Joel Gott Wines, LLCv.Rehoboth Von Gott, Inc.

Trademark Trial and Appeal Board

Jun 26, 2013

No. 91197659 (T.T.A.B. Jun. 26, 2013)

Mailed:
June 26, 2013
United States Patent and Trademark Office
Trademark Trial and Appeal Board

________
Joel Gott Wines, LLC
v.
Rehoboth Von Gott, Inc.
________
Opposition No. 91197659
to application Serial No. 77943657
_______

J. Scott Gerien and Aleson R. Kent of Dickenson Peatman & Fogarty for Joel Gott
Wines, LLC.
James T. Hollin, Jr. of JT Hollin, Jr, Attorney at Law PC for Rehoboth Von Gott,
Inc.
_______
Before Bucher, Lykos and Wolfson, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
Rehoboth Von Gott, Inc. (“applicant”) filed an application to register the mark
depicted below:

This Opinion is a
Precedent of the TTAB
Opposition No. 91197659

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for:
Nutritionally fortified water; vitamin enriched water; vitamin
supplement in tablet form for use in making an effervescent
beverage when added to water; water-based personal lubricants
in International Class 5; and

Aerated mineral waters; aerated water; bottled artesian water;
bottled drinking water; bottled water; carbonated waters;
coconut water; distilled drinking water; drinking water;
drinking water with vitamins; essences for making flavoured
mineral water; essences for the preparation of mineral waters;
flavored bottled water; flavoured mineral water; glacial water;
lithia water; magnetically treated water for human consumption
and not for medical purposes; mineral and aerated water;
mineral and carbonated waters; mineral water; purified bottled
drinking water; quinine water; scented water for making
beverages; seltzer water; soda water; sparkling water; spring
water; still water; syrups for making flavoured mineral waters;
table waters in International Class 32.1

Joel Gott Wines, LLC (“opposer”) opposed the registration of applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
priority of use and likelihood of confusion with opposer’s previously used and
registered marks GOTT and JOEL GOTT in standard character form for “wine” in
International Class 33.2 As further grounds for opposition, opposer alleges that

1 Application Serial No. 77943657, filed February 24, 2010, pursuant to Section 1(b) of the
Trademark Act, alleging that applicant has a bona fide intent to use the mark in commerce.
The description of the mark is as follows: “The mark consists of the stylized wording ‘GOTT
LIGHT’ and the design of a stylized wave of water surging upward from right to left. At the
bottom of the wave design are depictions of molecular structures. There is a stylized
elliptical-shaped cloud-like design above the word ‘GOTT’ and a horizontal border running
along the top length of the mark.” Applicant also entered the following translation
statement and disclaimer: “The English translation of GOTT in the mark is God” and “No
claim is made to the exclusive right to use LIGHT apart from the mark as shown.”
2 Registration No. 3333020 for the mark GOTT for “wine” registered November 6, 2007 on
the Supplemental Register; Section 8 affidavit accepted. Registration No. 2842773 for the
mark JOEL GOTT for “wine” registered May 18, 2004; Sections 8 and 15 combined affidavit
accepted and acknowledged.
Opposition No. 91197659

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applicant’s mark is merely descriptive under Section 2(e)(1) of the Trademark Act,
15 U.S.C. § 1052(e)(1),3 and that the application is void ab initio because applicant
lacked a bona fide intent to use the mark on the identified goods at the time of filing
its application. In its answer, applicant denied the salient allegations under
Sections 2(d) and 2(e)(1), and in its amended answer, applicant denied the salient
allegations of the no bona fide intent to use claim.
Although the mark GOTT VINES was not pleaded in the notice of opposition,
in a footnote to its trial brief, opposer refers to its alleged common law rights in the
mark. We do not find, however, that opposer’s testimony and evidence regarding
this mark have fairly apprised applicant that opposer intended to rely upon its
alleged rights to the mark GOTT VINES apart from the marks GOTT and JOEL
GOTT.4 Therefore, we have given the mark GOTT VINES no further consideration.
See Fed. R. Civ. P. 15(b); TBMP § 507.03(b) (3d ed. rev. 1 June 2012).
Evidentiary Matters
Before proceeding to discuss the substantive merits of the case, we address
the following evidentiary matters. On May 15, 2012, during its testimony period,
applicant filed a document entitled “Supplementation of Previous Disclosure by

3 This claim was not argued in the brief and accordingly is considered waived. See e.g.,
Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1314 n.4 (TTAB 2005).
4 The testimony provided by opposer regarding the mark GOTT VINES was limited to Mr.
Gott’s statement that opposer started using the mark in 1997, and a brief description of
GOTT VINES as a sub-brand “inside the Joel Gott Wines brand.” Gott dep., pp. 6, 10. The
evidence of use of the mark GOTT VINES is not highly probative; it consists of copies of
Certificates of Label Approval (COLA’s) issued by the Alcohol and Tobacco Tax and Trade
Bureau for labels that include the mark GOTT VINES. Gott dep., p. 8, exhibit No. 3;
opposer’s Notice of Reliance, exhibit No. 11. We note that COLA’s are not proof that the
labels were actually put into use, and the labels themselves use the mark in a clearly
subordinate manner to opposer’s primary mark JOEL GOTT.
Opposition No. 91197659

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Applicant.” Attached to the document is the declaration of Ms. Violeta Tumen,
applicant’s corporate secretary, and accompanying exhibits in the form of
advertising materials from Peru. On June 8, 2012, opposer filed a motion to strike
the declaration and accompanying exhibits on the ground that the filing was
procedurally improper. Applicant filed a brief in response to the motion to strike,
and the Board deferred determination of the motion until final decision. We hereby
grant opposer’s motion to strike.
There are a number of ways documents may be introduced into the record
under a notice of reliance in a Board proceeding. Certain documents may qualify
for admission under Trademark Rule 2.122(e) as official records or printed
publications. Documents may qualify for admission if they were provided as a
response to an interrogatory, or authenticated by a request for admission, when
offered by the adverse (receiving or non-producing) party under Trademark Rule
2.120(j)(1). See TBMP §§ 704.10; 704.11 (“Documents provided as all or part of an
answer to an interrogatory may be made of record, as an interrogatory answer, by
notice of reliance….”; “A party that has obtained documents through disclosure or
under Fed. R. Civ. P. 34 may serve on its adversary requests for admission of the
authenticity of the documents, and then, during its testimony period, file a notice of
reliance, under 37 CFR § 2.120(j)(3)(i), on the requests for admission, the exhibits
thereto, and its adversary’s admissions….”).5 Documents produced in response to a

5 A discovery deposition, an answer to an interrogatory, an admission made in response to a
request for admission, or a written disclosure (but not a disclosed document) produced by
an adverse party may also qualify for admission by way of a notice of reliance under
Trademark Rule 2.120(j).
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document production request cannot otherwise be made of record under a notice of
reliance absent a stipulation of the parties approved by the Board. Trademark Rule
2.120(j)(3)(ii); TBMP § 704.11(7) (“documents obtained through disclosure or under
Fed. R. Civ. P. 34 may be made of record by stipulation of the parties.”).6
Evidence that does not qualify under either Trademark Rule 2.120(j) or
2.122(e) may be made of record “with appropriate identification and introduction by
the witness during the course of [a live testimony] deposition.” TBMP § 702.02.
However, documents and other exhibits may not be introduced in connection with
the declaration or affidavit of a witness unless the parties have mutually agreed to
accept same in lieu of testimony. See Trademark Rule 2.123(b); Tri-Star Marketing
LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB 2007) (“a
declaration cannot be submitted in lieu of a testimony deposition absent a
stipulation of the parties”); and TBMP § 703.01(b). Here, the parties have not
stipulated that Ms. Tumen’s declaration may be submitted in lieu of her testimony
deposition; therefore it has not been considered. Further, the accompanying
exhibits, i.e., advertising materials from Peru, do not qualify as evidence introduced
during the course of a “deposition” and are not considered as such.
Even assuming that Ms. Tumen’s declaration could be viewed as operating in
a manner analogous to a notice of reliance, the exhibit materials attached to Ms.
Tumen’s declaration are not of the type that would be admissible thereunder. First,

6 Documents obtained through disclosure may also be offered as exhibits in connection with
the taking of an adversary’s discovery deposition, and both disclosure documents and
documents received under Fed. R. Civ. P. 34 may be introduced during taking of the
testimony of an adversary, the obtained documents introduced as exhibits. TBMP § 704.11.
Opposition No. 91197659

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the parties have not stipulated to admission of the exhibits that are attached to Ms.
Tumen’s declaration. Second, the documents are not answers to interrogatories
produced by a party during discovery which are being introduced by its adversary
pursuant to Trademark Rule 2.120(j). They are also not official records or printed
publications under Trademark Rule 2.122(e), which is specific as to what type of
material qualifies as an “official record” or “printed publication.” Promotional
material generated by an applicant, labels or hang tags applied to the goods, or
similar advertising materials do not qualify as such. Nor does treating the
declaration as if it were itself submitted via a notice of reliance render it admissible.
The declaration does not qualify as an official record or printed publication
“available to the general public in libraries or of general circulation among members
of the public or that segment of the public which is relevant under an issue in a
proceeding.”7 Thus, neither the declaration nor the advertising materials are
admissible.
Applicant argues that it should be allowed to supplement its discovery
responses, served in response to opposer’s request for production of documents,
pursuant to Fed. R. Civ. P. 26(e)(1). That rule requires that a party supplement its
responses when it learns of “additional or corrective information that has not
otherwise been made known to the other parties during the discovery process or in
writing.” Applicant argues that it is required by law to supplement its responses
“regardless of whether such supplementation is done in conjunction with a Notice of
Reliance by the acting party” and prays that “the supplemental materials submitted

7 Trademark Rule 2.122(e).
Opposition No. 91197659

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pursuant to Rule 26 be admitted of record.”8 In its main trial brief, applicant
further argues that because opposer supplemented its initial disclosures during its
testimony period, applicant should likewise be allowed to supplement its responses
as part of its supplementation to its initial disclosures.9
Applicant misapprehends the rule. It is true that Fed. R. Civ. P. 26(e)(1)
charges parties with a duty to supplement their discovery responses. But this does
not make whatever supplemental material is produced of record in the case. To the
contrary, supplemental discovery responses, like all discovery, should not be filed
with the Board, “except when submitted with a motion relating to disclosure or
discovery, or in support of or in response to a motion for summary judgment, or
under a notice of reliance, when permitted, during a party’s testimony period.”
Trademark Rule 2.120(j)(8). None of the exceptions in Trademark Rule 2.120(j)(8)
applies to applicant’s submission. Thus, although applicant is correct that it is
required to supplement its disclosures and serve the materials on opposer,
applicant’s supplemental discovery material is not thereby made of record in this
proceeding.
For these reasons, we have given Ms. Tumen’s declaration and the
accompanying exhibits no further consideration.10

8 Applicant’s Reply to Motion to Strike Supplemental Evidence, p. 3.
9 Applicant’s Brief, p. 3. Although applicant invokes its duty to supplement its “initial
disclosures,” it is applicant’s duty to supplement its responses to discovery requests that is
at issue herein, because the evidence that applicant seeks to admit was submitted in
response to opposer’s requests for production of documents.
10 We note, in any event, that the advertising materials appear to be available in Peru only,
and not in the United States. Accordingly, they have no probative value.
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Opposer also raised objections to evidence submitted by applicant under a
notice of reliance, filed on July 26, 2012, after applicant’s testimony period closed.
Applicant seeks to introduce a printout from the prosecution history of its
trademark application, and a copy of the discovery deposition taken under Fed. R.
Civ. P. 30(b)(6) of one of its principals, Mr. Lozano-Perez.11 In its brief, opposer
objected to the evidence as untimely.12 While the prosecution history of applicant’s
trademark application is automatically of record under Trademark Rule 2.122(b)(1),
absent stipulation of the parties approved by the Board, or upon motion granted by
the Board, or by order of the Board, discovery depositions are not automatically of
record, but rather must be timely submitted during a party’s testimony period. See
Trademark Rule 2.121(a). In view thereof, we have given the Lozano-Perez
deposition no further consideration. However, as noted infra, portions of the
deposition are of record, having been properly submitted by opposer during its
testimony period; these have been considered.
The Record
Pursuant to Trademark Rule 2.122(b), the record includes applicant’s
application file and the pleadings. In addition, the record consists of copies of
opposer’s pleaded registrations and trademark application Serial No. 85509647 for
the mark JOEL GOTT for water beverages, as well as a copy of an Office Action
from that file. Opposer has also introduced, under notice of reliance, copies of third-
party registrations and Internet printouts, including printouts from opposer’s

11 Applicant also resubmitted copies of Ms. Tumen’s declaration and accompanying exhibits.
12 See TBMP § 702.02(b)(1) and cases cited therein (objections on ground of untimeliness
may be raised in adverse party’s brief on the case).
Opposition No. 91197659

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website; copies of Certificates of Label Approval (“COLAs”) issued by the Alcohol
Tobacco Tax and Trade Bureau (“TTB”) of the U.S. Department of Treasury;
applicant’s responses to certain of opposer’s interrogatories and excerpts of the Fed.
R. Civ. P. 30(b)(6) deposition of Mr. Lozano-Perez. Opposer has also made of record
the testimony depositions of Mr. Joel Gott, opposer’s Managing Member, and Ms.
Kirsten Hampton Brown, an employee of opposer. Each deposition transcript is
accompanied by attached exhibits. In light of our rulings above on applicant’s trial
submissions, applicant has provided no admissible evidence or testimony.
Standing
Because opposer has properly made its pleaded registrations of record,
showing opposer as owner and that the registrations are subsisting, opposer has
established its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co.,
670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). See also, Otter Products LLC v.
Baseonelabs LLC, 105 USPQ2d 1252, 1254 (TTAB 2012) (“We find that Opposer's
Supplemental Register Registration is sufficient to establish opposer’s real interest
in this proceeding.”).13
Priority
Because opposer’s pleaded registrations are subsisting and show opposer as
the owner, priority is not at issue in this case as to the marks, GOTT and JOEL

13 Applicant’s argument that opposer’s filing of unpleaded application Serial No. 85465193,
for the mark GOTT for water beverages, is a “subterfuge and fraud” is misplaced. Whether
or not opposer pleaded this application, opposer has established its standing. Moreover, the
application is not of record in this case and we have given it no further consideration.
Opposition No. 91197659

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GOTT, and the goods covered by the registrations, namely, “wine.” King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)
(absent a petition to cancel opposer’s cited registration, an applicant cannot, in an
opposition proceeding, challenge opposer’s priority as to the mark and goods in the
cited registration). See also, Otter Products, 105 USPQ2d at 1254 (owner of
Supplemental Register registration need not establish priority in order to prevail on
its claim under Section 2(d)). Because opposer’s registration for the mark GOTT
issued on the Supplemental Register, while opposer need not establish priority of
use of its mark GOTT to prevail on its claim of likelihood of confusion with respect
to the mark, opposer must still establish ownership of a proprietary interest in the
mark by competent evidence. Otter Products, 105 USPQ2d at 1255 (“‘opposer must
prove he has proprietary rights in the term ….’”) (citing Otto Roth & Co., Inc. v.
Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA 1981)). Further,
because opposer’s registration is on the Supplemental Register, opposer must prove
that it acquired such proprietary interest in its mark before applicant’s first use
date (which in this case is its constructive use date). In other words, opposer must
establish that its proprietary interest in the mark GOTT is superior to applicant’s
interest in its mark GOTT LIGHT.
Because applicant has not submitted evidence of earlier use, the first use
date on which it can rely is the filing date of its application, i.e., February 24, 2010.
Opposer has shown its superior proprietary rights in its mark well before that date.
Opposer’s principal, Joel Gott, testified that opposer has continuously used the
Opposition No. 91197659

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mark GOTT for wine since 2005;14 that since 2006 opposer has sold over 9.5 million
bottles of wine labeled with the marks GOTT and JOEL GOTT with total dollar
sales of over $73 million;15 and that opposer has advertised its GOTT wine through
“press stories,” brochures, and print advertising, as well as through in-store
advertisements such as “shelf talkers,” bottle display cards, tasting notes and
tasting cards.16 Opposer’s GOTT brand wine has also received unsolicited media
attention.17 In addition, opposer’s submission of evidence showing its use of the
mark GOTT on wine labels (authenticated during Mr. Gott’s deposition) further
establishes opposer’s proprietary rights in its mark. Thus, opposer has established
its superior proprietary interest in its mark GOTT before applicant’s filing date of
February 24, 2010.18
We now turn to a consideration of the issue of likelihood of confusion under
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). Opposer must establish
that there is a likelihood of confusion by a preponderance of the evidence.
Applicable Law
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of

14 Gott dep., p. 7.
15 Id., p. 27.
16 Id., exhibit Nos. 8-14.
17 For example, Wine Enthusiast Magazine reviewed a GOTT wine, vintage 2007, in April
2011. Id., exhibit No. 6. A 2006 GOTT vintage was reviewed in Robert Parker’s Wine
Advocate #186 in 2009. Id., exhibit No. 7.
18 Opposer relies on its common law rights and its Supplemental Register registration of the
mark GOTT, but even if opposer were only to have relied on its common law rights, we
would find that it has shown a superior proprietary interest in the mark through its actual
use dating from 2005, its significant sales and advertising and the unsolicited media
attention directed to GOTT brand wine.
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confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). See also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In 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 Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. Comparison of the Marks
In comparing the marks, we must consider the marks in their entireties as to
appearance, sound, connotation and commercial impression, to determine the
similarity or dissimilarity between them. Palm Bay, 73 USPQ2d at 1692. The test,
under the first 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.
See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1721 (Fed. Cir. 2012) (“The proper test is not a side-by-side comparison of the
marks, but instead ‘whether 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.”)
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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). On the other hand, different features may be
analyzed to determine whether the marks are similar. Price Candy Company v.
Gold Medal Candy Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955); In
re National Data Corp., 224 USPQ at 751 (nothing improper in giving more or less
weight to a particular feature of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties). 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).
Bearing these principles in mind, opposer’s marks are GOTT and JOEL
GOTT. Of these, the closest in similarity to applicant’s mark GOTT LIGHT is the
mark GOTT. Because the design features in applicant’s mark are insignificant
background elements, applicant has essentially appropriated registrant’s mark
GOTT without adding any other distinguishing features. Applicant’s mark is a
combination of opposer’s mark GOTT, the additional term LIGHT, and a
background design consisting of a rectangular “carrier” and a wave design. As the
first and most prominent term in applicant’s mark, GOTT is the portion most likely
“to be impressed upon the mind of a purchaser and remembered.” Presto Products,
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Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). See also, Palm
Bay, 73 USPQ2d at 1692. The remaining word, LIGHT, appears in smaller and all
lower-case letters, in contrast to the lettering style of the word “GOTT,” which is
displayed in large letters with the first letter capitalized. Moreover, the term “light”
is merely descriptive of a characteristic of applicant’s goods, either meaning that
they are “low in calories, especially containing less than the usual amount of sugar
or fat,”19 or containing less than the usual amount of minerals and by-products.
Opposer provided copies of several Internet websites wherein the term “light” was
used to describe spring or mineral water. See, e.g., at www.finewaters.com, an
advertisement for Badoit brand water as “a light natural sparkling mineral water”;
at http://www.midasspring.com, an article about Midas water: “It is considered a
‘light’ mineral water”; and at www.qafshtama.com, an advertisement for Qafshtama
brand water as “being a very light water but also with a rich and equilibrate
mineral composition.”20 The term LIGHT is disclaimed in the application and
merely provides descriptive information about applicant’s products. For these
reasons, it is the subordinate portion of the mark, less likely to be perceived as a
distinguishing element of the mark. See In re Dixie Rests., 41 USPQ2d at 1533-34
(disclaimed word “café” is less significant when comparing marks); National Data,
224 USPQ at 752 (“a descriptive component of a mark may be given little weight”).
See also In re Chatam Int'l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir.
2004) (finding JOSE GASPAR GOLD “nearly identical” to GASPAR ALE once the

19 See the excerpt from the Encarta® World English Dictionary (North American Edition
2009), attached to the first Office action dated May 28, 2010, at http://encarta.msn.com.
20 Exhibit Nos. 4, 6, and 7; opposer’s Notice of Reliance.
Opposition No. 91197659

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commercial significance of the descriptive and otherwise non-dominant terms
JOSE, GOLD and ALE are properly discounted).
As for the design element, it does not create a separate commercial
impression but serves merely as a carrier for the words. Further, even if we were to
consider the wave design as creating a separate impression, it is of less significance
than the dominant feature, GOTT; moreover, as a water feature, the ocean wave
imagery reinforces the connection to applicant’s goods as water beverages and
related goods. In the case of marks consisting of words and a design, the words are
normally given greater weight because they would be used by consumers to request
the products. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999);
In re Appetito Provisions Co., 2 USPQ2d 1553, 1554 (TTAB 1987). See also, In re
Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1911 (Fed. Cir. 2012) (“the literal
component of brand names likely will appear alone when used in text and will be
spoken when requested by consumers”) (citing Dakin’s Miniatures, Inc., supra). For
the reasons we have given, that principle is applicable to applicant’s mark.
The marks GOTT and are similar in sight, sound, meaning and
overall commercial impressions. They are similar in sight and sound because of the
shared term GOTT. They are similar in meaning, whether GOTT means “God,” as
argued by applicant (and not disputed by opposer), or would be perceived as a
surname (it is the last name of one of opposer’s witnesses). Given the dominance of
the term GOTT in applicant’s mark, and the fact that it is the entirety of opposer’s
mark, the marks are also similar in their overall commercial impressions.
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Likewise, the marks JOEL GOTT and are similar. Because they each
contain the same term GOTT, they are similar in appearance and pronunciation.
The addition of a first name (JOEL) in opposer’s mark simply emphasizes the fact
that GOTT connotes a person’s name, i.e., an individual whose full name is JOEL
GOTT. The marks also engender similar commercial impressions. The du Pont
factor regarding the similarity of the marks favors a finding of likelihood of
confusion.
B. Relatedness of the Goods; Trade Channels; Classes of Purchasers
We next consider the similarity or dissimilarity, and nature of, the goods
described in the application and registrations, basing our evaluation on the
identifications of the goods as listed therein. Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See
also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002). It is settled that it is not necessary that the respective goods be
identical or even competitive in order to find that they are related for purposes of
our likelihood of confusion analysis. That is, the issue is not whether consumers
would confuse the goods themselves, but rather whether they would be confused as
to the source of the goods. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The
goods need only be sufficiently related that consumers would be likely to assume,
upon encountering the goods under similar marks, that the goods originate from,
are sponsored or authorized by, or are otherwise connected to the same source. See
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In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
Opposer has submitted marketplace evidence to demonstrate that wine and
water are related goods, as well as copies of use-based, third-party registrations
showing that the goods are of the type that would emanate from a single source.
Opposer’s witness, Ms. Hampton21 testified that she purchased several different
brands of water from different winery tasting rooms. Photos of the water bottles
that she purchased are attached as exhibits to her deposition; each one bears the
name of the winery at which wines under the same brands are sold. For example,
Ms. Hampton testified that she purchased a bottle of water while at the tasting
room of the Flora Springs Winery that bears the mark FLORA SPRINGS and that
FLORA SPRINGS wine was also available in the tasting room. She further
testified that she purchased a bottle of water from the Clos du Val Winery in Napa
Valley bearing the mark CLOS DU VAL; while there, she saw wine available for
purchase under the brand name CLOS DU VAL. She “picked up” a bottle of water
from the Alpha Omega winery that bears the marks ALPHA OMEGA and a stylized
“A/O” logo; wine was also for sale at the winery, according to Ms. Hampton’s
testimony, bearing the ALPHA OMEGA mark and the A/O logo. Ms. Hampton also
testified that she picked up a bottle of water from the Rombauer Winery bearing the
label “Rombauer Vineyards, Napa Valley,” and that wine was also available for sale

21 Although the witness identified herself as Kirsten Hampton Brown, she was addressed as
Ms. Hampton throughout the deposition. We have done the same herein.
Opposition No. 91197659

18

at the winery under the ROMBAUER name.22 This testimony suggests that the
goods are related.
The use-based, third-party registrations, although not evidence that the
marks shown therein are in use or that the public is familiar with them,
nonetheless also have probative value to the extent that they serve to suggest that
the goods listed therein are of a kind which may emanate from a single source
under a single mark.23 In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18
(TTAB 2001); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988) aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also, In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785 (TTAB 1993); TMEP § 1207.01(d)(iii) (October 2012).
Overall, the evidence strongly favors a finding of likelihood of confusion with
respect to the du Pont factor regarding the relatedness of the goods.
Regarding the channels of trade and classes of purchasers, because there are
no limitations as to channels of trade or classes of purchasers in the description of
goods of either opposer’s registrations or applicant’s application, it is presumed that
the goods move in all channels of trade normal for those goods, and that they are
available to all classes of purchasers for those goods. See Paula Payne Products Co.
v. Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76 (CCPA 1973); Kalart Co. v.
Camera-Mart, Inc., 258 F.2d 956, 119 USPQ 139 (CCPA 1958); In re Linkvest S.A.,
24 USPQ2d 1716, 1716 (TTAB 1992). Furthermore, opposer has shown that both

22 Photographs of the bottles of water are shown at Exhibit Nos. 1, 5, 7, and 9 to Ms.
Hampton’s testimony deposition. Pictures of the wine bottles, taken from various websites,
were identified by Ms. Hampton as being identical to those she saw at the wineries; they
display labels bearing the same marks as the water bottles.
23 Opposer’s Notice of Reliance, exhibit No. 19 contains copies of third-party registrations.
Opposition No. 91197659

19

parties’ goods are or will be marketed to similar retail markets such as grocery
stores, and “big box” stores. Opposer’s venues include Safeway, Wal-Mart and
Costco;24 Mr. Lozano-Perez, applicant’s witness, stated that applicant intends to sell
its water in supermarkets.25 We recognize that merely because goods can both be
sold in a large store such as a supermarket or box store would not alone be
sufficient to show that consumers would be likely to encounter both in a shopping
trip, or assume a common source merely because both types of goods can be found in
such a store. However, the evidence shows that the goods can be sold in the same
areas of these stores. Thus, applicant’s argument that wine is sold in “the
appropriate liquor sales section of a retail outlet” while water is sold in a different
section of the store is contradicted by the evidence provided by opposer; in addition
to Ms. Hampton’s testimony, Mr. Gott testified that he conducts market visits to
retailers where opposer’s wine is sold, and that he has seen water sold in the same
section of the store as where opposer’s wine is sold.26 Opposer has also provided
copies of the online beverage menus from restaurant websites, showing that
restaurants offer both water and wine for sale in the same menu section.27 Other
website printouts submitted by opposer are for online recipes describing how to

24 Gott dep., pp. 25-26.
25 Lozano-Perez dep., p. 30. Portion submitted by opposer.
26 Gott dep., p. 27.
27 For example, Lucky Lou’s “Drink List” includes wines and bottled water--at
www.luckylousbarandgrillcom; the Crab Shell Seafood Restaurant’s beverage menu offers
various wines, beers, and waters--at www.crabshell.com; and Renee’s Place offers a full
listing of wines, beers, organic teas, and bottled waters--at www.reneesplacerestaurant.com.
Attached as exhibit Nos. 25, 27, and 28 to opposer’s Notice of Reliance.
Opposit

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