Royal Wine Corporation

Trademark Trial and Appeal Board

Oct 16, 2013

No. 85775626 (T.T.A.B. Oct. 16, 2013)

Mailed:
October 16, 2013

United States Patent and Trademark Office
Trademark Trial and Appeal Board
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In re Royal Wine Corporation
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Serial No. 85775626
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Paulette R. Carey of Buchman Law Firm, LLP, representing Royal Wine
Corporation
Dezmona J. Mizelle-Howard, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
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Before Grendel, Holtzman and Wolfson, Administrative Trademark Judges.
Opinion by Wolfson, Administrative Trademark Judge:
Royal Wine Corporation (“applicant”) seeks registration on the Principal
Register of the mark STORM CANDLE (in standard characters) for “candles,” in
International Class 4.1
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), contending that
applicant’s use of its mark on “candles” is likely to cause confusion with Reg. No.

1 Filed November 9, 2012 on the basis of applicant’s bona fide intent to use the mark in
commerce. Applicant has disclaimed the word CANDLE in the mark.
This Opinion is Not a
Precedent of the TTAB
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2228450, for the mark STORM WATCH (in standard character format), for “candles
and fragrant wax for use in potpourri burners” in International Class 4.2
After the examining attorney made the refusal final, applicant appealed to
this Board. We affirm the refusal to register.
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & 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); and 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 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 SL&E
Training Stable, Inc., 88 USPQ2d 1216, 1217 (TTAB 2008) (“In any likelihood of
confusion analysis, two key considerations are the similarities between the marks
and the similarities between the goods.”).
Applicant argues that the nature of the goods on which the marks are used in
this case “is of no relevance,” Brief at 9, citing Kellogg Co. v. Pack’em Enters., 951
F.2d 330, 21 USPQ2d 1142, 1144-45 (Fed.Cir.1991); and Champagne Louis Roederer

2 Registered March 2, 1999; renewed.
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v. Delicato Vineyards, 148 F. 3d 1373, 47 USPQ2d 1459 (Fed Cir. 1998) (CRISTAL
and CRYSTAL CREEK not confusingly similar). Applicant contends that because
the marks STORM CANDLE and STORM WATCH are so dissimilar, the remaining
du Pont factors are irrelevant.
The cases cited by applicant do not teach that we should simply ignore the
nature of the goods. In Kellogg’s, the court found sufficient dissimilarities between
the marks FROOT LOOPS and to have outweighed the other factors,
but observed that the Board “considered [the other factors], but concluded that even
if Kellogg at trial could establish all of those claims, that evidence would be
insufficient to show likelihood of confusion.” Kellogg’s, 21 USPQ2d at 1144.
Moreover, the court in Kellogg’s made it clear that only “substantial and undisputed
differences in ‘appearance, sound, connotation and commercial impression’ between
the marks…warranted the grant of summary judgment.” Id. In Champagne Louis
Roederer, the court likewise noted that the Board “did, to the extent it was
presented with evidence, assess the thirteen factors enumerated by one of our
predecessor courts as constituting the test for likelihood of confusion.” Champagne,
47 USPQ2d at 1460. Accordingly, we decline to adopt applicant’s proposal to
consider whether the goods are related to be “of no relevance.”
In fact, there is no dispute that the goods are identical in part; both
applicant’s and registrant’s identifications include “candles.” Therefore, the second
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du Pont factor weighs heavily in favor of a likelihood of confusion. See Tuxedo
Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981) (Likelihood of confusion must be found with respect to a class of goods
or services in an application if there is likely to be confusion with respect to any
item that comes within the identification of the goods or services in that class).
Turning to the first du Pont factor, regarding the cumulative effect of the
differences and similarities of the marks involved, we consider the marks in their
entireties as to appearance, sound, connotation and commercial impression. In re
Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting
du Pont); Palm Bay, 73 USPQ2d at 1692; and TMEP §1207.01 (April 2013). The
test is not whether the marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the source of the goods offered
under the respective marks is likely to result. The focus is on the recollection of the
average purchaser, who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106
(TTAB 1975).
Applicant’s mark is STORM CANDLE. Because the word “candle” is generic
for the goods, while it has some effect on the visual and aural perceptions of the
mark, it contributes less to its overall commercial impression and virtually nothing
to its source-indicating function. See In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 752 (Fed. Cir. 1985) (“That a particular feature is descriptive or generic
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with respect to the involved goods or services is one commonly accepted rationale for
giving less weight to a portion of a mark”). The applicant does not dispute that
STORM is the dominant feature in its mark, but argues that the examining
attorney improperly dissected the cited mark by concluding that the word STORM
is the dominant portion of the mark STORM WATCH. The examining attorney
contends that the word STORM is the dominant portion of the cited mark because it
is the first word of the mark and “also provides a distinct, unique impression of the
purpose of the goods, namely, that the goods relate in some form or fashion to a
‘storm’.” Examining Attorney’s Brief at 4. While the analysis cannot be predicated
on dissecting the marks into their various components, different features may be
analyzed to determine whether the marks are similar, and 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 National Data Corp., 224 USPQ
at 751; Price Candy Company v. Gold Medal Candy Corporation, 220 F.2d 759, 105
USPQ 266, 268 (CCPA 1955). There is nothing improper in according the term
STORM greater significance in considering the overall impression created by the
mark.
On the other hand, we agree that the wording “storm watch” may be
perceived by prospective buyers as a unitary phrase. Applicant, in reliance on
National Weather Service definitions, argues that “STORM WATCH is a
meteorological term referring to a long range weather prediction issued at least 12
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hours before hazardous weather is expected to begin.” Applicant’s Response to first
(and second) Office actions. While we accept this connotation of the wording, we do
not agree that therefore, the marks “are not similar in their meanings” or that they
“create clearly distinct commercial impressions.” Brief, at 4. Instead, we find the
marks similar in appearance and pronunciation due to the presence of the word
“STORM” in both marks, and similar in their connotations and overall commercial
impressions because, as applied to the involved goods, both marks bring to mind the
idea of candles that illuminate the dark during a stormy weather condition, such as
a storm watch, storm warning, or actual storm. In overall commercial impression,
the marks evoke the same mental image. Should consumers who are familiar with
registrant’s STORM WATCH candles encounter applicant’s STORM CANDLE
candles, they are likely to mistakenly believe the goods emanate from the same
source. The first du Pont factor weighs in favor of a likelihood of confusion.
Because the goods are in-part identical, and there are no restrictions in either
the application or the cited registration, we must presume that the channels of
trade and classes of purchasers are the same. See American Lebanese Syrian
Associated Charities Inc. v. Child Health Research Institute, 101 USPQ2d 1022,
1028 (TTAB 2011); 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.”). These du
Pont factors further weigh in favor of a finding of likelihood of confusion.
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To summarize, the marks are similar and the goods identical in part. There
are no restrictions as to trade channels or classes of purchasers; accordingly they
are presumed to be the same. Applicant’s registration of the mark STORM
CANDLE for “candles” is likely to cause confusion with the cited mark STORM
WATCH for “candles and fragrant wax for use in potpourri burners.”
Decision: The refusal to register applicant’s mark STORM CANDLE is
affirmed.