Solene, Inc.

Trademark Trial and Appeal Board

Oct 5, 2016

No. 86478821 (T.T.A.B. Oct. 5, 2016)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
October 5, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Solene, Inc.
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Serial No. 86478821
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Edward S. Wright, Esq. for Solene, Inc.

Andrew Rhim, Trademark Examining Attorney, Law Office 101 (Ronald R.
Sussman, Managing Attorney).
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Before Masiello, Hightower, and Larkin, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Solene, Inc. (“Applicant”) has filed an application1 to register on the Principal
Register the mark HOMMAGE À NOS PAIRS in standard characters for “wine.”
The Application states that the English translation of the mark is “homage to our
mentors.”
The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used

1 Application Serial No. 86478821, filed December 12, 2014 under Trademark Act Section
1(a), 15 U.S.C. § 1051(a), on the basis of Applicant’s use of the mark in commerce, stating
June 2011 as the date of first use and first use in commerce.
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in connection with Applicant’s goods, so resembles the registered mark HOMAGE in
standard characters as to be likely to cause confusion, or to cause mistake, or to
deceive. The cited mark is registered for “wines.”2 When the refusal was made final,
Applicant appealed. Applicant and the Examining Attorney have filed briefs. We
affirm the refusal to register the mark.
1. Evidentiary issues.
Neither the Examining Attorney nor Applicant made any evidence of record.
However, Applicant in its brief asks that we consider the definition of “homage” in
.3 The Examining Attorney has objected on grounds of
timeliness.4
The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame
du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in
printed format or have regular fixed editions. In re Red Bull GmbH, 78 USPQ2d
1375, 1377 (TTAB 2006). However, when a party requests that the Board take
judicial notice of appropriate matter, it should provide a copy of the matter in
question. TBMP §§ 704.12(b), 1208.04 (2016). In this case, Applicant supplied only
the URL for the dictionary definition. The content of websites is changeable and
evanescent. Consequently, the Board will not utilize a URL to access a website to
consider whatever content may appear there. In re Future Ads LLC, 103 USPQ2d

2 Reg. No. 3149466, issued September 26, 2006. Section 8 affidavit accepted; Section 15
affidavit acknowledged; renewed.
3 Applicant’s brief at 2, 4 TTABVUE 6.
4 Examining Attorney’s brief, 6 TTABVUE 5-6.
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1571, 1572 (TTAB 2012); In re HSB Solomon Associates, LLC, 102 USPQ2d 1269,
1274 (TTAB 2012). In any event, in this case even if Applicant had supplied a copy
of the definition, we would not take judicial notice of it.
Urban Dictionary (urbandictionary.com) is a collaborative slang dictionary that
permits visitors to the website to submit or edit definitions, and there is no
indication that there is any fixed edition of it. It is not a “source whose accuracy
cannot reasonably be questioned,” Fed. R. Evid. 201(b)(2), and as such it is not
appropriate matter for judicial notice. Accordingly, the Board considers definitions
from Urban Dictionary so long as the non-offering party has an opportunity to rebut
that evidence by submitting other definitions that may call into question the
accuracy of the particular Urban Dictionary definitions. In re Star Belly Stitcher,
Inc., 107 USPQ2d 2059, 2062 n.3 (TTAB 2013). That was not the case here.
In order to give proper consideration to this case, the Board will take judicial
notice of the following dictionary definitions:
homage: n … 3 a : reverential regard : RESPECT, DEFERENCE … esp : respect
shown by external action : OBEISANCE … b : flattering attention :
TRIBUTE

vt to pay homage to
WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY 1082 (1993).
hommage: … n.m. Homage; respect, veneration; … faire hommage à quelqu’un, to
do homage to someone; … rendre ses hommages à quelqu’un, to pay
one’s respects to someone.

pair: … a … Equal, even. … n.m. Peer; equal; … fellow …

CASSELL’S FRENCH-ENGLISH ENGLISH-FRENCH DICTIONARY 395, 513 (1951).

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2. Refusal under Section 2(d).

Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973).
(a) The goods; trade channels; customers.
We will first consider the similarity or dissimilarity of the goods as identified in
the application and the cited registration. Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed. Cir. 2014); Octocom
Sys. Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). The goods are identical, as both the application and the cited
registration cover wine. Accordingly, the du Pont factor regarding the similarity or
dissimilarity of the goods heavily favors a finding of likelihood of confusion.
As Applicant’s goods are legally identical to those of Registrant, we must presume
that they move in the same channels of trade and are offered to the same classes of
consumers. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (even though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in determining
likelihood of confusion); American Lebanese Syrian Associated Charities Inc. v.
Child Health Research Institute, 101 USPQ2d 1022, 1028 (TTAB 2011); In re Smith
& Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994). Accordingly, the du Pont factors
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relating to the similarity or dissimilarity of trade channels and classes of customers
favor a finding of likelihood of confusion.
(b) The marks.
We now turn to a consideration of the similarity or dissimilarity of the marks at
issue in their entireties as to appearance, sound, connotation and commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “The 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) (internal quotation marks omitted). Moreover, marks must be
considered in light of the fallibility of memory. In re St. Helena Hosp., 774 F.3d 747,
113 USPQ2d 1082, 1085 (Fed. Cir. 2014). While we consider each mark in its
entirety, 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 that our ultimate
conclusion rests upon a comparison of the marks in their entireties. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). “Indeed, this type
of analysis appears to be unavoidable.” Id. We bear in mind that when the goods at
issue are identical, the degree of similarity necessary to find likelihood of confusion
need not be as great as where there is a recognizable disparity between the goods.
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Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992).
The two marks are similar in appearance by virtue of the close similarity between
Registrant’s mark HOMAGE and the first word of Applicant’s mark, HOMMAGE.
The additional letter M in HOMMAGE is a very slight distinction that might well
be overlooked by customers. The additional wording À NOS PAIRS in Applicant’s
mark is a clear point of difference in appearance between the marks. The
Examining Attorney urges that the word HOMMAGE in Applicant’s mark is the
dominant portion of the mark because it is the first word, citing Palm Bay Imports,
73 USPQ2d at 1692 (finding the word “veuve” to be the most prominent part of the
mark VEUVE CLICQUOT because “veuve” is the first word in the mark). We agree
that the position of the word HOMMAGE gives it salience in Applicant’s mark.
Moreover, in displays of Applicant’s mark, the word HOMMAGE, as the first word,
might logically be emphasized over the other wording of the mark.5
With respect to the sound of the two marks, Applicant argues that the French
word “hommage” is pronounced with emphasis on the second syllable while the
English word “homage” is pronounced with emphasis on the first syllable. However,
“there is no correct pronunciation of a trademark, and consumers may pronounce a

5 We appreciate that the sole specimen of use in the record shows Applicant’s mark as a
subsidiary brand, subordinate to the more dominant mark CLOS SOLÈNE, and shows the
mark on a single line and in lettering of uniform size and color. However, Applicant seeks
to register its mark in standard characters, such that its use of the mark would not be
limited to any particular display. See In re Viterra Inc., 101 USPQ2d at 1910; Squirtco v.
Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983). Accordingly, we must
consider that Applicant may use its mark as the primary mark on its product and in other
graphic styles.
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mark differently than intended by the brand owner.” In re Viterra, 101 USPQ2d at
1912. In this case, consumers might mistakenly perceive HOMAGE as a French
term and give it a French pronunciation, even though the correct French spelling
has a double “M.” Thus, Registrant’s mark might, in the marketplace, be
pronounced the same as the first word of Applicant’s mark. The additional wording
À NOS PAIRS in Applicant’s mark is a point of difference in sound.
With respect to meaning or connotation, the French-English dictionary indicates
that “homage” is the English equivalent of “hommage.” Both words mean “respect.”
As the dictionaries show, both words denote a form of respect that one shows to or
“pay[s]” to another. Applicant’s mark, unlike Registrant’s mark, expressly identifies
the object of this respect, namely NOS PAIRS, which may mean “our mentors,” as
Applicant has stated, or “our peers” or “fellows,” as the dictionary suggests.
Although Applicant’s mark is the more specific of the two, Registrant’s mark also
includes the suggestion of respect paid to someone.
Considering the marks in their entireties, we find that the similarities outweigh
the differences and that overall the marks create similar commercial impressions.
The additional wording in Applicant’s mark, À NOS PAIRS, although absent from
the Registrant’s mark, is nonetheless consonant with the meaning of Registrant’s
mark and its suggestion of respect paid to someone. As such, it could be perceived as
an extension or subcategory of Registrant’s HOMAGE brand. We find the differences
between the two marks insufficient to distinguish them. The du Pont factor of the
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similarity or dissimilarity of the marks accordingly weighs in favor of a finding of
likelihood of confusion.
(c) Absence of actual confusion.
Applicant contends that its mark has been in use since June 2011, and that
Applicant is not aware of any instances of actual confusion with Registrant’s mark.6
The record of this case contains no information regarding the extent to which
Applicant has used and promoted its mark, or of the extent of use of Registrant’s
mark. Thus, there is no basis upon which to determine whether there have been
meaningful opportunities for actual confusion to occur in the marketplace. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1847 (Fed. Cir.
2000); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
The uncorroborated statement that there are no known instances of actual
confusion is of little or no evidentiary value in this ex parte proceeding. In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003).
Accordingly, the du Pont factor of the length of time during and conditions under
which there has been contemporaneous use without evidence of actual confusion is
considered neutral.
(d) Conclusion.
We have considered all of the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. In view of the
similarities between the marks, the identity of the goods, and the presumption that

6 Applicant’s brief at 2, 4 TTABVUE 6.
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the goods will travel through the same trade channels to the same classes of
customers, we find that Applicant’s mark so resembles the cited registered mark as
to be likely to cause confusion, mistake or deception as to the source of Applicant’s
goods.
Decision: The refusal to register is affirmed.