Wente Bros.

Trademark Trial and Appeal Board

Sep 22, 2008

No. 77068855 (T.T.A.B. Sep. 22, 2008)

Mailed: 9/22/08

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Wente Bros.
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Serial No. 77068855
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Edward S. Wright for Wente Bros.

Ingrid Eulin, Trademark Examining Attorney, Law Office 111
(Craig D. Taylor, Managing Attorney).
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Before Quinn, Grendel and Ritchie de Larena, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Wente Bros. filed an application to register the mark
SUMMERSET (in standard character format) for “wine” in
International Class 33.1
The trademark examining attorney refused registration
under Section 2(d), 15 U.S.C. §1052(d), on the ground that
applicant’s mark, when applied to applicant’s goods, so

1 Application Serial No. 77068855, filed December 20, 2006,
alleging a bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 77068855
2
resembles the previously registered mark SOMERSET (in typed
format) for “wine”2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs.3
Applicant argues that the marks are different in
appearance and this difference becomes even more evident by
the way registrant’s mark appears on registrant’s labels
versus applicant’s intended use on its labels. Applicant
also points to differences in meaning and commercial
impression, with registrant’s mark being geographic while
applicant’s mark conveys the image of a summer sunset.
Applicant further asserts that registrant’s mark is weak
due to third-party uses of “Somerset” and the coexistence
of registrant’s mark with another registered mark that
includes, as a portion thereof, SOMERSET. In urging that
the refusal be reversed, applicant submitted labels from
registrant’s wine and labels intended to be used by
applicant, as well as excerpts from registrant’s web site.

2 Registration No. 2145874, issued March 24, 1998; renewed.
3 The examining attorney, in her brief, requests that the Board
take judicial notice of additional dictionary definitions. The
Board may take judicial notice of dictionary definitions,
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983), including online dictionaries that exist in
printed format or have regular fixed editions. In re Red Bull
GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Accordingly, the
examining attorney’s request is granted, and we have considered
this dictionary evidence in reaching our decision.
Ser No. 77068855
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Also of record is a list of wineries using “Somerset” on
labels as shown by the website of the Alcohol and Tobacco
Tax and Trade Bureau (www.ttbonline.gov/colasonline).
The examining attorney maintains that the goods, trade
channels and purchasers are identical. As for the marks,
the examining attorney contends that similarities between
the marks in sound, meaning and commercial impression
outweigh any difference in appearance. In support of the
refusal, the examining attorney has relied upon dictionary
definitions of the terms “somerset” and “summerset.”
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
With respect to the goods, it is well settled that the
question of likelihood of confusion must be determined
based on an analysis of the goods recited in applicant’s
Ser No. 77068855
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application vis-à-vis the goods identified in the cited
registration. In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1783 (Fed. Cir. 1992). Where the goods in the application
at issue and/or in the cited registration are broadly
identified as to their nature and type, such that there is
an absence of any restrictions as to the channels of trade
and no limitation as to the classes of purchasers, it is
presumed that in scope the identification of goods
encompasses not only all the goods of the nature and type
described therein, but that the identified goods are
offered in all channels of trade which would be normal
therefore, and that they would be purchased by all
potential buyers thereof. In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). In the present case, both the application and
the cited registration identify the goods as “wine.” Thus,
for purposes of our analysis, the goods are considered to
be identical, and applicant does not argue to the contrary.
We presume that the goods move through the same trade
channels to the same purchasers, including ordinary
consumers. The identity in these factors heavily favors a
finding of likelihood of confusion.
Ser No. 77068855
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Further, as to conditions of sale, the identification
“wine” encompasses inexpensive wine that frequently would
be the subject of impulse purchase. This factor also
weighs in favor of a likelihood of confusion.
Turning next to a consideration of the marks, we must
compare the marks in their entireties as to appearance,
sound, connotation and commercial impression to determine
the similarity or dissimilarity between them. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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 their entireties that
confusion as to the source of the goods offered under the
respective marks is likely to result. In comparing the
marks, we focus on the fallibility of the average
purchaser, who normally retains a general rather than a
specific impression of trademarks. Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975). Finally, where,
as in the present case, the marks are used in connection
with identical goods, the degree of similarity between the
marks that is necessary to support a finding of likely
confusion declines. Century 21 Real Estate Corp. v.
Ser No. 77068855
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Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992).
The American Heritage Dictionary of the English
Language (4th ed. 2000) sets forth the identical
pronunciation for both of the terms “summerset” and
“somerset”: “sŭm ər-sět.” Thus, the marks are identical
in terms of sound. To the extent that anyone might
pronounce the marks differently, the difference in sound is
likely to be so slight that it would be lost on most
individuals who hear the marks.
As to appearance, while there are differences, both
marks end in the same M-E-R-S-E-T letter sequence. We find
that the similarities in appearance outweigh the
differences.
The terms “somerset” and “summerset” are identified as
as “variants” of one another. The American Heritage
Dictionary of the English Language (4th ed. 2000). The same
dictionary shows the terms “somerset” and “summerset” as
being interchangeable terms for “somersault.” Thus, the
terms are capable of being understood as having similar
meanings. Applicant contends that its mark conjures up an
image of a summer sunset whereas registrant’s mark is
geographic in that registrant’s vineyard is located in
Colorado near the town of Somerset. In making this
Ser No. 77068855
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argument applicant points to the labels for the respective
wines (in applicant’s case, the labels intended to be
used). Contrary to the gist of applicant’s argument,
however, the marks must be compared as they appear in the
drawings, and not on any labels that may have additional
wording or information. In comparing the marks we
recognize that they may have different meanings, as argued
by applicant, but we cannot overlook the dictionary
evidence showing the similarities between the two terms
“summerset” and “somerset.”
As to commercial impression, we find that given the
similarities in sound, appearance and meaning, the marks
convey similar commercial impressions.
In an attempt to diminish the distinctiveness of
registrant’s mark, applicant submitted a printout of
listings of “Certificate of Label Approval (COLA)”
retrieved from the U.S. Alcohol and Tobacco Tax and Trade
Bureau. The listings show that over eighty wine labels on
which “Somerset” appears have been approved. This evidence
is entitled to limited probative value. Firstly, the vast
majority of the listings refer to one brand name, Somerset
Cellars. Secondly, just as in the case with third-party
uses without any evidence relating to the extent of use,
the mere listings give us no information as to the extent
Ser No. 77068855
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of use or that consumers are familiar with any of these
listed brand names. Thus, this evidence is not persuasive
of a different result on the merits of this appeal.
Likewise, the coexistence of the registered mark with
another registered mark in which SOMERSET is a portion
thereof is of little relevance. The existence of third-
party registrations (in this case, only one registration)
cannot justify the registration of another mark that is so
similar to a previously registered mark as to create a
likelihood of confusion. See, e.g., AMF Inc. v. American
Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269-70
(CCPA 1973).
We conclude that consumers familiar with registrant’s
wine sold under the mark SOMERSET, upon encountering
applicant’s mark SUMMERSET for wine, are likely to believe
that the wine originates from or is associated with or
sponsored by the same entity.
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.