S.P.H. – Gerard Bertrand

Trademark Trial and Appeal Board

Sep 28, 2015

No. 86075352 (T.T.A.B. Sep. 28, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: September 28, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re S.P.H. – Gerard Bertrand
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Serial No. 86075352
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Janet G. Ricciuti of Janet Gilbert Ricciuti PC,
for S.P.H. – Gerard Bertrand.
Keri-Marie Cantone, Trademark Examining Attorney, Law Office 104,
Chris Doninger, Managing Attorney.
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Before Bergsman, Wellington and Gorowitz,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
S.P.H. – Gerard Bertrand (“Applicant”) seeks registration on the Principal
Register of the following mark:

Serial No. 86075352
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for “wines” in International Class 33.1 Applicant disclaimed the exclusive right to
use of the word CUVEE. In addition, Applicant acknowledged that the name
“Gerard Bertrand” identifies a living individual whose consent to register is of
record.
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act based on a likelihood of confusion with the
following registered mark:

for “Ale; Beer” in International Class 32.2 Registrant disclaimed the exclusive right
to use of the words "ALES," "TAVERN ALE," and "AUTHENTIC RECIPE.”

1 Application Serial No. 86075352 was filed on September 26, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act.
2 Registration No. 4209038 issued on September 8, 2012. The mark is described in the
registration as consisting of:
[A] portrait of Thomas Jefferson appearing inside an oval with three outlines
and surrounded by a dotted border, wavy designs appears on top, the wording
"YARDS" and "ALES OF THE REVOLUTION" appears below the wavy design,
the wording "AUTHENTIC RECIPE" appears on the left side of Thomas
Jefferson's face, and the wording "THOMAS JEFFERSON'S TAVERN ALE"
appears at the bottom portion of the oval.
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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 reverse 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 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”).
A. The similarity or dissimilarity and nature of the goods.
In determining whether the goods are related, it is not necessary that the goods
of Applicant and Registrant be similar or competitive in character to support a
holding of likelihood of confusion; it is sufficient for such purposes that the goods
are related in some manner and/or that conditions and activities surrounding
marketing of these goods are such that they would or could be encountered by the
same persons under circumstances that could, because of the similarities of marks
used with them, give rise to the mistaken belief that they originate from or are in
Serial No. 86075352
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some way associated with the same source. Coach Servs., Inc. v. Triumph Learning
LLC, 101 USPQ2d at 1722; Edwards Lifesciences Corp. v. VigiLanz Corp., 94
USPQ2d 1399, 1410 (TTAB 2010); Schering Corporation v. Alza Corporation, 207
USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corporation v. Anixter Bros. Inc.,
201 USPQ 851, 854 (TTAB 1978).
To show a relationship between Applicant’s goods, i.e., wine, and Registrant’s
goods, i.e., beer, the Examining Attorney submitted printouts from seven different
third-party websites advertising these same goods under a single mark. The
Examining Attorney contends that this evidence supports “the fact that the goods
[beer] of the Registrant are commonly sold by the same parties as the goods [wine]
of the Applicant.” 11 TTABVUE 9 (Brief at unnumbered p. 8).3 The Examining
Attorney also cites to Board decisions where the Board found that, under certain
circumstances, beer and wine are related. While the record before us shows that it
would not be unheard of for wine and beer to be sold by a single source under the
same mark, the evidence is not overwhelming. Indeed, given the number of beer and
wine manufacturers, a showing of seven entities cannot be construed as constituting
a common practice. Rather, here, we find that the evidence shows that while there
is some degree of relationship between beer and wine, it is not strong.

3 Citations to the record reference TTABVUE, the Board’s online docketing system.
Specifically, the number preceding “TTABVUE” corresponds to the docket entry number,
and the number(s) following “TTABVUE” refer to the page number(s) of that particular
docket entry where the cited materials appear.
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Nevertheless, we find that this factor slightly favors a finding of a likelihood of
confusion.
B. Weakness in the Name “Thomas Jefferson”
Before comparing the marks, we offer a brief discussion concerning the relevance
and renown of Thomas Jefferson (“Jefferson”), whose name is incorporated into both
marks. We agree with the Examining Attorney’s assessment of the record and that
it establishes that Jefferson, a Founding Father of the United States and author of
the Declaration of Independence, is generally regarded as one of the most famous
presidents in U.S. history, with several listings placing him as “third most famous
President” or “fourth most influential president.”4 His image and name are on all
nickels since 1938, as well on $2 bills. In addition to being a famous president,
Jefferson is renowned for various other activities and endeavors, e.g., architect and
owner of Monticello, his residence and a National Historic Landmark, and founder
of the University of Virginia. In particular, his affinity for wine is well-documented:5
Statesman, president, inventor, architect, musician, farmer, philosopher
and University of Virginia founder, while Thomas Jefferson filled a
myriad of roles throughout his industrious 83 years, his legacy as
America’s first wine connoisseur has also had an enduring influence on
the world’s wine stage. Jefferson was well ahead of his time with regards
to his vision for America’s potential for viticulture. He believed whole-
heartedly that, “We could, in the United States, make as great a variety
of wines as are made in Europe, not exactly of the same kinds, but
doubtless as good.” However, it was not until almost 200 years later that

4 Evidence attached to Office Action issued on July 28, 2014.
5 From About Food website (www.wine.about.com); website printouts attached to Office
Action issued on February 13, 2015.
Serial No. 86075352
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America would begin to live the vinicultural vision that Jefferson had
embraced so early on.
…
Jefferson brought a level of wine sophistication not seen before in
America and as such wore the prestigious hat of both wine advisor and
wine buyer for George Washington prior to and during his presidency.
…
Known as America’s first wine connoisseur, Jefferson played a definitive
role in establishing America’s wine trends in the early days of her
vineyard affections and his legacy lives on as the United States has
established itself as a dominating force on the international wine stage.
Or, as one author put it, “[w]hen it comes to Presidents and wine, there’s pretty
much one name floating around out there: Thomas Jefferson.”6
In addition to his legacy as a wine enthusiast, the record reflects that Jefferson
was an ardent brewer of beer and would produce his own at Monticello.7 It does not
appear, however, that Jefferson’s reputation as a brewer of beer rivals that for wine.
Applicant argues that the name THOMAS JEFFERSON “as a sole and unique
identifier of source is weak” and that his name is “a constant in schools, in the
press, in books, in the marketplace.” 9 TTABVUE 19 (Brief, p. 18). However, as the
Examining Attorney correctly pointed out, Applicant did not submit any evidence to
support its statement that the name is weak in the marketplace or otherwise
commercially diluted. Moreover, the Examining Attorney contends that the name

6 From Food & Wine article (dated February 18, 2012) from the CNN website
(www.cnn.com); printout attached to Applicant’s request for reconsideration (filed on
January 22, 2015).
7 From The Jefferson Monticello website (www.monticello.org); website printouts attached
to Examining Attorney’s Office Action issue on February 13, 2015.
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THOMAS JEFFERSON is “not diluted in connection with alcoholic beverages and is
thus deserving great protection.” 11 TTABVUE 7 (Brief at unnumbered p. 6). In
support, she contends there are only eleven live third-party registrations for marks
containing the name THOMAS JEFFERSON, none of which are for related goods.8
To the extent that Applicant argued that name THOMAS JEFFERSON is
commercially weak or diluted through third-party use in connection with the
involved goods, we disagree and this factor remains neutral. However, the fact that
there is no evidence showing commercial weakness in the Jefferson name, at least
not in connection with the involved goods, is not tantamount to a finding that any
marks containing the same name are confusingly similar, even assuming the marks
are used on related goods. As pointed out, there is no dispute that Jefferson is an
extremely famous historical figure and, at least with wine, has some added
significance or suggestive meaning in connection with the involved goods. In other
words, consumers are not only accustomed to seeing his name in various aspects of
life, but may understand the name differently if used in connection with wine.
In sum, although Jefferson’s name has no demonstrated commercial weakness in
connection with the involved goods, the name and Jefferson’s image are ubiquitous
in the United States. In addition and aside from general fame and Jefferson being
an iconic figure of U.S. history, the record shows that Jefferson is known as an

8 In particular, the Examining Attorney relies on a Trademark Electronic Search System
(“TESS”) printout purportedly showing the results for a search of the name “Thomas
Jefferson.” Attached to Office Action issued on February 12, 2015. Also attached are copies
of the TESS printouts for the registrations with the name.
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important figure in the history of wine in the United States. With this in mind, we
turn now to an analysis of the marks bearing in mind the significance of Jefferson
and the manner in which the name and/or image appears within the entireties of
the marks.
C. The similarity or dissimilarity of the marks in their entireties in terms of
appearance, sound, connotation and commercial impression.
In this du Pont likelihood of confusion factor, we focus 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. Here, “[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).
Finally, 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).
Serial No. 86075352
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With the above principles as well as the discussion regarding the importance of
the Jefferson’s name, we begin our analysis of the two marks and begin with
Applicant’s mark:

With respect to this mark, we find its dominant element to be the name
GERARD BERTRAND. This name not only appears first but has no demonstrated
or apparent relevance or significance in the context of wine other than identifying
the name of a vintner. As previously noted, there is a statement in the application
that this name refers to a living individual whose consent to register the mark is of
record; however, this does not mean that consumers are aware of this individual or
that his name will be understood in any manner other than an individual and
source for the wine. With respect to “Cuvée,” it is a descriptive word meaning “bulk
wine; especially : wine in casks or vats so blended as to ensure uniformity and
marketability [or] a blend of still wines used in the production of champagne.”9 With
respect to the THOMAS JEFFERSON element, consumers will of course
immediately recognize this as the name of a very famous former President and

9 Definition taken from The Merriam-Webster Online Dictionary, based on the print version
of Merriam-Webster's Collegiate Dictionary, Eleventh Edition. Printout attached to Office
Action issue on January 15, 2014.
Serial No. 86075352
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Founding Father of the United States. We agree with Applicant, and apparently so
does the Examining Attorney,10 that the mention of this famous name will be
perceived by consumers as “paying homage” or a tribute to the man who was also
known to be a wine aficionado. Thus, in terms of the mark’s overall commercial
impression, it will likely be understood as “Gerard Bertrand” wine (cuvee) with a
dedication or tribute to Jefferson.
We turn our attention now to Registrant’s mark:

Viewing this mark in its entirety, there is certainly a strong colonial-theme, with
a clear intent to pay homage to Jefferson. The decorative oval border certainly
enhances the colonial sentiment. Nevertheless, when viewing the mark on beer, it is
the word YARDS, appearing at the apex of the mark in larger letters, that is most
likely the element of the registered mark that consumers will look to for purposes of
identifying or recalling the source of the beer. Although YARDS comprises only one

10 The Examining Attorney states “[a]s discussed by the applicant and further shown by the
evidence of record, both parties intend to pay ‘homage’ to Thomas Jefferson.” 11 TTABVUE
7 (Brief at unnumbered p. 6).
Serial No. 86075352
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of several literal terms in a composite design mark, it is the single arbitrary term in
the mark. We remain cognizant that we must look at the entirety of the mark and
that the “oval portrait” of Jefferson sets the background of the entire mark.
However, the image of this President is hardly unique or distinctive; in other words,
while consumers may recall a Jefferson theme or image, they are more likely to look
elsewhere in the mark for purposes of identifying a distinctive source-identifier.
Moreover, in viewing and contemplating the entire mark, consumers are more likely
to associate Jefferson’s name and image with a particular recipe or style of beer
rather than identifying the actual source of the beer. That is, when the wording
ALES OF THE REVOLUTION is read in conjunction with AUTHENTIC RECIPE
and THOMAS JEFFERSON’S TAVERN ALE,” these elements convey information
about a particular revolution-era recipe or style of beer. More specifically, because
Jefferson’s name is used in the possessive form before “tavern ale,” a descriptive
term for a type of beer, consumers are likely to believe the beer derives from a
particular recipe created or preferred by Jefferson. The wording “authentic recipe,”
whether true or not, further enhances this meaning. For those familiar with
Jefferson’s beer-making past, however, it would more logical to believe that the beer
derives from one of Jefferson’s recipes.
In comparing the two marks, we find their connotations and overall commercial
impressions to be more dissimilar than similar, despite both paying homage to
Jefferson. On the one hand, Applicant’s mark conjures a vintner or individual
(“Gerard Bertrand”) as the source of wine who is paying homage to one of our most
Serial No. 86075352
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famous Presidents who had a renowned fondness for wine and winemaking.
Registrant’s mark, on the other hand, carries a different commercial impression of
colonial-themed ale from the source “Yards” with an emphasis on a vintage recipe
that was perhaps favored or created by Jefferson. In other words, although both
marks may be broadly interpreted as a tribute to the same famous American
president, the marks are distinguishable based on their different overall commercial
impressions. The marks are sufficiently different that even if consumers are
familiar with one mark, they are not likely to be confused as the source upon
encountering the other mark on related goods.
Accordingly, the first du Pont factor weighs against a finding of likelihood of
confusion.
D. Conclusion
Despite the record showing that there is some relationship between beer and
wine, we find that confusion is not likely because of the differences between the
marks. The overall commercial impression created by the Applicant’s mark:

for wine is sufficiently different from Registrant’s mark:
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for beer.
Decision: The refusal to register Applicant’s mark is reversed.