Stonestreet, LLC

Trademark Trial and Appeal Board

Aug 8, 2002

No. 75821755 (T.T.A.B. Aug. 8, 2002)

Hearing: Paper No. 11
July 18, 2002 DEB
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Stonestreet, LLC
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Serial No. 75/821,755
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James P. Martin of Shartsis Friese & Ginsburg LLP for
Stonestreet, LLC.
Robert L. Lorenzo, Trademark Examining Attorney, Law
Office 111 (Kevin Peska, Acting Managing Attorney).
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Before Cissel, Bucher and Holtzman, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Stonestreet, LLC sought to register the mark BUCKEYE
on the Principal Register as used with “wines” in
International Class 33.1
This case is now before the Board on appeal from the
final refusal to register based upon Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). The Trademark
Examining Attorney has held that applicant’s mark, as used
in connection with wines, so resembles the trademark shown
below:
1 Application Serial No. 75/821,755, filed on October 13,
1999, based upon applicant’s allegation of use in interstate
commerce since at least as early as April 17, 1997.
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Serial No. 75/821,755
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registered for “beer” in International Class 32,2 as to be
likely to cause confusion, to cause mistake or to deceive.
Responsive to the refusal to register, applicant
argued: that there are substantial differences between
its mark and the cited mark; that the term BUCKEYE is
commonly used as a source indicator, and, hence, is a
relatively weak mark; and, that wine and beer are not
closely related goods.
On the other hand, the Trademark Examining Attorney
argues that applicant’s mark is highly similar to the
cited mark; that BUCKEYE is not a weak mark as applied to
2 Reg. No. 691,791, issued on January 19, 1960; Second
renewal on August 30, 2000. The drawing is lined for the colors
red and gold, and the words “Sparkling Dry” are disclaimed apart
from the mark as shown. The assignment records of the United
States Patent and Trademark Office (at Reel 2011, Frame 0367)
reflect the most recent transfer of this property from Miller
Brewing Company to Consolidated Biscuit Company as of December
1999, recorded with the USPTO in January 2000.
Serial No. 75/821,755
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alcoholic beverages; and, that wine and beer are closely
related items.
Both applicant and the Trademark Examining Attorney
have fully briefed the case, and at applicant’s request,
an oral hearing was held before the Board on July 18,
2002.
We affirm the refusal to register.
In the course of rendering this decision, we have
followed the guidance of In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 1362, 177 USPQ 563, 567-68 (CCPA
1973). This case sets forth the factors that should be
considered, if relevant, in determining likelihood of
confusion.
Turning first to the similarities/dissimilarities in
the marks, we note the argument in favor of similarity
made by the Trademark Examining Attorney, as follows:
… [B]oth the applicant’s mark and the
registrant’s mark are highly similar in
appearance since both marks share the same
dominant term, namely, “BUCKEYE.” The
applicant’s argument that its mark is
different from the registered mark because
the registered mark contains the additional
wording “SPARKLING DRY” and the design
element is not persuasive. The examining
attorney asserts that disclaimed matter is
less significant or less dominant in
creating a commercial impression. Thus,
the dominant feature of the two marks at
issue is the same, namely the term
“BUCKEYE.”
Serial No. 75/821,755
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We agree with the Trademark Examining Attorney that
the shared term BUCKEYE is the dominant feature of
registrant’s mark, the term appears to be inherently
distinctive for alcoholic beverages, and nothing that
applicant has submitted for the record demonstrates
otherwise. To the extent applicant has properly made of
record a number of third-party registrations containing
the word BUCKEYE, the use of this mark on cereal, soup
mixes or potato chips, for example, does not compel the
conclusion that the mark is commonplace for alcoholic
beverages.
Moreover, the words “Sparkling Dry” on registrant’s
beer label may well create for some a suggestion of
sparkling wines, reinforcing the connotation of BUCKEYE in
connection with applicant’s wines.
Applicant has applied for a registration showing the
mark in typed form, while registrant’s composite mark is a
red rectangle with gold circles surrounding literal and
design features. However, the red background and gold
circles of registrant’s composite mark are carrier devices
for the source-indicating and descriptive matter contained
therein. The images of barley suggest the brewing process
while the descriptive words, “Sparkling Dry,” are
appropriately disclaimed. Visually, the word BUCKEYE
Serial No. 75/821,755
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dominates registrant’s beer label, and is the only
distinctive source-indicating material in this composite
mark capable of being spoken when asking for registrant’s
product. Hence, in spite of apparent differences in
appearance [the mark BUCKEYE alone differs from a
representation of an entire beer label -- even one where
the word BUCKEYE clearly overshadows the other subordinate
matter placed on the label] and obvious differences in
sound [BUCKEYE SPARKLING DRY, when spoken in full, adds
three more syllables to the spoken mark than is the case
when enunciating the word BUCKEYE alone], we find that
these marks retain strong visual and aural similarities.
Accordingly, when comparing these two marks by
applying the traditional sight/sound/meaning trilogy, we
find that both marks create similar overall commercial
impressions.
Turning next to the relationship of the goods,
applicant and the Trademark Examining Attorney have
reached quite different conclusions on this factor as
well. Applicant argues as follows:
Other than the fact that beer and wine are
both alcoholic beverages, the two goods
have few, if any, similarities.
Substantial pricing differences exist
between beer and wine. Beer and wine also
differ in odor, taste, color and alcohol
content. Wine is typically sold by the
Serial No. 75/821,755
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bottle and beer is sold in differently
shaped bottles or in cans, typically in
packages of six. Wine and beer are labeled
in very different ways and marketed to
different consumers. The goods are also
advertised and promote separately…
The Examining Attorney’s conclusions [that
beer and wine are closely related] … should
not be considered by the Board because beer
manufacturers do not typically produce wine
and wine manufacturers do not typically
produce beer. To Applicant’s knowledge, no
wine and beer from the same manufacturer
are sold under the same mark. Consumers
are not likely to associate a mark used on
wine with a similar mark used on beer.
We do agree with applicant’s contention that there is
no evidence in this record establishing that beer and wine
originating from a single source are actually sold under
the same mark. In the absence of such a showing,
applicant asks us to find that the average consumer is not
likely to make an association between a mark used on wine
with the same (or a similar) mark used on beer. However,
the alleged practice of manufacturers avoiding the common
branding of beer and wine is not the end of our inquiry
under this du Pont factor.
Although federal registrations do not show use in the
marketplace, the Trademark Examining Attorney has
submitted for the record a number of valid and subsisting
third-party registrations where the marks are indeed
registered for both beer and wine. He corroborates this
Serial No. 75/821,755
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conclusion by citing to reported cases such as In re
Sailerbrau Franz Sailer, 23 USPQ2d 1719 (TTAB 1992),
wherein we held as follows:
Contrary to applicant’s argument, both beer
and wine may be found in the same outlets,
whether they be liquor stores or
supermarkets. We do not agree with
applicant that purchasers are necessarily
discriminating. While some may have
preferred brands, there are just as likely
to be purchasers who delight in trying new
taste treats. Furthermore, these are not
expensive items requiring one to exercise
careful thought and/or expertise in their
purchase. More often than not they are
shelf items which are purchased on a
somewhat casual basis. That beer and wine
may emanate from the same source is
illustrated by the registration copies, put
into the record by the Examining Attorney,
which show that a number of companies have
registered their marks for both beer and
wine.
23 USPQ2d at 1720.
Applicant counters with, inter alia, a case from our
reviewing Court that it argues compels the opposite
conclusion:
It is true that both beer and wine,
including champagne, are frequently sold
through the same channels of distribution.
It is also true that substantial pricing
differences normally exist and actually
exist in this case between champagne and
beer. Mumm markets its product as a
premium good: the purchaser of Mumm
champagne can be presumed to be in the
market for an upscale item for consumption
and to have a reasonably focused need.
Desnoes does not market its product as a
Serial No. 75/821,755
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premium good. These differences weigh
against a holding of a likelihood of
confusion.
G.H. Mumm & Cie v. Desnoes & Geddes Ltd., 917 F.2d 1292,
1295, 16 USPQ2d 1635, (Fed. Cir. 1990).
From this latter quotation, it is clear that the
record in the Mumm case demonstrated MUMM brand champagne
to be a premium sparkling wine marketed by one of France’s
top quality champagne producers. In the instant case, the
record does show that applicant’s wines marketed under the
BUCKEYE label have won awards and have received some
critical acclaim. However, as in the Sailerbrau case
cited by the Trademark Examining Attorney, the current
record does not establish applicant’s wines as upscale,
expensive and targeted to the most discriminating of
consumers. Neither identification of goods is limited as
to channels of trade or quality of products, so
applicant’s distinctions are irrelevant. Thus, we
conclude that registrant’s beer and applicant’s wines are
both inexpensive and are both targeted to casual, non-
discriminating purchasers.
Undeniably, beer and wine are both alcoholic
beverages. Applicant concedes that they are sometimes
marketed through the same channels of trade (e.g., liquor
stores and other retail outlets devoted to alcoholic
Serial No. 75/821,755
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beverages, or supermarkets having entire sections devoted
to beer and wine). Because the costs for an inexpensive
bottle of table wine and a six-pack of beer are quite
similar, wine and beer are alternative alcoholic beverages
for some consumers.
As applicant has insisted, we clearly eschew any per
se rule that all alcoholic beverages are automatically
related for purposes of determining likelihood of
confusion under this du Pont factor. They are not. On
the other hand, based upon the instant record, we find
that a close relationship exists between registrant’s beer
and applicant’s wines.
Similarly, as noted in the above discussion, we find
that these goods often move in the same channels of trade
to the same class of ordinary consumers.
As to the du Pont factor dealing with the length of
time during and conditions under which there has been
concurrent use without evidence of actual confusion, the
Trademark Examining Attorney is correct that the test
under Section 2(d) of the Act is likelihood of confusion,
not actual confusion. While applicant points to “four
years of contemporaneous use of these two marks without
any actual confusion,” we have no evidence that these
respective marks have been used contemporaneously in the
Serial No. 75/821,755
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same geographical area. It is therefore not at all
surprising that no instances of actual confusion have been
reported to applicant between 1997 and 2000. Under these
circumstances, the absence of actual confusion is not
probative of whether there would be a likelihood of
confusion in the event these marks were to be used
contemporaneously on these respective alcoholic beverages
within the same geographical area.
To summarize, we find the marks of registrant and of
applicant to be similar in overall commercial impression,
and we find that beer and wine are related products
sharing the same channels of trade.
Decision: The refusal to register is affirmed.