Vineyard 29, LLCv.29 Wine Company, LLC

Trademark Trial and Appeal Board

Oct 29, 2018

No. 91227774 (T.T.A.B. Oct. 29, 2018)

This Opinion is Not a
Precedent of the TTAB

Mailed: October 29, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Vineyard 29, LLC
v.
29 Wine Company, LLC
_____

Opposition No. 91227774
_____

Kathleen E. Letourneau, Melville Owen, and Lawrence G. Townsend of Owen
Wickersham & Erikson PC for Vineyard 29, LLC.

Oliver Platz of Curi Platz LLP,
for 29 Wine Company, LLC.
_____

Before Taylor, Hightower and Pologeorgis,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
29 Wine Company, LLC (“Applicant”) seeks registration on the Principal Register
for the mark HIGHWAY 29 (in standard characters) for “Wine; wines,” in
International Class 33.1

1 Application Serial No. 86308765, filed June 13, 2014, based upon Applicant’s allegation of
a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act,
15 U.S.C. § 1051(b).

Opposition No. 91227774
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Vineyard 29, LLC (“Opposer”) has opposed registration of Applicant’s mark on the
following grounds:2
(1) likelihood of confusion under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d); and
(2) “that Applicant’s HIGHWAY 29 mark either (1) consists
of geographically deceptive and primarily geographically
deceptively misdescriptive matter in relation to the
identified goods …, or alternatively is primarily
geographically descriptive of the origin of Applicant’s
goods”3 under Sections 2(a) or 2(e)(3) of the Trademark Act,
15 U.S.C. §§ 1052(a) and 1052(e)(3).
With further regard to the likelihood of confusion ground, Opposer pleaded, inter
alia, ownership of Registration No. 24695154 for the mark VINEYARD 29 and design
(VINEYARD disclaimed) [ ] for “wine ” (“‘515 registration”) and
Registration No. 36716605 for the standard character mark 296 for “wines” (“‘660
registration”), referred to collectively as the 29 marks, and common law rights in the
same marks; that since long prior to any filing date or date of first use upon which
Applicant can rely, Opposer adopted and continuously used the marks in connection
with wine; and that Applicant’s HIGHWAY 29 mark so resembles Opposer’s pleaded

2 In the prefatory paragraph to its notice of opposition, Opposer stated that, among other
things, it “relies upon its … ‘Vineyard 29’ trade name.” Opposer did not, however, set forth
any specific allegations of prior trade name use and did not argue this claim in its brief.
Accordingly, we have not considered this claim in our decision.
3 1 TTABVUE 8; Not. of Opp. ¶ 18.
4 Issued July 17, 2001; renewed.
5 Issued August 25, 2009; Sections 8 and 15 affidavits accepted and acknowledged.
6 This mark has been displayed in bold throughout the decision for clarity.
Opposition No. 91227774
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29 marks as to be likely, when applied to the identified goods, to cause confusion,
mistake, or deception.
Applicant, in its answer, denies most of the salient allegation in the notice of
opposition.7 However, Applicant admits that:8
“Opposer is the owner of U.S. Trademark Registration No.
2,469,515” and that it “issued on July 17, 2001 and that an
affidavit of incontestability was filed”;9 and
“Opposer is the owner of U.S. Trademark Registration No.
3,671,660” and that it “issued on August 25, 2009 and that
an affidavit of incontestability was filed.”10
I. The Record
By operation of Trademark Rule 2.122, 37 CFR § 2.122, the record includes the
pleadings and the file of the subject application. The record also includes:
A. Opposer’s Evidence
1. The testimony deposition of Charles J. McMinn, Opposer’s president, with
Exhibit Nos. 1-10. (“McMinn test.”);11

7 Applicant asserted as “affirmative defenses” Nos. 1 and 2, in different phrasing, that the
notice of opposition fails to state a claim upon which relief can be granted. We consider the
two enumerated “defenses” as a single one. Because Applicant did not file a motion to dismiss
the opposition on the basis of Fed. R. Civ. P. 12(b)(6), we treat the “defense” as having been
waived. See Motion Picture Association of America v. Respect Sportswear Inc. 83 USPQ2d
1555, 1557 n.5 (TTAB 2007).
8 While Applicant specifically makes admissions regarding Opposer’s ownership of the
pleaded registrations, it made no admissions as to the current status of those registrations.
4 TTABVUE 2-3.
9 5 TTABVUE 3; Answer at ¶¶ 1 and 3, respectively.
10 Id.; Answer at ¶¶ 1 and 2, respectively.
11 Mr. McMinn’s deposition transcript is unsigned and there is no indication that the
signature requirement has been waived by agreement of the parties. However, because
Applicant made no objections to the introduction of the unsigned transcript, we have
considered it in our decision. See Sports Authority Michigan Inc. v. PC Authority Inc., 63
Opposition No. 91227774
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2. Opposer’s notice of reliance on the following:
a. Applicant’s responses to Opposer’s Interrogatory Nos. 1-45;
b. Applicant’s responses to Opposer’s Request for Admissions 1-50;
c. Plain copies of Opposer’s pleaded 29 (‘660 registration) and VINYARD
29 and design marks (‘515 registration);

d. Copies of office actions issued in connection with third-party,
previously-filed HIGHWAY 29 and SECTION 29 marks;

e. Printouts from various internet websites regarding: (i) Opposer’s
history of use of its marks; (ii) fame of Opposer’s marks; (iii) public
exposure to Opposer’s address as 2929 Highway 29; (iv) customer and
industry perception regarding the significance of Highway 29 and wine;
and (v) “Highway 29” as a generally known geographic place or location
in connection with wine.

B. Applicant’s Evidence
1. Applicant’s Notice of Reliance on the following:
a. Opposer’s responses to Applicant’s Interrogatory Nos. 1-29;
b. Official records from the California Department of Alcoholic Beverage
Control to show Opposer’s address; and

c. Printouts from various internet websites to show: (i) that Opposer’s
address is 2929 St. Helena Highway and that consumers are exposed to
this address; (ii) that St. Helena Highway is California state route 128
and California state route 29; (iii) that Opposer’s marks are weak and
diluted; (iv) that “Highway 29” has various meanings and identifies
multiple roads in the United States; (v) that Opposer identifies its
address as P.O. Box 93, St. Helena, California, that consumers have
been exposed to that address, and that Opposer “has strongly associated
and described itself as a Napa Valley vineyard”; and (vi) Opposer’s use
of its marks on wine.

Opposer and Applicant filed briefs, and Opposer filed a reply brief.

USPQ2d 1782, 1787 (TTAB 2001) (depositions which were not signed and included no waiver
were nevertheless considered where no objections were made).
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II. Preliminary Matter
Before proceeding to the merits of the case, we address an evidentiary matter.
Opposer indicated in its notice of reliance that the copies of the registration
certificates it made of record were “obtained from the United States Patent and
Trademark Office [“USPTO”] website showing both the current status and the
current title to the registrations.” Although apparently obtained from the USPTO
website, they are not printouts from a USPTO database showing the current status
of and title to these registrations pursuant to Trademark Rule 2.122(d)(2), 37 C.F.R.
§ 2.122(d)(2). Nor are they certified copies of the registrations showing title and
status prepared and issued by the USPTO under Trademark Rules 2.122(d)(2) and
2.6(b)(4), 37 C.F.R. § 2.6(b)(4). Therefore, Opposer’s registrations for the 29 and
VINEYARD 29 (and design) marks are not of record by virtue of the plain copies being
submitted under the notice of reliance. Syngenta Crop. Prot. Inc. v. Bio-Chek LLC, 90
USPQ2d 1112, 1116-17 (TTAB 2009) (copy of the certificate of registration issued by
the USPTO is not competent evidence to show the “current status of and current title
to the registration”). See also Hewlett-Packard Co. v. Olympus Corp., 931 F.2d 1551,
18 USPQ2d 1710, 1713 (Fed. Cir. 1991); TBMP § 704.03(b)(1)(A) (2018) (“Plain copies
of the registration are not sufficient.”). Nonetheless, during prosecution of Applicant’s
application, Opposer’s pleaded Reg. Nos. 3671660 and 2469515 were cited, then
withdrawn, as a bar to registration of Applicant’s mark. In making the refusal, the
Examining Attorney made of record electronic copies of Registration Nos. 3671660
Opposition No. 91227774
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and 2469515 showing current title and status.12 We therefore consider Registration
Nos. 3671660 and 2469515 properly of record.
III. Standing
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014), 135 S. Ct. 1401 (2015); Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston
Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). To establish standing
in an opposition, a plaintiff must show both a real interest in the proceeding as well
as a reasonable belief of damage. Empresa Cubana Del Tabaco v. Gen. Cigar, 111
USPQ2d at 1062; Ritchie v. Simpson, 50 USPQ2d at 1025. Here, Opposer’s standing
is established through printouts from the TSDR database of the USPTO made of
record during prosecution of Applicant’s application, showing that Opposer is the
owner of its pleaded registrations and that those registrations are valid and
subsisting. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842,
1844 (Fed. Cir. 2000); Lipton v. Ralston Purina, 213 USPQ at 189. The record also
shows through the McMinn testimony that Opposer produces and sells wine under
the 29 marks,13 and this activity establishes that Opposer has a real interest in this
proceeding and a reasonable belief of damage.

12 February 17, 2015 Office Action; TSDR 4-7.
13 McMinn test.; 4 TTABVUE. The McMinn deposition made clear that when the 29 mark is
referenced, it is referring to the two registered marks (McMinn test. p. 13). 17 TTABVUE 16.
The specific testimony follows:
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IV. Priority
To establish priority on a likelihood of confusion claim brought under Trademark
Act Section 2(d), a party must prove that, vis-à-vis the other party, it owns “a mark
or trade name previously used in the United States ... and not abandoned....”
Trademark Act Section 2, 15 U.S.C. § 1052. A party may establish its own prior
proprietary rights in a mark through ownership of a registration, actual use or
through use analogous to trademark use. See Trademark Act Sections 2(d) and 45, 15
U.S.C. §§ 1052(d) and 1127; T.A.B. Sys. v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d
1879 (Fed. Cir. 1996). Priority is not in issue in the opposition with respect to
Plaintiff’s pleaded marks for the goods listed in those registrations. See King Candy
Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
Opposer additionally demonstrated, again through the McMinn testimony, that the
pleaded registered 29 marks have been continuously used since the calendar year
1996.14

Mr. Townsend: -- clarify, when I use the word – reference
the 29 mark, I’m referring to the two registered marks, one
for 29 and one for the crest version of. Is that all right?
Mr. Platz: -- That’s perfect.
The Witness [Mr. McMinn]: That’s fine by me.
14 McMinn test. pp. 8 and 27; 17 TTABVUE 11 and 30.

Opposition No. 91227774
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V. Likelihood of Confusion
Our determination of the issue of likelihood of confusion is based on an analysis
of all of the facts in evidence that are relevant to the factors bearing on the likelihood
of confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). 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 (CCPA
1976). We consider these factors and any likelihood of confusion factors about which
the parties introduced evidence or argued, and treat the remaining factors as neutral.
We focus our analysis on pleaded Registration No. 3671660 for the standard
character mark 29 for “wines,” as this mark is the closest to Applicant’s applied-for
mark and thus is most likely to support a finding of likelihood of confusion. If
confusion is likely between Applicant’s mark and the mark in the ‘660 registration,
there is no need for us to consider the likelihood of confusion with the ‘515
registration. On the other hand, if there is no likelihood of confusion between
Applicant’s mark and the mark in the ‘660 registration, then there would be no
likelihood of confusion with the other pleaded mark. See, e.g., In re Max Capital
Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. The Goods/Channels of Trade/Classes of Purchasers
We first consider the relatedness of the goods at issue, looking as we must to the
goods as identified in the application and Opposer’s pleaded ‘660 registration. See
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
Opposition No. 91227774
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1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Computers Servs.,
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Giovanni Food Co.,
97 USPQ2d 1990, 1991 (TTAB 2011). The goods are identical, being identified as
“wine” or “wines” in both the application and pleaded registration. We find the
additional singular listing of wines, i.e., wine, in Applicant’s mark as a distinction
without a difference.
Given the legal identity of the goods, we must presume that they are or will be
offered in the same trade channels for such goods, including the internet, tasting
rooms, and retailers, such as wine shops and grocery stores, and to the same classes
of purchasers, including ordinary consumers seeking wine. In re Yawata Iron & Steel
Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968); Am. Lebanese Syrian Associated
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011);
see also In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
(the Board was entitled to rely on this legal presumption in determining likelihood of
confusion).
In view of the above, the du Pont factors of the similarity of the goods, the channels
of trade and classes of purchasers strongly favor Opposer.
B. Conditions of Purchase and Consumer Sophistication

The fourth du Pont factor assesses the “conditions under which and buyers to
whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.” du Pont,
177 USPQ at 567. Applicant argues that because the average U.S. consumer of wine
is “relatively unsophisticated,” those consumers “neither know about nor care about
Opposition No. 91227774
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any alleged connotation the number 29 may have for [wine] aficionados” and
therefore the average consumer will not be aware of any similarity in meaning
between the marks.15 This argument clearly concerns the meanings conveyed by the
marks. The fourth du Pont factor, however, concerns whether a consumer exercises a
higher degree of care than that considered ordinary, which could enable the consumer
to distinguish one source of goods from another. Here, both parties’ agree that
consumers of wine are unsophisticated and would not spend a great deal of care in
their purchasing decisions. We thus find this factor neutral or slightly favors
Opposer.
C. Fame of Opposer’s Mark
This du Pont factor requires us to consider the fame of Opposer’s mark. Fame, if
it exists, plays a dominant role in the likelihood of confusion analysis because famous
marks enjoy a broad scope of protection or exclusivity of use. A famous mark has
extensive public recognition and renown. Bose Corp. v. QSC Audio Products Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose
Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales and advertising
expenditures of the goods identified by the mark at issue, “the length of time those
indicia of commercial awareness have been evident,” widespread critical assessments
and through notice by independent sources of the products identified by the marks,

15 Applicant’s Br. at 18; 28 TTABVUE 24.
Opposition No. 91227774
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as well as the general reputation of the products. Bose Corp., 63 USPQ2d at 1305-06,
1309. However, raw numbers alone may be misleading. Thus, some context in which
to place raw statistics may be necessary (e.g., the substantiality of the sales or
advertising figures for comparable types of products or services). Bose Corp., 63
USPQ2d at 1309.
Opposer has supported the claim that its pleaded 29 mark is famous with the
testimony of its president, Mr. Charles McMinn. According to Mr. McMinn and the
exhibits accompanying his testimony,16 Opposer has produced and sold wine under
the 29 mark since 1996,17 and has produced over 500 product lines of wine bearing
the 29 mark from 1992-2016.18 From 2006 to 2016, Mr. McMinn states, Opposer had
$57.8 million in sales and expended $2.7 million in advertising,19 and has participated
in a variety of charitable events including by wine donations.20 Opposer also made of
record as support of its fame various internet materials from the websites of The New
York Times, Robb Cellar, Decanter, and Forbes (www.nytimes.com,
www.http://robbreport.com, www.decanter.com, and www.forbes.com),21 discussing

16 Exhibits Nos. 2-4 and 7-10 to the McMinn testimony deposition are barely legible and
accordingly have little persuasive value. It was incumbent upon Opposer to ensure that its
evidentiary submissions were readable. To the extent the exhibits could be deciphered, they
were found not to be outcome determinative.
17 McMinn test. p. 27; 17 TTABVUE 30.
18 McMinn test. p. 15-16; 17 TTABVUE 18-19.
19 McMinn test. pp. 24, Exh. 6; 17 TTABVUE 27, 58.
20 McMinn test. p. 25; 17 TTABVUE 28.
21 18 TTABVUE 128-140. Complete URLs are available on TTABVUE. Opposer is reminded
that its internet evidence is only probative for what it shows on its face and not the truth of
what has been printed. See Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110
Opposition No. 91227774
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Opposer, its owners and its wines, including wines issued under the pleaded mark(s).
The examples highlighted by Opposer in its brief at page 21 follow (citations
omitted):22
“Few properties in California’s Napa Valley boast as
impressive a succession of winemaking alumni as Vineyard
29 …” (From the Robb Carr Cellar: Vineyard 29 2009 29
Estate Cabernet Sauvignon);
“Just a tiny amount of Vineyard 29’s Sauvignon Blanc is
made, but it reveals a whole new side of what is possible in
the Napa Valley – namely, to make a complex, luxurious,
age worthy Napa white on par with top white Bordeaux.
The wine is a showstopper …” [Decanter]
“Vineyard 29 2011 Estate Blanc ($135) Whereas the Melka
(below) is mercurial, this wine -- which star consultant
Philippe Melka also made -- is ultrarefined [sic] with a
closely knit, Bordeaux-like polished intensity. Both are
flat-out dazzling.” (The Un-Chardonnay: Limited Edition,
Cutting Edge Gems).
We find Opposer’s evidence as a whole lacks context and thus fails to convey to us
the extent to which consumers recognize Opposer’s 29 mark. With regard to Opposer’s
sales and advertising figures, Opposer has not provided any context for them, i.e.,
how they translate into evidence of market share for its goods. As the Federal Circuit
has stated, “[r]aw numbers of product sales and advertising expenses may have
sufficed in the past to prove fame of a mark, but raw numbers alone in today’s world
may be misleading … Consequently, some context in which to place raw statistics is
reasonable.” Bose Corp., 63 USPQ2d at 1309. Opposer also did not break out its sales

USPQ2d 1458, 1467 n.30 (TTAB 2014) (internet webpage evidence admissible only to show
what has been printed and not for the truth of what has been printed).
22 Opposer’s Br. p. 21; 25 TTABVUE 31.
Opposition No. 91227774
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and advertising figures by mark. In addition, while news articles showcasing
Opposer’s vineyard, owners and wines have been featured in prominent magazines,
on this record, we are unclear how often the marks appear in those magazines and,
thus, if the exposure translated into notoriety. Similarly, in the absence of particulars
other than event name and cost of participation, we also are unclear how Opposer’s
participation in charitable events translates into consumer recognition of Opposer’s
29 mark.
In the context of likelihood of confusion, fame varies along a spectrum from very
strong to very weak. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 1734
(Fed. Cir. 2016) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005)). “In view of
the extreme deference that is accorded to a famous mark in terms of the wide latitude
of legal protection it receives, and the dominant role fame plays in the likelihood of
confusion analysis, we think that it is the duty of a plaintiff asserting that its mark
is famous to clearly prove it.” Blue Man Productions Inc. v. Tarmann, 75 USPQ2d
1811, 1819 (TTAB 2005). While Opposer has shown that its mark(s) has some
recognition, the evidence is not sufficient to support a finding that it has achieved
more than a minimal amount of fame. Therefore, under the fifth du Pont factor, we
accord Opposer’s mark(s) the normal degree of protection to which inherently
distinctive marks are entitled.
Opposition No. 91227774
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D. Number and Nature of Third-Party Uses/Strength of Opposer’s Mark
The sixth du Pont factor requires us to consider evidence pertaining to the number
and nature of similar marks in use on similar goods. Applicant argues that there are
quite a few marks for wine in use by third parties that contain the number “29” and,
therefore, Opposer’s mark is relatively weak and only entitled to a narrow scope of
protection. Applicant points to 7 examples of third-party use of “29” as part of the
mark, 3 of which, however, reference the 29 & Oak use. 23 The relevant excerpts from
websites demonstrating such use on their face are shown below.
Website for Global Wines, Inc. listing 29 & Oak Cabernet
Sauvignon, 29 & Oak Red Blend and 29 & Oak Zinfandel
as available wines,24 and website for CellerTracker
discussing 29 & Oak Cabernet Sauvignon Oakville, bottle
shown below;25

Website for Route Stock wines discussing Cabernet
Sauvignon Route Stock 29, bottle shown below;26

23 Applicant’s Br. pp. 9 and 21, Applicant’s Not. of. Rel. Exhs. 7-14; 28 TTABVUE 15 and 27,
21 TTABVUE 40-71.
24 21 TTABVUE 41; (www.globalwines.com).
25 Id. at 63; (www.cellartracker.com/wine.asp?i2227777).
26 Id. at 50-62; (www.routestock.com).
Opposition No. 91227774
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Website for OneHope wine discussing the 29 Twelve
California dessert wine, and noting that the “wine is
named for the winery’s location in Napa – between
Highway 20 (home of some of the world’s most iconic
wineries and Highway 12 (another popular winery
destination that runs through Sonoma),” bottle shown
below;27

Website for CellarTracker discussing the 2009 Fleury
Estate Winery Cabernet Sauvignon le fleur 29, bottle
shown below; 28 and

27 Id. at 64; (www.onehopewine.com).
28 Id. at 66; (www.cellertracker.com/wine.asp?i1831212).
Opposition No. 91227774
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Website of Wine Enthusiast Magazine discussing the 29
Songs 2004 Soscol Ridge Vineyard Back Porch Syrah (Napa
Valley), review shown below.29

Although Applicant has not presented specific evidence concerning the extent and
impact of these uses, it nevertheless presented “evidence of these marks being used
in internet commerce” for wines, goods identified in the application and pleaded
registration. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium

29 Id. at 68; (www.winemag.com). The reference to 29 Songs appears to be to the vineyard
and not the wine.
Opposition No. 91227774
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Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); see also
Rocket Trademarks Pty Ltd. v. Phard S.p.A., 98 USPQ2d 1066, 1072 (TTAB 2011)
(internet printouts “on their face, show that the public may have been exposed to
those internet websites and therefore may be aware of the advertisements contained
therein”). These five uses of “29”-formative marks for wine, although somewhat
probative, are insufficient to “show that customers … have been educated to
distinguish between different … marks on the basis of minute distinctions.” Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir.
2015) (internal quotations omitted). As opposed to the third party evidence of record
in Juice Generation, which included at least 26 uses or registrations of the same
phrase for restaurant services, id. at 1673 n.1, or in Jack Wolfskin where there were
at least fourteen, 116 USPQ2d at 1136 n.2, the third-party evidence here is far less
in quantity and quality.
At bottom, five third-party uses of “29” simply do not evidence such a widespread
and significant use of the number “29” in the wine industry that we can conclude that
Opposer’s pleaded mark is so weak that the public would be able to distinguish the
source of Applicant’s goods from those of Opposer by the differences in their
respective marks.
Moreover, even if we attribute some degree of inherent weakness to the number
“29” when used on marks in connection with wine originating in the Napa Valley
region, explained below, even weak marks are entitled to protection against
registration of a similar mark for legally identical goods. See In re FabFitFun, Inc.,
Opposition No. 91227774
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127 USPQ2d 1670, 1676 (TTAB 2018) (citing China Healthways Inst., Inc. v.
Wang, 491 F.3d 1337, 83 USPQ2d 1123, 1125 (Fed. Cir. 2007).
E. Similarity/Dissimilarity of the Marks
We next consider the similarity or dissimilarity of the marks. In comparing the
marks, we consider their appearance, sound, meaning, and commercial impression.
Palm Bay v. Veuve Clicquot 73 USPQ2d at 1691. “The 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).
“[I]n articulating reasons for reaching a conclusion on the issue 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, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed, this type of analysis appears
to be unavoidable.” In re Nat'l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). Finally, we keep in mind that “[w]hen marks would appear on virtually
identical goods …, as is the case here, the degree of similarity necessary to support a
conclusion of likely confusion declines.” Max Capital Group, 93 USPQ2d at 1248
(citing Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992)).
In comparing Opposer’s 29 mark with Applicant’s HIGHWAY 29 mark, we find
them similar to the extent that they consist of or include the number “29.” Indeed,
Opposition No. 91227774
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Applicant has incorporated the entirety of Opposer’s mark, making it similar in
appearance and sound. Likelihood of confusion is often found where the entirety of
one mark is incorporated within another. In re Denisi, 225 USPQ 624, 626 (TTAB
1985) (PERRY'S PIZZA for restaurant services specializing in pizza and PERRY'S for
restaurant and bar services); Johnson Publ'g Co. v. Int'l Dev. Ltd., 221 USPQ 155,
156 (TTAB 1982) (EBONY for cosmetics and EBONY DRUM for hairdressing and
conditioner); In re South Bend Toy Mfg. Co., 218 USPQ 479, 480 (TTAB 1983) (LIL’
LADY BUGGY for toy doll carriages and LITTLE LADY for doll clothing).
In making our finding, we are simply unpersuaded by Applicant’s contention that
the term HIGHWAY visually dominates the cited mark. While we are aware of the
principle that prospective consumers are more likely to focus on the first portion or
word in a trademark (see Palm Bay, 73 USPQ2d at 1692), it is likewise true that
likelihood of confusion is not necessarily avoided between otherwise confusingly
similar marks merely by adding other distinctive matter. If an important portion of
both marks is the same, then the marks may be confusingly similar notwithstanding
peripheral differences. See. e.g., Stone Lion, 110 USPQ2d at 1161 (affirming Board’s
finding that confusion likely where applicant's mark STONE LION CAPITAL
incorporated the entirety of the registered marks LION CAPITAL and LION);
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1266, 62 USPQ2d 1001,
1004 (Fed. Cir. 2002) (finding that, even though applicant's mark PACKARD
TECHNOLOGIES, with “TECHNOLOGIES” disclaimed, does not incorporate every
feature of opposer's HEWLETT PACKARD marks, a similar overall commercial
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impression is created); In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB
2009) (holding VANTAGE TITAN for MRI diagnostic apparatus, and TITAN for
medical ultrasound device, likely to cause confusion, noting that the marks are more
similar than they are different and that the addition of applicant’s “product mark,”
VANTAGE, to the registered mark would not avoid confusion); In re U.S. Shoe Corp.,
229 USPQ 707, 709 (TTAB 1985) (holding CAREER IMAGE (stylized) for clothing
and retail women's clothing store services, and CREST CAREER IMAGES (stylized)
for uniforms, likely to cause confusion, noting that CAREER IMAGE would be
perceived by consumers as a shortened form of CREST CAREER IMAGES). We find
the situation here similar, as explained below, as HIGHWAY merely enhances the
commercial impression engendered by the “29” portion of Applicant’s mark.
As to connotation, Applicant contends that its mark “invokes the picture of a
federal highway, a road for long distance travel, new and different locations, a new
beginning” while Opposer’s mark is just a number. Opposer, on the other hand,
argues that the connotation created by both Applicant’s HIGHWAY 29 mark and
Opposer’s 29 mark is nearly identical, namely a connection with California’s Highway
29. We agree with Opposer and find that the record supports a finding that both
Applicant’s and Opposer’s marks are likely to be perceived as alluding to California’s
HIGHWAY 29 which runs through Napa Valley, California – an area known for its
wines, goods identified in both Applicant’s application and the pleaded registration.
Specifically, the record shows that Opposer’s address is 2929 St. Helena Highway,
Opposition No. 91227774
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also known as Highway 29, a major roadway through Napa Valley, California,30 and
that California Highway 29 is a geographic area known for wineries.31 For example,
an article in American Winery Guide.com (www.americanwineryguide.com) entitled
St. Helena Wineries notes, in part, that: “With its long stretch of Highway 29, St.
Helena has more wineries than any other Napa [area].”32 As Applicant argues, it is
likely that some consumers of wine may not be aware of the significance of the
number “29” as it relates to Highway 29 in Napa Valley; however, it is just as likely
that many will. Indeed, Applicant admitted that it selected its HIGHWAY 29 mark,
in part, for its allusion to California’s Highway 29.33
We recognize that in comparing the marks, we must consider Applicant’s mark in
its entirety. We nonetheless find that the similarities between the marks in sound,
appearance and meaning due to the shared number “29” outweigh any differences
between them, and that they engender very similar overall commercial impressions.
The du Pont factor of similarity of the marks thus favor a finding of likelihood of
confusion.

30 Opposer’s Not. of Rel. Exhs. P-LL; 18 TTABVUE 144-74, 19 TTABVUE 2-35.
31 Opposer’s Not. of Rel. Exhs, MM-BBB; 19 TTABVUE 36-121.
32 19 TTABVUE 36.
33 18 TTABVUE 41. The specific admission and answer read:
REQUEST NO. 18:
Admit that Applicant selected the Disputed Mark in part for its allusion to California’s
Highway 29.
RESPONSE TO REQUEST NO. 18:
Applicant admits that State Route 29 played a small part in Applicant’s selection of the
Disputed mark.

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VI. Conclusion
After considering all of the evidence made of record pertaining to the issue of
likelihood of confusion, as well as all of the arguments related thereto, including any
evidence and arguments not specifically discussed in this opinion, we conclude that
confusion is likely between Applicant’s HIGHWAY 29 mark for “wine; [and] wines”
and Opposer’s 29 mark for wines. We conclude so principally due to the similarities
between the marks, the legally identical goods and the presumed identity in trade
channels and classes of purchasers.
VII. Geographic Deceptiveness/Geographically Deceptive
Misdescriptiveness and Geographic Descriptiveness
Because we have found Applicant’s HIGHWAY 29 mark to be confusingly similar
to Opposer’s pleaded 29 mark, we need not address Opposer’s alternative
geographically deceptive/primarily geographically deceptively misdescriptive and
geographically descriptive claims. See Multisorb Tech., Inc. v. Pactiv Corp., 109
USPQ2d 1170, 1171 (TTAB 2013).
Decision: The opposition on the ground of likelihood of confusion is sustained.