Justin Vineyards & Winery LLCv.Crooked Stave, LLC

Trademark Trial and Appeal Board

Jun 26, 2018

No. 91229132 (T.T.A.B. Jun. 26, 2018)

Mailed: June 26, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Justin Vineyards & Winery LLC
v.
Crooked Stave, LLC
_____

Opposition No. 91229132
_____

J. P. Pecht, Michael M. Vasseghi, and Danielle M. Criona of Roll Law Group P.C.,
for Justin Vineyards & Winery LLC.

H. Michael Drumm, Trent Rinebarger, and Derek E. Long of Drumm Law, LLC,
for Crooked Stave, LLC.
_____

Before Cataldo, Hightower, and Pologeorgis,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant Crooked Stave, LLC seeks registration on the Principal Register of the
mark HOP SAVANT, in standard characters and with “HOP” disclaimed, for “beer”
in International Class 32.1 Opposer Justin Vineyards & Winery LLC opposes
registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), asserting priority
and a likelihood of confusion with its mark SAVANT, registered on the Principal

1 Application Serial No. 86794630, filed October 21, 2015, alleging May 13, 2013 as the date
of first use and use in commerce.
This Opinion Is Not a
Precedent of the TTAB
Opposition No. 91229132
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Register in standard characters for “wine” in International Class 33.2 We dismiss the
opposition.
I. Evidentiary Stipulations
The parties entered into, and the Board approved, two stipulations concerning the
introduction of evidence at trial and evidentiary objections. 5-6, 8, and 13 TTABVUE.
The stipulation for the introduction of evidence comprised two major provisions:
• Documents produced in response to requests for production or
interrogatories are deemed authentic business records. Objections to such
documents on the grounds of authenticity and genuineness are waived. All
other objections are preserved.
• Testimony may be introduced by sworn declaration, with exhibits, following
a procedure in which the non-offering party submits a list of written
questions to the declarant by way of cross-examination. The parties retain
the right to lodge written objections to all or part of a testimony declaration.
Effective January 14, 2017, the Trademark Rules affecting Board practice were
amended to enhance the efficiency of inter partes proceedings, including by
permitting parties to submit testimony in the form of an affidavit or declaration,
subject to the right of any adverse party to elect to take and bear the expense of cross-
examination by oral testimony. Trademark Rule 2.123, 37 C.F.R. § 2.123. In this case,
the parties opted instead for cross-examination of affiants on written questions. As
discussed after the 2017 rules amendments in TPI Holdings, Inc. v.
TrailerTrader.com, LLC, 126 USPQ2d 1409, 1412 (TTAB 2018):
the Board recognizes that there certainly remains room for
parties to agree to go beyond the rules, and to craft an ACR
[Accelerated Case Resolution] stipulation that suits their
interests. (citation omitted). Indeed, while the
circumstances of each inter partes proceeding are unique,

2 Registration No. 3231562, issued April 17, 2007; renewed.
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parties are encouraged to continue to explore whether ACR
is appropriate given those circumstances and, if so,
attempt to stipulate to provisions that suit the parties’
particular interests and accelerates the timing for a Board
final decision in the matter.3
II. Record and Evidentiary Objections
The record comprises the pleadings and, without any action by the parties, the file
of the involved application. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).
Opposer submitted the following evidence:
• Affidavit Testimony of Clarence Chia, Opposer’s vice president of
marketing, with exhibits A through N (15 TTABVUE);4 and
• A Notice of Reliance submitting a status and title copy of Opposer’s pleaded
Registration No. 3231562 (9 TTABVUE). See Trademark Rule 2.122(d)(2),
37 C.F.R. § 2.122(d)(2).
Applicant submitted the testimonial Affidavit of Chad Yakobson, its owner and
brewmaster, with Exhibits A through D (16 TTABVUE).
In an appendix to its reply brief, Opposer asserted objections to portions of the
Yakobson Affidavit. Objections raised for the first time in a reply brief are untimely
because they effectively foreclose the adverse party from responding. Productos
Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 USPQ2d 1921, 1928
(TTAB 2011). There is no indication that Opposer’s objections were raised within five
days after the affidavit was filed, as required by the parties’ stipulation regarding
evidentiary objections. 8 TTABVUE 2 at ¶ 3. Even if they were, objections raised at

3 The Board commends the parties for employing this ACR-type efficiency in this case. See
Trademark Board Manual of Procedure (TBMP) § 705 (June 2017) and authority cited
therein.
4 The parties stipulated to submission of this substitute affidavit testimony, which the Board
accepted into evidence. 15 and 17 TTABVUE.
Opposition No. 91229132
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trial also are waived if a party does not maintain them until its reply brief. Kohler
Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1104 (TTAB 2007). We deem
Opposer’s objections waived.
In an appendix to its brief, Applicant objected to ¶¶ 16, 37, 38 and 41 of the Chia
Affidavit, as well as the first sentence of ¶ 17, “based on lack of personal knowledge
and speculation as to the channels of distribution of Applicant’s goods, and the class
of consumers of Applicant’s goods.” Applicant’s Brief at 23, 19 TTABVUE 30. Because
Opposer did not respond to any of Applicant’s objections, we grant the objections to
¶¶ 16 and 41 the first sentence of ¶ 17 as conceded. We overrule Applicant’s objections
to ¶¶ 37 and 38, in which Opposer answered written questions nine and ten from
Applicant, as follows: “What are the trade channels in which Applicant sells its Hop
Savant brand beer?” and “When has Applicant used each of the trade channels in
which Applicant sells its Hop Savant brand beer?” Because Applicant specifically
elicited this testimony concerning Applicant’s own trade channels from Opposer’s
witness, we consider Mr. Chia’s responses for any probative value they may have.5
Applicant also objects to Exhibits E, F, G, and H to the Chia Affidavit as “hearsay
within hearsay, without an exception to F.R.E. 801 and 802.” Applicant’s Brief at 23,
19 TTABVUE 30. These exhibits are Internet printouts from Opposer’s Facebook
page and third-party wine review websites robertparker.com, winemag.com, and
winespectator.com. 15 TTABVUE 35-75. Each printout displays sufficient identifying
information (i.e., URL and date printed) and is admissible either as a testimony

5 Neither the admission nor the exclusion of any evidence challenged by the parties changes
the outcome of this proceeding.
Opposition No. 91229132
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exhibit or by notice of reliance. “Although they do not prove the truth of the
statements made therein, the printouts are acceptable to show that the statements
were made or the information was reported in the webpages.” Swiss Watch Int’l Inc.
v. Fed. of the Swiss Watch Indus., 101 USPQ2d 1731, 1735 (TTAB 2012) (citing Safer
Inc. v. OMS Invests. Inc., 94 USPQ2d 1031 (TTAB 2010)). We therefore overrule this
objection.
III. Opposer’s Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every
inter partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270,
111 USPQ2d 1058, 1062 (Fed. Cir. 2014); see also, e.g., Bell’s Brewery, Inc. v.
Innovation Brewing, 125 USPQ2d 1340, 1344 (TTAB 2017). Opposer’s standing to
oppose registration of Applicant’s mark is established by its pleaded registration,
which the record shows to be valid and subsisting, and owned by Opposer. See, e.g.,
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000); Otter Prods. LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1254 (TTAB 2012).
In addition, because Opposer’s pleaded registration is of record and Applicant did not
counterclaim to cancel it, priority is not an issue with respect to wine, the goods
covered by Opposer’s registration. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280,
1286 (TTAB 1998) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974)).
IV. Likelihood of Confusion
We assess all probative facts in evidence that are relevant to the factors bearing
on the issue of likelihood of confusion. In re E.I. du Pont de Nemours & Co., 476 F.2d
Opposition No. 91229132
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1357, 177 USPQ 563, 567 (CCPA 1973); see also In re Majestic Distilling Co., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Opposer bears the burden of proving
its claim by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848.
A. Strength of Opposer’s Mark
We begin by evaluating the strength of Opposer’s mark and the scope of protection
to which it is entitled. The fifth DuPont factor is the fame of the prior mark, and the
sixth factor is the number and nature of similar marks in use for similar goods or
services. DuPont, 177 USPQ at 567. In determining strength of a mark, we consider
both inherent strength, based on the nature of the mark itself, and commercial
strength or recognition. Bell’s Brewery, 125 USPQ2d at 1345; see also In re
Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010)
(“A mark’s strength is measured both by its conceptual strength (distinctiveness) and
its marketplace strength (secondary meaning).”). Commercial strength may be
measured indirectly, by volume of sales and advertising expenditures and factors
such as length of use of the mark, widespread critical assessments, notice by
independent sources of the goods identified by the mark, and general reputation of
the goods. Weider Publ’ns, LLC v. D&D Beauty Care Co., 109 USPQ2d 1347, 1354
(TTAB 2014).
Concerning conceptual strength, we find that Opposer’s mark SAVANT is
arbitrary in connection with wine and therefore inherently distinctive. As for
marketplace strength, Opposer submitted testimony that its mark has been in use
since 2006 and that it has spent more than $8 million advertising and marketing its
wine portfolio since 2011, although that figure includes wine sold under other marks.
Opposition No. 91229132
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See Chia Affidavit at ¶¶ 19, 24, 42, 15 TTABVUE 7, 8, 12. In addition to its own
advertising on Facebook, Opposer submitted the printouts from three third-party
wine review websites to which we have referred supra, each of which displays
Opposer’s SAVANT wine. Exhibits E, F, and G to Chia Affidavit (from
robertparker.com, winemag.com, and winespectator.com), 15 TTABVUE 35-59.
Mr. Chia testified that Opposer “regularly monitors the market to ensure that
third parties do not utilize marks [Opposer] considers to be confusingly similar to its
trademarks. I am aware of several third party marks that we are currently taking
action against, in an effort to stop their use.” Chia Affidavit at ¶ 28, 15 TTABVUE 9.
Mr. Chia identified the third-party marks for wine and beer that Opposer was
targeting as SAVANT IPA, DIVISION CHENIN BLANC SAVANT, SAVANT
BEERSEL/SAVANT BLANC, and SAVANT RIESLING/SAVANT RED. Id. Opposer
also submitted copies of cease-and-desist letters and emails it sent between 2012 and
2017 to the entities using those marks and to three additional third-party
winemakers using marks comprising SAVANT or arguably similar terms in
association with their goods. Chia Affidavit at ¶ 27 & Exhibit L, 15 TTABVUE 9, 98-
113. The apparent result of one of these communications is reflected on a page of the
Cévant Cellars website stating in part the following:
The winery was first named Savant Cellars. However, we
learned early in 2012 that Justin Winery produces a red
wine that is called SAVANT. The people at Justin Winery
asked us to alter our name in order to avoid any confusion
in the market place. Our winery adopted the same name
but with a French accent which maintains our wish to
honor the genius of wine and differentiates the two
offerings for the market.
Opposition No. 91229132
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Chia Affidavit at Question 75, ¶ 103 & Exhibit N, 15 TTABVUE 23, 119. Mr. Chia
testified on cross-examination that one of the other marks (SAVALI) has proceeded
to registration (Chia Affidavit at Questions 79-80 & ¶¶ 107-08, 15 TTABVUE 24),
while another mark (LADY SAVANT) has been registered for advertising and
marketing services, not wine (id. at Questions 81-82 & ¶¶ 109-10, 15 TTABVUE 24-
25).
In light of the small number of the third-party uses of record and Opposer’s active
policing efforts, we do not find the evidence sufficient to establish that the term
SAVANT is in such widespread use that consumers have come to distinguish marks
containing that term based on minute differences. See In re i.am.symbolic, LLC, 866
F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (stating that evidence of third-
party use for similar goods “falls short of the ‘ubiquitous’ or ‘considerable’ use of the
mark components present in [applicant’s] cited cases”); cf. Jack Wolfskin Ausrustung
Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363,
116 USPQ2d 1129, 1136 (Fed. Cir. 2015) (discussing “voluminous evidence” of
registration and use of paw print design elements); Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (referring to
evidence of “a fair number” of third-party marks).
Considering the record as a whole, including evidence pertaining to both
conceptual and commercial strength, we find that Opposer’s mark is inherently
distinctive and has achieved at least some marketplace recognition during its nearly
twelve years of use. The record does not establish that the mark SAVANT is entitled
to only a narrowed scope of protection due to third-party use of confusingly similar
Opposition No. 91229132
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marks for similar or related goods. We therefore accord Opposer’s mark the normal
scope of protection to which inherently distinctive marks are entitled. See Joseph
Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733,
1734 (Fed. Cir. 2017) (stating that likelihood of confusion fame varies along a
spectrum from very strong to very weak).
B. Similarity of the Marks
The first DuPont factor is the similarity or dissimilarity of the parties’ marks. In
a likelihood of confusion analysis, we compare the marks in their entireties for
similarities and dissimilarities in appearance, sound, connotation and commercial
impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160 (Fed. Cir. 2014). “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.” Coach Servs. Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted).
Applicant’s mark HOP SAVANT, in which HOP is disclaimed, incorporates the
entirety of Opposer’s distinctive mark SAVANT and merely adds a word that is highly
descriptive in association with beer. See Yakobson Affidavit at 5, Responses to
Questions 4 and 5, 16 TTABVUE 6 (“Hops are used extensively throughout the entire
production of Hop Savant and the cornerstone of the beer itself, including on the
label.”). While there is no rule that likelihood of confusion automatically applies
where one mark encompasses another, in this case, as in many others, the fact that
Opposer’s entire mark is incorporated in Applicant’s mark increases the similarity
Opposition No. 91229132
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between the two. See, e.g., Wella Corp. v. California Concept Corp., 558 F.2d 1019,
194 USPQ 419, 422 (CCPA 1977) (finding CALIFORNIA CONCEPT marks
substantially similar to prior mark CONCEPT); In re Toshiba Med. Sys. Corp., 91
USPQ2d 1266, 1271 (TTAB 2009) (finding applicant’s mark VANTAGE TITAN
confusingly similar to registered mark TITAN); In re U.S. Shoe Corp., 229 USPQ 707,
709 (TTAB 1985) (finding applicant’s CAREER IMAGE marks similar to registered
mark CREST CAREER IMAGES).
The presence of HOP as the leading term in Applicant’s mark distinguishes it
somewhat visually and aurally from Opposer’s mark. This point of distinction,
however, does not significantly diminish the strong similarities in connotation and
overall commercial impression of these two marks. We find that the first DuPont
factor weighs in favor of a finding that confusion is likely.
C. Similarity of the Goods
We next consider the second DuPont factor, the similarity or dissimilarity of the
parties’ goods. In any likelihood of confusion analysis, the similarities between the
goods or services and the similarities between the marks – the first two DuPont
factors – are key considerations. See 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.”); see also Oakville Hills Cellar, Inc. v.
Georgallis Holdings, LLC, 826 F.3d 1376, 119 USPQ2d 1286, 1288 (Fed. Cir. 2016)
(“The likelihood of confusion analysis considers all DuPont factors for which there is
record evidence but ‘may focus . . . on dispositive factors, such as similarity of the
Opposition No. 91229132
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marks and relatedness of the goods.’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc.,
303 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). Our decision is based on the
identification of goods as set forth in the application and Opposer’s pleaded
registration. Stone Lion, 110 USPQ2d at 1162.
Likelihood of confusion is a question of law based on underlying findings of fact.
E.g., Oakville Hills Cellar, 119 USPQ2d at 1288. Under DuPont, it is Opposer’s
burden to prove that beer and wine are similar or related goods. This is a separate,
and critical, inquiry in a likelihood of confusion analysis, distinct from the DuPont
factors assessing similarity of trade channels and classes of consumers.
Opposer submitted no evidence that beer and wine are similar or related. Instead,
Opposer relies on decisions by the Board and the Court of Appeals for the Federal
Circuit, our primary reviewing court, in which beer and wine have been found to be
related. Applicant counters by citing cases in which confusion was not found between
alcoholic beverages, and argues that beer and wine “are distinct product segments in
the overall alcoholic beverages market.” Applicant’s Brief at 13, 19 TTABVUE 20.
“There is no per se rule that holds that all alcoholic beverages are related.” In re
White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009). Even though beer
and wine have been found related in other cases, we must decide the outcome of this
proceeding based on its own facts and evidence. The decisions cited by Opposer are
not to the contrary. In Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d
1816 (TTAB 2015), for example, the Board acknowledged that “beer and wine (among
other alcoholic beverages) certainly can be, and frequently are, found to be related,”
Opposition No. 91229132
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but stated in the same sentence that “each case must be decided on its own record.”
Id. at 1827.
Parfums de Coeur Ltd. v. Lazarus, 83 USPQ2d 1012 (TTAB 2007), is instructive.
There, the opposer argued that the applicant’s animated television series was related
to the opposer’s fragrance products “because the titles of television programs are used
as trademarks for merchandising products,” citing decisions in other cases. Id. at
1018. The Board rejected this argument:
It would appear to be opposer’s position that once television
services and goods have been found to be related in one
case, they must be deemed related in all cases, no matter
what the circumstances of the particular case. However, as
has been frequently stated, each trademark case must be
decided on its own merits. While we may look to other cases
for guidance, these cases do not present hard and fast rules
as to when confusion is likely and when it is not. Thus,
there is no general rule that television programs and
products are related goods and services despite the fact
that likelihood of confusion has been found in some cases
involving marks used for a television series and for goods.
It is still opposer’s burden to show that its goods are related
to the applicant’s services.
Id. at 1018-19; see also, e.g., Stocker v. Gen. Conf. Corp. of Seventh-day Adventists, 39
USPQ2d 1385, 1398 (TTAB 1996) (“As often stated, each case must be decided on its
own facts. In reaching our decision we are, of course, confined to the record introduced
by the parties.”).
Moreover, the cases decided within the past quarter-century on which Opposer
relies credit at least some evidence that beer and wine are related, rather than merely
bootstrapping such a finding from prior decisions. Anheuser-Busch, 115 USPQ2d at
1827 (finding that six third-party registrations in which the same mark was
Opposition No. 91229132
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registered for both beer and wine provided some evidence that the goods may
emanate from a single source); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1265-
66 (TTAB 2011) (relying on some 20 third-party registrations listing wine and beer
and webpages showing that companies make and sell both types of goods, finding:
“The third-party registration evidence and the website evidence together amply
demonstrate the relatedness of beer and wine, and show that consumers, if they
encountered both goods sold under confusingly similar marks, are likely to believe
that they emanate from the same source.”).
Here, in contrast, there is no evidence supporting a conclusion that beer and wine
are sufficiently related that consumers expect them to emanate from the same source
under the same mark. Based on this record, the second DuPont factor does not
support a finding that confusion is likely.
The Federal Circuit has instructed that a single DuPont factor may be dispositive
in any particular case. Kellogg Co. v. Pack’em Enters. Inc., 951 F.2d 330, 21 USPQ2d
1142, 1145 (Fed. Cir. 1991) (“DuPont recognized that in determining likelihood of
confusion ‘each case must be decided on its own facts.’ DuPont, 476 F.2d at 1361, 177
USPQ at 567. It also recognized that ‘each [of the thirteen elements] may from case
to case play a dominant role.’ Id.”). We find the second DuPont factor dispositive here.
See, e.g., North Face Apparel Corp. v. Sanyang Indus. Co., 116 USPQ2d 1217, 1230-
34 (TTAB 2015) (dismissing opposition as to classes of goods and services for which
opposer did not establish relatedness to its goods); Itel Corp. v. Ainslie, 8 USPQ2d
1168, 1171 (TTAB 1988) (dismissing opposition in which marks were identical but
opposer failed to prove relatedness of the goods and services). Because Opposer has
Opposition No. 91229132
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not met its burden to establish that its goods are similar or related to Applicant’s
goods, we dismiss the opposition.
Although we have found the second DuPont factor dispositive, for the sake of
completeness, we briefly address the remaining factors for which the parties
submitted evidence or argument.
D. Similarity of the Trade Channels
The third DuPont factor assesses the similarity of the parties’ established, likely-
to-continue trade channels. Applicant admits that: “In this case, the parties’ goods
both are distributed in restaurants, convenience stores, grocery stores, bars, and
liquor stores.” Applicant’s Brief at 15, 19 TTABVUE 22. Applicant argues, however,
that the respective goods are distributed in different forms (e.g., kegs and cans for
beer vs. bottles and glasses for wine), and that they are sold “on different shelves and
different sections or departments of liquor stores.” Id. Even so, Opposer submitted
screen captures from three third-party websites offering wine, beer, and liquor
(applejack.com, klwines.com, and totalwine.com) demonstrating that a search for
SAVANT on each site returns both Opposer’s wine and Applicant’s beer for purchase.
Exhibit M to Chia Affidavit, 15 TTABVUE 114-17. The record establishes that the
parties’ trade channels overlap, even if the goods are sold on different shelves or in
different sections of the same brick-and-mortar liquor stores. We find that the third
DuPont factor weighs in favor of a likelihood of confusion.
E. Inexpensive Goods Subject To Impulse Purchase
The fourth DuPont factor is the conditions under which and buyers to whom sales
are made. Applicant argues that the parties’ products are relatively expensive and
Opposition No. 91229132
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sold to sophisticated consumers, and the evidence indicates that the parties’ actual
goods indeed are comparatively costly. Opposer’s SAVANT wines are priced at $36.99
to $123 per bottle, while Applicant’s HOP SAVANT beer costs $7.99 to $8.99 per
bottle and $9.99 per four-pack cans retail, $45 per case and $75-$165 per keg
wholesale. See Yakobson Affidavit at ¶ 19, 16 TTABVUE 4; Exhibits K and M to Chia
Affidavit, 15 TTABVUE 88, 116-17.
Because the descriptions of goods are not restricted to premium products but
simply “beer” and “wine,” we must assume that both identifications include beer and
wine, respectively, of all kinds and price points offered to the full range of usual
consumers for such goods. Stone Lion, 110 USPQ2d at 1162 (stating that
registrability must be decided based on the identification of goods “‘regardless of what
the record may reveal as to the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to which sales of the goods are
directed’”) (quoting Octocom Sys., Inc. v. Houston Comps. Servs. Inc., 918 F.2d 937,
16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Hughes Furn. Indus., Inc., 114 USPQ2d
1134, 1137 (TTAB 2015). This includes inexpensive beer and wine subject to impulse
purchase. “When products are relatively low-priced and subject to impulse buying,
the risk of likelihood of confusion is increased because purchasers of such products
are held to a lesser standard of purchasing care.” Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1899 (Fed. Cir. 2000); In re Bay State Brewing Co., 117
USPQ2d 1958, 1960 (TTAB 2016). We find that the fourth DuPont factor weighs in
favor of a finding of likely confusion.
Opposition No. 91229132
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F. Absence of Evidence of Actual Confusion
Finally, we assess Applicant’s argument under the eighth DuPont factor, the
length of time during and conditions under which there has been concurrent use
without evidence of actual confusion.
Opposer’s mark has been in use with wine since 2006, as noted supra, while
Applicant’s mark was first used for beer in May 2013. Chia Affidavit at ¶¶ 18, 15
TTABVUE 7; Yakobson Affidavit at ¶ 14, 16 TTABVUE 3. The marks thus have been
used concurrently for five years, and the record contains no evidence of actual
confusion. As also noted supra, Opposer’s evidence demonstrates that the parties’
trade channels overlap, which suggests that actual confusion has had some
opportunity to arise. While we have considered that there is no evidence of actual
confusion, we are also aware that in most cases, “the lack of any occurrences of actual
confusion is not dispositive inasmuch as evidence thereof is notoriously difficult to
come by.” Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
In any event, as our primary reviewing court has noted, it is unnecessary to show
actual confusion to establish a likelihood of confusion. See, e.g., Herbko Int’l, 64
USPQ2d at 1380; Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14 USPQ2d
1840, 1842-43 (Fed. Cir. 1990). “A showing of actual confusion would of course be
highly probative, if not conclusive, of a high likelihood of confusion. The opposite is
not necessarily true, however. The lack of evidence of actual confusion carries little
weight.” Majestic Distilling, 65 USPQ2d at 1205. Therefore, while we find that the
eighth DuPont factor favors Applicant, we do not find that it strongly supports
Applicant’s position.
Opposition No. 91229132
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V. Conclusion
We have carefully considered all arguments and evidence of record, including any
not specifically discussed herein. Because there is no evidence supporting a finding
that the parties’ goods are related, we find that Opposer has not carried its burden to
establish by a preponderance of the evidence that Applicant’s mark is likely to cause
consumer confusion when used in association with beer.
Decision: The opposition to registration of application Serial No. 86794630 is
dismissed.