Wente Bros. dba Tamas Estates

Trademark Trial and Appeal Board

Aug 6, 2009

No. 77314718 (T.T.A.B. Aug. 6, 2009)

Mailed:
6 August 2009
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Wente Bros. dba Tamas Estates
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Serial No. 77314718
_______

Edward S. Wright, Esq. for Wente Bros.

James T. Griffin, Trademark Examining Attorney, Law Office
103 (Michael Hamilton, Managing Attorney).
_______

Before Grendel, Drost, and Zervas, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On October 26, 2007, Wente Bros. (applicant) applied
to register the mark ANDIAMO in standard character form on
the Principal Register for “wine” in Class 33. Serial No.
77314718. The application contains an allegation of a date
of first use anywhere and in commerce of September 1, 2007,
and a translation of the mark as “Let’s Go.”
The examining attorney refused to register the mark
under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), because of a registration for the mark ANDIAMO,
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 77314718
2
in typed or standard character form, for “restaurant
services.” Registration No. 1803492 issued November 9,
1993, renewed. The registration also translates the mark
as “Let’s Go.”
After the examining attorney made the refusal final,
this appeal followed.1
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in 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., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
The first factor that we consider concerns the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation, and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005). In this case, the
marks are identical in every aspect. Indeed, both marks

1 With its Reply Brief, applicant submitted fifty pages of
exhibits that were not previously made of record. On June 15,
2009, the board denied the request that the board consider the
evidence attached to the request or remand the application to the
examining attorney. The board adhered to the decision on
reconsideration (Order dated June 19, 2009), and, therefore, we
will not consider this untimely evidence.
Ser No. 77314718
3
are displayed in typed or standard character form so we
must assume that both marks can be displayed in the same
stylization. In re Cox Enterprises Inc., 82 USPQ2d 1040,
1044 (TTAB 2007)(“We must also consider that applicant’s
mark, presented in typed or standard character form, is not
limited to any special form or style as displayed on its
goods”). Inasmuch as applicant’s and registrant’s marks
are identical, “the relationship between the goods on which
the parties use their marks need not be as great or as
close as in the situation where the marks are not identical
or strikingly similar.” Amcor, Inc. v. Amcor Industries,
Inc., 210 USPQ 70, 78 (TTAB 1981). See also In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir.
1993) (“[E]ven when goods or services are not competitive
or intrinsically related, the use of identical marks can
lead to an assumption that there is a common source”).
Next, we must consider whether registrant’s restaurant
services are related to applicant’s wine. Of course, we
must view the goods and services as they are identified in
the application and registration. Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973) (“Trademark cases involving the issue of likelihood
of confusion must be decided on the basis of the respective
descriptions of goods”).
Ser No. 77314718
4
The Federal Circuit’s precedent has set out how we
must analyze the relatedness of restaurant services and
food items.
Appellant’s argument with respect to the relationship
between foods and food services parallels that made by
the opposer/appellant in Interstate Brands Corp. v.
Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151
(CCPA 1978), seeking to bar registration of ZINGERS
for cakes based on prior use and registration of RED
ZINGER for herb tea. This court stated:

Interstate’s major substantive contention is that
case law has established a rule whereby confusion
is to be found likely whenever food items are
sold under the same or similar marks. There is
no such “rule.” On the contrary, “[e]ach case
must be decided on its own facts and the
differences are often subtle ones.” Industrial
Nucleonics Corp. v. Hinde, 475 F.2d 1197, 1199,
177 USPQ 386, 387 (CCPA 1973). [576 F.2d at 927,
198 USPQ at 152].

To establish likelihood of confusion a party must show
something more than that similar or even identical
marks are used for food products and for restaurant
services.

Jacobs v. International Multifoods Corp., 668 F.2d 1234,
212 USPQ 641, 642 (CCPA 1982) (emphasis added).
More recently, the Federal Circuit held that the
following evidence did not meet the “something more”
requirement.
The Board therefore properly looked to other evidence
to determine whether beer and restaurant services are
related for purposes of assessing the likelihood of
confusion. First, the Board relied on evidence from
several references discussing the practice of some
restaurants to offer private label or house brands of
beer. Second, the Board cited articles showing that
Ser No. 77314718
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brewpubs, which brew their own beer, often feature
restaurant services as well. Finally, the Board
reviewed evidence of several third-party registrations
showing that a single mark has been registered for
beer and restaurant services. Based on that evidence,
the Board concluded that beer and restaurant services
are related and that consumers encountering a beer
displaying a substantially similar mark as that used
for a restaurant would be likely to conclude that the
beer and the restaurant services came from the same
source.

In light of the requirement that “something more” be
shown to establish the relatedness of food and
restaurant products for purposes of demonstrating a
likelihood of confusion, the Board’s finding that beer
and restaurant services are related is not supported
by substantial evidence.

In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059,
1063 (Fed. Cir. 2003).
In view of the “something more” requirement of Jacobs,
we now look to see whether the examining attorney’s
evidence shows that wine and restaurant services are
related.
The examining attorney argues that the “goods and
services of the parties in this case are very closely
related, since restaurants commonly serve wine, and
wineries commonly feature restaurants. Food products and
food-related services have been considered related goods
and services.” Brief at unnumbered p.3. The examining
attorney argues that “the restaurant in the cited
Ser No. 77314718
6
registration features wine.” Id. at 4. The relevant
advertisement from registrant is set out below:

The ad reads:
Hilton
Take off with takeout
No need to wonder whether you will be served a bistro
meal on your next flight. Order Food on the Fly and
carry-out/carry-on to your next destination. Choose
from such items as exotic salads, delicious pastas,
fabulous and mouth-watering desserts. Located on the
lobby level in Andiamo restaurant, you meal will be
packed and ready when you are. Call ext. 1733, 30-
minutes before your hotel departure [to] place an
order for a gourmet meal on the fly.
© 1999.

The examining attorney also points to the fact that
applicant, in its May 15, 2008, response, has admitted that
it has a restaurant at its winery (“The Restaurant at Wente
Vineyards”).
In response, applicant argues:
Ser No. 77314718
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[T]here is no evidence showing either that it is
common in the industry for restaurants to offer and
sell private label wines named after the restaurant or
that either party’s wines are served in the other’s
restaurant. More importantly, there is no evidence
that the owner of the registration (Hilton Hotels)
either sells or is likely to sell private label wines
named after its restaurants. In an effort to show
that Hilton Hotels does serve wine at its restaurants,
the Examining Attorney has provided a room card
depicting a bottle of wine on a table along with some
food items. However, the trademark on the bottle is
Brolio, not Andiamo. Moreover, the card invites the
guest to “Take off with takeout” and to “Order Food on
the Fly and carry-out/carry-on to your next
destination.” With take-out food, it is not likely
that Hilton will sell wines named after its
restaurant.

Brief at 1-2.

The examining attorney concludes by arguing that in
“Opus One, the Board found that ‘the requisite ‘something
more’ exists, both in the strong and arbitrary character of
registrant’s OPUS ONE mark and the resulting broad scope of
protection to which the mark is entitled … and in the
specific commercial relationship between wine and
restaurant services.’ In re Opus One Inc., 60 USPQ2d 1812,
1813-14 (TTAB 2001). The mark at issue in this case is
ANDIAMO, meaning ‘let’s go,’ a similarly strong, arbitrary
mark. The goods at issue are wine and restaurant services,
the same as in Opus One. As such, in this case, the
‘something more’ required by Jacobs is similarly
satisfied.” Brief at 5.
Ser No. 77314718
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In Opus One (60 USPQ2d at 1815), the board held that
“the record in this case reveals that registrant’s OPUS ONE
wine is offered and served by applicant at its OPUS ONE
restaurant. The fact that applicant’s restaurant serves
the type of goods (indeed the actual goods) identified in
the cited registration is certainly probative evidence
which supports a finding under the second du Pont factor
that applicant’s services and opposer’s goods are related.”
We begin our analysis by noting that the fact that the
board has found goods and services to be related under the
facts presented in a previous decision does not mean we can
take judicial notice of those facts in this case.
In the instant case, although it may be said that the
opinions of the U.S. District Court for the Northern
District of California and the U.S. Court of Appeals
for the Ninth Circuit may be relevant under the broad
definition of “relevant evidence” in Rule 401, the
Board remains of the opinion that such “evidence” is
not competent evidence in a proceeding before it to
prove uniqueness, notoriety or market power of
opposer’s mark in the marketplace today. For it is
well settled that a decision in a prior case is
incompetent as proof of any fact recited therein as
against one who was not a party thereto. See: Aloe
Creme Laboratories, Inc. v. Bonne Bell, Inc., 168 USPQ
146 (TT&A Bd., 1970), and cases cited therein.

Chicken Delight, Inc. v. Delight Wholesale Co., 193 USPQ
175, 177 (TTAB 1976).
Therefore, we must look to the evidence in this case
to determine if the goods and services are related. The
Ser No. 77314718
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only facts that support the relatedness of wine and
restaurant services are the fact that applicant has a
restaurant at its winery (“The Restaurant at the Wente
Vineyards”) and that registrant apparently had a hotel and
that ten years ago it displayed a picture of a bottle of
wine in an advertisement for its takeout food (with no
mention that wine is one of the items available as a “to
go” item). There is no other evidence that wine is
actually served in registrant’s restaurant. We note that
the picture also displays a salt shaker, a pepper mill, and
apparently, a can of olive oil and a cruet of vinegar.
At this point, we observe that the board has found the
“something more” requirement to be met in various ways.
For example, the board found that the “average consumer,
therefore, would be likely to view Mexican food items and
Mexican restaurants services as emanating from or sponsored
by the same source if such goods and services are sold
under the same or substantially similar marks.” In re
Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209, 1211
(TTAB 1999). In a case involving restaurant services and
mustard, the board found that the term MUCKY DUCK was “a
very unique, strong mark.” In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467, 1469 (TTAB 1988). In Opus One,
registrant’s wines were actually sold in applicant’s
Ser No. 77314718
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restaurant. See also In re Golden Griddle Pancake House
Ltd., 17 USPQ2d 1074, 1074 (TTAB 1990) (“Applicant’s mark
[GOLDEN GRIDDLE PANCAKE HOUSE (Pancake House disclaimed)]
makes it clear that its restaurant serves pancakes and, no
doubt, pancake (or table) syrup, as well. There is an
undeniable connection between the goods of the registrant
[pancake syrup] and the services of applicant”). Also, in
a case somewhat similar to this case, the board found that
the mark AMAZON and parrot design for chili sauce and
pepper sauce was confusingly similar to the mark AMAZON for
restaurant services. In re Comexa Ltda., 60 USPQ2d 1118
(TTAB 2001). However, in that case, there were “numerous
[50] third-party registrations” and the board was able to
conclude that of “all food products[,] sauces and dressings
are perhaps the ones most likely to be marketed by the
restaurants in which those items are served.” Id. at 1120.
The facts of this case are much less persuasive.
Applicant and registrant are not providing the same type of
ethnic food and restaurant services. The only evidence of
record to show that the goods are related is the simple
picture of a bottle of wine along with other food items in
a flyer about registrant’s takeout services and the fact
that applicant has a restaurant with a different name at
its winery. We find that this evidence is not enough to
Ser No. 77314718
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show the “something more” required by Jacobs. We do not
find that the mark ANDIAMO is a “very strong, unique” term
as the mark MUCKY DUCK was held to be. As a foreign term,
it would not be as memorable as an unusual combination of
English words.
We also note that Federal Circuit has emphasized that
“[t]his case would be different … if the registrant’s mark
had been for a brewpub or for restaurant services and beer.
In that case, the goods and services associated with the
two marks would clearly be related and the case for a
likelihood of confusion therefore much stronger.” Coors
Brewing, 68 USPQ2d at 1064. The Court was looking for
evidence that the restaurant was also the source of the
goods not simply that a picture of the goods appeared in an
ad for the restaurant’s services. Indeed, the Court
described as “a very weak evidentiary basis for a finding
of relatedness” that “a tiny percentage of all restaurants
also serve as a source of beer.” Id. (emphasis added).
There is no evidence that registrant is a source of wine or
that anyone other than applicant is such a source. The
fact that applicant has a restaurant at its winery is not
enough to show that the goods are related. It is true that
some consumers who have patronized registrant’s ANDIAMO
restaurant may go to applicant’s winery and eat at The
Ser No. 77314718
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Restaurant at Wente Vineyards. They may then order a
bottle of ANDIAMO wine and conclude that the source of
these goods and services are related. However, while it is
possible that some consumers may believe that there is an
association between goods and services, the “statute refers
to likelihood, not the mere possibility, of confusion.”
Bongrain International (American) Corp. v. Delice de
France, Inc., 811 F.2d 1479, 1 USPQ2d 1775, 1779 (Fed. Cir.
1987). Indeed, we have no reason to conclude that the
level of confusion would be higher in this case than in
Coors Brewing.
We conclude with the Federal Circuit’s observation in
Coors Brewing (68 USPQ2d 1064), which makes it clear that
the relatedness of restaurant services and food items is
not to be assumed and that significant evidence of their
relatedness is necessary:
It is not unusual for restaurants to be identified
with particular food or beverage items that are
produced by the same entity that provides the
restaurant services or are sold by the same entity
under a private label. Thus, for example, some
restaurants sell their own private label ice cream,
while others sell their own private label coffee. But
that does not mean that any time a brand of ice cream
or coffee has a trademark that is similar to the
registered trademark of some restaurant, consumers are
likely to assume that the coffee or ice cream is
associated with that restaurant. The Jacobs case
stands for the contrary proposition, and in light of
the very large number of restaurants in this country
and the great variety in the names associated with
Ser No. 77314718
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those restaurants, the potential consequences of
adopting such a principle would be to limit
dramatically the number of marks that could be used by
producers of foods and beverages.

As a result we determine that under the facts
presented in this appeal, there is no likelihood of
confusion because there is not enough evidence to meet the
“something more” requirement of Jacobs.
Decision: The refusal to register applicant’s mark
under Section 2(d) of the Trademark Act is reversed.