Steele Wines, Inc.

Trademark Trial and Appeal Board

Aug 23, 2013

No. 85683619 (T.T.A.B. Aug. 23, 2013)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: August 23, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Steele Wines, Inc.
________

Serial No. 85683619
_______

Evan Anderson of Brand Ventures Intellectual Property Law
for Steele Wines, Inc.

Fred Carl III, Trademark Examining Attorney, Law Office 108
(Andrew Lawrence, Managing Attorney).
_______

Before Cataldo, Wellington and Adlin,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, Steele Wines, Inc. filed, on July 22, 2012,
an application asserting use in commerce since May 30,
2012, under Section 1(a) of the Trademark Act, 15 U.S.C.
1051(a), to register the mark displayed below for “wines”
in International Class 33.
Ex Parte Appeal No. 85683619

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2009 LAKE COUNTRY RED WINE is disclaimed apart from the
mark as shown. In response to the examining attorney’s
requirement, applicant submitted the following revised
description of the mark:
The mark consists of the wording A SCARLET 2009
LAKE COUNTY RED WINE. The letter A, the word
SCARLET and the top of the wine bottle appear in
red. The wording LAKE COUNTY RED WINE appears in
white. The remaining elements are in brown and
white and comprise an image of a woman in puritan
costume carrying a bottle of wine wrapped in
cloth. The background elements are out of focus.

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, when
applied to applicant’s goods, so resembles the previously
registered mark THE SCARLET LETTER for “wine” in
International Class 33 as to be likely to cause confusion.1

1 Registration No. 4106359 issued February 28, 2012.
Ex Parte Appeal No. 85683619

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In addition, the examining attorney refused
registration to applicant under Trademark Act §§ 1 and 45
in the absence of an acceptable specimen of use that
displays the applied-for mark.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs.
Refusal to Register Under Section 2(d)
Applicant argues that the mark in the cited
registration is weak and thus entitled to a narrow scope of
protection. Applicant further argues that, as a result,
the differences between its mark and the mark in the cited
registration are sufficient to distinguish them. In
support of its contention, applicant made of record copies
of the following third-party registrations:
Registration No. 4063036 for the mark SCARLET HARLOT
and Registration No. 4107973 for the mark displayed below,
both issued to the same entity for “wine;”
Ex Parte Appeal No. 85683619

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Registration No. 3218299 for the mark SCARLET RIDGE
for “wines, sparkling wines, fortified wines, liqueurs;”
and
Registration No. 2005383 for the mark SCARLATTA
(translation into English as “Scarlet”) for “alcoholic
beverages, namely, wine.”
The examining attorney maintains that the goods,
channels of trade and consumers are identical. The
examining attorney further argues that the marks are
similar inasmuch registrant’s mark is the name of the
classic American novel The Scarlet Letter by Nathanial
Hawthorne, which is about an accused puritan adulteress who
must wear a scarlet-colored “A” on her clothing, and
applicant’s mark, which includes the word SCARLET, and two
puritan figures including a woman with a scarlet-colored
letter “A” on her clothing, connotes the same novel. In
Ex Parte Appeal No. 85683619

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support of the refusal, the examining attorney submitted
the following Internet materials:
An article from Wikipedia.org discussing the novel The
Scarlet Letter, indicating that “The story starts during
the summer of 1642, near Boston Massachusetts, in a Puritan
village,” with a young woman named Hester Prynne being led
from the town prison with an infant in her arms and a
scarlet colored letter “A” on the breast of her gown to
symbolize the act of adultery she has committed;
A screenshot from goodreads.com listing The Scarlet
Letter as the sixth most popular book among high school
readers in the United States;
A screenshot from northport.k12.ny.us listing The
Scarlet Letter among the 43 most frequently taught books in
Grades 7-12;
A screenshot from nylusmilk.wordpress.com listing The
Scarlet Letter as the sixth most taught book in US high
schools; and
An article from today.msn.com listing The Scarlet
Letter among the ten books “you should have read in high
school.”
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
Ex Parte Appeal No. 85683619

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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”).
We first turn to consider the du Pont factor regarding
the similarity between the goods. To state the obvious,
applicant’s goods, identified as “wines” are identical to
the “wine” identified in the cited registration. Further,
because as identified the goods are identical, they must be
presumed to travel in the same channels of trade and be
sold to the same classes of consumers. See Hewlett-Packard
Co. v. Packard Press, Inc., 281 F.3d 1261, 1268, 62 USPQ2d
1001 (Fed. Cir. 2002); and In re Max Capital Group Ltd., 93
USPQ2d 1243, 1245 (TTAB 2010). The identity between the
goods, trade channels and classes of purchasers are factors
Ex Parte Appeal No. 85683619

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that weigh heavily in favor of a finding of likelihood of
confusion.
We next turn to the du Pont 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 comparing the marks, we are
mindful that the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression so that
confusion as to the source of the goods offered under the
respective marks is likely to result. 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 unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
Moreover, in comparing the marks, we are mindful that
where, as here, the goods are legally 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. Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992); Jansen Enterprises Inc. v. Rind, 85
Ex Parte Appeal No. 85683619

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USPQ2d 1104, 1108 (TTAB 2007); and Schering-Plough
HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323,
1325 (TTAB 2007).
In this case, the marks at issue are similar to the
extent that both contain the term SCARLET as a prominent
feature thereof. More significantly, registrant’s mark, in
its entirety, consists of the wording THE SCARLET LETTER.
Evidence made of record by the examining attorney supports
a finding that the primary significance of THE SCARLET
LETTER is the title of a classic American novel The Scarlet
Letter, which is widely read, if not widely loved, by
junior high and high school students throughout the
country. Applicant’s mark consists of the prominent word
SCARLET and the image of a woman dressed in puritan garb
with a large, scarlet colored letter “A” affixed to the
bodice of her dress, and carrying a swaddled wine bottle in
place of a child. Applicant’s mark additionally includes
the image of a second figure dressed in puritan garb behind
and to the left of the first. The imagery, use of the
color red, letter “A” and word SCARLET in applicant’s mark
combine to unmistakably evoke the novel The Scarlet Letter.
Indeed, the evidence does not reveal any possible
connotation of applicant’s mark other than the same novel
for which the goods offered under the cited mark are named.
Ex Parte Appeal No. 85683619

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The additional, disclaimed wording 2009 LAKE COUNTRY RED
WINE in applicant’s mark clearly is merely descriptive, if
not generic, as applied to applicant’s wines and
contributes little to the overall connotation of
applicant’s mark.
As a result, in addition to the marks being similar in
appearance and sound solely to the extent that both contain
the word “SCARLET,” the marks’ similarity is further
enhanced inasmuch as registrant’s mark is THE SCARLET
LETTER and applicant’s mark connotes the well-known novel
of the same name. Accordingly, we find that the marks are
highly similar in connotation and, as a whole, convey
highly similar commercial impressions. Similarity in any
one of the elements of sound, appearance, meaning, or
commercial impression is sufficient to support a
determination of likelihood of confusion. See, e.g., Krim-
Ko Corp. v. The Coca-Cola Co., 390 F.2d 728, 156 USPQ 523,
526 (CCPA 1968) (“It is sufficient if the similarity in
either form, spelling or sound alone is likely to cause
confusion”); and In re White Swan Ltd., 8 USPQ2d 1534, 1535
(TTAB 1988) (“In appropriate cases, 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’”) (citations omitted)). In this case,
Ex Parte Appeal No. 85683619

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we find that the similarities in connotation and commercial
impression would lead consumers to mistakenly believe that
the identical goods identified thereby emanate from a
common source.
The existence of the four third-party registrations
owned by three entities does not compel a different result.
The mark SCARLET HARLOT in standard characters connotes a
provocative woman dressed in red. The composite mark owned
by the same entity, including the image of a woman clad in
a red bikini, does not evoke 17th century Hester Prynne so
much as a 1940s pinup; an image reinforced by the B-17
bomber and wording “B-17 457TH BOMB GROUP” in the mark. The
mark SCARLET RIDGE connotes a geographic location and the
mark SCARLATA connotes a woman’s name. Thus, the marks in
all of the third-party registrations differ in connotation,
appearance and sound from both applicant’s mark and that of
registrant. Further, it is settled that third-party
registrations are not proof that consumers are familiar
with such marks so as to be accustomed to the existence of
the same or similar marks in the marketplace. Smith Bros.
Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ 462
(CCPA 1973); and Richardson-Vicks, Inc. v. Franklin Mint
Corp., 216 USPQ 989 (TTAB 1982).
Ex Parte Appeal No. 85683619

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Finally, to the extent that any of applicant’s
arguments raise a doubt about likelihood of confusion, we
must resolve that doubt in favor of the prior registrant.
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d
1025 (Fed. Cir. 1988); and In re Martin's Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289, 1290 (Fed. Cir.
1984).
Specimen Requirement
Applicant submitted the specimen reproduced below with
its application. The specimen is a photograph of the mark
on a label affixed to a bottle of wine.

Ex Parte Appeal No. 85683619

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The examining attorney rejected this specimen on the ground
that it fails to display the entire applied-for mark. In
response, applicant submitted as a substitute specimen a
photograph that is essentially identical to the original
specimen, displaying the mark as above.2
The question is whether the mark sought to be
registered, reproduced below:

is a substantially exact representation of the mark as it
appears on the specimens of use, reproduced below, that
were submitted in connection with the recited goods.

2 The original and substitute specimens differ only to the extent
that the substitute specimen displays slightly less of the
photograph’s background. The mark as displayed on the wine
bottle in both photographs is identical.
Ex Parte Appeal No. 85683619

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The drawing of a mark in an application filed under
Section 1(a) of the Trademark Act such as the one under
consideration herein is governed by Trademark Rule 2.51(a),
which provides as follows:
In an application under section 1(a) of the Act,
the drawing of the mark must be a substantially
exact representation of the mark as used on or in
connection with the goods and/or services.

See Trademark Rule 2.51(a). As noted above, applicant
describes the applied-for mark as follows:
The mark consists of the wording A SCARLET 2009
LAKE COUNTY RED WINE. The letter A, the word
SCARLET and the top of the wine bottle appear in
red. The wording LAKE COUNTY RED WINE appears in
white. The remaining elements are in brown and
white and comprise an image of a woman in puritan
costume carrying a bottle of wine wrapped in
cloth. The background elements are out of focus.

Ex Parte Appeal No. 85683619

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The original and substitute specimens filed by applicant
display a portion of the word “SCARLET” with only part of
the letter “S” visible and none of the letter “T” visible.
Furthermore, the specimens fail to display the design of
the second puritan figure appearing on the left side of the
mark in the drawing. Simply put, the mark as it appears in
the specimens displays the majority, but not the entirety,
of the word “SCARLET” and only the right hand of the
puritan figure in the left background of the drawing. This
contrasts with the mark in the drawing which displays the
entirety of the word “SCARLET” and the majority of the
additional puritan figure. Thus, it is readily apparent
that the mark in applicant’s specimens displays only a
portion of the mark as shown in the drawing.
This is not a situation in which there exists some
minor, inconsequential variation between the mark as it
appears on the drawing page and in the trademark specimen.
See In re Hacot-Columbier, 105 F.3d 616, 41 USPQ2d 1523,
1525 (Fed. Cir. 1997). Rather, the display of only a
portion of the word “SCARLET” and absence of the second
puritan figure from the mark as shown in the drawing on the
specimens is a major, significant difference. As a result,
we agree with the examining attorney that the mark shown on
applicant’s drawing is not a substantially exact
Ex Parte Appeal No. 85683619

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representation of the mark as used on the specimens.3
Summary
Decision: The refusal to register under Trademark Act
Section 2(d) is affirmed.
The refusal to register on the ground that the mark in
applicant’s drawing does not match the mark as displayed on
the specimens submitted with applicant’s application is
affirmed.

3 We observe that the difficulty in submitting an acceptable
photograph of the mark on the goods may result from the curvature
of the wine bottle to which the label bearing the mark is
affixed. Nonetheless, as discussed above, the specimens of
record fail to display the entirety of the applied-for mark.