Luca Mariano Distillery LLCDownload PDFTrademark Trial and Appeal BoardJun 23, 2016No. 86293520 (T.T.A.B. Jun. 23, 2016) Copy Citation This Opinion is not a Precedent of the TTAB Mailed: June 23, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Luca Mariano Distillery LLC _____ Serial No. 86293520 _____ Molly B. Markley of Young Basile Hanlon & Macfarlane, P.C., for Luca Mariano Distillery LLC Timothy J. Finnegan, Trademark Examining Attorney, Law Office 104, Dayna Browne, Managing Attorney. _____ Before Greenbaum, Adlin, and Heasley, Administrative Trademark Judges. Opinion by Heasley, Administrative Trademark Judge: Luca Mariano Distillery LLC (“Applicant”) seeks registration on the Principal Register of the mark OLD AMERICANA (in standard characters) for alcoholic beverages except beers in International Class 33.1 The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that 1 Application Serial No. 86293520 was filed on May 28, 2014, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. Serial No. 86293520 - 2 - Applicant’s mark so resembles the mark registered for vodka in International Class 33,2 as to be likely to cause confusion. In addition, the Examining Attorney has refused registration under Section 6 of the Trademark Act, 15 U.S.C. § 1056(a), based on Applicant’s failure to comply with the requirement to disclaim the word “OLD.” When the refusals were made final, Applicant appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We reverse the disclaimer requirement but affirm the refusal to register under Section 2(d). I. Evidentiary Issue. The Examining Attorney objects that Applicant submitted, as exhibits to its appeal brief, new evidence that was not introduced prior to the appeal.3 The new items are photographs of whiskey bottles bearing Applicant’s mark and a printout of Trademark Electronic Search System (TESS) results listing a total of fifty applications or registrations for the mark AMERICANA.4 Applicant has not filed a reply brief, and therefore has not responded to the Examining Attorney’s objection. To the extent that the photographs attached to Applicant’s brief were previously 2 Registration No. 3454378, issued on the Principal Register on June 24, 2008, Section 8 & 15 declarations accepted and acknowledged. According to the registration, “Color is not claimed as a feature of the mark. The mark consists of stylized text of the wording ‘Americana’.” 3 Examining Attorney’s brief, 9 TTABVUE 3-4. 4 Exhibits to Applicant’s brief, 7 TTABVUE 17-20. Serial No. 86293520 - 3 - submitted and of record,5 their resubmission was unnecessary. See In re Greenliant Sys. Ltd., 97 USPQ2d 1078, 1080 (TTAB 2010); TBMP § 1203.02(e) (June 2015) (“It is not necessary to attach as exhibits to a brief evidence that is already in the application because the appeal brief is associated with the application. Such evidence should not, as a matter of course, be resubmitted as exhibits to the brief.”). In the course of arriving at our decision, we will consider the photographs that were properly introduced in the course of prosecution. The Examining Attorney’s objection to Applicant’s listing of TESS search results is sustained, as well. The record in an application should be complete prior to the filing of an appeal. Trademark Rule 2.142(d), 37 CFR § 2.142(d). Exhibits attached to a brief that were not made of record during examination are untimely, and generally will not be considered. Id. In re Compania de Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012). Applicant was afforded the opportunity to place additional relevant third-party registrations in the record when it sought reconsideration, but failed to do so. See In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1596 (TTAB 2014) (untimely evidence given no consideration); In re Pedersen, 109 USPQ2d 1185, 1188 (TTAB 2013); In re Jump Designs LLC, 80 USPQ2d 1370, 1372 (TTAB 2006). Moreover, even if the list from the TESS database had been considered, it would have little or no probative value. See Edom Laboratories Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012) (TESS listing has little, if any, probative value). Mere 5 See, e.g., Response to Office Action of March 18, 2015, p. 2. Serial No. 86293520 - 4 - listings of registrations are not sufficient to make the registrations of record. See In re Jonathan Drew, Inc., 97 USPQ2d 1640, 1644 n. 11 (TTAB 2011); In re Carolina Apparel, 48 USPQ2d 1542, 1543n.2 (TTAB 1998). In this case, of the fifty marks listed, approximately thirty were the subject of applications, which have no probative value. See Wet Seal, Inc. v. FD Management, 82 USPQ2d 1629, 1634 n.11 (TTAB 2007) (“An application is not evidence of anything except that the application was filed on a certain date….”). The remaining registrations were for such marks as AMERICANA GRILLS, PANAMERICANA, TOFFEE AMERICANA, and SHAKER AMERICANA – with no identification of their goods or services.6 See Jump Designs, 80 USPQ2d at 1372 (“The list does not show the goods and/or services covered by the registrations. Therefore, it has extremely limited probative value, since we cannot determine whether the marks are for goods and services similar to those of applicant and registrant.”). The objections are sustained. II. Analysis. A. The Disclaimer Requirement. Section 6(a) of the Trademark Act provides that “The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable.” 15 U.S.C. § 1056(a). See In re White Jasmine LLC, 106 USPQ2d 1385, 1394 (TTAB 2013) (citing In re Franklin Press, Inc., 597 F.2d 270, 201 USPQ 662, 665 (CCPA 1979)). If the Applicant does not comply with the disclaimer requirement, the Examining Attorney may refuse registration of the entire mark. In re Louisiana Fish 6 Exhibit to Applicant’s brief, 7 TTABVUE 17-18. Serial No. 86293520 - 5 - Fry Prods., Ltd., 797 F.3d 1332, 116 USPQ2d 1262, 1264 (Fed. Cir. 2015). See also In re Slokevage, 441 F.3d 957, 78 USPQ2d 1395, 1399 (Fed. Cir. 2006); In re Stereotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089 (Fed. Cir. 2005). Merely descriptive terms are subject to disclaimer if the mark in which they appear is otherwise registrable. See, e.g., In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re RiseSmart, Inc., 104 USPQ2d 1931, 1934 (TTAB 2012). A term is considered to be merely descriptive under Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods with which it is used. See In re Chamber of Commerce of the U.S., 675 F.3d 1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1478 (TTAB 2016). The Examining Attorney has required Applicant to disclaim the word “OLD” in OLD AMERICANA, originally taking the position that the word “old” means “advanced in years or age,” which merely describes Applicant’s goods because the identified “alcoholic beverages” encompasses aged alcoholic beverages.7 However, in a later Office Action, and his Appeal Brief, the Examining Attorney has offered a different rationale, pointing to Applicant’s website, which states that “Luca Mariano Old Americana is a brand dedicated to bringing back Prohibition's Original Recipes. The Viola Family Whiskey recipes have been closely guarded secrets kept by the family since 1914. … We do not add or remove from the Original 7 Office Action of Sept. 18, 2014, p. 1, quoting Merriam-Webster.com dictionary at pp. 9-10. Serial No. 86293520 - 6 - Recipes….”8 Because “old” can also be defined as “of, relating to, or originating in a past era,”9 the Examining Attorney concludes that “The wording ‘OLD’ merely describes Applicant’s goods, alcoholic beverages derived from recipes ‘advanced in years or age’ and ‘of relating to, or originating in a past era.’”10 Applicant submits that both interpretations require some stretch of the imagination, rendering the term “OLD” suggestive, not descriptive: “While the definition of ‘old’ can mean advanced in year[s] or age’ this is not the equivalent of ‘aged’ used on food and beverage products, as an ‘old’ food or beverage product would be considered expired.” Furthermore, “even though the term ‘old’ can mean originating in a past era, the term ‘old’ is referring to the recipe, not the product. The use of ‘old’ is suggestive of a past era.”11 “A suggestive mark requires imagination, thought and perception to reach a conclusion as to the nature of the goods, while a merely descriptive mark forthwith conveys an immediate idea of the ingredients, qualities or characteristics of the goods.” StonCor Grp., Inc. v. Specialty Coatings, Inc., 759 F.3d 1327, 111 USPQ2d 1649, 1652 (Fed. Cir. 2014) (quoting In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 218 (CCPA 1978)) (internal punctuation omitted). See generally DuoProSS Meditech Corp. v. Inviro Medical Devices, Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1755 (Fed. Cir. 2012); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 8 Office Action of April 11, 2015, pp. 2, 5. 9 Office Action of April 11, 2015, quoting Merriam-Webster.com dictionary at p. 8. 10 Examining Attorney’s brief, 9 TTABVUE 11. 11 Applicant’s brief, p. 3, 7 TTABVUE 4. Serial No. 86293520 - 7 - 101 USPQ2d 1713, 1728 (Fed. Cir. 2012); In re Bayer Aktiengesellschaft, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007); In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001); In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1515 (TTAB 2016). “There is a thin line of demarcation between a suggestive term and a merely descriptive term….” In re George Weston Ltd, 228 USPQ 57, 58 (TTAB 1985); Anheuser-Busch Inc. v. Holt, 92 USPQ2d 1101,1105 (TTAB 2009). The determination of whether a term is descriptive or suggestive is made in relation to the goods for which registration is sought, the context in which it is being used, and the possible significance that the term would have to the average purchaser of the goods because of the manner of its use or intended use. Bayer Aktiengesellschaft, 82 USPQ2d at 1831. “The perception of the relevant purchasing public sets the standard for determining descriptiveness.” In re MBNA Am. Bank, N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780 (Fed. Cir. 2003). We find that members of the purchasing public, encountering the mark OLD AMERICANA in a liquor store, would not tend to equate “OLD” with “aged.” The term “aged” connotes a positive attribute of barrel-aged whiskey or fine wine; the term “old” connotes a product that has exceeded its expiration date.12 It does not describe “a desirable characteristic of the goods.” See In re Universal Water Sys., Inc., 209 12 See Schieffelin & Co. v. The Molson Cos. Ltd, 9 USPQ2d 2069, 2071 (TTAB 1989) (cognac made from distilled spirits aged in oak barrels, then blended with wines of different ages); Merriam-Webster.com dictionary: Old: “showing the effects of time or use,” “no longer in use.” Office Action of April 11, 2015, p. 8. Serial No. 86293520 - 8 - USPQ 165, 166 (TTAB 1980). Rather, in our view, “OLD” is an adjective that modifies the noun “AMERICANA.” “AMERICANA” means “things produced in the U.S. and thought to be typical of the U.S. or its culture.”13 “OLD” enhances that connotation by alluding to bygone American culture. The term “only vaguely suggests a desirable characteristic” of Applicant’s goods by indirectly evoking in purchasers’ minds a nostalgic remembrance of a past era—an import that would not be grasped without “some measure of imagination and mental pause.” In re George Weston Ltd, 228 USPQ at 58; In re Shutts, 217 USPQ 363, 364-65 (TTAB 1983). That is the essence of a suggestive term. The disclaimer requirement is therefore reversed. B. Likelihood of Confusion With the Registered Mark. We next consider whether Applicant’s mark is likely to be confused with Registrant’s mark . Our determination of likelihood of confusion under Section 2(d) of the Trademark Act is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See also In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each DuPont factor that is relevant and for which there is evidence of record. See M2 Software, Inc. v. M2 Communications, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 13 Applicant’s Response to Office Action of March 18, 2015, p. 3 quoting Merriam-Webster.com dictionary. Examining Attorney’s brief, 9 TTABVUE 8. Serial No. 86293520 - 9 - (Fed. Cir. 2006); ProMark Brands Inc. and H.J. Heinz Company v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). See also In re i.am.symbolic, LLC, 116 USPQ2d 1406, 1409 (TTAB 2015). 1. The Goods, Channels of Trade, and Purchasing Conditions. We begin with the DuPont factors of the relatedness of Applicant’s and Registrant’s respective goods, channels of trade, and purchasing conditions. E.I. DuPont, 177 USPQ 567. We base our evaluation on the goods as they are identified in the application and registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Systems, Inc. v. Houston Comp. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant’s “alcoholic beverages except beers,” clearly encompass Registrant’s “vodka,” “a strong, clear alcoholic drink that is originally from Russia.”14 Because the goods are legally identical, and there are no limitations as to channels of trade or classes of purchasers in the application or cited registration, it is presumed that Applicant’s goods and Registrant’s goods move in all channels of trade normal for those goods (such as liquor stores), and that they are available to all classes of 14 Office Action of Sept. 18, 2014, p. 2, quoting Merriam-Webster.com dictionary. Serial No. 86293520 - 10 - purchasers for those goods, including ordinary consumers of alcoholic beverages. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel in same channels of trade to same class of purchasers); Monarch Wine Co., Inc. v. Hood River Dist., Inc., 196 USPQ 855, 857 (TTAB 1977) (whisky, vodka, rum, brandy, wine and champagne travel in same channels of trade). Indeed, even if Applicant were to market other forms of alcoholic beverages under its mark, those beverages would tend to flow in the same trade channels to the same sort of customers as Registrant’s vodka. See Schieffelin, 9 USPQ2d at 2073 (TTAB 1989) (“A typical consumer of alcoholic beverages may drink more than one type of beverage and may shop for different alcoholic beverages in the same liquor store.”). And since there is no restriction in the subject application and registration as to price or quality, there is no reason to infer that the consumers of these alcoholic beverages will be particularly sophisticated, discriminating, or careful in making their purchases. See Somerset Distilling Inc. v. Speymalt Whisky Dist. Ltd., 14 USPQ2d 1539, 1542 (TTAB 1989); In re Bercut-Vandervoort & Co., 229 USPQ 763, 765 (TTAB 1986). Hence, these DuPont factors weigh heavily in favor of finding a likelihood of confusion. 2. Comparison of the Marks. Under the first DuPont factor, we determine the similarity or dissimilarity of Applicant’s and Registrant’s marks as compared in their entireties, taking into account their appearance, sound, connotation and commercial impression. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 Serial No. 86293520 - 11 - USPQ2d 1689, 1692 (Fed. Cir. 2005); In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 (TTAB 2013). In comparing the marks, we are mindful that where, as here, the goods are legally identical, the degree of similarity necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity between the goods. Coach Servs., 101 USPQ2d at 1721; Viterra, 101 USPQ2d at 1912 (citing Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992)). Applicant and Registrant’s respective marks, OLD AMERICANA and , share the same dominant feature, AMERICANA. Applicant argues: that its beverages are sold under the house brand LUCA MARIANO, of which the applied-for mark, OLD AMERICANA, is merely a sub- brand; that the design portion of Registrant’s mark distinguishes the two marks; that its addition of the prefix OLD differentiates the marks; and that the marks’ shared term, AMERICANA, is weak. None of these arguments suffices to avoid a likelihood of confusion. Even if Applicant owns a “house brand,” LUCA MARIANO, its proposed mark is OLD AMERICANA alone, and a registration would entitle Applicant to use this mark with or without a house mark or other designation. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993) (“Although Shell argues that its use of RIGHT-A-WAY would be in association with other Shell trademarks, the proposed registration is not so limited. Registrability is determined based on the description in the application, and restrictions on how the mark is used will not be inferred.”). Serial No. 86293520 - 12 - Registrant’s stylized mark contains a pillar-shaped “I” in the center of AMERICANA, but that minor stylization does not significantly alter its appearance or pronunciation. The appearance of Applicant’s proposed standard character mark is not limited to any particular font, size, style, or color, In re Viterra Inc., 101 USPQ2d at 1909, and could, if registered, be depicted like Registrant’s mark: OLD AMERICANA. See In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1090 (TTAB 2016). And consumers requesting the products would naturally tend to pronounce AMERICANA the same, disregarding the minor stylization of the “I” embedded in Registrant’s mark. See Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013). Applicant’s complete incorporation of Registrant’s one-word AMERICANA mark increases the likelihood of confusion between the marks. See, e.g., Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 USPQ 419 (CCPA 1977) (CALIFORNIA CONCEPT with surfer logo men’s hair and cosmetic products confusingly similar to CONCEPT for cold permanent wave lotion and neutralizer); Coca-Cola Bottling Co. of Memphis, Tenn., Inc. v. Joseph E. Seagram & Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (BENGAL LANCER for club soda, quinine water and ginger ale likely to cause confusion with BENGAL for gin). Applicant’s addition of the prefix OLD to AMERICANA does not suffice to dispel confusion between the two marks. In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (“[T]he presence of an additional term in the mark does not necessarily eliminate the likelihood of confusion if some terms are identical.”). Unlike some cases, where a combination of two words may yield a completely new Serial No. 86293520 - 13 - connotation, see Lever Bros. Co. v. Barcolene Co., 463 F.2d 1107, 174 USPQ 392 (CCPA 1972) (ALL CLEAR! for household cleaner not confusingly similar to ALL for household cleansing products), Applicant’s use of the prefix OLD merely enhances the nostalgia that inheres in AMERICANA. Purchasers normally retain a general rather than a specific impression of trademarks, Mini Melts, 118 USPQ2d at 1470 (TTAB 2016), and naturally shorten their pronunciation of marks. See Abcor Dev., 200 USPQ at 219 (J. Rich, concurring); Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d 1321, 1333 (TTAB 1992), so they would most likely focus on the marks’ common element, AMERICANA. Applicant fails to demonstrate that Registrant’s mark is weak, as its listing of third-party AMERICANA-formative marks is not of record, and lacks probative value. Supra. Its allusion to third-party AMERICAN-formative marks15 has little pertinence here, as the Examining Attorney has established that there are only two marks of record containing the component AMERICANA for alcoholic beverages: Applicant’s and Registrant’s.16 Both marks project the same connotation and commercial impression of “things produced in the U.S. and thought to be typical of the U.S. or its culture.” Moreover, Applicant’s evidence showing use of the term “Americana” in its primary, literal sense, e.g., articles about western Americana or musical Americana—all evoking a sense of nostalgia,17 does not in any way diminish 15 Applicant’s Response to Office Action of March 18, 2015, pp. 6 et seq. 16 Office Action of April 11, 2015, p. 1. 17 Applicant’s Request for Reconsideration of Oct. 12, 2015, pp. 6-29. Serial No. 86293520 - 14 - the secondary, source-indicating meaning of the registered AMERICANA mark, which is presumed valid. 15 U.S.C. § 1057(b).18 See Fat Boys Water Sports, 118 USPQ2d at 1517. This DuPont factor therefore favors finding a likelihood of confusion. 3. Balancing the Factors. After considering all evidence and arguments bearing on the DuPont factors, including the evidence and arguments that we have not specifically discussed herein, we find that the marks are similar, and used on legally identical goods, which are presumed to move in the same channels of trade to the same classes of purchasers. We treat as neutral any DuPont factors for which there is no evidence of record. On balance, based on the evidence of record, we find that Applicant’s and Registrant’s marks so resemble one another as to be likely to cause confusion, or to cause mistake, or to deceive under Section 2(d) of the Trademark Act. III. Conclusion. Decision: The refusal to register Applicant’s mark OLD AMERICANA based on the requirement for a disclaimer of OLD is reversed; however, the refusal to register is affirmed on the ground of likelihood of confusion under Trademark Act Section 2(d). 18 See n. 2, supra. Copy with citationCopy as parenthetical citation