Spirits International, B.V.v.S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi

Trademark Trial and Appeal Board

Jul 6, 2011

No. 91163779 (T.T.A.B. Jul. 6, 2011)

Mailed:
July 6, 2011

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Spirits International, B.V.
(formerly Spirits International N.V.)1

v.

S.S. Taris Zeytin Ve Zeytinyagi
Tarim Satis Kooperatifleri Birligi
_____

Opposition No. 91163779
to application Serial No. 78253641
filed on May 23, 2003
_____

Bingham B. Leverich, Marie A. Lavalleye and Hope Hamilton of
Covington & Burling L.L.P for Spirits International, B.V.

Jess M. Collen of Collen IP, Intellectual Property Law, P.C.
for S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis
Kooperatifleri Birligi.

1 The opposition was filed by Spirits International N.V.
Opposer explained in its brief that Spirits International N.V.
converted from a public limited liability company into a private
limited liability company in 2007, and that a copy of the
corporate conversion was recorded with the USPTO on August 14,
2007 in connection with opposer’s pleaded application Serial No.
74382759. Opposer’s notice of reliance, filed February 9, 2010,
includes a copy of application Serial No. 74382759 which reflects
the conversion of the company and the change of name to Spirits
International B.V. While this is sufficient to show the change
of name, the better practice would have been for opposer to file,
after the conversion of the entity and the change of name became
effective, a separate paper with the Board advising of this
change so that the Board could reflect this change in its
records, including in the caption of this proceeding. We have
done so now.
THIS OPINION IS A
PRECEDENT OF THE TTAB
Opposition No. 91163779
2
______

Before Seeherman, Kuhlke and Lykos, Administrative Trademark
Judges.

Opinion by Seeherman, Administrative Trademark Judge:

S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis
Kooperatifleri Birligi (“applicant”) applied to register
MOSKONISI in the stylized form shown below for a variety of
goods and services in International Classes 1, 2, 3, 29, 30,
32, 33, 39 and 40.2

Spirits International, B.V. (“opposer”) has opposed the
registration of the mark in Classes 32 and 33. The goods in
those classes are identified as follows:
Lemon juice; beer, preparations for making beer,
namely, extracts of hops, mineral water, spring
water, soda water, vegetable juice beverages,
fruit juices, fruit nectars, powders for
effervescing beverages, isotonic beverages, and
sahlep, a thick fermented grain-based beverage in
the nature of a beer (Class 32); and

Wine, liqueurs, alcoholic compositions for
alcoholic drinks, namely, alcoholic bitters,
alcoholic milk-based beverages, prepared alcoholic
cocktails, aperitifs, wines, cognacs, whisky,
alcoholic beverages with anise, sake and sahlep, a

2 Application Serial No. 78253641, filed May 23, 2003, based on
Section 1(b) of the Trademark Act (intent-to-use).
Opposition No. 91163779
3
thick fermented alcoholic grain-based beverage
(Class 33).

The remaining classes were, as a result of a consented
request to divide, subsequently placed in a “child”
application, and they and the child application form no part
of this opposition proceeding.
The grounds for this opposition, as set forth in the
amended notice of opposition filed on March 31, 2006, are
likelihood of confusion and lack of a bona fide intent to
use. With respect to the likelihood of confusion ground,
opposer has alleged that it is the owner of an intent-to-use
application, Serial No. 74382759, for the mark MOSKOVSKAYA
for “vodka” in Class 33, that was filed on April 22, 1993;
that opposer has priority because its intent-to-use
application was filed before the filing of applicant’s
intent-to-use application on May 23, 2003; that the
alcoholic products for which applicant seeks to register
MOSKONISI are identical or closely related to the vodka for
which opposer seeks to register MOSKOVSKAYA; and the marks
are similar; and that applicant’s use of MOSKONISI for its
identified alcoholic products would be likely to cause
confusion with opposer’s mark MOSKOVSKAYA for vodka.
With respect to the lack of bona fide intent to use
ground, opposer asserts that applicant has not produced any
documents in response to opposer’s requests for production
of documents that might support applicant’s allegations of a
Opposition No. 91163779
4
bona fide intention to use the mark MOSKINISI, nor has
applicant provided any information of such an intent in
response to opposer’s interrogatories seeking such
information, and that on information and belief applicant
does not and never has had a bona fide intention to use the
mark MOSKINISI in commerce in connection with any alcoholic
products.3

3 Although the notice of opposition refers specifically to the
likelihood of confusion with respect to applicant’s use of the
mark for alcoholic beverages, and applicant’s lack of a bona fide
intention to use its mark for alcoholic beverages, the opposition
was brought against all the goods in Classes 32 and 33.
Therefore, to the extent that opposer is successful in proving
likelihood of confusion or lack of a bona fide intention to use
the mark with respect to any of the goods in each class, and
specifically alcoholic beverages, the opposition against the
classes in their entirety would be sustained. In this
connection, if applicant believed that opposer’s objection to
registration of the mark was limited to the alcoholic beverages
listed in the identification of each class, it could have availed
itself of the divisional procedure, as it did when it requested
that Classes 1, 2, 3, 29, 30, 39 and 40 be divided out from the
application. Or, with respect to the lack of a bona fide intent
to use ground, applicant could have moved to delete alcoholic
beverages from its identification if applicant did not have a
bona fide intention to use its mark in commerce with respect to
such goods, but did with respect to the non-alcoholic beverages.
Although all of the goods in Class 33 are alcoholic beverages,
applicant’s identified goods in Class 32 include both alcoholic
beverages and non-alcoholic items. Opposer could then have
determined whether it wished to contest the division and/or
proceed with the opposition in connection with non-alcoholic
beverages as well as alcoholic beverages, or whether a
registration could have issued for the non-alcoholic beverages in
Class 32. Compare, Grand Canyon West Ranch LLC v. Hualapai
Tribe, 78 USPQ2d 1696 (TTAB 2006), in which an opposition was
brought, inter alia, on the ground that the applicant had not
used its mark on all of the identified services as of the filing
date of the use-based application and the application was
therefore void ab initio. Prior to trial applicant filed a
motion to amend its identification to delete certain services for
which the opposer claimed that applicant did not use the mark;
the Board granted applicant’s motion, and denied opposer’s motion
for summary judgment with respect to the services remaining in
the application.
Opposition No. 91163779
5
In its answer applicant denied the salient allegations
of the amended notice of opposition.4
The record includes the pleadings; the file of the
opposed application; and opposer’s notice of reliance, by
which it made of record a copy of opposer’s application and
the status and title of that application, taken from the
USPTO database; applicant’s responses to certain of
opposer’s requests for production of documents and
interrogatories, and applicant’s responses to certain of
opposer’s requests for admission.5 Applicant did not submit
any evidence. Only opposer filed a brief.6

4 Applicant also asserted what it characterized as “affirmative
defenses”; however, applicant did not submit any evidence or
legal argument as to these “defenses” and we consider them
waived.
5 Opposer also submitted with its notice of reliance a copy of
applicant’s application and the pleadings in this proceeding.
Such submissions are unnecessary because these documents are of
record by operation of the rules. We point out that applicant
had previously filed a motion to strike certain of the papers
submitted with the notice of reliance, and the Board ruled on
that motion in the order dated June 4, 2010. Briefly, although
documents submitted in response to a request for production
cannot be made of record by notice of reliance, see Trademark
Rule 2.120(j)(3)(ii), that rule does not prohibit a party from
introducing the answers that no responsive documents exist. See
L.C. Licensing Inc. v. Berman, 86 USPQ2d 1883, n.5 (TTAB 2008).
As for a letter from opposer’s counsel to applicant’s counsel
that opposer attempted to submit with its notice of reliance,
opposer did not contest applicant’s motion to strike with respect
to such letter, and therefore the Board struck it from the notice
of reliance and it is not part of the record.
6 With its brief, opposer attached results of the status of
opposer’s application, printed from the USPTO’s database two days
before the filing of the brief. Such evidence is untimely. See
Trademark Rule 2.122(e). See also TBMP § 704.03(b)(2) (3d ed.
2011). However, according to opposer’s brief, opposer is
attempting to show by this exhibit that its pleaded application
was published for opposition and that a notice of allowance
issued on February 2, 2010. That information is of record
pursuant to the status information printed from the USPTO TARR
Opposition No. 91163779
6
Standing
Opposer has made of record its application for
MOSKOVSKAYA for vodka. The Board has frequently held that
“[t]he filing of opposer's application and the Office's
action taken in regard to that application provides opposer
with a basis for pleading its standing.” Fiat Group
Automobiles S.p.A. v. ISM, Inc., 94 USPQ2d 1111 (TTAB 2010),
citing Life Zone Inc. v. Middleman Group Inc., 87 USPQ2d
1953, 1959 (TTAB 2008). In the present case, applicant’s
application was not cited as a bar to the registration of
opposer’s mark.7 However, in Toufigh v. Persona Parfum
Inc., 95 USPQ2d 1872, 1874 (TTAB 2010), quoting Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982), the Board made it clear that it is not
necessary for an applicant’s application to be cited as a
potential bar to the registration of an opposer’s mark for
the opposer to establish its standing:
“We regard the desire for a registration with its
attendant statutory advantages as a legitimate
commercial interest.” Further, we consider that

database on February 3, 2010 and submitted with opposer’s notice
of reliance.

7 Because applicant’s application was filed subsequent to the
filing of opposer’s application, if applicant’s application were
deemed to be conflicting with the opposer’s application,
applicant’s application could never issue to registration and be
cited as a bar to registration of opposer’s mark while opposer’s
application was pending. See Trademark Rule 2.83(a) and (c);
TMEP § 1208.01: When two or more applications contain marks that
are conflicting, the mark in the application that has the
earliest effective filing date will be published for opposition
if it is eligible for registration on the Principal Register….
Opposition No. 91163779
7
petitioner has shown a reasonable basis for a
belief that he is damaged by the registration
sought to be cancelled by virtue of the fact that
both parties’ marks are identical, and their goods
are at least arguably related.

In the present case, the arguable similarities in the marks
and the arguable relatedness of the goods is sufficient for
us to find that opposer has met the statutory requirement of
establishing a reasonable belief of damage by showing that
it possesses a real interest in the proceeding, and is not
an intermeddler.
Bona fide intent to use
We turn first to the ground that applicant had no bona
fide intention to use its mark in connection with alcoholic
beverages when it filed its trademark application and
continues to lack such an intention. In support of this
ground, opposer points, inter alia, to applicant’s responses
to opposer’s document production requests that no responsive
materials exist or have been discovered, including as to any
documents evidencing, reflecting or referring to applicant’s
use or intended use of its mark in connection with any
alcoholic product; promotional and marketing materials and
advertisements for any wine, beer, spirit, vodka or other
alcoholic product offered or to be offered by applicant or
any authorized licensee under the mark in the United States;
marketing plans involving any wine, beer, spirits, vodka or
any other alcoholic product to be sold under the mark; and
Opposition No. 91163779
8
documents evidencing or referring to any channel of trade
through which products have been sold or through which
applicant intends to sell products under the mark in the
United States.
In addition, in answer to the interrogatories asking
that applicant identify each type of alcoholic product that
it has ever offered or intends to offer under its mark in
the United States, and the channel of trade through which
the alcoholic product has been sold or through which
applicant intends to sell it, applicant stated that
currently only olive oil is sold under the mark in the
United States. Applicant did not address that part of the
interrogatory asking what type of alcoholic products it
intends to sell, or the intended channels of trade therefor.
Applicant also admitted, inter alia, that it has not
obtained an Importer’s Basic Permit from the U.S. Alcohol
and Tobacco Trade Bureau to import any alcoholic beverage
into the United States (applicant has admitted that it was
established in Turkey); nor has it applied for or obtained a
Wholesaler’s Basic Permit to be a wholesaler of any
alcoholic beverage in the United States; nor has it applied
for or obtained a Certificate of Label Approval for any
alcoholic beverage from the U.S. Alcohol and Tobacco Trade
Bureau; nor has it applied to register or registered with
the U.S. Food and Drug Administration as an importer of any
Opposition No. 91163779
9
alcoholic beverage; nor has it applied for or obtained a
license or permit from any state in the United States to
sell any alcoholic beverage in that state.
Opposer has the initial burden of demonstrating by a
preponderance of the evidence that applicant lacked on the
filing date of the application, or now lacks, a bona fide
intent to use the mark on the identified goods. The absence
of any documentary evidence on the part of an applicant
regarding such intent constitutes objective proof sufficient
to establish that the applicant lacks a bona fide intention
to use its mark in commerce. See Boston Red Sox Baseball
Club LP v. Sherman, 88 USPQ2d 1581, 1587 (TTAB 2008);
Commodore Electronics Ltd. v. CBM Kabushiki Kaisha
Opposition, 26 USPQ2d 1503, 1507 (TTAB 1993).
As detailed above, applicant has supplied no
documentary evidence regarding its intent to use its mark on
any alcoholic beverages, and has affirmatively stated that
no such documents exist. Opposer’s submission of these
responses is sufficient for opposer to satisfy its initial
burden of proving that applicant did not and does not have
an intention to use its applied-for mark on or in connection
with alcoholic beverages, which includes some of the goods
identified in both of the opposed classes in applicant’s
application. The burden thus shifts to applicant to come
forward with evidence which would adequately explain or
Opposition No. 91163779
10
outweigh the failure to provide such documentary evidence.
As previously noted, applicant submitted no evidence
whatsoever, nor did it file a brief. Therefore, applicant
has failed to rebut the opposer’s evidence, and the
opposition on the ground that opposer lacks a bona fide
intent to use its mark on all of the goods identified in the
opposed classes of its application is sustained.
Likelihood of Confusion
One of the elements of proving the ground of likelihood
of confusion is that the opposer must demonstrate its
priority. Opposer relies solely on its earlier filed
intent-to-use application to prove its priority. There is
no evidence that this application has issued into a
registration; in fact, the status information provided by
opposer shows only that a notice of allowance to file a
statement of use has issued.
An opposer may rely on the filing date of its intent-
to-use application to establish constructive use of its mark
on that date. However, any judgment entered in favor of an
opposer relying on such constructive use is contingent upon
the ultimate issuance of a registration. See Compagnie
Gervais Danone v. Precision Formulations LLC, 89 USPQ2d 1251
(TTAB 2009). As the Board explained in Larami Corp. v. Talk
To Me Programs Inc., 36 USPQ2d 1840, 1845, n. 7:
...a party in the position of opposer may,
likewise, rely on the constructive use provisions
Opposition No. 91163779
11
of Section 7(c) to establish its priority for
purposes of Section 2(d). An opposer may rely on
Section 7(c) to establish priority if it owns a
registration for the mark it is asserting under
Section 2(d) or if it has filed an application for
registration of that mark. We might put the
matter more simply by saying that in proceedings
before the Board the constructive use provisions
of Section 7(c) may be used both defensively and
offensively. (Of course, as we have noted,
Section 7(c) provides that any judgment entered in
favor of a party relying on constructive use --
whether that party is in the position of plaintiff
or defendant in a Board proceeding -- is
contingent upon the ultimate issuance of a
registration to that party.)

Thus, even if opposer could demonstrate likelihood of
confusion, it cannot prevent the issuance of a registration
to applicant on this ground until its own application is
registered, thereby perfecting its priority. However, we
have already found that opposer has established that
applicant lacked and continues to lack a bona fide intention
to use its mark for at least some of the identified goods,
i.e., alcoholic beverages, in each class that has been
opposed. Because the opposition can be sustained on this
ground alone, thereby denying registration to applicant
without any delay to see if opposer can perfect its claim of
priority, we decline to address opposer’s second ground of
likelihood of confusion, and enter judgment solely on the
ground of lack of a bona fide intent to use the mark.
Decision: The opposition is sustained solely on the
ground that applicant lacks a bona fide intention to use the
mark in commerce.