Proud Wineaux LLC

Trademark Trial and Appeal Board

Jan 29, 2018

No. 87145451 (T.T.A.B. Jan. 29, 2018)

This Opinion is not a
Precedent of the TTAB

Mailed: January 29, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
_____

In re Proud Wineaux LLC
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Serial No. 87145451
_____

Stephen R. Fairchild of Fairchild Law LLC,
for Proud Wineaux LLC
Caroline L. Moran, Trademark Examining Attorney, Law Office 125,
Mark Pilaro, Managing Attorney.
_____

Before Mermelstein, Adlin and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Proud Wineaux LLC (“Applicant”) seeks registration on the Principal Register of
the mark PROUD WINEAUX (in standard characters) for “entertainment services,
namely, wine tastings” in International Class 41.1
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 that
Applicant’s mark, as used in connection with its recited services, so resembles the

1 Application Serial No. 87145451 was filed on August 21, 2016, based upon Applicant’s claim
of first use anywhere and use in commerce since at least as early as August 12, 2012.
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previously registered mark WINEAUX (in standard characters) for “newsletter about
wine; brochures and pamphlets about wine; instruction and information booklets on
wine” in International Class 16 as to be likely to cause confusion or mistake, or to
deceive.2
After the Trademark Examining Attorney made the refusal final, Applicant
appealed to this Board. We affirm the refusal to register.
I. Evidentiary Issue
Applicant attached to its appeal brief copies of exhibits that are already part of
the application record. The Examining Attorney has kindly refrained from objecting,
but has pointed out that such duplicative attachments are not only unnecessary, but
discouraged.3
We agree. The Trademark Trial and Appeal Board Manual of Procedure states
that “the appeal brief is associated with the application file, so papers that are already
in the application should not, as a matter of course, be resubmitted as exhibits to the
brief.” TBMP § 1203.01 (June 2017); see also In re Allegiance Staffing, 115 USPQ2d
1319, 1323 (TTAB 2015) (practice of attaching to appeal brief copies of the same
exhibits submitted with responses is discouraged); In re Sela Products LLC, 107
USPQ2d 1580, 1584 (TTAB 2013) (“It is of far more utility to the Board for the
applicant and examining attorney to provide citations directly to the record and,
when there are a large number of attachments to an Office action or response, to the

2 Registration No. 4521854 issued on the Principal Register on April 29, 2014.
3 Examining Attorney’s brief, 6 TTABVUE 12 n. 1.
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specific page number where the attachment may be found.”). Accordingly, we will
make our determination based on the exhibits that are already part of the record on
appeal.
II. Likelihood of Confusion
We base our determination of likelihood of confusion under Section 2(d) 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”), cited in B&B Hardware, Inc. v. Hargis Ind., Inc., 575 U.S.
__, 135 S. Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We bear in mind the
fundamental principles underlying the Lanham Act in general and Section 2(d) in
particular, which are “to secure to the owner of the mark the goodwill of his business
and to protect the ability of consumers to distinguish among competing producers.”
Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985)
quoted in Matal v. Tam, __ U.S. __, 122 USPQ2d 1757, 1762 (2017); see also DuPont,
177 USPQ at 566.
We have considered each relevant DuPont factor for which there is evidence or
argument, and have treated the other factors as neutral. See M2 Software, Inc. v. M2
Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark
Brands Inc. 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.”). Varying weights may be assigned to each
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DuPont factor depending on the evidence presented. Citigroup Inc. v. Capital City
Bank Group 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) (factors “may play
more or less weighty roles in any particular determination”).
Two key considerations are the similarities between the marks and the
similarities between the goods and services. See In re i.am.symbolic, LLC, 866 F.3d
1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017); Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
A. Similarity of the Marks
Under the first DuPont factor, we consider 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 Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). In a particular case, “two marks may be found to be confusingly similar if there
are sufficient similarities in terms of sound or visual appearance or connotation.”
Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB
1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992) quoted in In re Mr. Recipe, LLC, 118
USPQ2d 1084, 1089 (TTAB 2016). In this case, all of these considerations weigh in
favor of finding that the marks are similar.
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The cited mark consists of the word WINEAUX in standard characters. A play on
the word “wino,” which connotes an indigent, wine-imbibing alcoholic,4 the word
WINEAUX, with its faux-French appearance and sound, reminiscent of Bordeaux,
conveys a more informed connotation of “A group of people interested in all aspects of
wine ― grape growing, wine making, wine tasting, etc.”5 The cited mark uses
“WINEAUX” in this sense, on newsletters, brochures, pamphlets, and information
booklets about wine.6 Applicant’s mark also uses WINEAUX in that sense, to connote
informative entertainment services, namely wine tastings. According to co-owner
Jaye Watts, “When I started Proud Wineaux™, I wanted to create an environment
where people could learn about wine differently, and without pretension. I wanted to
educate people about wine and dispel all negative pretense associated with the
industry.”7 According to Applicant’s marketing materials, “We are a team of Certified
Sommeliers and Wine Enthusiasts, who strategize events that cater specifically to
your company needs through food & beverage education and fun events!”8

4 Merriam-Webster.com, 1/25/2018. “The Board may take judicial notice of dictionary
definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB
1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that
exist in printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d
1375, 1377 (TTAB 2006).” Bond v. Taylor, 119 USPQ2d 1049, 1056 n. 14 (TTAB 2016).
5 UrbanDictionary.com, 1/25/2018, also cited in Applicant’s April 13, 2017 Response to Office
Action TSDR p. 9. (All citations to the Trademark Status and Document Retrieval database,
TSDR, are to the pdf version.).
6 Identification of goods, Registration No. 4521854.
7 Declaration of Jaye Watts, ¶ 13, Applicant’s April 13, 2017 Response to Office Action TSDR
p. 12.
8 Applicant’s April 13, 2017 Response to Office Action TSDR p. 27.
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Applicant’s mark, PROUD WINEAUX, adopts Registrant’s word mark,
WINEAUX, in its entirety. Likelihood of confusion often has been found where the
entirety of one mark is incorporated within another. See Coca-Cola Bottling Co. of
Memphis, Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188
USPQ 105 (CCPA 1975) (applicant’s mark BENGAL LANCER for club soda, quinine
water and ginger ale is likely to cause confusion with BENGAL for gin); In re
Integrated Embedded, 120 USPQ2d 1504, 1513 (TTAB 2016) (applicant’s mark BARR
GROUP wholly encompasses the registered mark BARR); Johnson Publ’g Co. v. Int’l
Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982) (applicant’s mark EBONY DRUM for
hairdressing and conditioner is likely to cause confusion with EBONY for cosmetics).
We find that to be the case here.
The marks in this case are very similar, given that the most distinctive,
memorable portion of Applicant’s mark, WINEAUX, is identical to the registered
mark. If the dominant portion of both marks is the same, then the marks may be
confusingly similar notwithstanding peripheral differences. See In re Mighty Leaf
Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260-61 (Fed. Cir. 2010) (ML is likely to be
perceived as a shortened version of registrant’s mark, ML MARK LEES); Stone Lion
Capital, 110 USPQ2d at 1161 (STONE LION CAPITAL incorporated the entirety of
the registered marks LION CAPITAL and LION). Applicant’s addition of PROUD
merely modifies WINEAUX, suggesting pride in being wine lovers; the adjective
PROUD thus reinforces the dominant element WINEAUX. Those who notice the
added adjective might tend to see the marks as variations of one another, pointing to
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a single source. In re Hitachi High-Technologies Corp., 109 USPQ2d 1769, 1774
(TTAB 2014).
Taken in their entireties, then, the marks are very alike in sight, sound,
connotation and commercial impression. We find that the first DuPont factor weighs
in favor of finding a likelihood of confusion.
B. Similarity of the Goods, Services, and Channels of Trade
We next address the second and third DuPont factors, “[t]he similarity or
dissimilarity and nature of the goods or services as described in an application or
registration…” and “[t]he similarity or dissimilarity of established, likely-to-continue
trade channels.” DuPont, 177 USPQ at 567. The respective goods and services need
only be “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)); TRADEMARK MANUAL OF EXAMINING PROCEDURE
(“TMEP”) § 1207.01(a)(i) (Oct. 2017).
Here, as the Examining Attorney points out, Applicant’s “entertainment services,
namely, wine tastings” and Registrant’s goods, a “newsletter about wine, brochures
and pamphlets about wine, and instruction and information booklets about wine,” are
likely to travel through the same channels of trade to the same class of customers:
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adult wine consumers. Indeed, Applicant itself uses a brochure or pamphlet in
connection with its wine tasting services.9
As further evidence of this relatedness, the Examining Attorney adduces over a
dozen third party websites showing entities that provide Applicant’s type of wine
tasting services and Registrant’s types of wine-related publications under the same
mark, e.g.:
• The Wine Club ― “Our wine experts lead tastings every week in each of our
three stores, including Friday Happy Hours and Saturday afternoon tastings”;
“See current newsletter.”10
• Kermit Lynch Wine Merchant ― “Botanical garden spring tasting”;
“Receive our Monthly Newsletter and Special Promotions.”11
• The WineSellar ― “Wine Club Newsletter”; “[W]e offer and put on several
different types of wine tasting events throughout the week, month and year.”12
• Wine Country ― “Join fellow wine enthusiasts for the nirvana of wine-tasting
in Temecula California”; “Wine Education (Sommelier tips, history of
varietals).13
This evidence supports a finding that the respective wine-related goods and
services are so interrelated that they tend to originate from single sources, flow

9 Examining Attorney’s brief, 6 TTABVUE 12; April 13, 2017 Response to Office Action TSDR
pp. 15-30.
10 TheWineClub.com, 4/28/2017, May 3, 2017 Office Action TSDR pp. 7-9.
11 KirmitLynch.com 5/2/2017, May 3, 2017 Office Action TSDR pp. 11-13.
12 WineSellar.com 5/2/2017, May 3, 2017 Office Action TSDR pp. 17-19.
13 WineCountry.com 4/28/2017, May 3, 2017 Office Action TSDR pp. 38-39.
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through confluent channels of trade, and be encountered by the same consumers. See
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002) (evidence that “a single company sells the goods and services of both
parties, if presented, is relevant to the relatedness analysis”); In re Davey Prods. Pty
Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91
USPQ2d 1266, 1268-69 (TTAB 2009).
In the same vein, the Examining Attorney adduces nine use-based third-party
registrations that identify the same sorts of goods and services identified in the
subject application and cited registration under the same mark.14 For instance:
Registration Pertinent Goods and Services
AMERICAN CELLARS WINE CLUB

Registration No. 2491945

International Class 16: “newsletters
relating to wine”
International Class 41: “educational
services, namely, providing wine tasting
services by mail”
CALIFORNIA TREASURES CALIFORNIA
TREASURES WINE CLUB (with design)

Registration No. 3030147
International Class 16: “newsletters on
the subject of wine”
International Class 41: “educational
services, namely, providing wine tasting
services by mail”
PALS

Registration No. 3075689

International Class 16: “newsletters,
brochures and flyers in the fields of
general interest topics, namely, . . . wine
tasting”
International Class 41: “educational
services, namely, providing seminars and
presentations in the fields of general
interest topics, namely, . . .wine tasting”
BARNDIVA

Registration No. 4091910

International Class 16: “printed material,
namely, books, newsletters, calendars,
and blank cards in the field of . . . wine”
International Class 41: “entertainment
services . . . and consultation services,
wine-tastings”

14 Dec. 8, 2016 Office Action TSDR pp. 7-34.
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Registration Pertinent Goods and Services
WINE FOR NORMAL PEOPLE

Registration No. 4365412
International Class 16: “a series of books,
written articles, handouts and
worksheets in the field of wine, food, and
travel; … printed pamphlets, brochures,
manuals, books, booklets, leaflets, flyers,
informational sheets and newsletters . . .
in the field of wine, food and travel;
International Class 41: “entertainment
services, namely, wine and food tastings”

Applicant argues that these third-party registrations are unrelated to it or to the
Registrant and therefore do not demonstrate any potential customer confusion
between them.15 That misses the point. Although such registrations are not evidence
that the marks shown therein are in use or that the public is familiar with them, they
nonetheless have probative value to the extent that they serve to suggest that the
goods and services listed therein are of a kind which may emanate from a single
source under a single mark. In re Davey Products Pty Ltd., 92 USPQ2d 1198, 1203
(TTAB 2009) (citing In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB
1993) and In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988));
In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015); TMEP
§ 1207.01(d)(iii).
We find accordingly that the second and third DuPont factors, concerning the
similarity or relatedness of Applicant’s and Registrant’s goods and services, channels
of trade, and classes of customers, also weigh in favor of finding a likelihood of
confusion.

15 Applicant’s brief, 4 TTABVUE 6.
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C. Actual Confusion
The seventh DuPont factor is the nature and extent of any actual confusion.
DuPont, 177 USPQ at 567. Applicant, relying on the declarations of owners Jaye
Watts and Daniel Watts, avers that none of its customers, employees, or owners have
ever mentioned Registrant or one of its publications, much less evinced confusion as
to whether Registrant was in any way associated or affiliated with Applicant. Indeed,
they aver, neither of the declarants was even aware of Registrant or its publications
until they began the subject application process.16
Such averments, however, are of little probative value in an ex parte proceeding
such as this:
[A]pplicant’s assertion that it is unaware of any actual confusion
occurring as a result of the contemporaneous use of the marks of applicant
and registrant is of little probative value in an ex parte proceeding such
as this where we have no evidence pertaining to the nature and extent of
the use by applicant and registrant (and thus cannot ascertain whether
there has been ample opportunity for confusion to arise, if it were going
to); and the registrant has no chance to be heard from (at least in the
absence of a consent agreement, which applicant has not submitted in
this case).
In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984).
Here, as in In re Kangaroos, we have no evidence of the extent and nature of
Applicant’s and Registrant’s contemporaneous advertising, marketing or sales of
their respective goods and services under their brands, and thus cannot determine
whether there has been an opportunity for confusion to have occurred. As our

16 Declaration of Daniel Watts ¶¶ 11-16, Declaration of Jaye Watts ¶¶ 15-21, April 13, 2017
Response to Office Action TSDR pp. 6-7, 12.
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principal reviewing court has observed, “A showing of actual confusion would of
course be highly probative, if not conclusive, of a high likelihood of confusion. The
opposite is not true, however. The lack of evidence of actual confusion carries little
weight, … especially in an ex parte context.” Majestic Distilling, 65 USPQ2d at 1205
(internal citation omitted).We find the seventh DuPont factor to be neutral.
D. Sophistication and Care of Consumers
The fourth DuPont factor is “the conditions under which and buyers to whom sales
are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” DuPont, 177 USPQ at
567. Applicant urges that it offers sophisticated wine-focused entertainment to a
sophisticated clientele.17
As the Examining Attorney correctly notes, however, the subject application
contains no restrictions as to the price or quality of its services, or the classes of
consumers to whom it offers its services.18 Absent such restrictions, there is no reason
to infer that Applicant’s customers 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) (evidence that relevant goods are expensive wines sold
to discriminating purchasers must be disregarded given the absence of any such
restrictions in the application or registration). In fact, given that Applicant identifies
“wine tastings” without qualification, we must assume that some consumers

17 Applicant’s brief, 4 TTABVUE 3-5.
18 Examining Attorney’s brief, 6 TTABVUE 12.
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unfamiliar with wine will participate. Wine-tasting demonstrations may be offered to
a range of customers, both sophisticated and unsophisticated, and we must base our
decision on the least sophisticated potential customers. Stone Lion Capital, 110
USPQ2d at 1163.
For these reasons, the fourth DuPont factor is neutral.
E. Abandonment
Finally, Applicant argues that the cited mark appears to be abandoned.19 In
support of this conclusion, Applicant offers Daniel Watts’s declaration that he
conducted an Internet search for “Wineaux” on the Google search engine, and the
results page indicated “Proud Wineaux” as the primary result; he tried to order
Registrant’s brochure, but could not find Registrant’s website. Based on this
investigation, he avers on information and belief that the publisher of the Wineaux
brochure is no longer in the business of publishing the brochure, does not actively
protect its registered trademark, and has no customers.20 Based on Daniel’s
investigation, declarant Jaye Watts echoes the same conclusions, also on information
and belief.21
However, as the Examining Attorney correctly states,22 a trademark registration
on the Principal Register is prima facie evidence of the validity of the registration

19 Applicant’s brief, 4 TTABVUE 5; Applicant’s reply brief, 7 TTABVUE 3-4.
20 Declaration of Daniel Watts ¶¶ 17-24, April 13, 2017 Response to Office Action TSDR p. 7.
21 Declaration of Jaye Watts ¶¶ 22-28, April 13, 2017 Response to Office Action TSDR pp. 12-
13.
22 Examining Attorney’s brief, 6 TTABVUE 13-14.
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and of the Registrant’s exclusive right to use the mark in commerce in connection
with the specified goods. See 15 U.S.C. § 1057(b). Applicant’s attempted claim of
abandonment is not only insufficient as a matter of law, see 15 U.S.C. § 1127 (stating
circumstances in which a mark shall be deemed to be abandoned), but inapposite in
an ex parte proceeding, as it would constitute an impermissible collateral attack on
the Registration. In re Jump Designs LLC, 80 USPQ2d 1370, 1376 (TTAB 2006)
(“During ex parte prosecution, including an ex parte appeal, an applicant will not be
heard on matters that constitute a collateral attack on the cited registration….”)
(citing In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir.
1997)); see also In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1517 (TTAB
2016); TMEP § 1207.01(d)(iv).
Applicant’s abandonment argument is thus unavailing.
III. Conclusion
We have considered of all of the evidence and arguments of record, including
evidence and arguments not specifically discussed in this opinion, as they pertain to
the relevant DuPont likelihood of confusion factors. We find that the Applicant’s and
Registrant’s marks are similar, that their respective goods and services are similar
and related, and that they would move in the same channels of trade to the same
classes of customers, whose sophistication and care would not prevent likely
confusion. Applicant’s averments that there is no actual confusion do not dispel the
likelihood of confusion, nor is its claims of abandonment cognizable in this ex parte
proceeding. For these reasons, we find that Applicant’s mark, as used on its recited
Serial No. 87145451
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services, is likely to cause confusion with the cited registered mark under Section
2(d).
Decision: The refusal to register Applicant’s mark PROUD WINEAUX is
affirmed.