SLO Down Wines, LLC

Trademark Trial and Appeal Board

Oct 6, 2017

No. 86653319 (T.T.A.B. Oct. 6, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: October 6, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re SLO Down Wines, LLC
_____

Serial No. 86653319
_____

Barry Strike of Strike & Techel,
for SLO Down Wines, LLC.
Deborah E. Lobo, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
_____

Before Bergsman, Heasley and Pologeorgis,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
SLO Down Wines, LLC (“Applicant”) seeks registration on the Principal Register
of the mark SLO DOWN WINES (in standard characters, “WINES” disclaimed) for
“wine” in International Class 33.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark so resembles the previously registered mark SLOW DOWN

1 Application Serial No. 86653319 was filed on June 5, 2015, based upon Applicant’s claim of
first use anywhere and use in commerce since at least as early as May 22, 2013.
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BROWN (in standard characters, “BROWN” disclaimed) for “beer, ale, lager, stout
and porter” in International Class 32 as to be likely to cause confusion or mistake, or
to deceive.2
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal was resumed. We affirm the refusal to register.3
I. Likelihood of Confusion
We base our determination of likelihood of confusion under Section 2(d) on an
analysis of all of the probative facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Ind., Inc., __U.S. __,
135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
Applying the DuPont factors, we bear in mind the fundamental principles
underlying the Lanham Act in general and Section 2(d) in particular, which are “to
secure to the owner of the mark the goodwill of his business and to protect the ability
of consumers to distinguish among competing producers.” Park ‘N Fly, Inc. v. Dollar
Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985) quoted in Matal v. Tam, __
U.S. __, 122 USPQ2d 1757, 1762 (2017); see also DuPont, 177 USPQ at 566.

2 Registration No. 4891732 issued on the Principal Register on January 26, 2016.
3 All TTABVUE and Trademark Status and Document Retrieval (“TSDR”) citations refer to
the docket and electronic file database for Applicant’s involved application. All citations to
the TSDR database are to the PDF version of the documents.
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We have considered each relevant DuPont factor for which there is evidence or
argument, and have treated the other factors as neutral. See M2 Software, Inc. v. M2
Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark
Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we
have considered each factor for which we have evidence, we focus our analysis on
those factors we find to be relevant.”). Varying weights may be assigned to each
DuPont factor depending on the evidence presented. Citigroup Inc. v. Capital City
Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (factors “may play
more or less weighty roles in any particular determination”).
Two key considerations are the similarities between the marks and the
similarities between the goods. See In re i.am.symbolic, LLC, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017); Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
A. Similarity of the Marks

Under the first DuPont factor, we consider the similarity or dissimilarity of
Applicant’s and Registrant’s marks in their entireties, taking into account their
appearance, sound, connotation and commercial impression. DuPont, 177 USPQ at
567; Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160 (Fed. Cir. 2014); Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). In a particular case, “two marks may be found to be confusingly similar if there
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are sufficient similarities in terms of sound or visual appearance or connotation.”
Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB
1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992) quoted in In re Mr. Recipe, LLC, 118
USPQ2d 1084, 1089 (TTAB 2016). In this case, all of these considerations weigh in
favor of finding that the marks are similar.
Applicant argues that “[t]he dominant word in a mark is typically the mark’s first
word, thus confusion is more likely to occur between two marks that share the same
first word.”4 Here, it contends, “the first words of the marks, SLO and SLOW, are not
identical.”5 “The first word in Applicant’s Mark is SLO, which has an entirely
different connotation and commercial impression than the word SLOW. SLO is
suggestive of the city of San Luis Obispo, California, and is regularly used as a slang
term for the area. The registered mark SLO JAZZ FESTIVAL is illustrative of this
usage,” it argues, attaching to its brief a copy of that registrant’s response to an office
action.6 Accordingly, Applicant concludes, “the marks have distinct connotations and
commercial impressions, as the initial words of each mark are different and have
distinct meanings. The last word of each of the three word marks is also different,
resulting in ‘DOWN’ as the only identical word in the marks.”7

4 Applicant’s brief p. 5, 13 TTABVUE 6.
5 Id. p. 6, 13 TTABVUE 7.
6 Id. p. 5, 13 TTABVUE 6, Exhibit A, 13 TTABVUE 9-13. The copy of registrant’s response to
an office action is untimely and is given no consideration. See the discussion infra.
7 Id. p. 5, 13 TTABVUE 6.
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We agree that consumers are generally inclined to focus on the first word of a
mark. See Palm Bay Imports, 73 USPQ2d at 1692 (“Veuve” is the most prominent
part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark
and the first word to appear on the label); Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon
encountering the marks, consumers will first notice the identical lead word); Presto
Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is
often the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered”) cited in In re Mr. Recipe, LLC, 118 USPQ2d at 1090.
In this case, though, we agree with the Examining Attorney that SLO and SLOW
are virtually identical, save for the omission of the letter “W” in Applicant’s mark.
That omission of a single letter is insufficient to distinguish the marks. See Mag Instr.
Inc. v. Brinkmann Corp., 96 USPQ2d 1701, 1714-15 (TTAB 2010) (difference of a
single letter does not suffice to distinguish MAG STAR from MAXSTAR). The
omission makes no difference in sound, as consumers calling for the goods in a bar or
restaurant would pronounce SLO and SLOW identically. See In re Bay State Brewing
Co., 117 USPQ2d 1958, 1961 (TTAB 2016), see also In re Omaha Nat. Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987) (affirming the Board’s finding that FirsTier is
the phonetic equivalent of “first tier”) cited in Mini Melts, Inc. v. Reckitt Benckiser
LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); RE/MAX of America, Inc. v. Realty
Mart, Inc., 207 USPQ 960, 964 (TTAB 1980) (REMACS and RE/MAX
indistinguishable in sound).
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Nor does it make a difference in connotation, as “SLO” is a common abbreviation
for “slow.”8 See In re United States Rubber Co., 158 USPQ 686 (TTAB 1968) (“SLO-
GRO” merely descriptive as applied to a plant growth regulator). To “slow” means to
decrease speed―a connotation reinforced by the word “DOWN.” The Merriam-Webster
Dictionary defines the verb “slow” as “to make slow or slower: slacken the speed of •
slow a car ― often used with down or up.”9 The MacMillan Dictionary defines “slow
down” the same as “slow,” as in “Slow down! You’re driving too fast.”10 Thus the words
SLO DOWN in Applicant’s mark convey the same meaning as those in Registrant’s
mark: to SLOW DOWN.
Applicant’s attempt to distinguish SLO as a suggestive reference to San Louis
Obispo is unsupported. Its evidence in support of this argument, offered for the first
time as exhibit A to its brief, was not introduced during the course of examination,
and is therefore untimely. 37 CFR § 2.142(d) (“The record in the application should
be complete prior to the filing of an appeal. Evidence should not be filed with the
Board after the filing of a notice of appeal.”). Accordingly, the Examining Attorney’s
objection to this evidence is sustained, and this exhibit will be given no

8 See Abbreviations.com 8/15/2016, Aug. 16, 2016 Office Action, TSDR p. 60.
9 Merriam-Webster.com. The Board may take judicial notice of definitions from dictionaries,
including online dictionaries that exist in printed format or have regular fixed editions. E.g.,
In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014) aff’d 823 F.3d 594, 118
USPQ2d 1632 (Fed. Cir. 2016); TBMP § 1208.04 (June 2017). The Board also may notice
dictionary definitions sua sponte. See University of Notre Dame du Lac v. J.C. Gourmet Food
Imps. Co., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
10 MacMillanDictionary.com 3/10/2017, March 10, 2017 Office Action, TSDR p. 6.
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consideration.11 But even if Applicant’s exhibit were properly introduced, it would fail
to establish Applicant’s point. Unlike “SLO JAZZ FESTIVAL,” SLO combined with
DOWN does not suggest a city; it forms the phrase “SLOW DOWN”―an expression
so commonly used to connote deceleration that it appears in dictionaries.
“[I]f the dominant portion of both marks is the same, then confusion may be likely
notwithstanding peripheral differences.” In re Denisi, 225 USPQ 624, 624 (TTAB
1985). The peripheral differences in this case fail to distinguish the marks. The last
word in Applicant’s applied-for mark, “WINE,” is disclaimed, as is the last word in
the registered mark, “BROWN.”12 These disclaimed terms, which are at best
descriptive and at worst generic, do not add any source-indicating significance to the
respective marks. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that
the ‘descriptive component of a mark may be given little weight in reaching a
conclusion on the likelihood of confusion.”’) (quoting In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); see also In re Chatam Int’l Inc., 380
F.3d 1340, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) (“Because ALE has nominal
commercial significance, the Board properly accorded the term less weight in
assessing the similarity of the marks under DuPont. As a generic term, ALE simply

11 Examining Attorney’s brief, 15 TTABVUE 9 n. 7.
12 “Brown ale is a style of beer with a dark amber or brown color.” Wikipedia.org 3/10/2017
March 10, 2017 Office Action, TSDR p. 23. “The Board will consider evidence taken from
Wikipedia, bearing in mind the limitations inherent in this reference work, so long as the
non-offering party has an opportunity to rebut that evidence by submitting other evidence
that may call its accuracy into question.” In re Bay State Brewing, 117 USPQ2d at 1959 n.3.
Serial No. 86653319
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delineates a class of goods.”). Because the terms WINES and BROWN have no source-
indicating significance, consumers would perceive the dominant first portions of the
marks, SLO DOWN and SLOW DOWN, as the indicators of source of the goods. In re
National Data, 224 USPQ at 751 (“[I]n articulating reasons for reaching a conclusion
on the issue of confusion, there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular feature of a mark, provided
the ultimate conclusion rests on consideration of the marks in their entireties.”)
quoted in In re Davia, 110 USPQ2d 1810, 1813 (TTAB 2014).
Comparing the marks in their entireties, we find that that the similarities in
sound, appearance, meaning and commercial impression between Applicant’s mark
and the cited mark clearly outweigh any differences. For these reasons, the first
DuPont factor weighs in favor of finding a likelihood of confusion.
B. Similarity of the Goods and Channels of Trade
We next address the second and third DuPont factors, “[t]he similarity or
dissimilarity and nature of the goods … as described in an application or
registration…” and “[t]he similarity or dissimilarity of established, likely-to-continue
trade channels.” DuPont, 177 USPQ 567. “[T]he greater the degree of similarity
between the applicant’s mark and the cited registered mark, the lesser the degree of
similarity between the applicant’s goods or services and the registrant’s goods or
services that is required to support a finding of likelihood of confusion.” Time Warner
Entm’t Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002).
The application identifies wine and the cited registration identifies beer. (The
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registration also specifies “ale, lager, stout and porter,” but these are merely types of
beer, see In re Bay State Brewing, 117 USPQ2d at 1959, so the proper comparison is
between wine and beer.) The Board has found wine and beer to be related alcoholic
beverages in a number of likelihood-of-confusion cases, based on the evidence
submitted. E.g., Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 USPQ2d 1816,
1826 (TTAB 2015); In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1265 (TTAB 2011);
In re Sailerbrau Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB 1992).
The record shows that a number of entities have marketed wine and beer under
the same mark. The Examining Attorney has introduced evidence of over a dozen
such entities, such as:
• 2 Witches Winery and Brewing Company

13

13 2WitchesWineBrew.com 4/7/2016, April 7, 2016 Office Action, TSDR p. 15.
Serial No. 86653319
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• Nashoba Winery

14

14 NashobaWinery.com 8/15/2016, Aug. 16, 2016 Office Action, TSDR pp. 8, 12, 16.
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• Schram Vineyards

15

• Soaring Wings Vineyard & Brewing

15 SchramVineyards.com 8/15/2016, Aug. 16, 2016 Office Action p. 36.
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16
These representative samples support a finding that wine and beer are related
products that consumers encounter emanating from the same source, under the same
marks. See, e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009);
In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1268-69 (TTAB 2009).
The Examining Attorney has also adduced sixteen active, use-based third-
party registrations identifying both wine and beer as goods offered under the same
mark.17 Although such registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them, they nonetheless have some
probative value to the extent that they serve to suggest that the goods listed therein
are of a kind which may emanate from a single source under a single mark. See In re
Sailerbrau, 23 USPQ2d at 1720 (“That beer and wine may emanate from the same
source is illustrated by the registration copies, put into the record by the Examining
Attorney, which show that a number of companies have registered their marks for
both beer and wine.”); see also In re Albert Trostel & Sons Co., 29 USPQ2d 1783
(TTAB 1993).
A representative sample is listed below:

16 SoaringWingsWine.com 3/10/2017, March 10, 2017 Office Action, TSDR pp. 25-27.
17 March 10, 2017 Office Action, TSDR pp. 86-123.
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Mark Reg. No. Relevant Goods
DEFENDERS FREEDOM
OF CHOICE
3456841 Wine.
Beer
KIGEN 4380436 Beer.
Alcoholic beverages, namely,
wine.
SWEET JESUS 3994422 Beer.
Wine.
TIGHT ASS 3962914 Beer.
Distilled spirits; wine.
SCHILLINGBRIDGE 3099373 Beer.
Wine.
SALTY DOG 4136155 Beer, ale, lager, porter and stout.
Wine.

3934483 Beer.
Sweet cider, hard cider, sangria.
Wine.
O’HARA’S 4133934 Beer.
Spirits and liqueurs.
Wine.
CHARLEVILLE 4694631 Beer.
Wine.

Applicant does not controvert the Examining Attorney’s evidence of third-party
websites or registrations. Instead, Applicant has submitted eight pairs of use-based
third party registrations, showing that the Office has allowed a word or phrase to be
registered in Class 33 for wine or spirits, and a similar or identical word or phrase to
be registered to a different party in Class 32 for beer, as illustrated below:18
SLEEPING DOG WINES (table wine) – SLEEPING DOG STOUT (beer)

18 July 25, 2016 Response to Office Action, TSDR pp. 12-39; and Applicant’s February 14,
2017 Request for Reconsideration, TSDR pp. 12-31.
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EPICENTER (wine) – EPICENTER AMBER (beer)
BLACK DIAMOND (wines, namely port) – BLACK DIAMOND BREWING
COMPANY & Design (beer)
FLYING FISH (wine) – FLYING FISH BREWING COMPANY (beer)

WAR HORSE (wines) –WAR HORSE BREWING COMPANY (beer)

Applicant’s third-party registration evidence may reduce the weight of the
Examining Attorney’s third-party registration evidence, but it does not disprove her
point that wine and beer are often sold by the same entity under the same mark. See
In re G.B.I. Tile and Stone Inc., 92 USPQ2d 1366, 1369-70 (TTAB 2009). Indeed, for
two goods to be related, it is not necessary that they always emanate from the same
source under the same mark. The fact that they do so frequently is evidence that “the
respective products are related in some manner and/or … 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., v. Triumph Learning, 101
USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB
2007)). As the Examining Attorney points out, and as Applicant concedes, the Board
is not bound by prior examination decisions based on evidentiary records that are not
before us. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001); Super Bakery Inc. v. Benedict, 96 USPQ2d 1134, 1135 n. 1 (TTAB 2010).
When the issue has come before the Board with an appropriate evidentiary record,
“this Board has found beer and wine related on a number of occasions.” Anheuser-
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Busch v. Innvopak, 115 USPQ2d at 1826; In re Sailerbrau, 23 USPQ2d at 1720 (and
cases cited therein).
In the absence of any express limitations in the application or registration, we
must presume that wine and beer travel through all normal channels of trade and
are offered and sold to all of the usual customers for such goods, namely ordinary
adult consumers of alcoholic beverages. Anheuser-Busch v. Innvopak, 115 USPQ2d at
1825-26. “It is true that both beer and wine … are frequently sold through the same
channels of distribution.” G. H. Mumm & Cie v. Desnoes & Geddes Ltd., 917 F.2d
1292, 16 USPQ2d 1635, 1638 (Fed. Cir. 1990). These channels include liquor stores,
bars and restaurants, and (depending on the jurisdiction) supermarkets and
convenience stores. In re Bay State Brewing, 117 USPQ2d at 1960; Anheuser-Busch
v. Innvopak, 115 USPQ2d at 1827; In re Sailerbrau, 23 USPQ2d at 1720. For example:

Serial No. 86653319
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19
For these reasons, we find that wine and beer are related goods that travel
through the same channels of trade to the same class of consumers. Consequently,
the second and third DuPont factors weigh in favor of finding a likelihood of confusion.
II. Conclusion

On consideration of all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant DuPont factors, we find that the
marks at issue are similar, that Applicant’s identified goods are related to
Registrant’s goods, that they move in the same trade channels, and that they are
offered to the same class of purchasers. For these reasons, we conclude that
Applicant’s mark SLO DOWN WINES for wine so resembles the cited mark SLOW
DOWN BROWN for beer, ale, lager, stout and porter as to be likely to cause confusion
or mistake, or to deceive under Section 2(d) of the Trademark Act.

19 CapeFearWineandBeer.net, MerrifieldWineandBeer.com 4/7/2016, April 7, 2016 Office
Action pp. 7, 12.
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Decision: The refusal to register Applicant’s mark SLO DOWN WINES is
affirmed.