John Taddeo

Trademark Trial and Appeal Board

Oct 19, 2006

No. 76508763 (T.T.A.B. Oct. 19, 2006)

Hearing: Mailed:
Sept. 7, 2006 Oct. 19, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re John Taddeo
________

Serial No. 76508763
_______

Ronald E. Shapiro of Miles & Stockbridge PC for John
Taddeo.

Stacy B. Wahlberg, Trademark Examining Attorney, Law Office
113 (Odette Bonnet, Managing Attorney).
_______

Before Seeherman, Grendel and Rogers, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark VOODOO TIKI (in standard character form) for
goods identified in the application as “tequila.”1

1 Serial No. 76508763, filed April 22, 2003. The application is
based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a), and March 27, 2003 is alleged to be the date of
first use of the mark anywhere and the date of first use of the
mark in commerce. As originally filed, the application sought
registration of the mark VOODO TIKI TEQUILA, with a disclaimer of
TEQUILA. During prosecution, the mark was amended first to
VOODOO TIKI TEQUILA, and then amended again to VOODOO TIKI.
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 76508763
2
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that, as applied to applicant’s goods, the mark
so resembles each of two previously-registered marks (owned
by different owners) as to be likely to cause confusion, to
cause mistake, or to deceive. Trademark Act Section 2(d),
15 U.S.C. §1052(d).
The first cited registration is Registration No.
2401153 (the ‘153 registration), which is of the mark DIXIE
CRIMSON VOODOO ALE (in standard character form; CRIMSON and
ALE disclaimed) for goods identified as “beer.”2
The second cited registration is Registration No.
2703243 (the ‘243 registration), which is of the mark
REDRUM VOODOO SPICED RUM (in standard character form;
SPICED RUM disclaimed) for goods identified as “distilled
spirits, flavored rum.”3
Both applicant and the Trademark Examining Attorney
submitted evidence, and both filed main appeal briefs. An
oral hearing was held. We affirm the refusal to register
as to both of the cited registrations.

2 Issued November 7, 2000. This registration is owned by Dixie
Brewing Company, Inc.

3 Issued April 1, 2003. This registration is owned by Three-D
Spirits, Inc.
Ser. No. 76508763
3
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 (the du Pont factors). 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).
We turn initially to the second du Pont factor, i.e.,
the similarity or dissimilarity of the goods. We find that
applicant’s “tequila” is related and similar to the “beer”
identified in the ‘153 registration, and to the “distilled
spirits, flavored rum” identified in the ‘243 registration.
Indeed, applicant’s “tequila” is encompassed within, and
thus legally identical to, the broadly worded “distilled
spirits” identified in the ‘243 registration. The
Trademark Examining Attorney has submitted use-based third-
party registrations for marks covering both tequila and
beer, and both tequila and rum. Although such
registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them, they
Ser. No. 76508763
4
nonetheless 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. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993); and In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467 (TTAB 1988). Also, the Trademark Examining
Attorney has submitted excerpts of stories obtained from
the NEXIS database and from the Internet showing that both
tequila and rum and tequila and beer are complementary
goods which can be used together as ingredients in mixed
drinks. Finally, we note that the Board and the courts
have repeatedly found that different types of alcoholic
beverages are related products for purposes of the second
du Pont factor. See, e.g., In re Chatam International
Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004)(beer
and tequila); In re Majestic Distilling Co., supra (malt
liquor and tequila); and Somerset Distilling Inc. v.
Speymalt Whiskey Distributors Ltd., 14 USPQ2d 1539 (TTAB
1989)(scotch whiskey and distilled gin and vodka).
For these reasons, we find that applicant’s goods are
similar and related to the goods in each of the cited
registrations, and that the second du Pont factor therefore
weighs in favor of a finding of likelihood of confusion in
Ser. No. 76508763
5
each instance. We note that applicant has not contended
otherwise.
The third du Pont factor requires us to determine the
similarity or dissimilarity of the trade channels for the
respective goods. We find that applicant’s “tequila,” and
the “beer” and “distilled spirits, flavored rum” identified
in the respective cited registrations, are or could be
marketed in the same trade channels and to the same classes
of purchasers. The Trademark Examining Attorney has
submitted printouts from the Internet websites of several
restaurants and liquor retailers which show that these
products are marketed together. Such evidence is probative
evidence of likelihood of confusion under the third du Pont
factor. See In re Majestic Distilling Co., supra. We thus
find that the third du Pont factor weighs in favor of a
finding of likelihood of confusion as to each of the cited
registrations. Again, applicant has not contended
otherwise.
Under the fourth du Pont factor, we find that the
alcoholic beverage products identified in applicant’s
application and in each of the cited registrations are
ordinary consumer goods which are purchased by ordinary
consumers without any special care or sophistication.
Applicant has not contended otherwise. Therefore, the
Ser. No. 76508763
6
fourth du Pont factor weighs in favor of a finding of
likelihood of confusion as to each of the cited
registrations.
The sixth du Pont factor requires us to consider the
number and nature of similar marks in use on similar goods.
Applicant has submitted printouts of approximately fifteen
third-party registrations of marks which include the term
VOODOO, but the goods and services identified in those
registrations are far afield from alcoholic beverages,4 and
they thus are not probative evidence of the weakness of
VOODOO as a mark for alcoholic beverages. Moreover, such
third-party registrations are not probative evidence of
third-party use under the sixth du Pont factor. See Olde
Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d
1542 (Fed. Cir. 1992). Applicant also has submitted
Internet evidence showing that there are numerous mixed
drinks with the word “voodoo” in their names, such as
“Voodoo Sunrise,” “Voodoo Doll,” “Voodoo Tea,” “Voodoo
Lady,” “Big Bad Voodoo Kooler,” “Vampire Voodoo,” “Green
Voodoo” and “Neon Voodoo.” Even if we were to assume that

4 Only two of the third-party registrations of VOODOO marks cover
goods which are remotely related to the goods at issue in this
case. Registration No. 2286729 is of the mark VOODOO RAIN for
“non-alcoholic drinks, namely, herbal-enhanced non-carbonated
soft drinks.” Registration No. 2578196 is of the mark VOODOO
QUEEN OLD NEW ORLEANS for “coffee; ready to drink coffee; whole
Ser. No. 76508763
7
these drink names are familiar to consumers, however, we
find that they are not evidence, under the sixth du Pont
factor, of third-party trademark use of VOODOO for
alcoholic beverage products, per se. On this record, the
only VOODOO trademarks associated with alcoholic beverage
products are applicant’s and those of the cited
registrations. We certainly cannot conclude that the use
of VOODOO in marks for alcoholic beverages is so widespread
that purchasers have become conditioned to distinguish
between such marks by looking to their other elements. See
Palm Bay Imports, Inc., supra. For these reasons, we find
that the sixth du Pont factor is neutral in this case, or
at best weighs only slightly in applicant’s favor.
We turn finally to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. Palm Bay Imports, Inc., supra. 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

coffee beans; medium and dark roasted coffee beans; ground
coffee.”
Ser. No. 76508763
8
that confusion as to the source of the goods offered under
the respective marks is likely to result. 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). Furthermore, although the marks at
issue must be considered in their entireties, it is well-
settled that one feature of a mark may be more significant
than another, and it is not improper to give more weight to
this dominant feature in determining the commercial
impression created by the mark. See In re Chatam
International Inc., supra; In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985).
We find, initially, that the word VOODOO is the
dominant feature in the commercial impression created by
each of the cited registered marks, DIXIE CRIMSON VOODOO
ALE and REDRUM VOODOO SPICED RUM. Applicant itself
acknowledges that “[i]n the mark DIXIE CRIMSON VOODOO ALE,
‘DIXIE’ refers to the southern states of the U.S. and
‘CRIMSON ALE’ describes the color and nature of the goods.
In the mark REDRUM VOODOO SPICED RUM, ‘REDRUM’ describes
the color of the goods, and ‘SPICED RUM’ describes the
flavor and nature of the goods.” (Applicant’s brief at 1.)
The words CRIMSON and ALE and SPICED RUM indeed are
Ser. No. 76508763
9
descriptive of the respective goods, and they are
disclaimed in the registrations.
In contrast, “VOODOO” is an arbitrary term, or at most
a slightly suggestive term, as applied to the alcoholic
beverage products identified in the respective
registrations. Applicant argues to the contrary that
VOODOO is a “highly suggestive term,” noting that the word
connotes “black magic, conjuring and witchcraft”5 and that
“when this term is used in connection with alcoholic
beverages, it is used to suggest magical properties or
effects.” (Applicant’s brief at 2.) In support of this
contention, applicant has submitted a printout from an
Internet website advertising the ‘153 registrant’s goods,
which refers to registrant’s BLACKENED VOODOO beer as
“dark, mysterious,” and to registrant’s CRIMSON VOODOO beer

5 The record includes dictionary definitions of “voodoo.” The
American Heritage Dictionary of the English Language (4th ed.
2000) defines “voodoo” as, inter alia, “a religion syncretized
from Roman Catholic ritual elements and the animism and magic of
slaves from West Africa, in which a supreme God rules a large
pantheon of local and tutelary deities, deified ancestors, and
saints, who communicate with believers in dreams, trances, and
ritual possessions,” and as “a charm, fetish, spell, or curse
holding magic power for adherents.” Webster’s Third New
International Dictionary of the English Language (Unabridged)
defines “voodoo” as “voodooism,” which itself is defined, inter
alia, as “a religion originating in Africa as a form of ancestor
worship, practiced chiefly by Negroes of Haiti and to some extent
other West Indian islands and the U.S., and characterized by
propitiatory rites and use of the trance as a means of
communicating with animistic deities,” and as “the practice of
black magic.”

Ser. No. 76508763
10
as “true to the spirits of New Orleans.” Applicant also
relies on Internet evidence, discussed previously, showing
that there are numerous mixed drinks with the word “voodoo”
in their names.
We cannot agree that this evidence establishes that
VOODOO is “highly suggestive” as applied to alcoholic
beverages. Contrary to applicant’s contention, beer and
rum (and tequila) cannot readily be said to have “magical
properties or effects” except in the most fanciful sense.
Nor is there any evidence that alcoholic beverages are used
in conjunction with the practice of voodoo. We find that
the term VOODOO therefore is arbitrary or, at best, only
slightly and whimsically suggestive of the goods. The fact
that “voodoo” appears in the names of various mixed drinks
establishes that it is a popular motif for alcoholic
beverage names, but it does not establish that the term is
in any way descriptive or highly suggestive as applied to
such drinks. Thus, although “voodoo” may have the
connotation of “black magic, conjuring or witchcraft” as
applicant contends, that connotation is so tenuous as
applied to alcoholic beverages that the term can be
considered, as stated above, only slightly and whimsically
suggestive of such goods. Further, as noted previously,
with respect to the two cited marks the element VOODOO is
Ser. No. 76508763
11
clearly the dominant element of these marks, and we
therefore accord more weight to this term. See In re
Chatam International Inc., supra, and In re National Data
Corp., supra.
Giving due weight to the dominance of VOODOO in the
commercial impression created by each of the cited
registered marks, we find that applicant’s mark VOODOO TIKI
is similar to each of the cited registered marks because it
too includes the arbitrary or slightly suggestive term
VOODOO as a prominent if not dominant feature in its
commercial impression. The word VOODOO looks the same,
sounds the same, and means the same thing in each of the
marks. There are obvious points of dissimilarity between
applicant’s mark and each of the cited registered marks in
terms of appearance, sound and meaning, i.e., the presence
of the word TIKI in applicant’s mark and the presence of
the additional words DIXIE, CRIMSON and ALE in the ‘153
registration and the additional words REDRUM and SPICED ALE
in the ‘243 registration. However, we find that the basic
similarity in the respective marks’ overall commercial
impressions which results from the presence of the term
VOODOO in each mark outweighs these points of dissimilarity
in the marks. Purchasers who are familiar with beer sold
under the mark DIXIE CRIMSON VOODOO ALE are likely to
Ser. No. 76508763
12
assume, upon seeing VOODOO TIKI for tequila, that these
alcoholic beverages originate from, or are sponsored by, a
single source. Similarly, consumers who know of REDRUM
VOODOO SPICED RUM for distilled spirits and flavored rum
are likely to assume, upon encountering VOODOO TIKI
tequila, that the goods emanate from a single source.
We recognize that both of the cited registrations,
which issued to separate entities, contain the word VOODOO,
and that this is the only word common to all three marks.
In fact, applicant argues that the two cited registered
marks, DIXIE CRIMSON VOODOO ALE and REDRUM VOODOO SPICED
RUM, are more similar to each other than either is to
applicant’s mark VOODOO TIKI, and that if the two cited
marks can coexist on the register, applicant’s mark
likewise should be registered. We are not persuaded. It
is settled that the Board is not bound by prior decisions
of examining attorneys, and that each case must be decided
on its own merits and on the basis of its own record, in
accordance with relevant statutory, regulatory and
decisional authority. See, e.g., In re International
Flavors & Fragrances Inc., 183 F.3d 1361, 51 USPQ2d 1513
(Fed. Cir. 1999.) More specifically, we are not bound by
the decision of the examining attorney who approved
registration of the REDRUM VOODOO SPICED RUM mark
Ser. No. 76508763
13
notwithstanding the preexistence of the DIXIE CRIMSON
VOODOO ALE registration. Our mandate is to evaluate the
likelihood of confusion between applicant’s mark and each
of the cited marks, and if we determine that such confusion
is likely, we must affirm the refusal of registration. See
In re Thomas, 79 USPQ2d 1021 (TTAB 2006); In re Wilson, 57
USPQ2d 1863 (TTAB 2001); and In re Perez, 21 USPQ2d 1075
(TTAB 1991).
We find that applicant’s mark is similar to each of
the cited registered marks, and that the first du Pont
factor weighs in favor of a finding of likelihood of
confusion in each case.
For the reasons discussed above, and considering all
of the evidence of record as it pertains to the du Pont
factors, we conclude that a likelihood of confusion exists
as between applicant’s mark and each of the cited
registered marks. To the extent that any doubts might
exist as to the correctness of this conclusion, we resolve
such doubts against applicant. See In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper
Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir.
1988); and In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusals to register are affirmed.