufficient to make information from that site of record, whether submitted in a brief or as purported evidence. See, e.g., In re Olin Corp., 124 USPQ2d 1327, 1332 n.15 (TTAB 2017); In re Change Wind Corp., 123 USPQ 1453, 1462 n.8 (TTAB 2017); see also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1208.03 (2018). II. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all probative facts in evidence relevant to the factors bearing on the likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In our likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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.”). Similarity of the Marks The first du Pont factor focuses on the “similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048 (Fed. Cir. 2018). “The proper test is not a side-by-side comparison of the marks, but instead whether Serial Nos. 87659839 - 4 - the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quotation omitted). Where, as discussed below, goods are legally identical, “the degree of similarity necessary to support a conclusion of likely confusion declines.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). It is well-recognized that the definite article THE is insignificant as a source- identifier. See In re Thor Tech, Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (affirming refusal to register WAVE due to likelihood of confusion with registered mark THE WAVE, stating: “The marks are virtually identical. The addition of the word ‘The’ at the beginning of the registered mark does not have any trademark significance.”); In re Narwood Prods., Inc., 223 USPQ 1034, 1034 (TTAB 1984) (noting insignificance of word “the” in comparison of THE MUSIC MAKERS and MUSICMAKERS); Conde Nast Publ’ns Inc. v. Redbook Publ’g Co., 217 USPQ 356, 357 (TTAB 1983) (noting that the word “the” cannot serve as an indication of origin); cf. Motorola, Inc. v. Griffiths Elecs., Inc., 317 F.2d 397, 137 USPQ 551, 552 (CCPA 1963) (“‘THE,’ . . . is indeed of trifling importance”). MESSER, the remaining term in Registrant’s mark THE MESSER, is identical to Applicant’s mark MESSOR save for the final vowel, suggesting that these are alternate spellings of the same term. The words also are likely to be pronounced similarly. We find the two marks to be highly similar visually and aurally. Serial Nos. 87659839 - 5 - As for their connotations, the record shows that “Messor” is a minor Roman deity.4 Applicant contends that “THE MESSER refers to a weapon, a single edged sword with a knife-like hilt construction.” Appeal Brief at 9, 4 TTABVUE 10. The record does not support this assertion. During prosecution, Applicant listed a link to what appears to be a Wikipedia page allegedly on point (https://en.wikipedia.org/wiki/ Messer_(weapon)) but did not submit the underlying evidence.5 Applicant also asserts, with no support, that “[t]he element MESSER of the cited mark is translated from German as ‘knife.’” Appeal Brief at 10, 4 TTABVUE 11. We take judicial notice sua sponte that “messer” is translated from German to English as “knife.”6 Nonetheless, there is no evidence that the average consumer would be aware of either this minor deity or knife-like weapon and distinguish the marks on that basis.7 Moreover, consumers who know about either of them would be equally likely to ascribe the same meaning to both marks and not distinguish between them. Considered in their entireties, we find that Applicant’s mark MESSOR is similar in appearance, pronunciation, and connotation and creates an overall commercial impression similar to the cited mark THE MESSER. The first du Pont factor thus weighs in favor of a finding that confusion is likely. 4 May 22, 2018 Final Office Action at TSDR 2-10. 5 March 12, 2018 Response to Office Action at TSDR 5. 6 Definition from the Collins German to English dictionary online (https://www. collinsdictionary.com/us/dictionary/german-english/messer). The Board may take judicial notice of definitions from dictionaries, including online dictionaries that exist in printed format. E.g., In re S. Malhotra & Co. AG, 128 USPQ2d 1100, 1104 n.9 (TTAB 2018). 7 We do not accord the cited mark a narrowed scope of protection based on the single third- party registration Applicant references for THE KNIFE for wine. March 12, 2018 Response to Office Action at TSDR 6-7; Appeal Brief at 10, 4 TTABVUE 11. Serial Nos. 87659839 - 6 - Similarity of the Goods, Channels of Trade, and Classes of Customers We next consider the second and third du Pont factors, the similarity of the goods, channels of trade, and classes of customers. As explained above, Applicant has restricted its identification to “wines sold exclusively to members of the Stained Tooth Society wine club” in an attempt to distinguish the class of customers for its goods from consumers of Registrant’s “wine.” We find this limitation to be unavailing. Because Registrant’s “wine” is unrestricted, we must presume that Registrant’s wine encompasses all types of wine. E.g., In re C.H. Hanson Co., 116 USPQ2d 1351, 1355 (TTAB 2015). The identified goods thus are legally identical. And because the goods are legally identical, we must presume that the channels of trade are the same and also that, even though Applicant sells its wine only to a restricted class of consumers, the classes also are the same. In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1518-19 (TTAB 2016). In other words, we must presume that Registrant’s potential customers include all potential wine purchasers in the United States. The class of purchasers identified by Applicant, members of Applicant’s wine club, are wine consumers. Therefore, they are potential purchasers of Registrant’s goods. Some applicants attempt to avoid a likelihood of confusion by narrowly describing their goods or services or channels of trade. Here, Applicant instead has limited its class of customers. Our analysis, however, is the same. Such restrictions to an applicant’s identification may not avoid confusion where the cited registration contains no express limitations and the respective goods or services otherwise are identical or highly similar. See, e.g., In re i.am.symbolic, llc, 866 F.3d 1315, 123 Serial Nos. 87659839 - 7 - USPQ2d 1744, 1750 (Fed. Cir. 2017) (affirming Board finding that an identification restricting the goods to those “associated with William Adams, professionally known as ‘will.i.am,’” imposed no meaningful limitation on the nature of the goods, trade channels, or classes of purchasers); Bd. of Regents, Univ. of Tex. Sys. v. S. Ill. Miners, LLC, 110 USPQ2d 1182, 1190-93 (TTAB 2014) (finding that although opposer’s clothing items were limited by the wording “college imprinted” and the applicant’s identical or highly similar items were limited by the wording “professional baseball imprinted,” these restrictions did not distinguish the goods, their trade channels, or their relevant consumers in any meaningful way); TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1207.01(a)(iii) (Oct. 2018). The second and third du Pont factors weigh in favor of a finding that confusion is likely. III. Conclusion We have considered all arguments and evidence of record as they pertain to the relevant du Pont likelihood of confusion factors. To the extent that any other du Pont factors for which no evidence was presented by Applicant or the Examining Attorney may nonetheless be applicable, we treat them as neutral. We have found that the first, second, and third du Pont factors weigh in favor of a finding that confusion is likely. We find that Applicant’s mark is likely to cause confusion with the mark in Registration No. 5188243 when used in association with the identified goods. Decision: The refusal to register is affirmed. Copy with citationCopy as parenthetical citation