Waiwera LLC

Trademark Trial and Appeal Board

May 15, 2015

No. 86310144 (T.T.A.B. May. 15, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 15, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Waiwera LLC
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Serial No. 86310144
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Gene Bolmarcich of the Law Offices of Gene Bolmarcich,
for Waiwera LLC.
Joanna Shanoski, Trademark Examining Attorney, Law Office 104,
Chris Doninger, Managing Attorney.
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Before Wellington, Wolfson and Kuczma,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Waiwera LLC (“Applicant”) seeks registration on the Principal Register of the
mark GINGERELLA (in standard characters) for
Vodka, Gin, Rum in International Class 33.1
The Trademark Examining Attorney has refused registration of Applicant’s
mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), citing the following
registration as a bar to registration:

1 Application Serial No. 86310144 was filed on June 16, 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.
Serial No. 86310144
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Registration No. 4483133
Mark: GINGERELLA (standard character)
For: Non-alcoholic ginger based carbonated soft drinks in Class 322
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 affirm the refusal to register.
I. Likelihood of Confusion
Our determination under § 2(d) is based on an analysis of all 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). Not all of the duPont factors are relevant to every case,
and only factors of significance to the particular mark need be considered. In re
Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010). Therefore,
we focus our analysis on those factors for which we have evidence or that have been
argued by Applicant and the Examining Attorney: similarity of the marks and the
relatedness of the goods. Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57
USPQ2d 1557, 1560 (Fed. Cir. 2001) (“While it must consider each factor for which
it has evidence, the [b]oard may focus its analysis on dispositive factors, such as
similarity of the marks and relatedness of the goods.”).

2 Registration No. 4483133 issued on February 18, 2014, based on a request for extension of
protection pursuant to § 66(a) of the Trademark Act, filed on April 25, 2013, of
International Registration No. 1155658 issued on March 22, 2013.
Serial No. 86310144
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A. Similarity of the Marks
In any likelihood of confusion determination, the marks are compared in their
entireties for similarities in appearance, sound, connotation, and commercial
impression. E.I. du Pont, 177 USPQ at 567; In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012). Similarity in any one of these elements may
be sufficient to find the marks confusingly similar. In re 1st USA Realty
Professionals, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007); In re White Swan Ltd., 8
USPQ2d 1534, 1535 (TTAB 1988).
Applicant’s GINGERELLA mark is identical to registrant’s GINGERELLA mark
in appearance and sound. Additionally, the connotations and commercial
impressions of the marks do not differ when considered in connection with
Applicant’s and registrant’s respective goods.
Although the marks are identical, Applicant argues that the cited mark is so
weak that it has a limited scope of protection for non-alcoholic beverages and this
weakness does not extend to Applicant’s mark for alcoholic beverages.3 Applicant
contends that GINGERELLA is comprised of:
“the generic word GINGER and the suffix ‘ella’, the definition of which
Applicant requests the Board take judicial notice (see Merriam-Webster
Online defining ‘ella’ as ‘little one resembling – often in generic names’
and Dictionary.com defining ‘ella’ as ‘a suffix used as ‘a formative in
taxonomic names’ [especially genus names of bacteria: chorella;
pasteurella; salmonella.] (sic). Thus GINGERELLA is nothing more
than the noun ‘ginger’ in a form that is common for nouns, denoting a
diminutive version or ginger or a taxonomy for ginger.”4

3 Applicant’s Appeal Brief, (“App. Appeal Brf.”) at 13 TTABVUE 4.
4 App. Reply Brf. 16 TTABVUE 2-3.
Serial No. 86310144
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Applicant thus concludes that GINGERELLA is highly suggestive and weak, and
should not be protected beyond identical goods.5
At most, the registered mark is suggestive of a drink containing ginger or having
a ginger flavor. Applicant’s goods could, likewise, have a ginger flavor or ingredient,
and thus the same suggestive connotation would apply to both marks. Additionally,
GINGERELLA appears to be a play on the name of the main character from a
famous fairy tale, “Cinderella.” As such, it would also serve as a suggestive mark.
Even assuming that the GINGERELLA mark is weak, “likelihood of confusion is
to be avoided, as much between ‘weak’ marks as between ‘strong’ marks, or as
between a ‘weak’ and ‘strong’ mark.” King Candy Co. v. Eunice King’s Kitchen, Inc.,
496 F.2d 1400, 182 USPQ 108, 109 (CCPA 1974). Moreover, in this case, Applicant’s
mark is identical to the cited mark.
Noting that the marks are identical, we next consider the similarity of the goods.
B. Similarity of Goods
In cases such as this, where Applicant’s mark is identical to the cited registered
mark, the degree of relatedness between the respective goods that is necessary to
support a finding that the goods are related under the second du Pont likelihood of
confusion factor is less than it would be if the marks were not identical; there need
be only a viable relationship between the respective goods. See In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); In re Davey Products Party

5 App. Appeal Brf. 13 TTABVUE 4; App. Reply Brf. 16 TTABVUE 3.
Serial No. 86310144
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Ltd., 92 USPQ2d 1198, 1202 (TTAB 2009); In re Thor Tech, Inc., 90 USPQ2d 1634,
1636 (TTAB 2009); In re Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).
Applicant’s goods are “vodka, gin and rum,” while registrant’s goods are “non-
alcoholic ginger based carbonated soft drinks.” Applicant maintains that the parties’
goods each occupies a “distinct niche” within the broader category of beverages and
that the Examining Attorney has failed to demonstrate the goods are related for
purposes of likelihood of confusion.6
In support of its position, Applicant first contends that the Examining Attorney
relies “solely” on five7 third-party registrations as evidence of the relatedness of the
goods.8 The Examining Attorney asserts that the four third-party registrations
individually cover, under the same mark, “soft drinks” or “ginger beer,” (a type of
ginger based carbonated soft drink)9 which may include registrant’s “non-alcoholic
ginger based carbonated soft drinks,” and the “Vodka, Gin, Rum” liquors in
Applicant’s application. Standing alone, these four registrations are not sufficient to
prove that the goods are related. However, the goods registered in these four
registrations are consistent with the more compelling evidence discussed below
showing that the goods are complementary.

6 App. Appeal Brf. 13 TTABVUE 5.
7 The Examining Attorney’s Brief relies on four registrations. 15 TTABVUE 13.
8 App. Appeal Brf. 13 TTABVUE 5.
9 Ginger ale and ginger beer are commonly understood to be ginger based carbonated soft
drinks. See Wikipedia® article regarding ginger ale (11/03/14 Final Office Action, pp. 24-
27); website articles from www.gingeraleauthority.com/ginger-ale-history/ (11/3/04 Final
Office Action, pp. 28-32) and http://cookieandkate.com/2013/ginger-beer-concentrate/
(11/3/14 Final Office Action p. 48); and Wikipeida® articles about ginger ale and ginger beer
(11/17/14 Denial of Request for Reconsideration, pp. 8-15).
Serial No. 86310144
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The Examining Attorney’s primary argument is that Applicant’s and
registrant’s goods are complementary and commonly used together to prepare
alcoholic cocktails. To show this, the Examining Attorney submits numerous
articles from various websites showing the historical development of ginger based
soft drinks, such as ginger ale, specifically noting that drier versions of ginger ale
were developed during the prohibition era for the purpose of being used as an
alcoholic beverage mixer.10 Over the years, well-known cocktails have been made
with ginger ale (and ginger beer), including the Moscow Mule, the Foghorn which
was first introduced at the Waldorf-Astoria hotel, and the Dark ‘N Stormy.11
The record also includes copies of numerous cocktail recipes for alcoholic drinks
made with vodka, gin or rum, mixed with ginger based carbonated soft drinks, from
a variety of websites.12 Additionally, the producers of the ginger based carbonated
soft drinks intentionally market their goods for the purpose of making cocktails by
mixing their soft drinks with vodka, gin or rum.13 This marketing which promotes
mixing ginger based carbonated soft drinks with vodka, gin or rum to prepare

10 See website evidence including: Wikipedia® entry and articles about ginger ale at
http://en.wikipedia.org.wiki.Ginger ale; www.gingeraleauthority.com/ginger-ale-mixers/
and www.barmano.com (11/17/14 Denial of Request for Reconsideration, pp. 8-11, 29-33 and
52-53).
11 See http://cocktails.about.com/od/cocktailrecipes/r/mscw_mule.htm,
http://cocktails.about.com/od/ginrecipes/r/Foghorn.htm, (from 9/24/14 Office Action, pp.
9-12 and 23-25); and http://www.blenheimgingerale.com/category/cocktails/ and
http://cookieand kate.com/2013/ginger-beer-concentrate/ (from 11/3/14 Final Office
Action, pp.42-43, 44-45, 51).
12 See attachments to 9/24/14 Office Action and 11/17/14 Denial of Request for
Reconsideration.
13 See attachments to 11/3/14 Final Office Action pp. 37-46 and 11/17/14 Denial of Request
for Reconsideration pp. 35-37, 38-39, 99, 113-121.
Serial No. 86310144
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alcoholic beverages, confirms the complementary relationship of such products in
the minds of consumers. Applicant itself recognizes that “ginger ale and alcohol are
often mixed to make cocktails.”14
Where the evidence shows that the goods at issue have complementary uses, and
thus are often used together or otherwise purchased by the same purchasers for the
same or related purposes, such goods have generally been found to be sufficiently
related such that confusion would be likely if they are marketed under the same or
similar marks. See Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289, 1290 (Fed. Cir. 1984) (holding bread and cheese to be related because they are
often used in combination and noting that “[s]uch complementary use has long been
recognized as a relevant consideration in determining a likelihood of confusion”); In
re Davia, 110 USPQ2d 1810, 1816 (TTAB 2014) (the recipes submitted by the
examining attorney show that pepper sauce and agave nectar are complementary
since, in preparing certain foods and beverages, where the combination of sweet and
hot flavors is common, pepper sauce and agave nectar are frequently blended
together for flavor).15
C. Conclusion
We have carefully considered all of the evidence, as well as all of the arguments
related thereto, including any evidence and arguments not specifically discussed in

14 App. Appeal Brf. 13 TTABVUE 9.
15 Exam. Atty. Brf. 15 TTABVUE 5.
Serial No. 86310144
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this opinion. To the extent that any other du Pont factors for which no evidence or
argument were presented may nonetheless be applicable, we treat them as neutral.
Based on the identity of the marks and the complementary relationship of the
goods of Applicant and registrant, we find that purchasers familiar with registrant’s
non-alcoholic ginger based carbonated soft drinks offered under the mark
GINGERELLA would be likely to mistakenly believe, upon encountering
Applicant’s mark GINGERELLA for vodka, gin and rum, that the goods originate
from or are associated with or sponsored by the same entity.
Decision: The refusal to register Applicant’s mark GINGERELLA is affirmed.