Sonoma Estate Vintners, LLC

Trademark Trial and Appeal Board

Jan 9, 2015

No. 85842056 (T.T.A.B. Jan. 9, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: January 9, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Sonoma Estate Vintners, LLC
_____

Serial No. 85842056
_____

Barry Strike of Strike & Techel,
for Sonoma Estate Vintners, LLC.
Raul Cordova, Trademark Examining Attorney, Law Office 114,
K. Margaret Le, Managing Attorney.
_____

Before Quinn, Bergsman and Gorowitz,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:
Sonoma Estate Vintners, LLC (“Applicant”) seeks registration on the Principal
Register of the mark BLACKHAWK (in standard characters) 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 of 1946, 15 U.S.C. § 1052(d), on the
ground that Applicant’s mark so resembles the registered mark BLACK HAWK

1 Application Serial No. 85842056 was filed on February 5, 2013, based upon Applicant’s
claim of first use anywhere and use in commerce since at least as early as February 22,
2006.
Serial No. 85842056
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STOUT, (in standard characters), for “malt beverages, namely, beer, ales, and
stout,” in Class 32, as to be likely to cause confusion.2 Registrant disclaimed the
exclusive right to use the term “Stout.”
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.
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. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Company, Inc., 315
F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods. 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”). These factors, and any other relevant
du Pont factors in the proceeding now before us, will be considered in this decision.

2 Registration No. 3205652, issued February 6, 2007; Section 8 and 15 affidavits accepted
and acknowledged.
Serial No. 85842056
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A. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.

We turn first to the du Pont likelihood of confusion factor focusing on the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 177
USPQ at 567. In a particular case, “[a] finding of similarity as to any one factor
(sight, sound or meaning) alone ‘may be sufficient to support a holding that the
marks are confusingly similar.’” In re White Swan Ltd., 8 USPQ2d 1534, 1535
(TTAB 1988) (citations omitted). See also In re Lamson Oil Co., 6 USPQ2d 1041,
1042 (TTAB 1987). In comparing the marks, we are mindful that “[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) (citation omitted). See also San Fernando Electric Mfg. Co. v.
JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d
mem., 972 F.2d 1353 (Fed. Cir. June 5, 1992). The proper focus is on the recollection
of the average customer, who retains a general rather than specific impression of
the marks. Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344
(TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
In this appeal, the average customer is an ordinary consumer of wine, beer, ale and
stout.
Serial No. 85842056
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Applicant is seeking to register the mark BLACKHAWK and the mark in the
cited registration is BLACK HAWK STOUT. The name “Black Hawk” is the
dominant element of Registrant’s mark because the term “Stout” is a generic term
for a type of malt beverage and Registrant has disclaimed the exclusive right to use
it. Although we must compare the marks in their entireties, it is a well-established
principle that, in articulating reasons for reaching a conclusion on the issue of
likelihood 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. See In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). With
respect to descriptive or generic matter constituting part of a mark, it is well-settled
that descriptive or generic matter has less significance in likelihood of confusion
determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1846 (Fed. Cir. 2000), quoting, In re National Data Corp., 224 USPQ at 752
(“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”); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001).
The term “Blackhawk” in Registrant’s mark consists of two ordinary words,
namely, “Black” and “Hawk” which have been combined to form the single term
BLACKHAWK. The presence or absence of a space in the terms BLACKHAWK and
BLACK HAWK STOUT is of little significance in our comparison of the marks.
Stockpot, Inc. v. Stock Pot Restaurant, Inc., 220 USPQ 52, 54 (TTAB 1983), aff’d,
Serial No. 85842056
- 5 -

737 F.2d 1576, 222 USPQ 665 (Fed. Cir. 1984) (“There is no question that the marks
of the parties [STOCKPOT and STOCK POT] are confusingly similar. The word
marks are phonetically identical and visually almost identical”); In re Best Western
Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“There can be little
doubt that the marks [BEEFMASTER and BEEF MASTER] are practically
identical”).
In view of the foregoing, we find that the marks are very similar in terms of
appearance, sound, connotation and commercial impression.
B. The similarity or dissimilarity and nature of the goods.
Having found that Applicant’s mark is very similar to Registrant’s mark, we
turn to the similarity or dissimilarity and nature of Registrant’s beer, ale, and stout
and Applicant’s wine. As the Board has stated many times, it is not necessary that
the goods of Applicant and Registrant be similar or competitive to find that they are
related for purposes of demonstrating a likelihood of confusion. That is, the issue is
not whether consumers would confuse the goods or services themselves, but rather
whether they would be confused as to the source of the goods or services. It is
sufficient that the respective goods are such that they would or could be
encountered by the same persons under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief that they originate from the
same producer. See Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d at 1722; In re Rexel Inc., 223 USPQ 830, 831 (TTAB 1984); In re
International Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
Serial No. 85842056
- 6 -

The Examining Attorney asserts that Applicant's “wine” is related to the “beer”
identified in the cited registration, and has submitted, in support of that position,
15 use-based third-party registrations showing that various entities have registered
a single mark for both goods. See, for example, Reg. No. 3456841 for the mark
DEFENDERS OF FREEDOM CHOICE, Reg. No. 3632408 for the mark VILLA
D’AQUINO, and Reg. No. 352239 for the mark WORK TRUCK.3 Third-party
registrations which individually cover a number of different items and which are
based on use in commerce serve to suggest that the listed goods are of a type which
may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785–86 (TTAB 1993).
In its October 8, 2013 response to an Office Action, Applicant asserts that of the
15 third-party registrations submitted by the Examining Attorney, only three of the
registrants have sold both beer and wine using the registered mark.
The Alcohol and Tobacco Tax and Trade Bureau’s (“TTB”)
regulations require that all wine and beer have a
Certificate of Label Approval (“COLA”) before the product
may leave the plant where it is bottled or packed. See 27
C.F.R. §§ 4.50, 7.41. A search of all 15 marks in the COLA
search database (https://ttbonline.gov/colaonline/public
SearchColas.do) reveals that only MOTOR CITY
BREWING WORKS DETROIT, SCHILLINGBRIDGE,
and D’SPAGNIA, were issued COLAs for both beer and
wine in the past five years. See attached COLAs. In ten
cases, no COLAs were issued under the trademark for
either beer or wine, indicating that the marks are not in
use in U.S. commerce at all; and in two cases, a COLA
was issued for beer, but not for wine. Accordingly, the
Examiner’s conclusion that the registrations relied upon
show that beer and wine may come from a common source

3 April 8, 2013 Office Action.
Serial No. 85842056
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is not supported by the Examiner’s own evidence, because
in only three of the 15 examples cited is it even possible
that both beer and wine were legally sold by the
registrant under the same name.4
Applicant’s evidence does not completely rebut the probative value of the third-
party registrations submitted by the Examining Attorney. Applicant found evidence
that only three of the 15 registrants filed COLA applications. Applicant did not
submit, however, any evidence regarding whether any of the registrants were using
the marks in the registrations. The certificates of registration are prima facie
evidence of the validity of the registered marks, the registrants’ ownership of the
marks, and of the owners’ exclusive right to use the marks in commerce. Section
7(b) of the Trademark Act, 15 U.S.C. § 1057(b). It is possible that the registrants are
using the marks for beer and wine and there is some reason or explanation that
Applicant did not find their COLA applications.
Taking Applicant’s argument a step further, Applicant could also argue that
because 13 registrants did not file COLA applications, any use of their marks in
connection with beer and/or wine is unlawful. Determining whether the use of a
mark is lawful under one or more of the myriad of regulatory acts involves two
questions: (1) whether a court or government agency having competent jurisdiction

4 27 CFR § 4.50 reads as follows: “(a) No person shall bottle or pack wine, other than wine
bottled or packed in U.S. Customs custody, or remove such wine from the plant where
bottled or packed, unless an approved certificate of label approval, TTB Form 5100.31, is
issued by the appropriate TTB officer.”
27 CFR § 7.41 reads as follows: “(a) Requirement: No person may bottle or pack malt
beverages, or remove malt beverages from the plant where bottled or packed unless an
approved certificate of label approval, TTB Form 5100.31, is issued.”

Serial No. 85842056
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under the statute involved has previously determined that party is not in
compliance with the relevant statute; or (2) whether there is a per se violation of a
statute regulating the sale of a party's goods. General Mills Inc. v. Healthy Valley
Foods, 24 USPQ2d 1270, 1273 (TTAB 1992). See also Automedx Inc. v. Artivent
Corp., 95 USPQ2d 1976, 1984 (TTAB 2010). In this case, there has been no final
determination of noncompliance by a court or agency regarding registrants’
shipments of their beer and wine. Rather, Applicant has attempted to show that
registrants’ failure to file COLA applications for beer and wine constitute per se
violations of Bureau of Alcohol, Tobacco and Firearms regulations. However,
Applicant failed to show that the registrants were not using the marks to identify
beer and wine. Applicant showed only that it could not find COLA applications.5
Thus, it is not clear whether there has been a violation of the regulations and, in
this ex parte setting, the registrants cannot be heard.
Further, the fact that the Examining Attorney submitted only 15 third-party
registrations listing beer and wine does not mean that they are the only
registrations that include these goods. There is no requirement for the Examining
Attorney to submit all the evidence that supports his position and, indeed, we would
be very critical if the examining attorney were to submit an inordinate number of
registrations. In re Kysela Pere et Fils Ltd., 98 USPQ 1261, 1265 (TTAB 2011). Cf.

5 There is no evidence or explanation as to whether shipping beer or wine without a COLA
certificate of approval is of such a nature that it would invalidate a registration as opposed
to being a collateral defect that could be rectified. General Mills Inc. v. Healthy Valley
Foods, 24 USPQ2d at 1274, citing Santinine Societa v. P.A.B. Produits, 209 USPQ 958, 967
(TTAB 1981) (J. Kera, concurring).
Serial No. 85

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Serial No. 85842056
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The Board has previously held that such sets of third-party registrations
submitted to suggest that the goods are not related, while relevant, do not
necessarily prove that the goods are not related. :
It [the evidence submitted by applicant] simply consists of
registrations that list one of applicant's goods but do not
include any goods that are in the cited registration, or
registrations that list one of the goods in the cited
registration but do not include any of applicant's
identified goods. We give this evidence much less weight.
There is no requirement for goods to be found related that
all or even a majority of the sources of one product must
also be sources of the other product. Therefore, evidence
showing only that the source of one product may not be
the source of another product does not aid applicant in its
attempt to rebut the evidence of the examining attorney.
Second, the mere fact that some goods are not included in
a registration's identification of goods does not establish
that the owner of the mark has not registered the mark for
those goods in another registration since, for example, the
registrant may have begun using the mark on those goods
at a later date.… The fact that applicant was able to find
and submit for the record these registrations of marks for
individual items does not rebut the examining attorney's
evidence showing the existence of numerous third-party
registrations using the same marks on a variety of items,
including applicant's and registrant's goods. Therefore,
contrary to applicant's argument (Reply Brief at 7), while
this evidence provides some indication that there are
many trademarks that are not registered for both
products, it does not rebut the examining attorney's
evidence that the goods are related.
In re G.B.I. Tile and Stone Inc., 92 USPQ2d 1366, 1370 (TTAB 2009).
We find the evidence of third-party registrations and websites is sufficient to
demonstrate the relatedness of “wine” and “beer.” See In re Kysela Pere et Fils Ltd.,
98 USPQ at 1266 (beer and wine found to be related goods); In re Sailerbrau Franz
Serial No. 85842056
- 12 -

Sailer, 23 USPQ2d 1719 (TTAB 1992) (wine and beer found related goods based on
third-party registrations).
C. Established, likely-to-continue channels of trade.
Beer and wine are general consumer products sold to adult members of the
general public. See In re Kysela Pere et Fils Ltd., 98 USPQ at 1266–67. Moreover,
the Examining Attorney submitted numerous websites for retail stores selling beer
and wine.6 It is also common knowledge that, in some cases, beer and wine may be
purchased in supermarkets and convenience stores. This du Pont factor favors a
finding of likelihood confusion.
D. Other facts probative of the effect of use.
A third party applied to register the mark BLACKHAWK for “bourbon; gin;
scotch; vodka; whiskey; wine.”7 Applicant asserts that the PTO did not cite
Registrant’s mark as a bar to registration. Applicant opposed the registration of the
BLACKHAWK mark because the description of goods included wine. The parties
reached an agreement allowing the above-noted BLACKHAWK mark to register
without wine in the description of goods.8
Applicant contends that the refusal to register Applicant’s mark is inequitable
because Applicant’s application “stands in exactly the same place as Blackhawk 29
with respect to whether it is confusingly similar to the Registered Mark:

6 November 6, 2013 Office Action.
7 Serial No. 85677426, filed July 15, 2012. Applicant submitted a copy of the TESS printout
and the Notice of Allowance with the October 8, 2013 response to Office Action.
8 Registration No. 4489134 issued December 11, 2012.
9 Applicant refers to the prior, third-party BLACKHAWK application as “Blackhawk 2.”
Serial No. 85842056
- 13 -

Applicant’s Marks and Blackhawk 2 are the same mark and both are used on a
different type of alcoholic beverage than the Registered Mark.”10 In this regard,
Applicant argues as follows:
Blackhawk 2 would not have been in a position to be
registered were it not for the consent agreement and
Applicant’s subsequent agreement to dismiss its
Opposition. Applicant noted that the PTO did not issue an
office action citing the Registered Mark against
Blackhawk 2, and therefore reasonably concluded that its
BLACKHAWK mark would be treated the same.
Accordingly, it is difficult to justify disparate treatment
under the circumstances.11
The PTO is not barred from examining the registrability of marks despite what
appears on the register. As the Board stated in In re BankAmerica Corp., 231 USPQ
873, 876 (TTAB 1986):
The cases are legion holding that each application for
registration of a mark for particular goods or services
must be separately evaluated. See, for example, In re
Loew's Theatres, Inc., 769 F.2d 764, 226 USPQ 865, 869
(Fed.Cir. 1985) [other citations omitted]. Section 20 of the
Trademark Act, 15 USC Section 1070, gives the Board the
authority and duty to decide an appeal from an adverse
final decision of the Examining Attorney. This duty may
not be delegated by adoption of conclusions reached by
Examining Attorneys on different records.
Suffice it to say that each case must be decided on its own merits based on the
evidence of record. We obviously are not privy to the record in the files of the
registered mark and, in any event, the issuance of a registration by an Examining
Attorney cannot control the result of another case. See In re Sunmarks Inc., 32

10 Applicant’s Brief, p. 8.
11 Id.
Serial No. 85842056
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USPQ 1470, 1472 (TTAB 1994). See also In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) (“The Board must decide each case on its own
merits. [Internal citation omitted]. Even if some prior registrations had some
characteristics similar to Nett Designs’ application, the PTO's allowance of such
prior registrations does not bind the Board or this court.”).
E. Balancing the factors.
Because the marks are similar, the goods are related and move in the same
channels of trade, we find that Applicant’s mark BLACKHAWK for “wine” is likely
to cause confusion with the registered mark BLACK HAWK STOUT for “malt
beverages, namely, beer, ales, and stout.”
Decision: The refusal to register Applicant’s mark BLACKHAWK is affirmed.