Monsieur Touton Selection Ltd.

Trademark Trial and Appeal Board

Sep 4, 2019

87874805 (T.T.A.B. Sep. 4, 2019)

This Opinion is Not a
Precedent of the TTAB
Mailed: September 4, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Monsieur Touton Selection Ltd.
________

Serial No. 87874805
_______

Gene S. Winter and Samantha Gerold of St. Onge Steward Johnston & Reens LLC
for Monsieur Touton Selection Ltd.

Andrea Koyner Nadelman, Trademark Examining Attorney, Law Office 110,
(Chris A. F. Pedersen, Managing Attorney).
_______

Before Cataldo, Taylor and Kuczma,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, Monsieur Touton Selection Ltd., filed an application to register on the
Principal Register the mark PACIFIC VIEW VINEYARDS (in standard characters,
VINEYARDS disclaimed as requested by the Examining Attorney) identifying “wine”
in International Class 33.1

1 Application Serial No. 87874805 was filed on April 12, 2018 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), asserting September 28, 2017 as a date of first use of
the mark in commerce.
Serial No. 87874805
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The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of
likelihood of confusion with the cited registered mark PACIFIC VISTA (in standard
characters) identifying, “wine” in International Class 33.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed and requested reconsideration. The appeal resumed after the Examining
Attorney denied the request for reconsideration. Applicant and the Examining
Attorney filed briefs.3 We affirm the refusal to register.
I. Evidentiary Matters
Applicant submitted 110 pages of evidence as exhibits to its appeal brief.4 We
hereby exercise our discretion to take judicial notice of the definitions of “vista” and
“view” submitted as part of this evidence, for such probative value as they may
possess.5 To the extent the remainder of the evidence Applicant submitted with its
appeal brief is duplicative of evidence previously submitted during prosecution, we

Page references to the application record are to the downloadable .pdf version of the USPTO’s
Trademark Status & Document Retrieval (TSDR) system. References to the briefs and orders
on appeal are to the Board’s TTABVUE docket system.
2 Registration No. 3280680 issued on the Principal Register on August 14, 2007. Section 8
affidavit accepted; Section 15 affidavit acknowledged. Renewed.
3 In a June 24, 2019 order, the Board notified Applicant that its over-length brief, submitted
on June 17, 2019, would receive no consideration. In a July 1, 2019 order, the Board informed
Applicant that its untimely second reply brief, submitted on June 25, 2019, also would receive
no consideration. 10 TTABVUE – 13 TTABVUE.
4 7 TTABVUE 19-129.
5 7 TTABVUE 128-129. The Board may take judicial notice of dictionary definitions, including
online dictionaries which exist in printed format. See In re Cordua Rests. LP, 110 USPQ2d
1227, 1229 n.4 (TTAB 2014); In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB
2002).
Serial No. 87874805
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need not and do not give this redundant evidence any consideration.6 Further, any of
the evidence submitted with Applicant’s appeal brief that was not previously
submitted during prosecution is untimely and will not be considered.7 See Trademark
Rule 2.142(d), 37 C.F.R. § 2.142(d); TBMP § 1203.02(e) and § 1207.01 (June 2019) and
authorities cited therein.
II. Likelihood of Confusion

We base our determination of likelihood of confusion under Trademark Act Section
2(d) on an analysis of all of the probative facts in evidence that are relevant to the
factors enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973) (“DuPont”), cited in B&B Hardware, Inc. v. Hargis Indus., Inc.,
575 U.S. __, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Guild
Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1161-62 (Fed. Cir. 2019).
We have considered each DuPont factor that is relevant, and have treated other
factors as neutral. In re Guild Mortg. Co., 129 USPQ2d at 1162 (“In every case turning
on likelihood of confusion, it is the duty of the examiner, the board and this court to
find, upon consideration of all the evidence, whether or not confusion appears likely.

6 The Board discourages the practice of the submission of duplicative evidence. In re SL&E
Training Stable Inc., 88 USPQ2d 1216, 1220 n.9 (TTAB 2008) (attaching as exhibits to brief
material already of record requires Board to determine whether attachments had been
properly made of record and adds to the bulk of the file); In re Thor Tech Inc., 85 USPQ2d
1474, 1475 n.3 (TTAB 2007) (attaching evidence from record to briefs is duplicative and is
unnecessary).
7 The proper procedure for an applicant or examining attorney to introduce evidence after an
appeal has been filed is to submit a written request with the Board to suspend the appeal
and remand the application for further examination. See Trademark Rule 2.142(d), 37 C.F.R.
§ 2.142(d). See also TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(TBMP) § 1207.02 (June 2019) and authorities cited therein.
Serial No. 87874805
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(Citation omitted) … In discharging this duty, the thirteen DuPont factors ‘must be
considered’ ‘when [they] are of record.’ (Citations omitted). This is true even though
‘not all of the DuPont factors are relevant or of similar weight in every case.’
(Citations omitted).”
Varying weights may be assigned to each DuPont factor depending on the evidence
presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play more or less
weighty roles in any particular determination”). Two key considerations are the
similarities between the marks and the relatedness of the goods. 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.”); In re
FabFitFun, Inc., 127 USPQ2d 1670, 1672 (TTAB 2018).
A. The Goods, Channels of Trade, and Classes of Customers

The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration,” Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1159
(Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the
consuming public may perceive [the respective goods or services of the parties] as
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related enough to cause confusion about the source or origin of the goods and
services.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir.
2014) (quoting Hewlett-Packard, 62 USPQ2d at 1004).
The identified goods need not be identical or even competitive to find likelihood of
confusion. See, e.g., On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56
USPQ2d 1471, 1475 (Fed. Cir. 2000). “[L]ikelihood of confusion can be found ‘if the
respective goods are related in some manner and/or if the circumstances surrounding
their marketing are such that they could give rise to the mistaken belief that they
emanate from the same source.’” Coach Servs. Inc. v. Triumph Learning LLC, 668
F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v.
Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
In this case, however, the cited registration and involved application identify
goods that are literally identical, namely, “wine.” See In re i.am.symbolic, llc, 127
USPQ2d 1627, 1629 (TTAB 2018); In re Jump Designs LLC, 80 USPQ2d 1370, 1374
(TTAB 2006). The identity of the goods weighs heavily in favor of a finding of a
likelihood of confusion. See, e.g., In re Aquamar, Inc., 115 USPQ2d 1122, 1126 (TTAB
2015).
In addition, “[w]e must presume that Applicant’s and Registrant’s goods will be
sold in the same channels of trade and will be bought by the same classes of
customers, because the goods are identical and legally identical in part and there are
no limitations as to channels of trade or classes of purchasers in either the application
or cited registration[s].” i.am.symbolic, 127 USPQ2d at 1629 (citing In re Viterra, Inc.,
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671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)). The presumed identity of
the channels of trade and consumers also weighs in favor of a finding of likelihood of
confusion.
B. Strength of the Cited Mark / Number and Nature of Similar Marks
We next evaluate the strength of the registered mark and the scope of protection
to which it is entitled. The fifth DuPont factor is the “fame” or strength 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. 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).”).
Turning first to inherent strength, the Examining Attorney submitted with her
August 2, 2018 first Office Action8 the following definitions:
• vista – a pleasing view, especially one seen through a long, narrow
opening; a distant view or prospect, especially one seen through an
opening, as between rows of buildings or trees.
As noted above, we have taken judicial notice of the following definitions from
dictionary.com submitted by Applicant with its brief:9

8 At .pdf 7-8 (oxforddictionaries.com); at .pdf 12-13 (ahdictionary.com).
9 7 TTABVUE 128-29. (merriam-webster.com).
Serial No. 87874805
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• vista – a distant view through or along an avenue or opening; and
• view – extent or range of vision, sight, scene; prospect.
Based upon these definitions, the registered mark PACIFIC VISTA suggests a
pleasing, distant view of the Pacific Ocean or coast, or such a view from the Pacific
Ocean or coast. Thus, the mark appears to be arbitrary as applied to “wine.” There is
no evidence regarding the registered mark’s commercial or marketplace strength.10
In support of its argument that the cited PACIFIC VISTA mark is commercially
weak, Applicant submitted with its December 5, 2018 Response to the Examining
Attorney’s First Office Action11 copies of 19 third-party registrations consisting of
marks retrieved from a search of the USPTO’s Trademark Search and Data Retrieval
(TSDR) database for “PACIFIC-” formative marks identifying various types of
alcoholic beverages including wines.12 However, those marks include additional
matter which is substantially different from that in the registered mark, inasmuch

10 Because of the nature of the evidence required to establish the fame of a registered mark,
the Board normally does not expect an examining attorney to submit evidence as to the fame
of the cited mark in an ex parte proceeding. See In re Thomas, 79 USPQ2d 1021, 1027 n.11
(TTAB 2006).
11 At .pdf 20-94. The marks, all in standard characters unless otherwise noted, include:
PACIFIC HEIGHTS; PACIFIC STANDARD; PACIFIC GROVE; PACIFIC DRAGON;
PACIFIC BAY; PACIFIC COAST SPIRITS; PACIFIC PINOT (concurrent use registration
naming Applicant as excepted user); PACIFIC RIM DRY RIESLING (stylized) and PACIFIC
RIM; PACIFIC PEAK; PACIFIC SPRINGS; GRAND PACIFIC; PACIFIC OASIS; PACIFIC
CREST; PACIFICANA; PACIFIC VINTNERS; PACIFICO SUR; PACIFIC DISTILLERY;
and PACIFIC PINEAPPLE.
12 The five pending applications also submitted by Applicant possess little, if any, value. See,
e.g., Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463 (TTAB 2003)
(applications show only that they have been filed).
Serial No. 87874805
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as none includes as an additional element the term “VISTA” or a term similar to
“VISTA.”
As noted above, we find that the registered mark appears arbitrary as applied to
the identified goods. There is no evidence of third-party use. Cf. In re FabFitFun, Inc.,
127 USPQ2d 1673-4. However, there is evidence of third-party registrations of less
similar marks for alcoholic beverages including wines. Cf. Juice Generation, Inc. v.
GS Enters LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674-75 (Fed. Cir. 2015); Jack
Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports,
S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1135-36 (Fed. Cir. 2015). In addition, the
common element PACIFIC and its derivations may be considered geographic in
nature and therefore a less dominant portion of the marks. We therefore find that the
registered PACIFIC VISTA mark is to be accorded a somewhat narrower scope of
protection than that to which inherently distinctive marks are normally entitled due
to the presence of the third-party registrations of PACIFIC- formative marks for
wines and other alcoholic beverages. 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).
C. The Marks

Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion Capital v. Lion Capital, 110 USPQ2d at 1160; Palm Bay Imps., Inc.
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v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient
to find the marks confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB
2014); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 156 USPQ 523,
526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound
alone is likely to cause confusion.”) (citation omitted). In re Inn at St. John’s, LLC,
126 USPQ2d 1742, 1746 (TTAB 2018). “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, 101 USPQ2d at 1721 (internal quotation marks omitted).
See also Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB
2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). Consumers may
not necessarily encounter the marks in proximity to one another and must rely upon
their recollections thereof over time. In re Mucky Duck Mustard, 6 USPQ2d at 1468.
Applicant’s mark PACIFIC VIEW VINEYARDS and Registrant’s mark PACIFIC
VISTA are similar inasmuch as they share the term PACIFIC as the first term in
both marks and the following terms VIEW and VISTA that are similar in structure
and sound. The disclaimed word VINEYARDS in Applicant’s mark has little, if any,
trademark significance because it is at a minimum highly descriptive of Applicant’s
identified goods. It is well-settled that disclaimed, descriptive matter may have less
significance in likelihood of confusion determinations. See Cunningham v. Laser Golf
Serial No. 87874805
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Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive
terms, this court has noted that the ‘descriptive component of a mark may be given
little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re
Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie
Rests. Inc., 41 USPQ2d at 1533-34; In re Code Consultants, Inc., 60 USPQ2d 1699,
1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s
commercial impression”). 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 a consideration of the marks in their entireties. In re
Nat’l Data Corp., 224 USPQ at 751.
As discussed above, VINEYARDS is at best highly descriptive of Applicant’s goods.
VISTA and VIEW, defined above, are similar in meaning. Vista is defined, inter alia,
as a pleasing or distant view. In addition, the Examining Attorney submitted with
her December 21, 2018 final Office Action13 further evidence indicating that “vista”
is a synonym for “view.” In both marks, the terms modify PACIFIC and thus serve to
reinforce it. The registered mark suggests a pleasant or distant view of the Pacific
Ocean or coast and Applicant’s mark similarly suggests a vineyard with a view of the
Pacific Ocean or coast.
Based upon the above analysis, we find that PACIFIC VIEW VINEYARDS is more
similar than dissimilar to PACIFIC VISTA in terms of appearance, sound,
connotation and commercial impression. As a result, consumers encountering

13 At .pdf 5-12. (Thesaurus.com.)
Serial No. 87874805
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PACIFIC VIEW VINEYARDS could mistakenly believe that it represents a variation
on the registered mark used to identify wine emanating from the same source. This
is particularly the case because, “[w]hen marks would appear on virtually identical
... [goods or] services, the degree of similarity [of the marks] necessary to support a
conclusion of likely confusion declines.” See Century 21 Real Estate Corp. v. Century
Life of America, 23 USPQ2d at 1700. See also ECI Division of E-Systems, Inc. v.
Environmental Communications Inc., 207 USPQ 443, 449 (TTAB 1980).
In view thereof, the du Pont factor of the similarity of the marks favors a finding
of likelihood of confusion.
D. Consumer Sophistication
The fourth DuPont factor is the conditions under which and buyers to whom sales
are made. Applicant argues that
Here, both Appellant and Registrant use their marks in connection with
wine. More often than not, buyers of wine are sophisticated purchasers
with very specific preferences. As such, it is likely that consumers of
both Appellant’s and Registrant’s goods are exercising enough care in
purchasing the wine to avoid a likelihood of confusion.14

Because the wine identified in the involved application and cited registration are
not restricted by price point, we must presume that they include wines at all price
points and varietals 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 or services “‘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

14 7 TTABVUE 17.
Serial No. 87874805
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of purchasers to which sales of the goods are directed’”) (quoting Octocom, 6 USPQ2d
at 1787); In re Hughes Furn. Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015). That
is, Applicant’s and Registrant’s wine includes both modestly priced wines subject to
casual purchase and consumption as well as more expensive wines directed toward a
more discerning palate. We find that the fourth DuPont factor is neutral.
E. Applicant’s Prior Registration
Applicant argues that it “already owns a “PACIFIC” mark for wine. Specifically,
Appellant is the owner of U.S. Registration No. 5183577 for the mark PACIFIC
PINOT. Registrant’s PACIFIC VISTA mark already coexists with Appellant’s prior
registration for PACIFIC PINOT.”15 Applicant submitted with its December 5, 2018
Response to the Examining Attorney’s First Office Action16 a TSDR copy of its prior
Registration No. 5183577 for the mark identifying “wine.”17
However, the mark in Applicant’s prior registration is less similar either to the
mark in the cited registration or the mark in Applicant’s subject application. Despite

15 7 TTABVUE 17.
16 At .pdf 20-23.
17 Reg. No. 5183577 issued on April 11, 2017 on the Principal Register with a disclaimer of
“PINOT” and the following description of the mark: The mark consists of the stylized wording
“pacific pinot” above two curved rows of grape vines. Registration is restricted to the territory
comprising the District of Columbia and the States of Connecticut, Delaware, Florida,
Georgia, Maine, Maryland, Massachusetts, New Hampshire, New Jersey, New York, North
Carolina, Pennsylvania, Rhode Island, South Carolina, Vermont and Virginia pursuant to
Concurrent Use Proceeding No. 94002782.
Serial No. 87874805
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the identity of the goods in Applicant’s prior registration and involved application,
the marks are not substantially similar, let alone identical, and Applicant’s prior
registration has coexisted with the cited registration for only a short amount of time.
Cf. In re Strategic Partners, 102 USPQ2d 1397, 1399-1400 (TTAB 2012) (Section 2(d)
refusal reversed based in part upon finding that the applicant owned a registration
for a substantially similar mark that had coexisted with the cited registration for over
four years); see also In re USA Warriors Ice Hockey Program, Inc., 122 USPQ2d 1790
1792 (TTAB 2017).
Further, our determination of likelihood of confusion must be based on the facts
and record before us. We are not bound by a previous examining attorney's
determination that Applicant’s prior registration was entitled to register over the
cited registered mark. See In re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001) (“The Board must decide each case on its own merits”).
F. Conclusion
When we consider the record and the relevant likelihood of confusion factors, and
all of Applicant’s arguments relating thereto, we conclude that consumers familiar
with Registrant’s goods offered under its mark would be likely to believe, upon
encountering Applicant’s mark, that the goods originated with or are associated with
or sponsored by the same entity.
Decision: The refusal to register Applicant’s proposed mark is affirmed under
Section 2(d) of the Trademark Act.