Mac and Lil LLC

Trademark Trial and Appeal Board

Feb 27, 2009

No. 78489004 (T.T.A.B. Feb. 27, 2009)

Mailed: February 27, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mac and Lil LLC,
dba Vision Cellars
________

Serial No. 78489004
Filed: September 24, 2004
_______

Allison Z. Gifford, Duane Morris LLP, for Mac and Lil LLC.

Esther A. Belenker, Trademark Examining Attorney, Law
Office 111, Craig D. Taylor, Managing Attorney.
_______

Before Hairston, Quinn, Mermelstein, and Wellington,
Administrative Trademark Judges.

Opinion by Mermelstein, Administrative Trademark Judge:

Applicant seeks registration of VISION CELLARS (in
standard characters) for “wines” in International Class 33.1
Registration has been finally refused pursuant to
Trademark Act § 2(d), 15 U.S.C. § 1052(d), on the ground
that applicant’s mark so resembles the mark VISION (typed)
registered for “wine,”2 as to be likely, if used on the

1 Based upon first use as of September 11, 2000, and use in
commerce as of September 11, 2000. Pursuant to the examining
attorney’s requirement, applicant has disclaimed “CELLARS” apart
from the mark as shown.
2 Registration No. 2560187, issued April 9, 2002, based on use in
commerce. Filing under Trademark Act § 8 accepted.
THIS DECISION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78489004
2
identified goods, to cause confusion, to cause mistake, or
to deceive. Trademark Act § 2(d); 15 U.S.C. § 1052(d).
We affirm.
I. Applicable Law
Our determination under Trademark Act § 2(d) is based
on an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
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); 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
[or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976); In re Azteca Rest. Enters., Inc.,
50 USPQ2d 1209 (TTAB 1999).
II. Discussion
Applicant and the examining attorney have discussed
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3
several of the du Pont factors.
A. The Similarity Or Dissimilarity And Nature Of The
Goods as Described in the Application.

Applicant’s goods – “wines” – are legally identical to
the “wine” identified in the cited registration.
This factor strongly supports the examining attorney’s
refusal of registration.
B. The Similarity or Dissimilarity of Established,
Likely-to-Continue Trade Channels.

When identical goods or services are recited in an
application and registration with no limitations as to
their channels of trade or classes of consumers, such
channels of trade and classes of consumers must be
considered to be legally identical. In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to
travel in the same channels of trade, and be sold to the
same class of purchasers.”).
This factor further supports the examining attorney’s
refusal to register.
C. The Similarity Or Dissimilarity of the Marks in
Their Entireties as to Appearance, Sound,
Connotation and Commercial Impression.

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay, 73
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USPQ2d at 1692. We begin our comparison with the
observation that “[w]hen marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992). As noted above, applicant’s goods are identical to
those identified in the cited registration.
While we must consider the marks in their entireties,
it is appropriate to accord greater importance to the more
distinctive elements in the marks. As the Court of Appeals
for the Federal Circuit observed, “in articulating reasons
for reaching a conclusion on the issue of confusion, there
is nothing improper in stating that, for rational reasons,
more or less weight has been given to a particular feature
of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
Applicant’s mark is VISION CELLARS; the mark in the
cited registration is VISION. Applicant argues that the
addition of the word “CELLARS” distinguishes its mark from
the cited registrant’s. While the marks are undeniably
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5
different, the relevant question in determining whether a
likelihood of confusion exists is not whether people will
confuse the marks, but whether the marks will confuse
people into believing that the goods they identify come
from the same source. In re West Point-Pepperell, Inc.,
468 F.2d 200, 175 USPQ 558 (CCPA 1972).
In this case, applicant’s mark incorporates the entire
mark in the prior registration. We disagree with
applicant’s contention that its addition of the term
“CELLARS” distinguishes the marks at issue. This term is
(at least) descriptive of the identified goods and thus has
little or no source-identifying significance. We note that
applicant submitted a disclaimer of this term after the
examining attorney provided evidence and argument
establishing the meaning of the word in relation to wine.
Phonetically, it is clear that the marks would be
pronounced similarly, if not identically. The propensity
of consumers to shorten trademarks makes it likely that
many of them would simply refer to applicant’s goods as
“VISION” wines, dropping the descriptive or generic term
“CELLARS” See Spoons Rests. Inc. v. Morrison Inc., 23
USPQ2d 1735, 1741 (TTAB 1991).
Applicant argues that the commercial impression of its
mark would be “that Applicant’s wine emanates from its wine
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cellars and is connected with a personal vision. On the
other hand, Registrant’s mark creates an impression that
the wine is a ‘vision of beauty to be savored.’” App. Br.
at 6. We find this argument – unsupported by any evidence
– highly speculative. In any event, given the close
similarity of the marks (and the identical goods at issue)
any slight difference in the connotation of the mark is
insufficient to distinguish them.
We conclude that the marks at issue are highly similar
in their appearance, sound, and commercial impression, a
factor which strongly supports the examining attorney’s
refusal.
C. Sophistication of Purchasers
Applicant further argues that confusion is not likely
because “both Applicant and Registrant produce and sell
high-quality wines marketed and sold to sophisticated
consumers who purchase these wines with care and knowledge
of their source.” App. Br. at 7. Applciant’s argument is
incorrect as a matter of law.
Whatever may be the realities of applicant’s business
and that of the cited registrant, the application and the
cited registration must be construed to cover all wines
sold in the usual channels of trade, to all usual
purchasers of such goods. In re Elbaum, 211 USPQ 639, 640
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(TTAB 1981), citing Kalart Co., Inc. v. Camera-Mart, Inc.,
119 USPQ 139 (CCPA 1958) (“it is presumed that the scope of
the registration encompasses all goods of the nature and
type described, that the identified goods move in all
channels of trade that would be normal for such goods, and
that the goods would be purchased by all potential
customers”).
There is simply no basis to conclude that applicant’s
wines or those of the registrant are necessarily expensive,
that the purchasers of their respective goods are unusually
sophisticated, or that they are otherwise immune from
source confusion. See In re Wilson, 57 USPQ2d 1863, 1865-
66 (TTAB 2001) (where marks are very similar and goods
related, confusion may be likely even among sophisticated
purchasers); In re Decombe, 9 USPQ2d 1812, 1814-1815 (TTAB
1988)(“Being knowledgeable and/or sophisticated in a
particular field does not necessarily endow one with
knowledge and sophistication in connection with the use of
trademarks.”).
We consider this factor neutral in our analysis.
D. Extraneous Considerations
Applicant argues that differences in the labeling of
its goods and those of the registrant, their respective use
of housemarks, and even information on their respective
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websites will enable consumers to distinguish the marks at
issue. We disagree.
Again, we are constrained in our analysis to
consideration of the application and registration at issue.
Applicant has not applied for registration of its label
art, and the registrant’s house mark and viticultural area
are not part of the cited registration. Both applicant’s
mark and that of the cited registrant may be depicted in
any stylization, typeface, or color, and could be displayed
with any (or no) design. Moreover, whether consumers would
look at applicant’s and registrant’s web site is
irrelevant. Likelihood of confusion must be judged based
on the application and registration at issue, not on
extraneous information which is not part of the mark or
goods recited therein.
III. Conclusion
After careful consideration of the record evidence and
argument, we conclude that in light of the identical goods,
and the highly similar marks at issue, use of applicant’s
mark on or in connection with the identified goods would
pose a likelihood of confusion with the mark in the cited
prior registration.
Decision: The refusal to register under Trademark Act
§ 2(d) is accordingly affirmed.