87781863 (T.T.A.B. Jul. 30, 2020)

Sergei Orel

Trademark Trial and Appeal BoardJul 30, 2020

87781863 (T.T.A.B. Jul. 30, 2020)

This Opinion is not a Precedent of the TTAB Mailed: July 30, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Sergei Orel _____ Serial No. 87781863 _____ Sergei Orel, pro se. Shaila E. Lewis, Trademark Examining Attorney, Law Office 114, Laurie Kaufman, Managing Attorney. _____ Before Shaw, Larkin and Johnson, Administrative Trademark Judges. Opinion by Shaw, Administrative Trademark Judge: Sergei Orel (“Applicant”) seeks registration on the Principal Register of the mark ANASTASIA, in standard characters, for goods identified as “Alcoholic beverages, except beer; Sparkling wines; Vodka; Wine,” 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 of likelihood of confusion with the following two separately-owned registered marks: 1 Application Serial No. 87781863, filed on February 2, 2018, is based on Applicant’s allegation of a bona fide intent to use the mark in commerce, pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). Serial No. 87781863 - 2 -  ANASTASIA STEELE, in standard characters, for, inter alia, “Wines; spirits and liqueurs; alcopops; prepared alcoholic cocktails,” in International Class 33;2 and  ANASTASIA ISLAND IPA, in standard characters, for “Brewed malt-based beers,” in International Class 33.3 When the refusal was made final, Applicant appealed and requested reconsideration. The Examining Attorney denied the request for reconsideration, and the appeal resumed. Both Applicant and the Examining Attorney filed briefs. We affirm the refusal to register. I. Likelihood of Confusion Our determination of the issue of likelihood of confusion is based on an analysis of all the probative facts in evidence relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the goods and the similarities between the marks. 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 2 Registration No. 4524142 (the “’142 registration”), issued May 6, 2014. The registration states: “The name ‘ANASTASIA STEELE’ does not identify a living individual.” 3 Registration No. 5176290 (the “’290 registration”), issued April 4, 2017. IPA is disclaimed. Serial No. 87781863 - 3 - characteristics of the goods and differences in the marks.”). We discuss each DuPont factor for which there is evidence or argument. A. The nature and similarity or dissimilarity of the goods, the established, likely- to-continue trade channels, and the classes of purchasers. The goods need not be identical or even competitive in order to find a likelihood of confusion. Rather, the question is whether the goods are marketed in a manner that “could give rise to the mistaken belief that [the] goods 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)). See also Hewlett-Packard Co. v. Packard Press Inc., 227 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (“Even if the goods and services in question are not identical, the consuming public may perceive them as related enough to cause confusion about the source or origin of the goods and services.”); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000) (“[E]ven if the goods in question are different from, and thus not related to, one another in kind, the same goods can be related in the mind of the consuming public as to the origin of the goods”). It is sufficient for a finding of likelihood of confusion if relatedness is established for any item encompassed by the identification of goods within a particular class in the application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). We begin with the similarity of Applicant’s goods and the goods in the ’142 registration for the mark ANASTASIA STEELE. Applicant’s goods are “alcoholic beverages, except beer; sparkling wines; vodka; and wine.” Registrant’s goods in the Serial No. 87781863 - 4 - ’142 registration are “wines; spirits and liqueurs; alcopops; prepared alcoholic cocktails.” Both the application and registration include wine, and those goods are thus identical. In addition, Registrant’s broadly worded “spirits” encompass Applicant’s “vodka,” and Applicant’s broadly worded “alcoholic beverages, except beer” encompass Registrant’s “prepared alcoholic cocktails.” Thus, these goods are legally identical. See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). Regarding the similarity of Applicant’s goods and the “Brewed malt-based beers” in the ’290 registration for the mark ANASTASIA ISLAND IPA, we find the goods are different but nevertheless related. The Examining Attorney has introduced a number of excerpts from third-party websites showing that some beer breweries also produce and, in some cases, serve, spirits, all under the same house mark. The following examples are most relevant:  VinePair.com - features an article discussing the increase in breweries expanding into distillery operations and producing products such as vodka;4  Maplewoodbrew.com - The website of Maplewood, a brewery that produces beer and spirits, including whiskey and gin;5 4 Denial of Request for Reconsideration dated July 22, 2019, TSDR, pp. 2-9. 5 Id. at 10-13. Serial No. 87781863 - 5 -  Drinkrangergreek.com The website of Ranger Creek Brewing & Distilling showing that it produces beer and whiskey, and offers tastings onsite;6  Steelboundevl.com - The website of Steelbound Brewery & Distillery showing that it produces beer, vodka and other liquors, and offers tastings onsite;7  Fiveand20.com - The website of Five & 20 showing that it produces beer and spirits including prepared alcoholic cocktails, liqueurs, and whiskey, and offers tastings onsite;8 and  Squaronebrewery.com - The website of Square One Brewery showing that it produces beer and spirits, and offers food and alcoholic beverages onsite.9 We find the evidence of record demonstrates that it is increasingly common for beer and spirits to be produced by a single establishment, and offered to customers for tasting at one location. These excerpts support a finding that beer and spirits are related products that consumers encounter emanating from the same source and under the same mark. See, e.g., 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). Applicant nevertheless argues that all of the respective goods are different: In the present case – the respective marks ANASTASIA, and ANASTASIA STEELE, and ANASTASIA ISLAND 6 Id. at 14-22. 7 Id. at 23-44. 8 Id. at 45-56. 9 Id. at 62-65. Serial No. 87781863 - 6 - IPA, they all cover different goods – alcoholic products in Class 33 such as “Alcoholic beverages, except beer; Sparkling wines; Vodka; Wine”, in the current application ANASTASIA, “brewed malt-based beers” in Class 32 in the ANASTASIA ISLAND IPA mark, and “wines; spirits and liqueurs; alcopops; prepared alcoholic cocktails” in Class 33 in the ANASTASIA STEELE mark.10 We disagree. As discussed above, the goods are identical as to wine, and legally identical as to spirits and alcoholic beverages. As for beer in the ’290 registration, it is enough that the respective goods are sufficiently related so that consumers could be confused as to their source. The issue is not whether the goods will be confused with each other, but rather whether the public will be confused as to their source. Coach Servs., 101 USPQ2d at 1722. Applicant further argues that the goods are different because the producers of the respective goods are different as well: Applicant is a vodka and wine producer. The owner of ANASTASIA STEELE mark which represents a fictional character is not a vodka and wine producer, it sells books and movies. The brewery selling ANASTASIA ISLAND IPA beer named so after a particular Florida island called Anastasia Island, is not a vodka and wine producer.11 This argument is unpersuasive. Applicant is seeking to limit the nature of the goods identified in the cited registrations by extrinsic evidence—whether the source of the goods is a “vodka and wine producer.” There are no limitations on the respective goods to particular sources, and we cannot and will not add any. We “have no authority to read any restrictions or limitations into the registrant’s description” of 10 Applicant’s Br., p. 12, 16 TTABVUE 13. 11 Id. Serial No. 87781863 - 7 - goods, In re I-Coat Co., LLC, 26 USPQ2d 1730, 1739 (TTAB 2018) (quoting In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009)), nor may Applicant “restrict [their] scope . . . by argument or extrinsic evidence.” Id. See also In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986). Accordingly, it is irrelevant whether the registrants are “vodka and wine producers.” Regarding channels of trade and consumers, because the goods in the ’142 registration are identical and legally identical, and without restriction, we must presume that they are offered in all normal trade channels and to all normal classes of purchasers for such goods. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014). Thus, we consider Applicant’s and this Registrant’s trade channels and classes of purchasers to be the same. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (“[T]he TTAB properly followed our case law and ‘presume[d] that the identical goods move in the same channels of trade and are available to the same classes of customers for such goods.’”) (citing In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same)). With regard to the ’290 registration, the evidence of record establishes that some breweries offer their beer and spirits in the same channels of trade via tastings and restaurants to adult consumers. Further, in the absence of any express limitations, we must presume that Applicant’s alcoholic beverages, wines and vodka, and Serial No. 87781863 - 8 - Registrant’s beer travel through all normal channels of trade for such goods, and are offered and sold to all of the usual customers for such goods, namely ordinary adult consumers of alcoholic beverages. These channels include liquor stores, bars and restaurants, and (depending on the jurisdiction) supermarkets and convenience stores. See In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016); Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1825-26 (TTAB 2015) (“Applicant’s wine is related to Opposer’s beer and the parties’ products are sold in some of the same channels of trade to the same classes of customers.”); G. H. Mumm & Cie v. Desnoes & Geddes Ltd., 917 F.2d 1292, 16 USPQ2d 1635, 1638 (Fed. Cir. 1990) (“It is true that both beer and wine . . . are frequently sold through the same channels of distribution.”). Although each case must be decided on its own record, we often have held that beer and spirits or wine may be related goods for purposes of a likelihood of confusion analysis. See, e.g., In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (holding GASPAR’S ALE for beer and ale likely to be confused with JOSE GASPAR GOLD for tequila); Majestic Distilling Co., 65 USPQ2d 1201 (holding RED BULL for tequila likely to be confused with RED BULL for malt liquor); Schieffelin & Co. v. Molson Cos., 9 USPQ2d 2069 (TTAB 1989) (holding BRAS D’OR for brandy likely to be confused with BRADOR for beer); Anheuser-Busch, 115 USPQ2d at 1826- 27 (TTAB 2015) (wine related to beer); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261 (TTAB 2011) (holding HB for wine likely to be confused with HB and design for beer). Accordingly, we find that Applicant’s alcoholic beverages, wines and vodka, and Serial No. 87781863 - 9 - Registrant’s beer are related goods that travel through the same channels of trade to the same class of consumers. The DuPont factors regarding the similarity of the goods, channels of trade, and classes of purchasers favor a finding of a likelihood of confusion. B. The similarity or dissimilarity of the marks in their entireties in terms of appearance, sound, connotation and commercial impression. Next, we consider the DuPont factor relating to the similarity of the marks. In comparing the marks we must consider their appearance, sound, connotation and commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Similarity as to any one of these factors may be sufficient to support a finding that the marks are confusingly similar. See Krim-Ko Corp. v. Coca-Cola 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.”); In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018) (“Similarity in any one of these elements may be sufficient to find the marks confusingly similar.”) (quoting In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)), aff’d mem., 777 F. App’x 516 (Fed. Cir. Sept. 13, 2019). The emphasis of our analysis must be on the recollection of the average purchaser, who normally retains a general, rather than specific, impression of trademarks. We remain mindful that “marks must be considered in light of the fallibility of memory and not on the basis of side-by-side comparison.” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014). Serial No. 87781863 - 10 - Moreover, the identity, in part, of the goods reduces the degree of similarity between Applicant’s mark and the mark in the ’142 registration necessary for confusion to be likely. See, e.g., In re Viterra, 101 USPQ2d at 1912; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010). Although marks must be considered in their entireties, it is settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. In re Viterra, 101 USPQ2d at 1908; In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“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.”). Applicant’s proposed mark is ANASTASIA, in standard characters, and the cited marks, both also in standard characters, are ANASTASIA STEELE and ANASTASIA ISLAND IPA. All the marks begin with identical wording, the name ANASTASIA, which in conjunction with STEELE or ISLAND IPA dominates each cited mark. Although the cited marks contain additional matter, the shared term is the first word in all three marks, and “it is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.” Presto Prods., Inc. v. Nice- Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). See also Palm Bay, 73 USPQ2d at 1692. Additionally, we remain mindful that Applicant’s standard character ANASTASIA may be displayed in any lettering style, including that in which the Serial No. 87781863 - 11 - registrants may display their marks. See In re Viterra, 101 USPQ2d at 1909; Mighty Leaf Tea, 94 USPQ2d at 1260. While the ’142 registered mark includes the term STEELE immediately after ANASTASIA, we find that STEELE gives the impression of a surname, so that ANASTASIA STEELE as a whole gives the impression of a personal name. This difference in this cited mark from Applicant’s mark would not reduce likely confusion, however, as consumers would be inclined to assume that Applicant’s ANASTASIA mark uses only the first name of the ANASTASIA STEELE referenced in the mark in the cited registration. Further, in the ’290 registration, we find that the descriptive nature of the disclaimed wording IPA and the subordinate nature of the wording ISLAND contributes to the dominance of ANASTASIA in that mark, as consumers would be less inclined to rely on the other wording as source-indicating for alcoholic beverages. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); Nat’l Data, 224 USPQ at 752. Instead, the overall dominant impression of ANASTASIA ISLAND IPA is that of a place named after a person named ANASTASIA. In sum, we find the overall commercial impressions of the marks to be similar, and consistent with a single source, because they all suggest the impression of a person named ANASTASIA. This similar overall commercial impression makes it probable that consumers would perceive the provider of the identical or related goods to be the same. Serial No. 87781863 - 12 - Applicant argues that “[c]onsumers will not associate Applicant’s mark ANASTASIA with the creator of [the] ANASTASIA STEELE fictional character, or vice versa. Similarly, no sophisticated consumer in their right mind would confuse the applied for mark ANASTASIA with a beer brand named after a Florida island[.]”12 Instead, Applicant identifies a number of historical women named “Anastasia” and argues that “ANASTASIA is a common widespread first name, and no single entity deserves a monopoly to use it as a trademark.”13 This argument is unavailing. It is irrelevant whether Applicant intends its mark to suggest a different person named ANASTASIA, rather than either Anastasia named in the cited marks. The likelihood of confusion analysis is based on the marks as depicted in the respective application and registrations, without regard to whether the marks will appear with other matter, such as house marks, or other elements when used. See In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4 (Fed. Cir. 1993) (indicating that applicant’s assertions that the applied-for mark would appear with applicant’s house mark were not considered in the likelihood-of- confusion determination); In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1186 (TTAB 2018) (“[W]e do not consider how Applicant and Registrant actually use their marks in the marketplace, but rather how they appear in the registration and the application. We must compare the marks as they appear in the drawings, and not on any labels that may have additional wording or information.”). 12 Applicant’s Br., p. 2, 16 TTABVUE 3. 13 Id. at 3-4. Serial No. 87781863 - 13 - Having considered the marks as a whole, we find them similar in sight, sound, and commercial impression. Thus, this DuPont factor weighs in favor of likely confusion. C. Conclusion Having considered all the evidence and arguments on the relevant DuPont factors, we conclude that there is a likelihood of confusion between Applicant’s mark and the cited marks for identical or related goods. Decision: The refusal to register under Section 2(d) is affirmed.