Shirley Plantation, LLC, Upper Shirley Vineyards, LLC, and Charles H. Carterv.Stillhouse Vineyards, LLC

Trademark Trial and Appeal Board

Nov 7, 2018

No. 91216395 (T.T.A.B. Nov. 7, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 7, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Shirley Plantation, LLC, Upper Shirley Vineyards, LLC, and Charles H.
Carter
v.
Stillhouse Vineyards, LLC
_____

Opposition No. 91215114
Opposition No. 91216395
Opposition No. 91218094
(Consolidated)
_____

Michael W. Vary of Hudak Shunk & Farine Co. LPA, for Shirley Plantation, LLC,
Upper Shirley Vineyards, LLC, and Charles H. Carter.

M. Justin Griffin of Virginia Small Business Law PLLC, for Stillhouse Vineyards,
LLC.
_____

Before Wellington, Pologeorgis, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
These consolidated cases involve some history of colonial Virginia, a feud between
branches of an historic Virginia family, a nascent business relationship gone sour,
and, ultimately, the issue of who is identified by the three applied-for marks.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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Stillhouse Vineyards, LLC (“Applicant”) seeks registration on the Principal Register
of the following marks:
1. SHIRLEY PLANTATION in standard characters for “grape wine; red wine;
red wines; rose wine; table wines; white wine; wine; wines,” in
International Class 33;1
2. SHIRLEY in standard characters for “dessert wines; fortified wines; grape
wine; natural sparkling wines; port wines; prepared wine cocktails; red
wine; red wines; rose wine; sparkling fruit wine; sparkling grape wine;
sparkling wines; still wines; sweet wines; table wines; white wine; wine;
wines; wines and liqueurs; wines and sparkling wines,” in International
Class 33;2 and
3. The mark shown below (the “Coat of Arms Mark”)

1 Application Serial No. 85947562 was filed on May 31, 2013 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), on the basis of Applicant’s claim of first use of the mark
and first use in commerce on May 24, 2013. Applicant has disclaimed the exclusive right to
use PLANTATION apart from the mark as shown.
2 Application Serial No. 86121979 was filed on November 18, 2013 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), on the basis of Applicant’s claim of first use of the mark
and first use in commerce on May 24, 2013. The application states that the name shown in
the mark does not identify a particular living individual.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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for “aperitif wines; aperitifs with a wine base; black raspberry wine
(Bokbunjaju); cooking wine; dessert wines; fortified wines; fruit wine;
grape wine; honey wine; natural sparkling wines; port wines; prepared
wine cocktails; red wine; red wines; rose wine; sparkling fruit wine;
sparkling grape wine; sparkling wines; still wines; strawberry wine; sweet
wines; table wines; white wine; wine; wine coolers; wine punch; wine
punches; wine-based drinks; wines; wines and fortified wines; wines and
liqueurs; wines and sparkling wines,” in International Class 33.3
Shirley Plantation, LLC (“Shirley Plantation”) and Upper Shirley Vineyards, LLC
(“Upper Shirley”) have opposed registration of SHIRLEY PLANTATION in
Opposition No. 91215114 and of SHIRLEY in Opposition No. 91216395 (jointly the
“Word Mark Oppositions”). Shirley Plantation and Charles H. Carter (“Charles
Carter”) have opposed registration of the Coat of Arms Mark in Opposition No.
91218094 (the “Design Mark Opposition”).4 The Board first consolidated the Word
Mark Oppositions, designating Opposition No. 91215144 as the parent case in which
the record would be maintained, 13 TTABVUE (Word Mark Oppositions),5 and then

3 Application Serial No. 86129686 was filed on November 26, 2013 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), on the basis of Applicant’s claim of first use of the mark
and first use in commerce on February 1, 2008. The mark is described in the application as
consisting of “a coat of arms which includes a shield featuring a chevron and three wheels, a
helmet on top of the shield, a dog on top of the helmet resting its front right leg on a book
with a wheel on the cover, and a stylized mantle surrounding the helmet and shield.”
4 We will refer to Shirley Plantation, Upper Shirley, and/or Charles Carter as “Opposers”
when two or more of them are referred to together.
5 Except where otherwise indicated, citations to the briefs and record in these cases are to
the TTABVUE file in the parent case, Opposition No. 91215114.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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consolidated the Design Mark Opposition with the Word Mark Oppositions. 16
TTABVUE 6 (Design Mark Opposition).6
The parties entered into a stipulation, 33 TTABVUE (the “ACR Stipulation”), for
use of the summary judgment model of the Board’s Accelerated Case Resolution
procedures (“ACR”) to resolve the three consolidated oppositions, and the Board
approved the ACR Stipulation. 34 TTABVUE.7 The parties have filed briefs, and
Opposers have filed a reply brief, all of which discuss the issues in the three
oppositions, and through submissions with their briefs, they have made a single
record for all three cases. We sustain the Word Mark Oppositions and dismiss the
Design Mark Opposition.
I. Summary of Claims
Word Mark Oppositions
Shirley Plantation and Upper Shirley asserted multiple claims for relief in their
amended notices of opposition in these cases,8 but certain claims were waived in the

6 Despite being consolidated, each proceeding retains its separate character and requires the
entry of a separate judgment. We render each judgment in this opinion.
7 The ACR summary judgment model is described in Section 702.04(b) of the Trademark Trial
and Appeal Board Manual of Procedure (“TBMP”) (June 2018), which provides that “[i]n the
absence of a stipulation to the contrary, the parties are limited to 25 pages for the ACR
summary judgment briefs . . .” and that “[r]eply briefs are limited to 10 pages unless
otherwise stipulated . . . .” The ACR Stipulation is silent as to the length of the parties’ briefs,
and they considerably exceed the limits discussed in § 702.04(b), but we will accept the briefs
because they address the issues in three oppositions.
8 9 TTABVUE (Opposition No. 91215144); 10 TTABVUE (Opposition No. 91216395). The
amended notices of opposition are substantially identical with respect to the pleaded claims
for relief.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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ACR Stipulation. 33 TTABVUE 3-4. The parties addressed the following claims in
their briefs:
1. Opposers’ claim in both oppositions that Applicant’s SHIRLEY
PLANTATION and SHIRLEY marks are unregistrable under Section 2(a)
of the Trademark Act, 15 U.S.C. § 1052(a), because they falsely suggest a
connection with Shirley Plantation and/or Upper Shirley;
2. Shirley Plantation’s claim in both oppositions that Applicant’s SHIRLEY
PLANTATION and SHIRLEY marks are unregistrable under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), because they so resemble the
mark SHIRLEY PLANTATION shown in Shirley Plantation’s Registration
Nos. 2331087 for “museum services including guided and unguided
historical tours on-site” and 2331083 for “retail gift shop services,” and the
mark UPPER SHIRLEY VINEYARDS shown in Upper Shirley’s
Application Serial No. 86127952 for “wine,” as to be likely to cause
confusion when used on the goods identified in the opposed applications;
and
3. Opposers’ claims in both oppositions that Applicant’s use-based
applications to register SHIRLEY PLANTATION and SHIRLEY are void
ab initio because Applicant did not use the marks in commerce prior to the
filing dates of the applications.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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In its answers,9 Applicant denied the material allegations of the amended notices
of oppositions, but did not assert any affirmative defenses or any counterclaims to
cancel Shirley Plantation’s pleaded registrations.
Design Mark Opposition
Shirley Plantation and Charles Carter asserted multiple claims for relief in their
amended notice of opposition in this case,10 but certain claims were expressly waived
by Opposers in their main brief. 37 TTABVUE 8 n.2. The following claims were
addressed by the parties in their briefs:
1. Shirley Plantation’s and Charles Carter’s claims that the Coat of Arms
Mark is unregistrable under § 2(a) because it falsely suggests a connection
with Shirley Plantation, which is alleged to have used the coat of arms of
the Carter family of Virginia shown below (the “Carter Coat of Arms”)11:
12

9 10 TTABVUE (Opposition No. 91215114); 11 TTABVUE (Opposition No. 91216395).
10 8 TTABVUE.
11 Our use of the defined term “Carter Coat of Arms” is not a finding that Opposers are the
rightful owners or users of this coat of arms. As discussed below, we do not decide that issue.
12 There is no high resolution depiction of the Carter Coat of Arms in the record, and there
are no examples in the record of use of the Carter surname with the design when the Carter
Coat of Arms is displayed.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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2. Shirley Plantation’s claim that the Coat of Arms Mark is unregistrable
under § 2(d) because it so resembles the Carter Coat of Arms as to be likely
to cause confusion when used on the goods identified in the opposed
application;
3. Opposers’ claim that the Coat of Arms Mark is unregistrable because
Applicant was not its owner when the opposed application was filed because
under the laws of the United Kingdom regarding coats of arms, the right to
use the Carter Coat of Arms passed through the Carter family lineage to
Charles Carter, and not to Applicant’s principal, Philip Carter Strother;
and
4. Opposers’ claim that the Coat of Arms Mark is unregistrable because its
use violates federal regulations applicable to the advertising of wine.13
In its answer,14 Applicant denied the material allegations of the amended notice
of opposition, and asserted various purported affirmative defenses, which are in the
nature of amplifications of Applicant’s denials of the material allegations of the
amended notice of opposition.

13 This claim was not pleaded in the amended notice of opposition, 9 TTABVUE 2-13, or
referenced in the ACR Stipulation, 33 TTABVUE 4 but it was tried by consent of the parties.
37 TTABVUE 53-56; 40 TTABVUE 41-42. See Fed. R. Civ. P. 15(b)(2); Conolty v. Conolty
O’Connor NY LLC, 111 USPQ2d 1302, 1304-05 (TTAB 2014) (issue of non-ownership of
subject mark tried by implied consent where both parties offered evidence and argument on
it).
14 10 TTABVUE.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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II. Evidentiary Record and Issues
The Parties’ Submissions
The pleadings and, by operation of Trademark Rule 2.122(b)(1), 37 C.F.R. §
2.122(b)(1), the file histories of Applicant’s three applications,15 are automatically of
record. Pursuant to the ACR Stipulation, the parties submitted the following
materials with their briefs:16
1. Copies of Shirley Plantation’s pleaded Registration Nos. 2331087 and
2331083 from the Trademark Electronic Search System (“TESS”) database
of the Patent and Trademark Office, made of record by Applicant (41
TTABVUE 174-177);
2. Two declarations of Charles Carter (the “First C. Carter Decl.” and the
“Second C. Carter Decl.,” respectively),17 and Exhibits 1-19 and 40-41
thereto (37 TTABVUE 58-68; 38 TTABVUE 2-45; 45 TTABVUE 32-39, 56-
58), made of record by Opposers with their main and reply briefs;18

15 Applicant unnecessarily submitted portions of the file histories. 41 TTABVUE 136-173.
16 As discussed below, the parties filed evidentiary objections to some of these materials. The
record on which we render our decisions consists of those materials submitted by the parties
that have not been excluded in response to their evidentiary objections.
17 We will cite testimony and exhibits in all declarations by paragraph and exhibit number
(e.g., “First C. Carter Decl. ¶ 4; Ex. 3”).
18 The ACR Stipulation provides that “Opposers will file their brief and supporting evidence
no later than forty five (45) days from the close of discovery,” that “Applicant will file its brief
and supporting evidence no later than seventy-five (75) days from the close of discovery,” and
that “Opposer [sic] will file its [sic] reply brief, if any, no later than ninety (90) days from the
close of discovery.” 33 TTABVUE 5. These provisions do not expressly provide for Opposers’
submission of evidence with any reply brief. As discussed below, however, Applicant only
objected to one exhibit submitted by Opposers with their reply brief (on a ground other than
that the submission violated the ACR Stipulation), so we deem the parties to have agreed in
the ACR Stipulation that the parties could submit evidence with any of their briefs.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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3. The declaration of Tayloe Dameron (“Dameron Decl.”) and Exhibits 20-24
thereto (37 TTABVUE 69-76; 38 TTABVUE 46-78), made of record by
Opposers with their main brief;
4. The declaration of Robert Randolph Carter (the “R. Carter Decl.”), and
Exhibits 7, 25, 27, and 37 thereto (37 TTABVUE 77-81; 38 TTABVUE 15-
16, 79-81, 85-90, 124-125), made of record by Opposers with their main
brief;
5. The declaration of Helle Margarethe Klingemann Carter (the “H. Carter
Decl.”), and Exhibits 4-6, and 28 thereto (37 TTABVUE 82-86; 38
TTABVUE 9-14, 91-92), made of record by Opposers with their main brief;
6. The discovery deposition of Philip Strother, made of record by Opposers
with their reply brief (45 TTABVUE 59-97);19
7. Opposer’s Exhibits 26, 29-36, 38-39, 42-45 (38 TTABVUE 93-123, 126-137;
45 TTABVUE 40-55), made of record by Opposers with their main and reply
briefs;20 and

19 The exhibits identified at Mr. Strother’s deposition were not attached to the copy of his
transcript submitted by Opposers, which limits the usefulness of his testimony at times. We
will cite his testimony by page and line number (e.g., “Strother Tr. 34:1-15”).
20 These exhibits are not authenticated by Opposers’ declarants and thus lack sponsoring
witnesses. Some of Applicant’s exhibits appear to have been identified at Mr. Strother’s
discovery deposition, but others also lack sponsoring witnesses because Applicant did not
submit any declarations. The ACR Stipulation provides that “the briefing may include
documents, declarations or affidavits, and discovery testimony,” 33 TTABVUE 5, but it is
silent regarding any requirements for authentication and foundation, and as to whether
documents can be considered for the truth of their contents. Cf. Conolty, 111 USPQ2d at 1304
(parties’ ACR stipulation provided that evidence filed with briefs was “authentic for purposes
of admission . . . and deemed properly of record for purposes of the ACR trial and the Board’s
final ACR decision”). In the absence of any contrary indication in the ACR Stipulation, and
any evidentiary objections by the parties on the grounds of lack of authentication, foundation,
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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8. Applicant’s Exhibits 1-26, including various emails, discovery responses by
Applicant and Opposers, webpages, documents, and photographs, made of
record by Applicant (41 TTABVUE 1-206; 43 TTABVUE 1-107).
Evidentiary Objections
In their reply brief, Opposers objected to Applicant’s Exhibit Nos. 1, 17-18, 22, and
24. 45 TTABVUE 25-31. Applicant filed a response to these objections after briefing
was complete, 48 TTABVUE, and Opposer filed a reply. 50 TTABVUE.
Applicant moved to strike Opposers’ Exhibit 41, which was among the evidence
filed with Opposers’ reply brief, 49 TTABVUE, and Opposers filed a response. 51
TTABVUE.
Opposers’ Objections
Exhibits 1 and 17
Opposers object to these exhibits on the ground that they consist of Applicant’s
responses to Opposers’ interrogatories and are thus inadmissible under Trademark
Rule 2.120(k)(5), 37 C.F.R. § 2.120(k)(5),21 which provides in pertinent part as follows:
[A]n answer to an interrogatory . . . may be submitted and
made part of the record only by the receiving or inquiring
party except that, if fewer than all of the . . . answers to
interrogatories are offered in evidence by the receiving or
inquiring party, the disclosing or responding party may
introduce under a notice of reliance any other . . . answers
to interrogatories . . . which should in fairness be

or hearsay, we will consider the contents of all non-excluded documents in the record for
whatever probative value they may have. See Daniel J. Quirk, Inc. v. Vill. Car Co., 120
USPQ2d 1146, 1152 n.27 (TTAB 2016).
21 Opposers miscited Rule 2.120(k)(5) as Rule 2.120(j)(5). 45 TTABVUE 26-27; 50 TTABVUE
3.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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considered so as to make not misleading what was offered
by the receiving or inquiring party.
Opposers argue that because they did not submit Applicant’s responses to Opposers’
interrogatories as part of their evidence, there is no basis for Applicant’s submission
of any of its responses. 45 TTABVUE 26-28.
Applicant acknowledges Trademark Rule 2.120(k)(5), and purports to argue that
“the language and Board rules allow for many exceptions to this rule,” 48 TTABVUE
3 (citing Bass Pro Trademarks LLC v. Sportsman’s Warehouse Inc., 89 USPQ2d 1844
(TTAB 2008)), and that “it is in the discretion of the Board whether it should be
included or not as the language says, ‘the Board, in its discretion, may refuse to
consider the additional written disclosures or responses.’” 48 TTABVUE 3.22 But
Applicant’s main argument, “[t]o just put it plainly,” is that it “was under the
impression that all discovery had been stipulated to be part of the record” and that
its counsel interpreted the language “discovery testimony” in the ACR Stipulation “to
include written discovery responses because if it meant ‘discovery depositions’ it could
have specifically stated as such.” Id. Applicant also requests the opportunity “to
amend those exhibits to cure the procedural defect as allowed under TBMP § 704.02,”
id., and proffers a document entitled “Applicant’s First Notice of Reliance and Cure
for Deficiencies,” id. at 8-15, which consists of various interrogatory responses offered

22 Bass Pro Trademarks is inapposite. In that case, the Board permitted the defendant to rely
on its own discovery responses because the plaintiff did not object to their use and the
responses had been used as exhibits during discovery depositions, 89 USPQ2d at 1847 n.6,
circumstances that do not exist here.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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to provide “Applicant’s owner’s narrative when the event was still fresh” in response
to Opposers’ use of the Strother discovery deposition. Id. at 8.
We reject Applicant’s interpretation of the language of the ACR Stipulation. The
phrase “discovery testimony” cannot reasonably be understood “to include written
discovery responses,” id. at 3, including interrogatory answers whose submission by
Applicant would otherwise contravene Trademark Rule 2.120(k)(5).23 “Testimony”
means “evidence of a witness; evidence given by a witness, under oath or affirmation;
as distinguished from evidence derived from writings, and other sources.” The Law
Dictionary Featuring Black’s Law Dictionary Free Online Legal Dictionary (2nd ed.)
(www.thelawdictionary.org/testimony, accessed on November 6, 2018).24 In the
context of the ACR Stipulation as a whole, the only reasonable interpretation of the
phrase “discovery testimony” is “evidence given by a witness” during discovery, such
as Mr. Strother’s testimony at his discovery deposition, which was offered by both

23 In discussing the meaning of the phrase “discovery testimony” in their reply brief, Opposers
suggest that the Interlocutory Attorney who issued the Board’s order approving and
summarizing the parties’ agreement was responsible for defining “what was, and what was
not permissible in the summary judgment briefing. . . .” 50 TTABVUE 2-3. It was the parties,
however, not the Board, who decided “what was, and what was not permissible in the
summary judgment briefing.” 33 TTABVUE 5. The parties are responsible for any
uncertainty in the language of their ACR Stipulation that forces the Board to try to glean
their intentions regarding the creation of the record. In that regard, we have admonished
litigants using ACR that to obtain its full benefit, “it is important that parties draft clearly-
worded stipulations regarding procedures, claims and defenses, and the factual record.” Kemi
Organics, LLC v. Gupta, 126 USPQ2d 1601, 1602 n.3 (TTAB 2018).
24 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 form or regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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sides.25 We conclude that the ACR Stipulation does not override Trademark Rule
2.120(k)(5) to permit Applicant’s submission of its own interrogatory responses.
We also reject Applicant’s request to amend its interrogatory responses “to cure
the procedural defect as allowed under TBMP § 704.02.” 48 TTABVUE 3. The cited
TBMP section pertains to notices of reliance, a tool by which parties may make
evidence of record during their trial periods, and discusses a party’s “[f]ailure to
identify the relevance of the evidence [submitted under notice of reliance], or
associate it with issues in the proceeding, with sufficient specificity,” which is “a
procedural defect that can be cured by the offering party within the time set by Board
order.” Trademark Rule 2.122(g), 37 C.F.R. § 2.122(g). The ACR Stipulation recites
the parties’ agreement to “a ‘one-brief model’ summary judgment proceeding akin to
that set forth in Rule 56 of the Federal Rules of Civil Procedure,” 33 TTABVUE 2-3,
and it provides neither for the submission of notices of reliance nor for the subsequent
cure of any such submissions under the provisions of Rule 2.122(g). In any event, the
problem with Applicant’s use of its interrogatory responses is not that Applicant did
not indicate their relevance or associate them with issues in the three cases, but
rather that the ACR Stipulation does not permit their use by Applicant.
We sustain Opposers’ objection to Exhibits 1 and 17, and have given them no
consideration in our decision.

25 37 TTABVUE 87-96; 41 TTABVUE 133-134, 190-191; 45 TTABVUE 59-97.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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Exhibits 18, 22, and 24
Applicant’s Exhibits 18 and 22 are pages from Applicant’s website and from the
website of Philip Carter Winery, 43 TTABVUE 44-51, 80-91, while Exhibit 24
comprises various materials from the website of the Alcohol and Tobacco Tax and
Trade Bureau (“TTB”), including applications for a Certificate of Label Approval
(“COLA”). Id. at 95-103. Opposers object to these exhibits principally on the ground
that they were never produced to Opposers in discovery. 45 TTABVUE 28-29.26 They
argue that “it is well accepted that a finding of inadmissible [sic] is an appropriate
remedy for failures to make discovery of those same materials during the discovery
period,” id. at 29, citing In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994).
Smith & Mahaffey is inapplicable because it involved an ex parte appeal, in which
there is no discovery. The possibly applicable remedy here is the estoppel sanction,
under which “a party that fails to provide information may, upon motion or objection
by its adversary, be precluded from using that information or witness at trial, ‘unless
the failure was substantially justified or is harmless. Fed. R. Civ. P. 37(c)(1).’” Great
Seats Inc. v. Great Seats Ltd., 100 USPQ2d 1323, 1326-27 (TTAB 2011); see generally
TBMP § 527.01(e).
Applicant argues that earlier versions of webpages in Exhibit 18 were produced
in discovery and that the version made of record “is just simply the most up to date
screenshot of the wines page on the website that was made exhaustively known to

26 Opposers separately object to the first two pages of Exhibit 24 on the ground that they were
taken from the TTB website either without a URL or the date on which they were accessed.
Id. at 29-30.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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the Opposers.” 48 TTABVUE 4. With respect to Exhibits 22 and 24, Applicant argues
that it provided some of the materials in discovery, as shown in a new Exhibit 27 that
“includes just some of the documents turned over during the discovery process,” id.
at 4, 17-30, that Applicant otherwise directed Opposers to various websites, id. at 4-
5, and that the TTB website is publicly accessible. Id. at 5.
Opposers reply that it is insufficient to be made aware of particular websites and
that the TTB website is publicly accessible, and that the pages from the TTB website
do not bear URLs or the dates on which they were accessed. 50 TTABVUE 4-5.
We overrule Opposers’ objections. The pages of Exhibit 24 bear sufficient evidence
of the dates on which they were downloaded and the URL of the TTB website to
enable Opposers to access the documents if it wished to do so. 43 TTABVUE 96-103.27
With respect to Exhibits 18 and 22, to the extent that Applicant failed to provide the
exact exhibits during discovery, we find, under the applicable factors for application
of the estoppel sanction set forth in Great Seats, 100 USPQ2d at 1327, that
Applicant’s failure to do so was harmless. Applicant claims, without serious dispute,
that it provided earlier versions of its website and various other materials during
discovery, and Opposers profess no surprise in having to address the challenged
exhibits, and no inability to do so. To the contrary, in their reply brief, Opposers
discuss Exhibit 18, captioned “Cost of Wines,” 45 TTABVUE 20, but argue that proof
of the cost of the particular wines sold by Applicant is legally irrelevant on the issue

27 Moreover, the URL strings on the COLAs include the words “publicFormDisplay,” 43
TTABVUE 98-103, belying Opposers’ claimed belief that “the COLA website is a secure,
registered user-only website that Opposers’ counsel cannot access.” 45 TTABVUE 30.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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of the sophistication of the purchasers. Id. at 18-20.28 We have considered the
challenged exhibits for whatever probative value they may have.
Applicant’s Objections
Applicant objects to and moves to strike (1) Opposers’ Exhibit 41 to the Second C.
Carter Declaration, a document entitled “Lease and License Agreement” between
Shirley Plantation and an entity identified as Shirley Plantation Foundation, 45
TTABVUE 35-39,29 which was submitted with Opposers’ reply brief, and (2) “all
references found in the Opposers’ Reply Trial Brief.” 49 TTABVUE 2. Applicant
claims that during discovery, Opposers produced only an unsigned version of the
agreement in response to Applicant’s discovery requests rather than the complete
signed version submitted with Opposers’ reply brief. Id. at 4.
Opposers respond that Applicant’s motion is “inconsequential” because Opposers
only made the agreement of record in response to Applicant’s claim that Opposers
abandoned the registered marks, which Opposers contend was advanced for the first
time in Applicant’s brief. 51 TTABVUE 3. Opposers’ argument refers to Applicant’s
claim in its brief that “Shirley Plantation LLC has not been in commerce since 2008
thus abandoning any trademark rights and should have its registration of [the]
Shirley Plantation trademark cancelled.” 40 TTABVUE 15. Opposers argue that
because Applicant did not counterclaim to cancel the pleaded registrations,

28 Exhibit 22, captioned “Interstate Commerce, Vino Shipper, Australia,” 43 TTABVUE 80,
similarly references the prices and nature of Applicant’s wines. Id. at 82-88.
29 A confidential redacted version of Exhibit 41 is filed in the publicly available TTABVUE
file. An unredacted version was filed under seal. 46 TTABVUE 2-23.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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“Applicant’s arguments amount to an impermissible collateral attack on the validity
of the registered mark,” 51 TTABVUE 3, and that Opposers’ “[f]ailure to provide the
signature page in all respects is therefore harmless.” Id.
We deny Applicant’s motion to strike as moot because Opposers purport to rely on
the agreement only in response to Applicant’s claim that Shirley Plantation has
abandoned its registered marks, an unpleaded counterclaim that we cannot consider.
It has long been the law that “in the absence of a counterclaim for cancellation, it is
not open to an applicant . . . to prove abandonment of a registered mark in an
opposition proceeding,” The Gillette Co. v. “42” Prods. Ltd., Inc., 396 F.2d 1001, 158
USPQ 101, 104 (CCPA 1968), and Applicant never filed a counterclaim to cancel the
pleaded registrations. See also Trademark Rule 2.106(b)(3)(i) (a defense attacking the
validity of a pleaded registration in an opposition is a compulsory counterclaim if
grounds for the counterclaim existed at the time when the answer is filed or are
learned during the course of the opposition); TBMP § 311.02(b) and cases cited in note
21. At the same time, we hold Opposers to their claim that the license agreement was
offered only in response to Applicant’s unpleaded abandonment claim, and we have
not considered it for any other purpose.
III. Factual Background
This section provides a general factual background on matters that are relevant
to our analysis of the issues discussed below, and it does not contain all of our factual
findings. We make additional findings below in connection with specific issues.

Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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Shirley Plantation and the Carter Family of Virginia
Shirley Plantation, located on the north bank of the James River in Charles City,
Virginia, was one of the first plantations in the American colonies, and has been
operating continuously for over 400 years. First C. Carter Decl. ¶¶ 2, 7. It was added
to the National Register of Historic Places in 1969 and declared a National Historic
Landmark in 1970. Id. at ¶ 7.
Principals of both parties are descendants of the Carter family of Virginia, whose
members have resided at Shirley Plantation for hundreds of years. Charles Carter
claims to be “the senior most surviving Carter male in the male lineage of the well-
known Carter family of Virginia, that traces its ancestry and ownership of Shirley
Plantation back to 1723 when Elizabeth Hill, great granddaughter of Edward Hill I,
married John Carter, eldest son of Robert ‘King’ Carter,” and to be a “direct
descendant of Robert ‘King’ Carter through the eldest son of every generation.” Id. at
¶ 1.30 Applicant’s principal, Philip Carter Strother, traces his ancestry to another son
of “King” Carter, Strother Tr. 33:22-35:9; Ex. 10,31 and Opposers acknowledged that
Mr. Strother is also “a direct descendant of Robert ‘King’ Carter” in a 2013 press
release. 38 TTABVUE 87-90.

30 He testified that “[m]embers of the Carter family, including myself, presently own, operate
and reside at Shirley Plantation.” First C. Carter Decl. ¶ 3. His brother Robert Randolph
(“Randy”) Carter has worked at Shirley Plantation, R. Carter Decl. ¶ 1, and his mother Helle
lived and worked at Shirley Plantation from 1960 until 2013. H. Carter Decl. ¶ 1.
31 An informal “family tree” of Mr. Strother’s side of the Carter family was marked as an
exhibit at his deposition and was submitted by Applicant. 41 TTABVUE 133-135. A
discussion of the history of the Carter family of Virginia and its involvement in winemaking
has also appeared on Applicant’s website. 38 TTABVUE 113-122.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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As a working plantation, Shirley Plantation has produced and sold a variety of
products, First C. Carter Decl. ¶ 2, 4, and Charles Carter testified that Shirley
Plantation also “has a long history of producing grapes and wines.” Id. at ¶ 4; Ex. 3
(38 TTABVUE 6-8). The record does not reflect the sale of any grapes or wines
produced by Shirley Plantation, but shows that private-label wines bearing the
designation SHIRLEY PLANTATION have been produced by other entities for sale
at Shirley Plantation and elsewhere on two occasions. The first was between 1996
and 2003, when a private-label SHIRLEY PLANTATION King Carter Claret
cabernet sauvignon was produced by The Williamsburg Winery for sale at the Shirley
Plantation gift shop. Id. at ¶ 8; Ex. 7 (38 TTABVUE 15-16); H. Carter Decl. ¶ 5; R.
Carter Decl. ¶ 7. The second was in 2013, when Applicant produced a SHIRLEY
PLANTATION chardonnay that was sold for a short time at the Shirley Plantation
gift shop and elsewhere. First C. Carter Decl. ¶ 9; R. Carter Decl. ¶ 4.32
Shirley Plantation currently hosts more than 25,000 visitors per year, who tour
the plantation grounds, gardens, buildings, and exhibits, and visit the gift shop. First
C. Carter Decl. ¶ 6; Ex. 10 (38 TTABVUE 21-25). By assignment, Shirley Plantation
owns Registration No. 2331087 for the mark SHIRLEY PLANTATION for “museum
services including guided and unguided historical tours on-site,” which issued in 2000

32 Opposers’ declarant Tayloe Dameron testified that Upper Shirley was formed “to use estate
grown grapes to produce wine and label it with a ‘house mark’ designation ‘UPPER SHIRLEY
VINEYARDS,’” Dameron Decl. ¶ 9, and that Upper Shirley first produced wine in 2014, has
opened a tasting room on site, id. at ¶ 8, and has received “numerous medals and accolades”
for its estate grown wines. Id. at ¶ 10. As discussed below, Upper Shirley is not a plaintiff on
the § 2(d) claims in the Word Mark Oppositions, and we do not rely on Mr. Dameron’s
testimony regarding Upper Shirley’s activities on any issues.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 20 -
and was renewed in 2010. 41 TTABVUE 174-175; Second C. Carter Decl. ¶ 2; Ex. 40
(45 TTABVUE 32-34). Shirley Plantation also hosts other events, First C. Carter
Decl. ¶ 5, and Charles Carter testified that “[w]ine has been sold and served at
numerous special private and public events (e.g. wine tastings) for decades at Shirley
Plantation.” Id. at ¶ 6; Exs. 1-2 (38 TTABVUE 2-5).
Shirley Plantation has operated a gift shop since 1971, H. Carter Decl. ¶¶ 1-2,
and, by assignment, it owns Registration No. 2331083 for the mark SHIRLEY
PLANTATION for “retail gift shop services,” which issued in 2000 and was renewed
in 2010. 41 TTABVUE 176-177; Second C. Carter Decl. ¶ 2; Ex. 40 (45 TTABVUE 32-
34). A wide variety of goods have been sold in the gift shop, H. Carter Decl. ¶¶ 3-4,
and some of them have displayed the designation SHIRLEY PLANTATION. First C.
Carter Decl. ¶ 5; Exs. 4-7 (38 TTABVUE 9-16); H. Carter Decl. ¶ 4. Wine has not been
sold at the gift shop for a few years. First C. Carter Decl. ¶ 9.
The Parties’ Dealings Regarding SHIRLEY PLANTATION Wine
Shirley Plantation celebrated its 400th anniversary in 2013. In March 2013,
Randy Carter contacted Mr. Strother to inform him of the 400th anniversary and to
advise him that Shirley Plantation “would like to discuss the possibility of having a
wine to commemorate our anniversary” and was “also interested in hosting a wine
tasting at Shirley.” 41 TTABVUE 14.33 Mr. Strother responded that Applicant was
“very interested in working with Shirley Plantation on a 400th anniversary wine, as

33 Both sides submitted email correspondence between Shirley Plantation and Applicant from
2013. We cite primarily to Applicant’s submissions, which include multiple copies of the same
emails in various email chains. The parties’ dealings are also discussed in Randy Carter’s
declaration and in Mr. Strother’s discovery deposition.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 21 -
well as a wine tasting event.” Id. Applicant subsequently developed a label for the
wine based on prior Philip Carter Winery labels, and a floor plan of Shirley Plantation
and draft text regarding the history of Shirley Plantation provided to Applicant by
Randy Carter. Id. at 9, 11-14, 21-25, 27-30. What Mr. Strother described as “the
Shirley Chardonnay” was bottled by Applicant by May 24, 2013. Id. at 32; Strother
Tr. 38:16-40:5. Applicant filed the opposed application to register SHIRLEY
PLANTATION a week later.
Mr. Strother visited Shirley Plantation in June 2013 and met with Randy Carter
and Janet Appel, the Director of the Shirley Plantation Foundation, to discuss a
possible tasting room and visitor’s center at Shirley Plantation, as well as Applicant’s
providing of wines for the Shirley Plantation gift shop. 41 TTABVUE 35; R. Carter
Decl. ¶ 2; Strother Tr. 54:25-57:23; 58:10-22; 59:8-11. Mr. Strother testified that
during the meeting, he “conveyed very clearly to them that Philip Carter Winery
produces the wine and has ownership over everything associated with the wine –
name, label, everything associated with . . . the wine, because they’re not in the wine
business [and] Philip Carter Winery is,” Strother Tr. 63:9-17, but he did not advise
them of Applicant’s filing of the SHIRLEY PLANTATION application. Strother Tr.
61:17-62:13. In a subsequent email to them summarizing the meeting, Mr. Strother
did not discuss ownership of the mark or the filing of the application. Strother Tr.
63:21-64:2; 41 TTABVUE 35. Mr. Strother claimed instead that the use of the “™”
symbol on the draft label that he had forwarded to Shirley Plantation indicated
“[t]hat we’re pursuing the trademark.” Strother Tr. 65:5-66:2.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 22 -
Following the June meeting, the parties corresponded regarding the details of the
forthcoming wine tasting event at Shirley Plantation. 41 TTABVUE 44-45. Randy
Carter and Ms. Appel visited the Philip Carter Winery in July 2013. Id. at 61-62;
Strother Tr. 87:21-88:10. Randy Carter testified that he and Ms. Appel requested that
Applicant provide a contract for the parties’ further business relationship, R. Carter
Decl. ¶ 2, and Mr. Strother acknowledged that he may have received such a request,
Strother Tr. 79:20-80:8, but no agreement was ever drafted.
In late July, Shirley Plantation drafted a press release for the wine tasting event
and a product information card. 41 TTABVUE 65-70; Strother Tr. 77:14-79:2. Two
versions of the press release were sent out. 41 TTABVUE 71, 128-129; 38 TTABVUE
89-90. Both stated that “Shirley Plantation is proud to partner with the Philip Carter
Winery to call attention to the Carter family’s heritage of wine making in Virginia,”
and discussed both “branches” of the Carter family. 41 TTABVUE 128; 38 TTABVUE
89-90. A formal invitation was also developed and disseminated. Id. at 132.
A wine tasting featuring the SHIRLEY PLANTATION chardonnay took place at
Shirley Plantation on October 12, 2013. R. Carter Decl. ¶ 4; Strother Tr. 80:23-81:8;
82:2-9. The SHIRLEY PLANTATION chardonnay and other wines from Philip Carter
Winery were displayed at the gift shop at Shirley Plantation for a short time after the
tasting. R. Carter Decl. ¶ 4. Randy Carter testified that he and Mr. Strother agreed
that the remaining SHIRLEY PLANTATION chardonnay could be sold after the
tasting only at the Richmond Folk Fest and through wine club sales, id., while Mr.
Strother did not recall such an agreement or specific discussions of the disposition of
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 23 -
the inventory, and did not recall where it was sold. Strother Tr. 104:7-25. He testified
that all sales of SHIRLEY PLANTATION chardonnay ceased “[a]pproximately on or
about October 2014.” Strother Tr. 21:18-22:9. No inventory of the SHIRLEY
PLANTATION chardonnay exists and no further vintages of SHIRLEY
PLANTATION chardonnay have been produced. Strother Tr. 22:10-16.
Mr. Strother testified that he first advised Randy Carter of the filing of the
SHIRLEY PLANTATION application at the tasting at Shirley Plantation, but did not
recall Randy Carter’s response. Strother Tr. 67:11-21. In his testimony about the
tasting, Randy Carter did not mention being advised by Mr. Strother about the filing
of the application, R. Carter Decl. ¶ 4, and he did not testify as to when he first
learned of the filing. He did testify that “once we became aware that Mr. Strother had
filed a trademark application we objected, and I voiced our objection in a phone call
to Mr. Strother on or about November 15, 2013,” and that “[d]uring that call Mr.
Strother indicated and agreed he would abandon the trademark application.” R.
Carter Decl. ¶ 5. Randy Carter authenticated a contemporaneous email to Charles
Carter and others in which he summarized the call and related Mr. Strother’s
statement that “he would withdraw the application and send me confirmation of its
withdrawal on Monday.” Id.; Ex. 37 (38 TTABVUE 125). Mr. Strother acknowledged
the call, but did not recall its contents, or whether he agreed to withdraw the
application. Strother Tr. 84:8-85:3.
On the following Monday, November 18, 2013, Mr. Strother sent an email to
Randy Carter trying to arrange a conference call later in the week involving the two
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 24 -
of them and Charles Carter. 41 TTABVUE 75; Strother Tr. 83:3-20. Randy Carter
responded in an email a few minutes later stating that he would pass Mr. Strother’s
request on to Charles Carter and asking “What is the status of the trademark for
‘Shirley Plantation Wines’? On Friday you said you were going to pull the application
and I have not received any [sic] to confirm that.” 41 TTABVUE 75; Strother Tr.83:21-
84:7. There is no evidence of any response from Mr. Strother regarding the status of
the SHIRLEY PLANTATION application, Strother Tr. 85:4-8, or of any further
discussion between the parties regarding the application.34
Later in the day on November 18, 2013, Applicant filed its application to register
SHIRLEY, submitting as a specimen of use the front of the SHIRLEY PLANTATION
chardonnay label, which the examining attorney assigned to the SHIRLEY
application accepted. Like the SHIRLEY PLANTATION application, the SHIRLEY
application was filed by Mr. Strother, an attorney, through the Strother Law Offices.
There is no evidence that Applicant advised Opposers of the filing of the SHIRLEY
application.
Applicant’s SHIRLEY Chardonnay Wine
Applicant has sold four vintages of chardonnay wines, produced in 2013, 2014,
2015, and 2016, that have been labelled with the applied-for SHIRLEY mark, each of
which has been sold for about one year. Strother Tr. 23:6-24:1. The 2013 vintage was
described on a page from Applicant’s website as a “bold, confident chardonnay named

34 At his deposition, Mr. Strother was shown an email exchange with Randy Carter in July
2014 that apparently concerned the parties’ dispute, Strother Tr. 89:1-90:4, but that
correspondence is not in the record.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 25 -
for Shirley Plantation, one of America’s oldest family-run businesses.” Strother Tr.
91:7-13. This description remained on Applicant’s website for about three years, and
Mr. Strother claimed that it was a “carryover typographical error” from the 2012
SHIRLEY PLANTATION chardonnay. Strother Tr. 91:14-92:7.
The Parties’ Respective Coats of Arms
The Carter Coat of Arms
Charles Carter testified that the Carter Coat of Arms has been used at Shirley
Plantation since at least as early as 1723. First C. Carter Decl. ¶ 14. He claimed
personal ownership of the right to control the use of the Carter Coat of Arms, which
he testified was originally granted to Robert Carter of London “per the Harleian
Society’s The Visitation of London in 1633/34” and which descended to him “as the
most senior surviving male in my lineage.” First C. Carter Decl. ¶ 23.35 He claimed
that his family descends from the original grantee Robert Carter “as seen in the
blazon, or description of arms, ‘Argent a chevron Sable between three Catherine
wheels Vert.’” Id.36 He testified that the Carter Coat of Arms has been used on family
wine bottle seals, wax seals, silverware, silver cups, signet rings and other devices,
“including the tomb of Robert Carter of Corotoman, the progenitor to my family here
in Virginia,” id., and he authenticated several examples of such uses at Shirley
Plantation. First C. Carter Decl. ¶¶ 15-22; Exs. 13-19 (38 TTABVUE 31-45). His
mother Helle Carter testified about use of the Carter Coat of Arms on price tags at

35 The referenced “Visitation of London in 1633/34” is not in the record.
36 The referenced “blazon” is not in the record and he does not explain its meaning.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 26 -
the Shirley Plantation gift shop between 1971 and 1979 and on certain items at some
unspecified time. H. Carter Decl. ¶¶ 2-4; Ex. 28 (38 TTABVUE 91-92).
The Coat of Arms Mark
Mr. Strother described the applied-for Coat of Arms Mark as the “Philip Carter
crest” and as the property of Philip Carter Winery. Strother Tr. 26:23-27:8. He
testified that it is a signature part of the Philip Carter Winery “brand that’s used
with all the wines,” Strother Tr. 18:1-12, and on a few other goods that are sold at the
Philip Carter Winery. Strother Tr. 26:6-22. He claimed that there are “multiple
images that have been used by the Carter family over the centuries” and that the
Coat of Arms Mark “is its own brand identity at this point.” Strother Tr. 30:8-12.
The Coat of Arms mark was developed in 2008, the year in which Mr. Strother
acquired the Stillhouse Vineyards in Hume, Virginia in 2008 and renamed them the
Philip Carter Winery. Strother Tr. 16:1-23. He worked with a graphic designer named
Allan Guy, who is deceased. Strother Tr. 16:1-23; 92:9-96:19; 41 TTABVUE 82-119.
Mr. Strother testified that he had considered adopting what he called the “Strother
crest,” Strother Tr. 96:2-6; 107:7-15, but that he developed a crest based on a version
of the Carter Coat of Arms that Mr. Guy located on the Internet. Strother Tr. 93:11-
94:19; 95:3-96:19. Mr. Guy forwarded to Mr. Strother draft bottle labels bearing the
crest, 41 TTABVUE 100-112, and Mr. Strother responded that he was uncertain as
to whether the draft crest was “[t]he correct Carter crest” because his grandmother’s
Carter family heirlooms had been lost in a fire, but that he wanted to “create our own
crest using elements from the Carter crest as well as the Strother crest.” Id. at 117.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 27 -
Mr. Strother stated that if he did so, “[t]hen the issue is resolved once and for all and
it becomes our own as I am to the last, a Strother as well” and that he “believe[d] this
is what they did down at Shirley Plantation” and that “[t]heir crest is a blend of the
Carter and Hill (I believe) family crests.” Id. Mr. Strother testified that the crest that
he ultimately selected had cartwheel features that reminded him of wine barrels.
Strother Tr. 107:16-108:8.
The record contains examples of the use of the Coat of Arms Mark on a coffee cup,
on Applicant’s signage, and on the labels of a 2006 Cleve Plantation chardonnay,
which received a COLA in May 2008. 41 TTABVUE 195, 197, 204-206. Applicant’s
specimen of use of the Coat of Arms mark is the back of a wine label:

IV. Standing
A threshold issue in every inter partes case is the plaintiff’s standing to challenge
registration. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); John W. Carson Found. v. Toilets.com Inc., 94
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 28 -
USPQ2d 1942, 1945 (TTAB 2010). There is “a liberal threshold for determining
standing . . . .” Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1477, 1479 (TTAB 2017). The
plaintiff need only show that it possesses a real interest in the proceeding beyond
that of a mere intermeddler, and that it has a reasonable basis for its belief of damage
resulting from registration of the subject mark. Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023, 1025-26 (Fed. Cir. 1999). A “real interest” is a “direct and personal
stake” in the outcome of the proceeding. Azeka Bldg. Corp., 122 USPQ2d at 1479
(quoting Ritchie, 50 USPQ2d at 1026).
Standing is part of the plaintiff’s case in chief, and must be affirmatively
established. See, e.g., Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982). Where, as here, there are multiple opposers, each
opposer must prove its own standing in each proceeding. Chicago Bears Football Club
Inc. v. 12th Man/Tennessee LLC, 83 USPQ2d 1073, 1075 (TTAB 2007); Chem. New
York Corp. v. Conmar Form Sys., Inc., 1 USPQ2d 1139, 1142 (TTAB 1986).37
Opposers do not address the issue of standing in their main brief. Applicant argues
in its brief that none of the Opposers have standing to assert any claim. 40 TTABVUE
12-17. Opposers respond to these arguments in their reply brief. 45 TTABVUE 9-12.

37 Once standing is established as to any claim, however, “the opposer is entitled to rely on
any of the grounds set forth in section 2 of the Lanham Act which negate applicant’s right to
its subject registration.” Jewelers Vigilance Comm., Inc. v. Ullenberg Corp., 823 F.2d 490, 2
USPQ2d 2021, 2023 (Fed. Cir. 1987) (citing Lipton Indus., 213 USPQ at 190).
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 29 -
A. Word Mark Oppositions
Shirley Plantation has standing in these oppositions because of the presence in
the record of its pleaded registrations of SHIRLEY PLANTATION, which
registrations give it a real interest in the proceedings and a reasonable basis for a
belief of damage resulting from registration of the applied-for SHIRLEY
PLANTATION and SHIRLEY marks, based on likelihood of confusion claims that are
not wholly without merit.38 Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64
USPQ2d 1375, 1377-78 (Fed. Cir. 2000); Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Indus., 213 USPQ at 189.39
B. Design Mark Opposition
Applicant argues in its brief that Charles Carter “is an individual who is opposing
Applicant’s registration based on the antiquated and long since abolished in this

38 Applicant argues that the Shirley Plantation Foundation has supplanted Shirley
Plantation as the entity engaged in commercial activities under the registered marks, 40
TTABVUE 16-17, and that Shirley Plantation thus lacks standing because it “has not been
in commerce since 2008 thus abandoning any trademark rights and should have its
registration of [the] Shirley Plantation trademark canceled.” Id. at 15. As discussed above,
because Applicant never counterclaimed to cancel Shirley Plantation’s registrations, these
arguments constitute an impermissible collateral attack on the validity of the registrations,
and we will give Applicant’s abandonment arguments no consideration, either with respect
to standing based on the registrations or the merits of Shirley Plantation’s claims.
39 We need not address Upper Shirley’s standing in the Word Mark Oppositions. Although
Opposers discuss Upper Shirley’s alleged trademark rights in their main brief, 37 TTABVUE
16-17, and claim in their reply brief that “Upper Shirley Vineyards has common law
trademark rights under Virginia law as established in Opposer’s [sic] main brief,” 45
TTABVUE 9 n.2, Upper Shirley is not a plaintiff on the § 2(d) claims in the Word Mark
Oppositions, 9 TTABVUE 11-12 (Amended Opp. ¶¶ 37-38), and Opposers admit that they
“elected to focus their analysis on the conflict between Applicant’s marks and the registered
SHIRLEY PLANTATION marks, and waived other arguments by not setting them out fully
. . . .” 45 TTABVUE 9 n.2.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 30 -
country rule of primogeniture.” 40 TTABVUE 14.40 Applicant further argues that he
“claims sole ownership and rights in all facets of the law to the Carter Family over
the hundreds if not thousands of descendants that can trace their lineage to Robert
Carter of Virginia,” that Charles Carter’s claims based on his lineage are “irrelevant
because Mr. Carter is not in commerce as required by the Lanham Act” and because
“Opposers have provided no evidence of Mr. Carter’s commercial activities,” and that
“Mr. Carter’s participation as a party to this proceeding is without standing because
there is no reasonable basis to believe he would be damaged.” Id. at 15. According to
Applicant, “[w]ithout bona fide use of a trademark in commerce, Mr. Carter has no
trademark rights to enforce.” Id.
Opposers respond in their reply brief that Charles Carter has standing because
he “claims a proprietary right in the family coat of arms as the oldest male member
in the lineage from Robert King Carter” and that Opposers “have specifically claimed
Shirley Plantation and Mr. Carter would be personally harmed by registration of the
Carter family coat of arms.” 45 TTABVUE 9.
Shirley Plantation claims that the Carter Coat of Arms is a common law
trademark, 37 TTABVUE 44-50, and both Shirley Plantation and Charles Carter
assert a claim of a false suggestion of a connection with them based on their alleged
identification by and with the Carter Coat of Arms. 8 TTABVUE 7-8 (Amended Opp.

40 Applicant does not specifically address Shirley Plantation’s standing in the Design Mark
Opposition in its argument that Shirley Plantation has abandoned its marks and thus lacks
enforceable trademark rights. 40 TTABVUE 15-17. Nevertheless, as discussed above, Shirley
Plantation must affirmatively prove its standing in this case.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 31 -
¶ 29b) (“The Carter Coat of Arms has been a symbol of Shirley and the Carter family
for hundreds of years and is the equivalent of a surname . . . .”). The use of the Carter
Coat of Arms at Shirley Plantation discussed above gives Shirley Plantation a real
interest in the proceeding beyond that of a mere intermeddler, and a reasonable basis
for its belief of damage resulting from registration of the Coat of Arms Mark, Ritchie,
50 USPQ2d at 1025-26, which are sufficient to give it standing. Herbko, 64 USPQ2d
at 1377-78; Bos. Athletic Ass’n v. Velocity, LLC, 117 USPQ2d 1492, 1494 (TTAB 2016).
As for Charles Carter, he testified that he is the principal partner in Shirley
Plantation and lives at and operates the Shirley Plantation property, First C. Carter
Decl. ¶ 1, that “the Carter family coat of arms has become associated with my family
and Shirley Plantation,” and “that I, as the most senior male in the Carter family,
and not Philip Strother, owner of Stillhouse Vineyards (now Philip Carter Winery),
own and the right to control the use of the Carter family coat of arms.” Id. at ¶¶ 22-
23. “In the context of a Section 2(a) claim, standing ‘does not rise or fall on the basis
of a plaintiff’s proprietary rights in a term; rather, a Section 2(a) plaintiff has
standing by virtue of who the plaintiff is, that is the plaintiff’s personality or
persona.’” Bos. Athletic Ass’n, 117 USPQ2d at 1494. Contrary to Applicant’s claims
that Charles Carter lacks standing because he “is not in commerce as required by the
Lanham Act” and because “Opposers have provided no evidence of [his] commercial
activities,” 40 TTABVUE 15, “an opposer may prevail on the false suggestion of a
connection ground ‘even if the name claimed to be appropriated was never
commercially exploited by the opposer as a trademark or in a manner analogous to
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 32 -
trademark use.’” Id. at 1495 n.10 (quotation omitted). We find that Charles Carter
has also made a showing of a “direct and personal stake” in the outcome of the
proceeding, Azeka Bldg. Corp., 122 USPQ2d at 1479, and a reasonable basis for his
belief of damage resulting from registration of the Coat of Arms Mark sufficient to
give him standing. In finding that both Opposers have standing, we are mindful that
“‘[t]he purpose in requiring standing is to prevent litigation where there is no real
controversy between the parties, where a [party] is no more than an intermeddler,’”
Jewelers Vigilance Comm., 2 USPQ2d at 2023 (quoting Lipton Indus., 213 USPQ at
189), and “to assure that concrete adverseness which sharpens the presentation of
issues upon which the [Board] so largely depends for illumination of difficult . . .
questions.’” Id. (quoting Baker v. Carr, 369 U.S. 186, 204 (1962)).
V. Shirley Plantation’s Likelihood of Confusion Claims in the Word Mark
Oppositions and the Design Mark Opposition41
Section 2(d) of the Trademark Act prohibits the registration of a mark that
“[c]onsists of or comprises a mark which so resembles a mark registered in the Patent
and Trademark Office, or a mark or trade name previously used in the United States
by another and not abandoned, as to be likely, when used on or in connection with
the goods of the applicant, to cause confusion, or to cause mistake, or to deceive.” 15
U.S.C. § 1052(d). To prevail on its § 2(d) claims in the three oppositions, Shirley
Plantation must prove, by a preponderance of the evidence, that it has priority with

41 We discuss the § 2(d) claims in the Word Mark Oppositions together because those cases
involve very similar issues. We discuss the § 2(d) claim in the Design Mark Opposition
separately because it involves different issues arising from Shirley Plantation’s assertion of
an unregistered design mark.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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respect to its asserted marks, and that Applicant’s use of the applied-for marks is
likely to cause confusion, mistake, or deception as to the source or sponsorship of
Applicant’s goods. Cunningham, 55 USPQ2d at 1848.
Our determination of the issue of likelihood of confusion is based on an analysis
of all 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). In
every likelihood of confusion analysis, two key factors are the similarities between
the marks and the similarities between the goods or services. 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.”).42
With respect to the first du Pont factor, we must compare the parties’ marks, in
their entireties, for similarities and dissimilarities in 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). In the Word Mark Oppositions, our analysis is based on a comparison of the
marks shown in Shirley Plantation’s registrations and in the two applications. In the
Design Mark Opposition, our analysis is based on a comparison of the mark shown in
the opposed application and the pleaded Carter Coat of Arms mark if Shirley

42 The parties discuss these key du Pont factors in each opposition, 37 TTABVUE 26-31, 46-
47; 40 TTABVUE 18-26, 39-40, and we summarize the applicable legal principles on them
immediately below. The parties discuss various other du Pont factors in the three oppositions,
and we address those other factors in the context of each case.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 34 -
Plantation can show a proprietary interest in the Carter Coat of Arms Mark, and its
use prior to the established or constructive date of first use of the Coat of Arms Mark.
Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1344 (TTAB 2017).
In assessing the similarity of marks, “[t]he 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, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)
(quotation omitted). “The focus is on the recollection of the average purchaser, who
normally retains a general rather than a specific impression of trademarks.” In re
C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015). A finding of similarity in
any of the several means of comparison may be sufficient to support a finding that
the marks are similar. In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988).
The second du Pont 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). In the Word Mark Oppositions, our analysis is based on a comparison
of the goods identified in the opposed applications and the services identified in
Shirley Plantation’s registrations. Id. at 1162; Octocom Sys., Inc. v. Houston
Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). In the
Design Mark Opposition, our analysis is based on a comparison of the goods identified
in the opposed application with any goods and services as to which the record shows
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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Shirley Plantation’s prior use of the alleged common law Carter Coat of Arms mark.
Bell’s Brewery, 125 USPQ2d at 1344.43
Goods can be related to services, see, e.g., Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004-05 (Fed. Cir. 2002), and goods and
services need not be identical or even competitive to find a 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
[and services] 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., 101 USPQ2d at 1722 (quoting 7-
Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007)).
Word Mark Oppositions
1. Priority
The presence in the record of Shirley Plantation’s registrations of SHIRLEY
PLANTATION eliminates priority as an issue in both oppositions as to the services
identified in the registrations. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d
1400, 182 USPQ 108, 110 (CCPA 1974); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434,
1436 n.7 (TTAB 2012).

43 Likelihood of confusion may be found in each opposition if it exists with respect to any item
in the pertinent identifications of Applicant’s goods. Tuxedo Monopoly, Inc. v. Gen. Mills Fun
Grp., 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). The identifications are lengthy and
redundant, and we will confine our analysis to the goods identified in each opposed
application as “wines.”
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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2. Likelihood of Confusion
Shirley Plantation argues that the relevant du Pont factors in these oppositions
are the similarity or dissimilarity of the parties’ marks and goods and services, the
similarity of the channels of trade, and the fame and strength of the SHIRLEY
PLANTATION mark. 37 TTABVUE 25-26. Applicant addresses these factors, as well
as the du Pont factor regarding sophistication of purchasers. 40 TTABVUE 20-31.
a. Fame and Strength of the SHIRLEY PLANTATION Mark
Shirley Plantation argues that “SHIRLEY PLANTATION is a famous and strong
mark.” 37 TTABVUE 32. Because the “fame of the prior mark, when present, plays a
‘dominant’ role in the process of balancing the DuPont factors,” Recot, Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000) (citing Kenner Parker
Toys Inc. v. Rose Art. Indus., Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir.
1992)), we will address this du Pont factor first.
Applicant argues that “[f]ame as it relates to trademark [sic] is reserved for so-
called household brands” and that “Opposer’s SHIRLEY PLANTATION [mark] does
not rise to the level of fame required for special treatment under the Lanham Act.”
40 TTABVUE 29-30.For purposes of our du Pont analysis, however, the fame factor
does not turn on whether SHIRLEY PLANTATION is a “household brand.” Id.
“‘While dilution fame is an either/or proposition—fame either does or does not exist—
likelihood of confusion fame ‘varies along a spectrum from very strong to very weak.’”
Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122
USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting Palm Bay Imps., 73 USPQ2d at 1694
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 37 -
(internal quotation omitted)). The Federal Circuit held in Joseph Phelps Vineyards
that we must place the SHIRLEY PLANTATION mark somewhere along “a spectrum
from very strong to very weak” so that we can assign some “discernable weight” to
this factor among “the totality of the circumstances.” Id. at 1735. “A very strong mark
receives a wider latitude of legal protection in the likelihood of confusion analysis,”
Tao Licensing, LLC v. Bender Consulting Ltd., 125 USPQ2d 1043, 1056 (TTAB 2017),
while a very weak mark receives a narrower scope of protection. A mark in the middle
of the spectrum logically receives a normal scope of protection. Bell’s Brewery, 125
USPQ2d at 1347 (finding that the opposer’s marks were entitled to “the normal scope
of protection to which inherently distinctive marks are entitled”).
In determining the strength of a mark, “we consider both inherent strength, based
on the nature of the mark itself, and commercial strength or recognition.” Id. at 1345
(citing Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458,
1476 (TTAB 2014)). With respect to inherent (conceptual) strength, the SHIRLEY
PLANTATION registrations issued without any requirement of a showing of acquired
distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), 41
TTABVUE 174-177, and a “mark that is registered on the Principal Register is
entitled to all Section 7(b) presumptions including the presumption that the mark is
distinctive and moreover, in the absence of a Section 2(f) claim in the registration,
that the mark is inherently distinctive for the [services].” Tea Bd. of India v. Republic
of Tea Inc., 80 USPQ2d 1881, 1889 (TTAB 2006). Applicant does not dispute the
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 38 -
conceptual strength of the SHIRLEY PLANTATION mark, and we find that it is
inherently distinctive.
Commercial strength (recognition) of the SHIRLEY PLANTATION mark “may be
measured indirectly by the volume of sales and advertising expenditures in
connection with the services sold under the mark” and other factors “such as the
length of time of use of the mark; widespread critical assessments; notice by
independent sources of the services identified by the marks; and the general
reputation of the services.” Tao Licensing, 125 USPQ2d at 1056. We must assess the
strength of the mark from the viewpoint of consumers of the services identified in
Shirley Plantation’s registrations. Joseph Phelps Vineyards, 123 USPQ2d at 1735.
Because those services are “museum services including guided and unguided
historical tours on-site” (Registration No. 2331087) and “retail gift shop services”
(Registration No. 2331083), the relevant advertising expenditures involve
advertising to attract visitors to Shirley Plantation and the relevant sales figures
involve the number of such visitors and the extent of sales by the Shirley Plantation
gift shop.
Shirley Plantation argues that its mark “has been consistently used in commerce
for over 400 years with respect to agricultural endeavors,” and with special events
featuring wine and gift shop services for decades. 37 TTABVUE 32. It also relies on
promotional expenditures of over $500,000 in the past 10 years, licensing and
enforcement efforts, visits by 25,000 people annually and 1,500,000 in the last half
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 39 -
century,44 and its recognition as a National Historical Location on the National
Register of Historic Places. Id. at 32-33.
Applicant criticizes the quantity and quality of Shirley Plantation’s evidence, 40
TTABVUE 31-32, and also argues that the mark’s strength has been diluted by the
existence of “37 live registrations containing SHIRLEY outside of Opposers’ and
Applicant’s registrations.” Id. at 31. Applicant submitted the results of a search of the
TESS database for SHIRLEY-formative marks, and printouts from TESS regarding
registrations of SHIRLEY for jewelry and SHIRLEY’S ANGELS for t-shirts and
charitable fundraising services. 43 TTABVUE 61-70. The submission of the TESS list
is insufficient to make any “live” registrations of SHIRLEY-formative marks of
record, Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1550 (TTAB 2012), and while
the list is of record, it “has little, if any, probative value” because it “consists of marks
and their application or registration number, as well as a marker indicating whether,
in the case of a registration, it is ‘dead’ or ‘live,’” and “we cannot determine from a
mere listing like this the nature of the goods or services for which these purported
marks have been applied-for or registered and many of the marks themselves appear

44 There is sparse and confusing evidence of sales by the Shirley Plantation gift shop. Exhibit
10, referenced in the First C. Carter declaration to show the number of visitors to Shirley
Plantation from 1995-2005, First C. Carter Decl. ¶ 7, consists of spreadsheets that give
different figures for “Gift Shop Sales” (and, for that matter, “Total No. Visitors”) between
2002 and 2005, 38 TTABVUE 23, and between 2003 and 2005. Id. at 24-25. There are no gift
shop sales figures for the years between 1973 and 2002 or for the years after 2005, and none
of Opposers’ witnesses provides that information. The spreadsheets and the First C. Carter
Declaration show that there has been a decline in annual visitors from the period of 1995-
2005, when Charles Carter testified that Shirley Plantation averaged 40,000-50,000 annual
visitors, to the present, when he testified that Shirley Plantation gets about 25,000 annual
visitors. First C. Carter Decl. ¶ 7; Ex. 10 (38 TTABVUE 24).
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 40 -
to contain substantial additional matter.” Id. Moreover, “[a]s to commercial
weakness, ‘[t]he probative value of third-party trademarks depends entirely on their
usage.’” Tao Licensing, 125 USPQ2d at 1059 (quoting Palm Bay. Imps., 73 USPQ2d
at 1693). There is no evidence of third-party use of SHIRLEY-formative marks, and
we find that Applicant’s third-party registration evidence does not show a diminution
in the strength of the SHIRLEY PLANTATION mark. See Bell’s Brewery, 125
USPQ2d at 1346-47 (13 third-party registrations and uses of similar marks
containing terms comprising the opposer’s marks insufficient “to establish that the
terms either have a descriptive significance or are in such widespread use that
consumers have come to distinguish marks containing them based on minute
differences”).
The record contains no information regarding the comparative size of Shirley
Plantation’s advertising expenditures and visitor figures vis-à-vis others who provide
the identified services,45 but the figures given for Shirley Plantation are very modest
by any measure. In addition, as noted above, there is little useful evidence of the
extent of sales by the Shirley Plantation gift shop, and no evidence of trademark or
service mark use of SHIRLEY PLANTATION “for over 400 years with respect to
agricultural endeavors.” 37 TTABVUE 32. Shirley Plantation points to only one
instance of enforcement, First C. Carter Decl. ¶ 13, and provides no specifics

45 The record contains only two advertisements for Shirley Plantation’s tour and gift shop
services. 38 TTABVUE 26-30. One of them appears on a page from the website at
VisitRichmondVa.com beneath an advertisement for Berkeley Plantation and next to a list
of eight other plantations in Virginia.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 41 -
regarding the licensing of its mark and facility for “movie/film and catalogue
locations” and other public-facing uses, id. at ¶¶ 6, 12, no information regarding the
number of visitors to the website at shirleyplantation.com, id. at ¶ 12, and no
evidence of media coverage of Shirley Plantation. On this record, we find that the
SHIRLEY PLANTATION mark is commercially weak for the identified services. Cf.
Tao Licensing, 125 USPQ2d at 1056 (finding that the petitioner’s mark was famous
for restaurant and nightclub services based on extensive “customer volume and
revenue statistics, advertising expenditures, unsolicited media coverage, and awards
and distinction” resulting in “widespread consumer exposure to and recognition of”
the mark).
In placing the SHIRLEY PLANTATION mark “along a spectrum from very strong
to very weak,” Joseph Phelps Vineyards, 122 USPQ2d at 1734, however, we must
consider the evidence “pertaining to both conceptual and commercial strength.” Bell’s
Brewery, 125 USPQ2d at 1347. Although the mark is commercially weak for the
identified services, it is not conceptually weak, and we find that while it is of modest
overall strength, it is entitled to “the normal scope of protection to which inherently
distinctive marks are entitled.” Id.
b. Similarity or Dissimilarity of the Marks
The marks at issue in Opposition No. 91215114 are both SHIRLEY PLANTATION
and “Applicant does not seek to waste the Board’s time by trying to argue that
Applicant’s mark SHIRLEY PLANTATION does not have the same appearance as
Shirley Plantation, LLC’s mark SHIRLEY PLANTATION.” 40 TTABVUE 20. The
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 42 -
identity of the marks in Opposition No. 91215114 “weighs heavily in favor of a finding
of a likelihood of confusion.” Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d
1464, 1471 (TTAB 2016).
The marks at issue in Opposition No. 91216395 are SHIRLEY PLANTATION and
SHIRLEY. Applicant posits that “[t]here could be an argument made that SHIRLEY
and SHIRLEY PLANTATION provide a different commercial impression because the
term plantation is not a word commonly used in the English lexicon due to its
association with slavery,” but concedes that “the dominant feature of SHIRLEY
PLANTATION is SHIRLEY which makes them similar enough.” 40 TTABVUE 20.
“Likelihood of confusion has often been found where the entirety of one mark is
incorporated within another.” Hunter Indus., Inc. v. Toro Co., 110 USPQ2d 1651,
1660-61 (TTAB 2014) (finding that the opposer’s PRECISION DISTRIBUTION
CONTROL mark was confusingly similar to the applicant’s PRECISION mark, in
part because the applicant’s mark was likely to be viewed as a variation or shortened
version of the opposer’s mark).
The record also shows that in the context of Applicant’s goods, wines, SHIRLEY
is likely to be viewed as a shortened version of SHIRLEY PLANTATION. See id. at
1661. Pages on Applicant’s website showing and describing the 2013 “Shirley
Chardonnay” state that “Shirley Chardonnay is a bold, confident Chardonnay named
for Shirley Plantation: one of America’s oldest run family businesses,” 38 TTABVUE
99, 110, and a page on a third-party website shows the label for the 2012 vintage of
SHIRLEY PLANTATION Chardonnay and states that “Shirley is a bold, confident
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 43 -
Chardonnay.” Id. at 103.46 We reject Shirley Plantation’s argument that “the
commercial impression created by Applicant’s SHIRLEY . . . mark[] must be
considered in all respects identical to the impression created by Opposer’s SHIRLEY
PLANTATION registered trademark,” 37 TTABVUE 27, but, as Applicant admits,
the marks SHIRLEY PLANTATION and SHIRLEY are “similar enough” to cause this
du Pont factor to support a finding of a likelihood of confusion in Opposition No.
91216395.
c. Similarity or Dissimilarity of the Goods and Services
The identifications of goods in both opposed applications include “wines,” while
the services identified in Shirley Plantation’s registrations are “museum services
including guided and unguided historical tours on-site” (Registration No. 2331087)
and “retail gift shop services” (Registration No. 2331083).

46 Applicant has similarly used “Shirley” as a shorthand for Shirley Plantation in both private
communications and public-facing materials. See 41 TTABVUE 35 (expressing gratitude in
June 9, 2013 email to Randy Carter “for the tour of Shirley” and identifying the plantation
multiple times as “Shirley”); id. at 62 (expressing belief in July 18, 2013 email to Randy
Carter in the possibility of a “strong alliance between Shirley and Philip Carter” and
discussing the creation of the Shirley Chardonnay label); id. at 121 (stating in August 20,
2013 email to the Virginia Secretary of Agriculture that “Shirley is celebrating its 400th
anniversary year” and inviting the Secretary to attend the anniversary celebration); 43
TTABVUE 22-23 (stating in the June 2013 edition of “The Carter Gazette” that “Today,
Shirley continues as a working plantation, a private family home [and] a National Historic
Landmark,” and promoting a 2012 Shirley Chardonnay); id. at 103 (stating on back of
approved Shirley Plantation chardonnay label that “Today, Shirley continues as a working
plantation, a family home, a National Historic Landmark and a direct link between the past
and the present”). We note that the chardonnay label, and a number of other of Applicant’s
submissions, are barely legible or, in some cases, illegible. Parties have a duty to ensure that
submitted evidence is legible. Alcatraz Media Inc. v. Chesapeake Marine Tours Inc., 107
USPQ2d 1750, 1758 (TTAB 2013). We can only review evidence to the extent that it is legible,
and we have disregarded all evidence that is not.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 44 -
In Opposition No. 91215114, where the marks are identical, the degree of
similarity between the goods and services required for confusion to be likely declines,
see, e.g., Orange Bang, Inc. v. Olé Mexican Foods, Inc., 116 USPQ2d 1102, 1117 (TTAB
2015), and all that is required is a “viable relationship” between wines and museum
or retail gift shop services. See, e.g., In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687 (Fed. Cir. 1993); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001)
(“Where the applicant’s mark is identical to the registrant’s mark, as it is in this case,
there need only be a viable relationship between the respective goods or services in
order to find that a likelihood of confusion exists”). In Opposition No. 91216395,
where the marks are similar but not identical, “likelihood of confusion can be found
‘if the respective goods [and services] 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., 101 USPQ2d
at 1722.
In its main brief, Shirley Plantation discusses various legal principles regarding
this du Pont factor, 37 TTABVUE 28-32, and argues broadly that “[b]ecause of the
overlap” of its services “with the wine products of Applicant, the goods offered by
Applicant are considered identical to the goods and services of Shirley Plantation as
a matter of law.” Id. at 28.47 Citing Opus One, Shirley Plantation argues that “there

47 In its reply brief, Shirley Plantation repeats its argument that the goods and services are
identical as a matter of law. 45 TTABVUE 14. Although ACR include summary judgment-
like procedure, it is not necessary for Shirley Plantation to establish its case “as a matter of
law,” but rather simply by a preponderance of the evidence.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 45 -
need be only a viable relationship between the respective goods or services in order
to find that a likelihood of confusion exists.” Id. at 29.
Applicant does not discuss the “viable relationship” standard, but argues that “the
courts have established that for two types of goods or services to be related ‘something
more’ than just one establishment offering for sale a specific type of good must exist.”
40 TTABVUE 21 (citing Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 212 USPQ
641 (CCPA 1982) and In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059 (Fed.
Cir. 2003)). Applicant urges the Board to “require the ‘something more’ standard
established in Jacobs and affirmed in Coors for restaurants and beverages, where the
Opposers need to provide ‘something more’ than the fact that a restaurant sells
alcohol when dealing with similar or identical marks on beverages and foods.” Id. at
24 (citing Jacobs, 212 USPQ at 642; Coors, 68 USPQ2d at 1063).
On reply, Shirley Plantation states that even though it “may not have used the
moniker ‘something more’ in its analysis, it is clear that Opposers applied that
standard by its [sic] reliance on the Opus One decision which also applied that
standard.” 45 TTABVUE 15 n.8.48 Shirley Plantation offers three primary reasons
why “something more” has been shown here: (1) the alleged fame of the SHIRLEY
PLANTATION mark; (2) the existence of the prior relationship between the parties

48 Shirley Plantation notes that the “Federal Circuit has explained that the ‘something more’
standard ‘has application whenever the relatedness of the goods and services is not evident,
well-known or generally recognized.’” 45 TTABVUE 15 n.8 (quoting In re St. Helena Hosp.,
774 F.3d 747, 113 USPQ2d 1082, 1087 (Fed. Cir. 2014)). Because the parties agree that the
“something more” standard applies, we need not independently decide whether the
relatedness of their goods and services is “not evident, well-known or generally recognized.”
St. Helena Hosp., 113 USPQ2d at 1087.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 46 -
resulting in the sale of the SHIRLEY PLANTATION wine produced by Applicant
through the Shirley Plantation gift shop; and (3) the prior sale of private-label
SHIRLEY PLANTATION wine through the Shirley Plantation gift shop. Id. at 15-16.
Shirley Plantation also cites third-party registrations and uses of the same mark for
both gift shop services and wine as evidence of relatedness. Id. at 16-17. As discussed
above, we have found that SHIRLEY PLANTATION is not “a strong mark which is
entitled to a broad scope of protection,” Opus One, 60 USPQ2d at 1814, so we will
focus on the other evidence offered by Shirley Plantation to show “something more.”
Turning first to the Internet and third-party registration evidence, Shirley
Plantation made of record a TESS search that it claims “reveals that there are thirty
marks registered in class 35 for ‘gift shop’ [services] and also registered for wines in
class 33,” as well as “four specific examples from the search.” 37 TTABVUE 30 n.8.
Applicant agrees that “30 marks are registered for both gift shops and wines,” 40
TTABVUE 24, but argues, without citing any record evidence, that this number is
miniscule in comparison to the “105,927 records for the goods and services of wine,
and 94,683 for gift shop services.” Id.
As noted above, the submission of a TESS list is insufficient to the referenced
registrations of record, and the list here does not reflect 30 registrations in any event,
but rather only nine. 38 TTABVUE 127-128.49 The list itself does not show

49 The rest of the list reflects “Live” or “Dead” applications. “Live” applications show only that
they were filed on a certain date and are not evidence of use of the applied-for marks. In re
Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018) (citing Nike Inc. v. WNBA
Enters. LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007) and Interpayment Servs. Ltd. v. Docters
& Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003)).
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 47 -
relatedness, but Shirley Plantation made of record three use-based registrations from
the list that cover both wine and retail gift shop services. 38 TTABVUE 130-135.
Shirley Plantation also made of record pages from the websites at
shops.mountvernon.org and monticelloshop.org displaying wines, wine bags,50 wine
coasters, and wine glasses relating to the historic plantations at Mount Vernon and
Monticello, 45 TTABVUE 40-47,51 with the Monticello website advising visitors that
the plantation has partnered with a Virginia winery for the production of the wines
in the Monticello Wine Collection. Id. at 46.52 Taken together, the third-party
registrations and Internet evidence have some probative value on the relatedness of
the goods and services here. C.H. Hanson, 116 USPQ2d at 1355-56 (although five
third-party registrations covering the subject goods were “limited in number,” they
were probative of relatedness when “considered in conjunction with the Internet
evidence” of record); In re Aquamar, Inc., 115 USPQ2d 1122, 1126 n.5 (TTAB 2015);
In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009).
Charles Carter and Helle Carter also testified about the sale of wines, including
private label wines bearing the SHIRLEY PLANTATION mark, through the Shirley
Plantation gift shop, First C. Carter Decl. ¶¶ 8-9; H. Carter Decl. ¶ 5, and Randy

50 The Mount Vernon wine bag displays what the website calls “an image of two bottles of
Mount Vernon wine.” 45 TTABVUE 41-42.
51 On their faces, the webpages indicate that both plantations provide retail gift shop services.
The Mount Vernon webpages are captioned “The Shops at Mount Vernon,” and provide
operating hours for the shops, 45 TTABVUE 41-44, while the Monticello webpages are
captioned “The SHOP” and provide a link to the Monticello Museum Shop. Id. at 46-47.
52 The website states that “[o]rders for Monticello wine must be placed directly with our
friends at Barboursville Winery,” so it appears that when the webpages were downloaded,
the goods were not then available through the gift shop.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 48 -
Carter and Philip Strother testified about the negotiations that culminated in the
brief relationship in 2013 between Shirley Plantation and Philip Carter Winery for
the production of SHIRLEY PLANTATION chardonnay, and its sale in the Shirley
Plantation gift shop. R. Carter Decl. ¶¶ 2-4. Under Opus One and Tao Licensing, this
evidence, particularly the evidence of the parties’ business dealings, has more
significant probative value on the relatedness of the goods and services.
In Opus One, the Board found that “something more” was shown in part by “the
nature of the commercial relationship between wine and restaurant services,” Opus
One, 60 USPQ2d at 1815, including the actual dealings between the applicant and
the cited registrant, which resulted in the sale of the registrant’s Opus One wine in
the applicant’s Opus One restaurant. Id. at 1815-16. The record here shows a similar,
albeit much shorter and lower profile, relationship between the parties, one that was
touted by both of them. Publicity of the celebration of the 400th anniversary of Shirley
Plantation stated that “Shirley Plantation is proud to partner with the Philip Carter
Winery to call attention to the Carter family’s heritage of wine making in Virginia,”
41 TTABVUE 128; 38 TTABVUE 89-90, and the formal invitation to the anniversary
celebration noted that the “newly released Shirley Chardonnay” was produced by
Applicant:
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 49 -

41 TTABVUE 132.
Applicant’s SHIRLEY PLANTATION chardonnay label also referred to the
history of Shirley Plantation on its back portion:

Strother Tr. 46:2-47:1.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 50 -
The parties’ relationship was the impetus for Applicant’s use of, and applications
to register, both word marks.53 Applicant used SHIRLEY PLANTATION for the
express, agreed-upon purpose of celebrating the history of Shirley Plantation, and
Applicant “adopted” and sought to register the SHIRLEY mark only after Shirley
Plantation objected to Applicant’s application to register SHIRLEY PLANTATION.
Applicant submitted the front of the existing SHIRLEY PLANTATION chardonnay
label as a specimen of use of the SHIRLEY mark, and expressly linked SHIRLEY
chardonnay to Shirley Plantation for several years after its introduction:

38 TTABVUE 99.

53 Applicant claims that when the parties’ discussions began, Applicant “had the Shirley
chardonnay blocks and vines already and it fit the theme of its wine names” and that “Shirley
was the name Philip Carter Winery intended for its chardonnay reserve, so the timing was
terrific.” 40 TTABVUE 8. Applicant cites its own interrogatory responses, which we have
excluded. Mr. Strother testified that “the Shirley name was a name, along with Rosewell and
Cleve and Nomini . . . and Corotoman, that was always in consideration for the estate wines,”
Strother Tr. 108:23-109:1, and that he had named blocks of his vineyard “Upper Shirley” and
“Lower Shirley,” Strother Tr. 109:3-8, but there is no mention of any of this in the parties’
correspondence, which included discussion of a possible winery at Shirley Plantation, 41
TTABVUE 35, and he does not appear to have discussed any of this with Randy Carter and
Janet Appel when they visited Philip Carter Winery, id. at 62, or during the parties’
discussions regarding the filing of the SHIRLEY PLANTATION application. Id. at 75.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 51 -

Id. at 110; Strother Tr. 91:14-92:7.
The record also suggests that Applicant believed that there is a natural synergy
between a winery, and a historical site such as Shirley Plantation and its museum
tour and gift shop services. Early in the parties’ dealings, Mr. Strother discussed
providing wines for sale in the Shirley Plantation gift shop, and suggested that
Shirley Plantation develop a Philip Carter Winery tasting room on-site, as well as a
visitor’s center, to promote Shirley Plantation as a “destination location,” to cross-
promote the plantation and winery, and to have Shirley Plantation serve as a gateway
and jumping off point to other historic sites in the area. Strother Tr. 57:9-59:11; 41
TTABVUE 37-38. As noted above, Applicant has also used the names of other Virginia
plantations as wine brands.
The record as a whole establishes at least a “viable relationship” between wines
and retail gift shop services in Opposition No. 91215114, and the relatedness of wines
and retail gift shop services in Opposition No. 91216395, under the “something more”
standard discussed by the parties. Given the dealings between the parties, we find
that Applicant “anticipated a benefit from implying a connection to [Shirley
Plantation], a benefit that could only exist if [Applicant] believed that consumers
would actually see [Applicant’s] products as related to [Shirley Plantation’s retail gift
shop] services.” Tao Licensing, 125 USPQ2d at 1062 (finding that the respondent’s
“actions contribute something more to the relatedness of the goods/services inquiry
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 52 -
on the unique facts of this case, evidencing that consumers would believe that
[alcoholic beverages except beers] and [restaurant and night club] services come from
the same source or sponsor”); see also Opus One, 60 USPQ2d at 1819 (parties’
relationship supported finding of “something more” because consumers “would
assume that there is a source, sponsorship, or license-type arrangement between
applicant and registrant which allows for, and accounts for, applicant’s use of
registrant’s mark”).54 The second du Pont factor supports a finding of a likelihood of
confusion in both Word Mark Oppositions.
d. Channels of Trade
The third du Pont factor considers “[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.” Stone Lion, 110 USPQ2d at 1061. Neither
Opposer’s registrations nor the opposed application contains any restrictions or
limitations on trade channels, and, as Applicant acknowledges, 40 TTABVUE 26, the
respective goods and services are presumed to travel through all normal channels of

54 Applicant does not address the parties’ relationship or this aspect of the Opus One decision
in its discussion of the relatedness issue. Instead, Applicant claims that a finding that gift
shop services and wine are related would give “gift shop owners carte blanche trademark
rights over anything sold in a gift shop” and would let “a small gift shop in rural Virginia
have automatic likelihood of confusion over all goods,” which would “set a standard where a
small-box retailer in a rural town could prevent the registration in almost any category of
goods.” 37 TTABVUE 25-26. A finding of “something more” based on the unique facts here
would not lead to the parade of horrors predicted by Applicant because the relatedness of
wines and gift shop services in other cases would be assessed on the basis of the facts of those
cases. Such a finding also would not be inconsistent with the Coors case, on which Applicant
relies heavily, because in that case there was no business relationship between the applicant
and the cited registrant. See Tao Licensing, 125 USPQ2d at 1062 (distinguishing Coors on
various grounds, including the presence of evidence in Tao Licensing of overlapping customer
bases suggested by the respondent’s attempt to sell its vodka to the petitioner for resale in
the petitioner’s restaurant and nightclub).
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 53 -
trade for the identified goods and services and to be sold and provided to all normal
classes of customers for the identified goods and services. See, e.g., In re Thor Tech
Inc., 90 USPQ 1634, 1639 (TTAB 2009). Applicant argues that “the channels of trade
of these goods and services are very different,” 40 TTABVUE 27, while Opposer relies
on legal presumptions flowing from its incorrect argument that “the goods and
services are considered legally the same . . .” 37 TTABVUE 31-32; 45 TTABVUE 17.
Applicant states that its wines have previously been sold in retail stores, online,
and on-site at Applicant’s winery, and that wine “can be sold in a variety of ways,”
including in grocery stores, in gift baskets, at wine specific stores “and the list of
channels goes on.” 40 TTABVUE 27. As discussed above, the record shows one of
those myriad channels for wine (including Applicant’s own SHIRLEY PLANTATION
wine) is retail gift shops. Even if wine may be sold predominantly through other
channels of trade, the fact that Applicant’s goods may be sold via retail gift shop
services such as those offered by Shirley Plantation causes this du Pont factor to
slightly support a finding of a likelihood of confusion.
e. Sophistication of Purchasers
The fourth du Pont factor is the “conditions under which and buyers to whom sales
are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” du Pont, 177 USPQ at
567. Applicant argues that its wines “are priced for a more sophisticated wine
consumer, and are mostly sold through its tasting room located on-site.” 40
TTABVUE 28. Applicant claims that as a result, “there can be no confusion as to their
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 54 -
source [and] there is no likelihood of confusion with the Opposers.” Id. at 29. These
arguments are unavailing.
The “wines” identified in the opposed applications are not restricted to wines
“priced for a more sophisticated wine consumer” or “mostly sold through [Applicant’s]
tasting room located on-site,” id. at 28, and they thus must be deemed to include
“inexpensive or moderately-priced wine” sold through all of the channels of trade for
wine. Opus One, 60 USPQ2d at 1817; see also Bongrain Int’l (Am.) Corp. v. Moquet
Ltd., 230 USPQ2d 626, 628 (TTAB 1986) (“wines” in goods identification “include
wines of all types and price ranges” sold through “all of the customary channels of
trade for wine, including supermarkets, grocery stores, and gourmet shops” to “all
potential purchasers thereof, including not only wine connoisseurs but also
unsophisticated purchasers”). We must base our decision on the “‘least sophisticated
potential purchasers’” of the goods. Stone Lion, 110 USPQ2d at 1163 (quoting Gen.
Mills, Inc. v. Fage Dairy Proc. Indus. S.A., 100 USPQ2d 1584, 1600 (TTAB 2011),
judgment set aside on other grounds, 2014 WL 343267 (TTAB Jan. 22, 2014)). There
is no evidence that the least sophisticated potential purchasers of wine exercise
particular care in purchasing the goods, and this du Pont factor is accordingly
neutral.
f. Applicant’s Intent
In its main brief, Shirley Plantation argues that “there is no doubt that Applicant
himself [sic] tries to tie the commercial impression of the two applied-for marks to
the images evoked by Shirley Plantation,” 37 TTABVUE 28, and in its reply brief,
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 55 -
Shirley Plantation calls Mr. Strother and Applicant “thieves, plain and simple,” who
ask the Board “to sanction the theft of trademarks in a scenario where they were
asked to prepare a private-label anniversary wine for Shirley Plantation, the oldest
family business in the United States.” 45 TTABVUE 7. We do not countenance
Shirley Plantation’s invective, but we find that there is some evidence of bad faith in
Opposition No. 91216395.
“Under the thirteenth du Pont factor, applicant’s bad faith adoption of [its] mark
is relevant to our likelihood of confusion analysis.” Edom Labs., 102 USPQ2d at 1553.
Applicant applied to register SHIRLEY only after Shirley Plantation obtained an
extension of time to oppose Applicant’s SHIRLEY PLANTATION application, and on
the same day on which Shirley Plantation contacted it to discuss withdrawal of the
application. Applicant used the SHIRLEY PLANTATION label as a specimen of use
of SHIRLEY, and subsequently associated SHIRLEY chardonnay with Shirley
Plantation on materials on its website for several years. Strother Tr. 91:7-92:7. Mr.
Strother’s explanation that this was inadvertent, or an oversight, is suspect. As noted
above, Applicant’s claim that the SHIRLEY mark was already under consideration
when Shirley Plantation approached Applicant in 2013 is also suspect on this record.
Applicant’s selection of the SHIRLEY mark and the filing of the application to
register it, and Applicant’s subsequent promotion of SHIRLEY chardonnay, are
“eyebrow-raising activities,” Tao Licensing, 125 USPQ2d at1063, and provide some
evidence of bad faith and a likelihood of confusion in Opposition No. 91216395. Id.;
see also L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, 1891 (TTAB 2008).
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 56 -
g. Conclusion
All of the relevant du Pont factors in both Word Mark Oppositions either support
a finding of a likelihood of confusion or are neutral. The marks are identical in
Opposition No. 91215114 and similar in Opposition No. 91216395; the SHIRLEY
PLANTATION mark is entitled to a normal scope of protection; there is at least a
viable relationship between wines and retail gift shop services in Opposition No.
91215114 and wines and retail gift shop services are related in Opposition No.
91216395; the channels of trade and classes of consumers for those goods and services
overlap to at some degree; there is no evidence of a heightened degree of care in the
purchase of Applicant’s goods; and there is some evidence of bad faith in Opposition
No. 91216395. We find, on the basis of the record as a whole, that Shirley Plantation
proved, by a preponderance of the evidence in both Word Mark Oppositions, that
consumers are “likely [to] infer that [Applicant’s] goods, offered under [an identical
or] nearly identical mark, emanate from the same source as [Shirley Plantation’s]
services, or are sponsored by [Shirley Plantation].” Tao Licensing, 125 USPQ2d at
1062.55 We sustain the Word Mark Oppositions on the basis of Shirley Plantation’s
claim of likelihood of confusion under § 2(d) of the Trademark Act. Because we
sustain the Word Mark Oppositions based on Shirley Plantation’s § 2(d) claims, we

55 Contrary to Applicant’s claim, our findings that Shirley Plantation owns the registered
SHIRLEY PLANTATION mark, and that Applicant’s use of SHIRLEY PLANTATION and
SHIRLEY for wine is likely to confuse consumers into believing the goods are sponsored or
authorized by Shirley Plantation, do not involve “[g]ranting Opposers sole rights to the Carter
family history or adjudicating them one and the same . . . .” 40 TTABVUE 34.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 57 -
need not decide Shirley Plantation’s § 2(a) claims or its claims that Applicant has not
used the SHIRLEY PLANTATION and SHIRLEY marks in commerce.56
Design Mark Opposition
Section 2(d) of the Trademark Act “permits opposition on the basis of ownership
of ‘a mark or trade name previously used in the United States . . . and not
abandoned.’” Exec. Coach Builders, Inc. v. SPV Coach Co., 123 USPQ2d 1175, 1180
(TTAB 2017) (quoting 15 U.S.C. § 1052(d)). In the Design Mark Opposition, Shirley
Plantation asserts prior use of the Carter Coat of Arms as a common law mark. 37
TTABVUE 44-46. “[B]ecause unregistered marks are not entitled to the presumptions
established under Trademark Act Section 7(b)-(c), it is [Shirley Plantation’s] burden
to demonstrate that it owns a trademark that was used prior to Applicant’s first use
or constructive use of its mark and not abandoned.” Exec. Coach Builders, 123
USPQ2d at 1180.57 Shirley Plantation must prove that it has proprietary rights in
the Carter Coat of Arms arising from “prior trademark or service mark use, prior use
as a trade name, prior use analogous to trademark or service mark use, or any other
use sufficient to establish proprietary rights.” Herbko, 64 USPQ2d at 1378 (citing

56 “Like the federal courts, the Board has generally used its discretion to decide only those
claims necessary to enter judgment and dispose of the case. . . More specifically, the Board’s
determination of registrability does not require, in every instance, decision on every pleaded
claim.” Multisorb Tech., Inc. v. Pactiv Corp., 109 USPQ2d 1170, 1171 (TTAB 2013).
57 Applicant may rely on the November 26, 2013 filing date of the application to register the
Coat of Arms mark as its constructive use priority date. WeaponX Performance Prods. Ltd. v.
Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1041 (TTAB 2018). Applicant claims that the
Coat of Arms Mark has been in use since February 1, 2008, 40 TTABVUE 19, and Shirley
Plantation does not appear to dispute this claim. 37 TTABVUE 45. We need not determine
whether Applicant’s priority date is in 2008, 2013, or somewhere in between, however,
because we find below that Shirley Plantation has failed to prove its ownership of a
proprietary right in the Carter Coat of Arms prior to any of those dates.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 58 -
Otto Roth & Co. v. Universal Foods Corp., 640 F.2d 1317, 209 USPQ 40, 43 (CCPA
1981)).58 Proof of such proprietary rights requires Shirley Plantation to show use of
the Carter Coat of Arms “in a manner reasonably expected to create an association
between the mark and its goods [or services].” Id.
Charles Carter authenticated examples of claimed trademark uses of the Carter
Coat of Arms, First C. Carter Decl. ¶¶ 14-22; Exs. 13-19 (38 TTABVUE 31-45), and
opined that “[b]ecause of its widespread use on items at the plantation, the Carter
family coat of arms has become associated with my family and Shirley Plantation.”
Id. at ¶ 22. We reproduce below four of the referenced examples:
59

58 Shirley Plantation does not claim priority by virtue of use of the Carter Coat of Arms in a
manner analogous to trademark use, and, as discussed below, the evidence would not support
such a theory. See Herbko, 64 USPQ2d at 1378 (“[b]efore a prior use becomes an analogous
use sufficient to create proprietary rights, [plaintiff] must show prior use sufficient to create
an association in the minds of the purchasing public between the mark and [plaintiff’s]
goods”).
59 First C. Carter Decl. ¶ 16; Ex. 13 (38 TTABVUE 31-32). He described this item as a leather
flagon that he commissioned and that “has been on display at Shirley Plantation since well
prior to 2008” and from which “[b]eer, wine, and other beverages have been consumed.” Id.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 59 -
60
61

60 First C. Carter Decl. ¶ 17; Ex. 14 (38 TTABVUE 33-34). He described this as a photograph
of a wine seal from a bottle of wine unearthed in a local archeological expedition, which he
claimed showed use of the Carter Coat of Arms in the family wine business in the 18th
century. Id.
61 First C. Carter Decl. ¶ 18; Ex. 15 (38 TTABVUE 35-36). He described this as a photograph
of a silver wine pitcher that “has been used to serve wine to family members and guests of
Shirley Plantation from at least the early 1800’s.” Id.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 60 -
62
Charles Carter also authenticated the picture reproduced below, which he testified
was taken between 1950-1955 and shows his father, Charles H. Carter II, showing
silver items bearing the Carter Coat of Arms to visitors to Shirley Plantation:
63

62 First C. Carter Decl. ¶ 19; Ex. 16 (38 TTABVUE 37-38). He described this item as an
example of silver wine cups or “Jefferson cups,” which he claimed have been used to serve
wine and other beverages for over 200 years.
63 First C. Carter Decl. ¶ 22; Ex. 18 (38 TTABVUE 44-45).
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 61 -
Helle Carter testified that “[s]everal items bearing the Carter family coat of arms,
such as a ceramic tankard, were sold through the gift shop for many years,” H. Carter
Decl. ¶ 4, and that between 1971 and 1979, the price tags on merchandise sold at the
Shirley Plantation gift shop “included a background image of the Carter family coat
of arms in brown-red ink similar in color to a primary brick color.” Id. at ¶ 2; Ex. 28
(38 TTABVUE 91-92). We reproduce that image below:

Finally, echoing her son’s testimony almost verbatim, First C. Carter Decl. ¶ 14, Ms.
Carter testified that
Shirley Plantation’s use of the Carter family coat of arms
dates back to at least as early as 1723 first in conjunction
with Shirley as a plantation growing various agricultural
goods, including but not limited to grapes and other fruits
used in making wine and has been prominently on display
for public and private events where wine aperitifs and
other alcoholic beverages were served, and was later used
with other activities as Shirley expanded its range of
business activities.
H. Carter Decl. ¶6.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 62 -
Applicant argues that “Opposers simply have not used anything resembling the
Philip Carter Winery Logo in commerce,” that the Carter Coat of Arms “is not
distinctive on its face,” and that there is “no evidence that it has served as an indicator
of source for any goods or services.” 40 TTABVUE 37. There is no requirement under
§ 2(d) that Shirley Plantation show that the Carter Coat of Arms has been used “in
commerce,” First Niagara Ins. Brokers Inc. v. First Niagara Fin. Grp. Inc., 476 F.3d
867, 81 USPQ2d 1375, 1378 (Fed. Cir. 2007) (§ 2(d) “merely requires the prior mark
to have been ‘used in the United States by another’”), but we agree with Applicant
that there is insufficient evidence to show that the Carter Coat of Arms has been used
as a trademark or service mark, that is, as a source indicator for specific goods or
services.
In its discussion of priority, Shirley Plantation is notably vague about the goods
or services for which it claims that it has used the Carter Coat of Arms as a mark; it
claims simply that most of the uses “are associated with the serving and drinking of
alcoholic beverages.” 37 TTABVUE 45.64 Shirley Plantation first claims use
(apparently since 1723) for “growing various agricultural goods, including but not
limited to grapes and other fruits used in making wine,” id. at 44, but there is no
evidence that the Carter Coat of Arms has ever been used as a trademark for any
agricultural goods, including wine and its ingredients.65

64 It is equally vague about the goods or services for which the Carter Coat of Arms has been
used in its discussion of the second du Pont factor. 37 TTABVUE 47.
65 By contrast, there is evidence that the SHIRLEY PLANTATION mark has been used for
wine, jams, jellies, and biscuit mix. First C. Carter Decl. ¶ 5; Exs. 4-6 (38 TTABVUE 9-14).
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 63 -
Shirley Plantation next points to the appearance of the Carter Coat of Arms on
flagons, cups, pitchers, and bowls used at Shirley Plantation. First C. Carter Decl.
¶¶ 15-16, 18-22. Charles Carter states that these items are “on display and are freely
visible to visitors [to] Shirley Plantation during their tour of the plantation.” Id. at
22. It is not clear whether Shirley Plantation claims that the Carter Coat of Arms is
a trademark for the household items themselves or for beverages that may be poured
from them, a service mark for the museum services for which the SHIRLEY
PLANTATION mark is registered, or a mark for something else. The record does not
show, however, that the Carter Coat of Arms has been used to identify Shirley
Plantation’s primary museum services, much less that it would be recognized as a
“secondary source” mark for the referenced household items. See, e.g., In re
Lululemon Athletica Canada Inc., 105 USPQ2d 1684, 1689 n.4 (TTAB 2013)
(secondary source “means that the use of the design or words would be perceived by
the consumer as an indicator of source due to [a party’s] prior use or registration of
the mark for other goods or services . . .”). There is no evidence regarding how the
referenced household items are displayed, the extent to which they are noticed by
visitors, the extent to which the Carter Coat of Arms is noticed on them, and the
extent to which the Carter Coat of Arms is viewed as something more than mere
ornamentation or decoration on the items, and there is no evidence that Shirley
Plantation has ever sold any of these items,66 or rendered any services using them.

66 Elsewhere in their main brief, Opposers mention in passing that “[o]ther products sold
from the gift shop also included the Carter family coat of arms,” 37 TTABVUE 12, but Shirley
Plantation does not cite such sales in its argument regarding priority. Helle Carter testified
that “several items” bearing the Carter Coat of Arms, including a ceramic tankard, “were
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 64 -
Finally, Shirley Plantation points to Helle Carter’s testimony that the Carter Coat
of Arms was used on price tags by the Shirley Plantation gift shop from 1971-1979 on
all goods. 37 TTABVUE 45. Her testimony establishes, at most, that the Carter Coat
of Arms may have been used as a trademark for goods, or a service mark for retail
gift shop services, from 1971 to 1979. See Sports Auth. Mich. v. PC Auth. Inc., 63
USPQ2d 1782, 1786 (TTAB 2002) (noting registration of the opposer’s mark in Class
16 for goods identified as “price tags”); Saks & Co. v. Snack Food Ass’n, 12 USPQ2d
1833, 1834 (TTAB 1989) (the opposer’s evidence of use of its mark for various snack
foods included price tags for all such goods that bore its mark). Helle Carter explained
that the price tags bearing the Carter Coat of Arms were replaced in 1979 by “rolls of
plain price tags [with] printed prices,” H. Carter Decl. ¶ 2, and she did not testify to
any planned or actual resumed use of the Carter Coat of Arms on price tags. Whatever
trademark or service mark rights may have arisen from the use of the Carter Coat of
Arms on price tags between 1971 and 1979 have been abandoned by non-use for
nearly 40 years. Cf. Exec. Coach Builders, 123 USPQ2d at 1198-99 (evidence that the

sold through the gift shop for many years,” and that “[f]rom first starting the gift shop in
1971 until my retirement in 2013, many of our products reflected our family heritage here by
using the SHIRLEY PLANTATION name, image and the Carter family coat of arms.” H.
Carter Decl. ¶ 4. She provided no details, however, about when between 1971 and 2013 items
bearing the Carter Coat of Arms were sold, what items (other than ceramic tankards) were
sold, how many such items were sold, how long they were sold, or when the last such sale
occurred. Her testimony is too indefinite to show that Shirley Plantation has a proprietary
right in the Carter Coat of Arms by virtue of its use on any items previously sold through the
gift shop. Cf. Kemi Organics, 126 USPQ2d at 1608 (finding testimony of petitioner’s president
regarding annual sales between 2010 and 2017 of products bearing claimed common law
mark sufficiently definite to establish prior use); Exec. Coach Builders, 123 USPQ2d at 1185-
86 (finding testimony of opposer’s president regarding number of past sales of products
indefinite and internally inconsistent).
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 65 -
opposer ceased use of claimed mark after it acquired it in 1993 created a prima facie
case of abandonment by no later than 1996 and the opposer failed to show priority
when the prima facie case was not rebutted). The use of the Carter Coat of Arms on
price tags in the 1970s is insufficient to establish prior use of the Carter Coat of Arms
as a trademark or service mark.
We find that Shirley Plantation has failed to show, by a preponderance of the
evidence, that it has a proprietary trademark or service mark right in the Carter Coat
of Arms that predates the actual or constructive first use of Applicant’s Coat of Arms
Mark. Because we find that Shirley Plantation failed to establish the threshold
element of priority under § 2(d), we need not (and indeed cannot) address the issue of
likelihood of confusion. WeaponX Performance Prods., 126 USPQ2d at 1042 (noting
that the opposer’s failure to prove priority “also prevents Opposer from showing that
there is a likelihood of confusion” because the Board “cannot weigh the relationship
of the parties’ respective goods and services as well as other du Pont factors”). Shirley
Plantation’s claim under § 2(d) in the Design Mark Opposition is dismissed.
VI. Opposers’ Section 2(a) Claim in the Design Mark Opposition67
Opposers claim that the Coat of Arms Mark is unregistrable under § 2(a) of the
Trademark Act because it falsely suggests a connection with Shirley Plantation

67 Applicant does not mention the Carter Coat of Arms or the Coat of Arms Mark in the
portion of Applicant’s brief devoted to Opposers’ § 2(a) claims. 40 TTABVUE 32-34.
Nonetheless, Opposers must prove their § 2(a) claim in the Design Mark Opposition even in
the absence of contrary evidence or argument. Threshold TV, Inc. v. Metronome Enters., Inc.,
96 USPQ2d 1031, 1040 (TTAB 2010).
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
- 66 -
and/or Charles Carter. 37 TTABVUE 51-52.68 Section 2(a) prohibits registration of
“matter which may . . . falsely suggest a connection with persons, living or dead,
institutions, beliefs or national symbols.” 15 U.S.C. § 1052(a). To establish a claim of
a false suggestion of a connection, Opposers must prove four elements: (1) the Coat of
Arms Mark is, or is a close approximation of, the name or identity of one of the
Opposers, as previously used by it or him or as identified with it or him; (2) the Coat
of Arms Mark would be recognized as such by purchasers of Applicant’s goods, in that
it points uniquely and unmistakably to one of the Opposers; (3) Opposers are not
connected with the goods that are sold or will be sold by Applicant under the Coat of
Arms Mark; and (4) Opposers’ name or identity is of sufficient fame or reputation
that when used by Applicant as a mark for its goods, a connection with one of the
Opposers would be presumed. Bos. Athletic Ass’n, 117 USPQ2d at 1495 (citing Univ.
of Notre Dame du Lac, 217 USPQ at 509). Opposers’ failure to prove any of these
elements is fatal to their claim. Id. at 1499 (the opposer’s failure to prove either the

68 Opposers claim that the Coat of Arms Mark “suggests a false connection with Shirley
Plantation and/or the Carter family.” 37 TTABVUE 51. The “Carter family” is not a party to
this opposition, and the named parties, Shirley Plantation and Charles Carter, are separate
juristic and natural persons. In Institut National Des Appellations d’Origine v. Brown-
Forman Corp., 47 USPQ2d 1875 (TTAB 1998), the Board noted that the two opposers who
had asserted a § 2(a) claim were “separate entities, and it is unclear to the Board how it is
possible for applicant’s mark to point uniquely and unmistakably to both of the opposers.” Id.
at 1887. The Board granted summary judgment to the applicant because “assuming arguendo
that it is legally possible that applicant’s mark could be found to point uniquely to two
separate entities such as opposers,” there was no evidence “from which a reasonable
factfinder might conclude that the name, persona, or identity of either or both of the opposers”
was applicant’s marks, “or that those designations point uniquely and unmistakably to either
or both of them.” Id. We have found no subsequent precedential decisions in which the Board
has held that multiple opposers cannot assert a § 2(a) claim as a matter of law, so we will
consider whether the Coat of Arms Mark falsely suggests a connection with either Shirley
Plantation or Charles Carter.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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first or second elements defeated its claim and made it unnecessary for the Board to
consider the other elements). We find that Opposers failed to establish the first
element of their claim, and we do not reach the others.
Opposers claim that the Carter Coat of Arms is their “identity” and that
Applicant’s Coat of Arms Mark is “the same as or a close approximation of” the Carter
Coat of Arms. 37 TTABVUE 51. In this respect, Opposers take what the Board in Bos.
Athletic Ass’n called a “two-step approach” that is somewhat unusual in § 2(a) cases.
Id. at 1495 (noting that the opposer’s primary § 2(a) claim was “somewhat different
from what the Board sees in most cases involving such a claim” because “Opposer is
attempting to show that BOSTON MARATHON is Opposer’s persona and that
Applicant’s mark MARATHON MONDAY is a close approximation of BOSTON
MARATHON”). Under Opposers’ theory here, they must first show that the Carter
Coat of Arms is the “identity” of one of them, “as previously used by it [or him] or
identified with it [or him].” Id. If they make that showing, they must then show that
the Coat of Arms Mark is a close approximation of the Carter Coat of Arms. Id.
With respect to the first step, we have found above that Shirley Plantation did not
establish trademark or service mark rights in the Carter Coat of Arms for purposes
of its § 2(d) claim. By itself, this finding does not bar Opposers’ § 2(a) claim because
“an opposer may prevail on the false suggestion of a connection ground ‘even if the
name claimed to be appropriated was never commercially exploited by the opposer as
a trademark or in a manner analogous to trademark use.’” Id. at 1495 n.10 (quotation
omitted). Nonetheless, Opposers must show that “consumers view [the Carter Coat
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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of Arms] so closely with [an] Opposer that they recognize it as [the] Opposer’s name
(or nickname), identity or persona,” that is, “the personal or trade identity of the
claimant.” Id. at 1497 (finding that unlike the name BOSTON MARATHON, the term
MARATHON MONDAY was not so closely associated with the opposer as to qualify
as its identity or persona). The record does not establish this.
The only argument made by Opposers that the Carter Coat of Arms is their
identity is that it has been “used and displayed at Shirley Plantation for hundreds of
years.” 37 TTABVUE 51. Charles Carter’s testimony, discussed above, about the
“widespread use” of the Carter Coat of Arms “on items at the plantation,” First C.
Carter Decl. ¶¶ 14-23; Exs. 13-19, including on “Carter family wine bottle seals, wax
seals, silverware, silver cups, signet rings and other devices including the tomb of
Robert Carter of Corotoman, progenitor to my family here in Virginia,” id. at ¶ 23, is
insufficient to show that the Carter Coat of Arms is associated by consumers so
closely with him personally that they recognize it as his “name (or nickname), identity
or persona.” Bos. Athletic Ass’n, 117 USPQ2d at 1497.69 Cf. Hornby v. TJX Cos. Inc.,
87 USPQ2d 1411, 1424-26 (TTAB 2008) (discussing evidence supporting petitioner
Lesley Hornby’s claim that she was known personally and professionally as
“Twiggy”); Buffett v. Chi-Chi’s, Inc., 226 USPQ 428, 430 (TTAB 1985) (discussing
evidence showing that the public associated the term MARGARITAVILLE with
entertainer Jimmy Buffett).

69 Helle Carter testified that “Shirley Plantation and Charles Carter have used the Carter
family coat of arms for an extended period of time,” H. Carter Decl. ¶ 6, but she does not
explain how her son personally has used it.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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These uses of the Carter Coat of Arms, and the uses on household items, price
tags, and goods once sold through the Shirley Plantation gift shop, are also
insufficient to show that the Carter Coat of Arms “has become associated with . . .
Shirley Plantation,” First C. Carter Decl. ¶ 22, because, as discussed above, the uses
are too sporadic, dated, or obscure to show that “consumers view [the Carter Coat of
Arms] so closely with [Shirley Plantation] that they recognize it as [Shirley
Plantation’s] identity or persona.” Bos. Athletic Ass’n, 117 USPQ2d at 1497.
There is evidence of the use of portions or variants of the Carter Coat of Arms in
certain Shirley Plantation materials exposed to the public. The animal figure that
appears at the very top of the Carter Coat of Arms has appeared on a product label
(38 TTABVUE 12):

and on an invitation to the 400th Anniversary Party and Spirited Wine Tasting (41
TTABVUE 132):
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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In addition, the design depicted below appears on a page on the Shirley Plantation
Foundation website (43 TTABVUE 93-94):
70
The entire Carter Coat of Arms, however, appears nowhere on any of Shirley
Plantation’s advertising and promotional materials in the record. 38 TTABVUE 5
(1997 Calendar of Events), 27 (print advertisement), 29-30 (promotional flier), and

70 Shirley Plantation claims that it has licensed its marks to the Foundation. 45 TTABVUE
10. The Foundation website would be an obvious place for the Carter Coat of Arms to appear
if it identified Shirley Plantation, but it is absent from the webpages in the record, which
instead display a crest that might be viewed as one associated with the referenced “Hill-
Carter Family.”
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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89-90 (400th Anniversary Celebration press release).71 In the absence of any
probative evidence of the exposure of the Carter Coat of Arms to the public, the record
as a whole does not support Shirley Plantation’s claim that the public has come to
recognize the Carter Coat of Arms as Shirley Plantation’s “trade identity.” Cf. Bos.
Athletic Ass’n, 117 USPQ2d at 1497 (finding that evidence that plaintiff used
MARATHON MONDAY to refer to the Boston Marathon was insufficient to show “the
public’s recognition of MARATHON MONDAY as identifying not merely the race, but
the entity that organizes the race”). Opposers have failed to establish the threshold
element of their § 2(a) claim in the Design Mark Opposition, that the Carter Coat of
Arms is the identity or persona of one of them, and their claim is dismissed.
VII. Other Claims in the Design Mark Opposition
Opposers also assert that the Coat of Arms Mark is unregistrable because “[i]n
accordance with Federal regulations applicable to bottling of spirits, and under
principles of heraldic law it is legally improper for Applicant to use the Carter Family
coat of arms in connection with the goods described in the application.” 37 TTABVUE
53. Opposers lump these putative claims together, but we address them separately.
A. Federal Alcoholic Beverages Regulations Claim
Our analysis of unlawful use claims based on alleged violations of federal law is
quite limited. While we “have consistently held that, to qualify for a federal . . .
registration, the use of a mark in commerce must be ‘lawful,’” In re PharmaCann

71 As discussed above, Charles Carter’s testimony regarding the association of the Carter
Coat of Arms with Shirley Plantation notably does not mention these sort of materials, but
rather focuses solely on the claimed “widespread use” of the Carter Coat of Arms “on items
at the plantation.” First C. Carter Decl. ¶ 22.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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LLC, 123 USPQ2d 1122, 1123 (TTAB 2017) (quoting In re JJ206, LLC, 120 USPQ2d
1568, 1569 (TTAB 2016)), we also have long recognized that we are not authorized or
qualified to determine, in the first instance, whether a challenged use is unlawful
under federal law (other than the Trademark Act) unless that is clear from the record.
Indeed, nearly four decades ago we noted that
[d]ue to a proliferation of federal regulatory acts in recent
years, there is now an almost endless number of such acts
which the Board might in the future be compelled to
interpret in order to determine whether a particular use in
commerce is lawful. Inasmuch as we have little or no
familiarity with most of these acts, there is a serious
question as to the advisability of our attempting to
adjudicate whether a party’s use in commerce is in
compliance with the particular regulatory act or acts which
may be applicable thereto. Rather, it seems that the
better practice would be to hold that a use in
commerce is unlawful only when the issue of
compliance has previously been determined (with a
finding of noncompliance) by an entity, such as a
court or government agency, having competent
jurisdiction under the statute in question, or when
there has been a per se violation of a statute
regulating the sale of a party’s goods, or the
rendering of his services, in commerce, as, for
example, when a regulatory statute requires that a party’s
labels must be registered with or approved by the
regulatory agency charged with administering the statute
before his goods may lawfully enter the stream of
commerce, and the party has failed to obtain such
registration or approval . . . .

Satinine Societa v. P.A.B. Produits, 209 USPQ 958, 964 (TTAB 1981) (emphasis
added). Accordingly, we will not sustain a claim of unlawful use
unless either (1) a violation of federal law is indicated in
the application record or other evidence, such as when a
court or federal agency responsible for overseeing activity
in which the applicant is involved . . . has issued a finding
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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of noncompliance under the relevant statute or regulation
or (2) when the applicant’s application-related activities
involve a per se violation of a federal law.
In re Brown, 119 USPQ2d 1350, 1351 (TTAB 2016) (citations omitted).
Opposers cite 27 C.F.R. § 4.64(f), which provides in pertinent part as follows:
(f) Flags, seals, coats of arms, crests, and other insignia. No
advertisement shall contain . . . any statement, device,
design, or pictorial representation of or concerning any
flag, seal, coat of arms, crest, or other insignia likely to
mislead the consumer to believe that the product has been
endorsed, made, or used by, or produced for, or under the
supervision of, or in accordance with the specifications of
the government, organization, family, or individual with
whom such flag, seal, coat of arms, crests, or insignia is
associated.
They argue that “[b]y using the Carter family coat of arms in connection with the
labeling of its wines, Applicant is violating Federal labelling law and regulations,” by
using the Coat of Arms Mark “in advertising on his [sic] wine labels that is likely to
mislead consumers into believing that the wines he [sic] so labels are endorsed by,
made by, or produced for, of [sic] under the supervision of members of the Charles
Carter Family” when they are not. 37 TTABVUE 54. This argument is unavailing.
Opposers argue that 27 C.F.R. § 4.64(f) applies to the “labelling of spirits,” 37
TTABVUE 53, but it actually applies to the advertisement of wines. Section 4.61
provides in pertinent part that “[a]s used in §§4.60 through 4.65 of this part, the term
advertisement” applies to a wide variety of print and electronic materials, but “shall
not include . . . (a) any label affixed to any container of wine . . . .” Opposers’ argument
focuses solely on Applicant’s use of the Coat of Arms Mark “in connection with the
labelling of its wines,” 37 TTABVUE 54, and the cited regulation simply does not
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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apply to Applicant’s labels.72 There is nothing in the record to show that any court, or
the TTB, the federal agency charged with the administration of the Federal Alcohol
Administration Act, has found that Applicant’s labels bearing the Coat of Arms Mark
are not in compliance with the Act, and Opposers have also failed to show a per se
violation of federal law involving “a clear violation of law, such as the sale or
transportation of a controlled substance in violation of law, [that] is evident in the
record.” Gen. Mills Inc. v. Health Valley Foods, 24 USPQ2d 1270, 1274 n.8 (TTAB
1992). Opposers have failed to prove their unlawful use claim based on a violation of
federal law.
B. Ownership Claim
In their second unlawful use claim, Opposers argue that “Applicant is not, and
was not, at the time of filing of its application, the rightful owner of the mark sought
to be registered,” 37 TTABVUE 53, and that Charles Carter “would be injured and
damaged by the prospective registration of the Carter Coat of Arms that he owns and
controls.” Id. at 55. This claim appears to be an amalgam of two theories: (1) Applicant
did not own the Coat of Arms Mark when the opposed application was filed, and (2)
foreign law renders Applicant’s use and registration of the Coat of Arms Mark
unlawful. Opposers did not prove either theory.
Under Section 1(a)(1) of the Trademark Act, 15 U.S.C. § 1051(a)(1), only the owner
of a mark may apply to register it, and an applicant’s lack of ownership of the applied-

72 Section 4.64 appears in Subpart G of Part 4 of 27 C.F.R., captioned “Advertising of Wine.”
“Labeling Requirements for Wine” appear in Subpart D of Part 4 of 27 C.F.R.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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for mark is a ground for opposition. See generally TBMP § 309.093(c)(1) n.20 and
cases cited therein. In most cases, the lack-of-ownership claim involves a business
relationship between the parties, and is based on the theory that within that
relationship, the plaintiff, not the defendant, is the owner of the applied-for mark.
See, e.g., Lyons v. Am. Coll. of Veterinary Sports Med. & Rehab., 859 F.3d 1023, 123
USPQ2d 1024, 1027 (Fed. Cir. 2017) (lack of ownership claims often arise “where
there has been a departure from or change of membership in a group, and both the
departing member and the remnant group claim ownership of the mark”);
Wonderbread 5 v. Gilles, 115 USPQ2d 1296, 1302 (TTAB 2015) (dispute between
current and former members of a performing group who were “claiming rights in the
same mark for the same goods or services”); UVeritech, Inc. v. Amax Lighting, Inc.,
115 USPQ2d 1242, 1249 (TTAB 2015) (dispute between a manufacturer and its
former distributor); Conolty, 111 USPQ2d at 1306-09 (dispute between former
business partners).73 Where there is no relationship between the parties, a plaintiff
may argue that a third party owns the applied-for mark. See Anheuser-Busch Inc. v.
The Florists Ass’n of Greater Cleveland, Inc., 29 USPQ2d 1146, 1150-51 (TTAB 1993).
The common element in the lack-of-ownership cases is that the parties were
contesting ownership of the applied-for mark. That element is not present here.
Applicant does not seek “registration of the Carter Coat of Arms that [Charles
Carter allegedly] owns and controls,” 37 TTABVUE 55, but rather the Coat of Arms

73 The cases cited by Opposers, Nahshin v. Prod. Source Int’l LLC, 107 USPQ2d 1257 (TTAB
2013) and Treadwell’s Drifters Inc. v. Marshak, 18 USPQ2d 1318 (TTAB 1990), 37 TTABVUE
53, involved this sort of ownership dispute.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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Mark. Charles Carter does not claim that he owns that mark by virtue of the parties’
past business dealings or otherwise, or that a third party owns it. Opposers do not
dispute Applicant’s claim that it developed and adopted the Coat of Arms Mark in
2008, or that the mark has been used by Applicant on its wines in connection with
Applicant’s name Philip Carter Winery, facts that are among the classic indicia of
trademark ownership. See, e.g., UVeritech, 115 USPQ2d at 1249 (listing factors used
to determine the identity of the owner of a mark). Opposers’ claim that Applicant is
not “the rightful owner of the mark sought to be registered,” id. at 53, finds no support
in the lack-of-ownership cases, and Opposers failed to show that Applicant did not
own the Coat of Arms Mark when the opposed application was filed.
Opposers also argue more broadly that “[w]hen it is legally improper to use a
mark, registration may properly be refused.” Id. They cite Vaughn Russell Candy Co.
v. Cookies in Bloom Inc., 47 USPQ2d 1635, 1636-38 (TTAB 1998), in which the Board
held that a settlement agreement between the parties that prohibited the applicant’s
use of the words INCREDIBLE EDIBLE COOKIE ARRANGEMENTS precluded
registration of the mark COOKIES IN BLOOM “INCREDIBLE EDIBLE COOKIE
ARRANGEMENTS” and design. The principle discussed in Vaughn Russell Candy
that an agreement prohibiting or limiting the use of a mark or term may bar its
registration been recognized by the Federal Circuit, see, e.g., Selva & Sons, Inc. v.
Nina Footwear, Inc., 705 F.2d 1316, 217 USPQ 641, 647 (Fed. Cir. 1983), and applied
by the Board in other cases, see, e.g., Bausch & Lomb Inc. v. Karl Storz GmbH & Co.
KG, 87 USPQ2d 1526, 1530 (TTAB 2008); M-5 Steel Mfg. Co. v. O’Hagin’s Inc., 61
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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USPQ2d 1086, 1094-95 (TTAB 2001), but it is inapplicable here because the record
does not show any agreement between the parties by which Applicant agreed not to
use or register the Coat of Arms Mark, or any elements of it.
Opposers instead appear to invite the Board to find that Charles Carter’s claimed
exclusive right to use the Carter Coat of Arms under foreign “principles of heraldic
law applicable to arms” makes Applicant’s use of the Coat of Arms Mark improper,
and the mark unregistrable, in the United States. 40 TTABVUE 55-56. We decline
that invitation.
As discussed above in connection with Opposers’ lack-of-ownership claim, the
Carter Coat of Arms and the Coat of Arms Mark are not one and the same.74 Even if
United Kingdom law granted Charles Carter exclusive ownership of the Carter Coat
of Arms, Opposers do not provide a persuasive reason why such rights under United
Kingdom law would bar the registration of the Coat of Arms Mark under United
States law.75
Moreover, on the rare occasions when we must consider foreign law, or the actions
of foreign tribunals or governments, to determine the right to registration in the

74 Opposers conflate the two for purposes of their unlawful use and lack-of-ownership claims.
The record shows that the Coat of Arms Mark was based on a version of the Carter Coat of
Arms, and that there are clear similarities between the two, but they are not the same.
75 Opposers invoke “principles of comity” and “deference to the law of a foreign sovereign.” 37
TTABVUE 54. These concepts might be relevant if we were being asked to give effect to a
foreign judgment establishing Applicant’s lack of rights in the Coat of Arms Mark, but there
is no such judgment here. Opposers also argue that “[r]efusal of registration would be, in all
aspects, consistent with mandates of Section 38(3) of the Trade Marks Act 1994 (U.K.) and
Rule 10 of the Trademark Rules of the U.K.” 37 TTABVUE 56 n.11. Our task is to apply
United States law on Opposers’ challenge to Applicant’s right to register the Coat of Arms
Mark, and whether our decision would be consistent with the possible treatment of the Coat
of Arms Mark under United Kingdom trademark registration law is of no moment.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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United States, we require proof of foreign law and any pertinent acts of foreign
governmental entities sufficient to enable us to understand and apply that law. See,
e.g., Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1498-1501
(TTAB 2017) (considering Mexican law and acts of Mexican government through the
Mexican Institute of Intellectual Property to determine whether the applicant was
the proper entity to seek registration of TEQUILA as a certification mark). Opposers’
proof of the “laws of the UK applicable to heraldry,” the purported act of the “officer
of arms” granting Robert Carter of London the right to bear the Carter Coat of Arms
“per the Harleian Society’s The Visitation of London in 1633/34,” and the “several
basic legal principles applicable here” regarding the passage of the right to use a coat
of arms “through the male lineage of a family,” 37 TTABVUE 54, consists of a single
paragraph in the declaration of Charles Carter, First C. Carter Decl. ¶ 23, who does
not profess to be an expert on United Kingdom law, and the citation of a 1955 decision
of a United Kingdom court. 37 TTABVUE 54. This is insufficient proof of any relevant
foreign law and the alleged historical grant of the Carter Coat of Arms to Charles
Carter’s side of the Carter family. Opposers’ failure of proof is particularly significant
here because Applicant’s principal Philip Carter Strother also traces his lineage to
the Carter family of Virginia, Strother Tr. 33:22-35:9; Ex. 10, and Opposers have
publicly acknowledged that he, like Charles Carter, is “a direct descendant of Robert
‘King’ Carter.” 38 TTABVUE 87-90. We find that Opposers did not prove that it was
“legally improper” for Applicant to use and seek to register the Coat of Arms Mark.
Opposition Nos. 91215114, 91216395, and 91218094 (Consolidated)
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Decision: Opposition Nos. 91215114 and 91216395 are each sustained on the
basis of Shirley Plantation’s claim under § 2(d) of the Trademark Act. Opposition No.
91218094 is dismissed.