White Birch Vineyards, LLC

Trademark Trial and Appeal Board

Nov 4, 2015

No. 86218002 (T.T.A.B. Nov. 4, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: November 4, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re White Birch Vineyards, LLC
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Serial No. 86218002
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Matthew H. Swyers of The Trademark Company, PLLC for
White Birch Vineyards, LLC.

Shavell McPherson-Rayburn, Trademark Examining Attorney, Law Office 105,
Susan Hayash, Managing Attorney.
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Before Kuczma, Adlin and Heasley,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
White Birch Vineyards (“Applicant”) seeks registration of the mark WHITE
BIRCH, in standard characters, for “Wine.”1 The Examining Attorney refused
registration under Section 2(d) of the Act on the ground that Applicant’s mark so
resembles:

1 Application Serial No. 86218002, filed March 11, 2014 under Section 1(a) of the
Trademark Act, based on first use dates of 2006.
Serial No. 86218002
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the identical mark (WHITE BIRCH in standard characters),2 and
the two marks shown below

3 4

all three of which are owned by KPO Marketing Company LLC
and registered for “vodka” (collectively the “KPO Marks”); and

the registered mark WHITE BIRCH BREWING, in standard
characters, for “beer; beer, ale and lager; beer, ale and porter; all
of the foregoing being handcrafted artisanal products,” owned by
White Birch Brewing, LLC (the “White Birch Brewing Mark”)5

that use of Applicant’s mark in connection with Applicant’s goods is likely to cause
confusion or mistake or to deceive. After the refusal became final, Applicant
appealed and Applicant and the Examining Attorney filed briefs.

2 Registration No. 3659495 issued July 21, 2009, with a disclaimer of BIRCH; Section 8
Affidavit accepted, Section 15 Affidavit acknowledged.
3 Registration No. 3687619, issued September 22, 2009, with disclaimers of BIRCH and
BIRCH FLAVORED VODKA.
4 Registration No. 4144630, issued May 22, 2012, with a disclaimer of BIRCH.
5 Registration No. 3967306, issued May 24, 2011, with a disclaimer of BREWING.
Serial No. 86218002
3

Likelihood of Confusion
Our determination under Section 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 Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). 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, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d)
goes to the cumulative effect of differences in the essential characteristics of the
goods and differences in the marks.”).
In considering the KPO Marks, we focus our analysis on the cited registration
for WHITE BIRCH in standard characters, because if we find confusion likely
between that cited mark and Applicant’s mark, we need not consider the likelihood
of confusion between Applicant’s mark and the other cited KPO Marks, while if we
find no likelihood of confusion between Applicant’s mark and the identical mark for
vodka, we would not find confusion between Applicant’s mark and the other cited
KPO Marks, which include design elements. In re Max Capital Group Ltd., 93
USPQ2d 1243, 1245 (TTAB 2010).
The cited KPO standard character mark is identical to Applicant’s mark. This
weighs heavily in favor of a finding of likelihood of confusion.
Serial No. 86218002
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The cited White Birch Brewing Mark is highly similar to Applicant’s mark. In
fact, the only difference between WHITE BIRCH and WHITE BIRCH BREWING is
the disclaimed word BREWING, which is descriptive if not generic for beer, and
thus entitled to less weight in our analysis. Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms,
this court has noted that the ‘descriptive component of a mark may be given little
weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l
Data, 224 USPQ at 752); In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1533-34 (Fed. Cir. 1997); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009)
(BINION’S, not disclaimed word ROADHOUSE, is dominant element of BINION’S
ROADHOUSE); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001)
(disclaimed matter is often “less significant in creating the mark’s commercial
impression”). Furthermore, both marks begin with WHITE BIRCH, and the first
part of a mark is often its most prominent and dominant feature. Presto Prods. Inc.
v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“it is often the first
part of a mark which is most likely to be impressed upon the mind of a purchaser
and remembered”); see also, Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005);
Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698, 1700 (Fed. Cir. 1992). In short, WHITE BIRCH and WHITE BIRCH
BREWING look and sound quite similar and convey highly similar meanings.
Serial No. 86218002
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This factor not only weighs heavily in favor of a finding of likelihood of confusion
between Applicant’s mark and both the KPO standard character mark and the
White Birch Brewing Mark, but also reduces the degree of similarity between the
goods that is required to support a finding of likelihood of confusion. In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993); Time Warner
Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002); and In re Opus
One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001).
Turning to the goods, they need not be identical or even competitive in order to
support a finding of likelihood of confusion. It is enough that the goods are related
in some manner or that the circumstances surrounding their marketing are such
that they would be likely to be seen by the same persons under circumstances which
could give rise, because of the marks used, to a mistaken belief that Applicant’s and
Registrants’ goods originate from or are in some way associated with the same
source or that there is an association between the sources of the goods. Hilson
Research, Inc. v. Society for Human Resource Management, 27 USPQ2d 1423, 1432
(TTAB 1993); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); Schering
Corp. v. Alza Corp., 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corp. v.
Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978); In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978). The issue is not whether
purchasers would confuse the goods, but rather whether there is a likelihood of
confusion as to the source of the goods. In re Rexel Inc., 223 USPQ 830, 832 (TTAB
1984).
Serial No. 86218002
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Here, the Examining Attorney has established that wine is related to both vodka
and beer. For example, the Examining Attorney has made of record third-party use-
based registrations showing that a single mark has been registered for wine on the
one hand and vodka or beer on the other, including the following:
SALTY DOG in standard characters (Reg. No. 4136155) is
registered for “”beer, ale, lager, porter and stout” on the
one hand and “wine” on the other.

D’SPAGNIA & Design (Reg. No. 3934483) is registered for
“beer” on the one hand and “wine” on the other.

(Reg. No. 4548100) is registered for “vodka” on the
one hand and “wine” on the other.

GRAYCLIFF in standard characters (Reg. No. 4518477) is
registered for “vodka” on the one hand and “wine” on the
other.

GUITAR CAFÉ & Design (Reg. No. 4515596) is registered
for “alcoholic beverages, namely, wine … vodka ….”

MONDANO in standard characters (Reg. No. 4497670) is
registered for “vodka” on the one hand and “wine” on the
other.

FOREX in standard characters (Reg. No. 4510739) is
registered for “alcoholic beverages, namely … wine” on
the one hand and “vodka” on the other.

COUNT DE BRIM in standard characters (Reg. No.
4542681) is registered for “vodka” on the one hand and
“wine” on the other.

Office Action of June 16, 2014. “Third-party registrations which cover a number of
differing goods and/or services, and which are based on use in commerce, although
not evidence that the marks shown therein are in use on a commercial scale or that
Serial No. 86218002
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the public is familiar with them, may nevertheless have some probative value to the
extent that they may serve to suggest that such goods or services are of a type
which may emanate from a single source.” See In re Mucky Duck Mustard Co., 6
USPQ2d 1467, 1470 n.6 (TTAB 1998); see also In re Davey Prods. Pty. Ltd., 92
USPQ2d 1198, 1203 (TTAB 2009).
In addition, the Examining Attorney introduced website printouts establishing
that Charbay, Koenig Distillery and Winery, Flag Hill and Still Pond Winery all
offer wine and vodka under the same mark or trade name; that Round Barn offers
wine, beer and vodka under the same mark or trade name; that Schnebly Winery,
Fenton Brewery and Winery6 and Wagner Valley Brewing Co. offer wine and beer
under the same mark or trade name; and that Old North State Winery and Brewery
offers both beer and wine. Office Action of January 12, 2015. This further
establishes a relationship between wine and beer and between wine and vodka.
While each case must be decided on its own merits and record, we recently relied
on the same types of evidence, and in fact some of the very same evidence, in
finding wine and beer related. In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261
(TTAB 2011); see also, In re Sailerbrau Franz Sailer, 23 USPQ2d 1719 (TTAB
1992); Krantz Brewing Corp. v. Henry Kelly Importing & Distributing Co., Inc., 96
USPQ 219 (1953); Fruit Industries, Ltd. v. Ph. Schneider Brewing Co., 46 USPQ 487
(Commr. Pat. 1940). Similarly, we have previously found that wine is related to
vodka and other spirits. Monarch Wine Co., Inc. v. Hood River Distillers, Inc., 196

6 Fenton Brewery and Winery also offers “beer vs. wine pairings” and “beer vs. wine
tastings.”
Serial No. 86218002
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USPQ 855 (TTAB 1977) (MONARCH for, inter alia, vodka likely to be confused with
MONARCH for wines and champagne). See also In re Chatam International Inc.,
380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004) (JOSE GASPAR GOLD for tequila
confusingly similar to GASPAR’S ALE for beer and ale); In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003) (RED BULL for tequila
confusingly similar to RED BULL for malt liquor); In re AGE Bodegas Unidas, S.A.,
192 USPQ 326 (TTAB 1976) (RIOJA SIGLO, with RIOJA disclaimed and SIGLO
meaning “century” for wines likely to be confused with CENTURY for whiskey).
As for channels of trade, the website printouts introduced by the Examining
Attorney establish that wine travels in the same channels of trade as both beer and
vodka. Office Action of January 12, 2015. Moreover, because neither Applicant’s nor
Registrants’ identifications of goods include any limitations with respect to channels
of trade, we must presume that those identifications encompass all wine, beer and
vodka of the types identified, and Applicant’s and Registrants’ alcoholic beverages
are presumed to move in all normal channels of trade and be available to all classes
of consumers therefor. Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (“An application with ‘no
restriction on trade channels’ cannot be ‘narrowed by testimony that the applicant’s
use is, in fact, restricted to a particular class of purchasers.’”); Citigroup Inc. v.
Capital City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Jump Designs, LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re
Elbaum, 211 USPQ 639, 640 (TTAB 1981). To the extent that the White Birch
Serial No. 86218002
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Brewing registration’s limitation to “handcrafted artisanal products” is a trade
channel limitation, the Examining Attorney’s website evidence establishes that
“handcrafted artisanal” beers travel in the same channels of trade as other alcoholic
beverages. As we stated in Monarch Wine Co.
… there is no doubt but that purchasers could readily
distinguish the products of opposer from those of
applicant. However, the products of both parties are
alcoholic beverages which flow through the same channels
of trade to the same class of purchasers, and we believe
that a prospective purchaser of an alcoholic beverage
upon entering and browsing through the various alcoholic
products located or displayed on the various shelves or
counters in retail liquor establishments would, upon
encountering a whiskey, rum, brandy or vodka identified
by the term “MONARCH”, and then continuing on his
jaunt to another counter or section of the same store and
seeing a wine or champagne sold under the identical
mark “MONARCH”, be likely to believe that both
products originated with the same producer.

Monarch Wine Co., 196 USPQ at 857. See also, In re Majestic Distilling, 65 USPQ2d
at 1204 (“malt liquor and tequila are similar by virtue of the fact that both are
alcoholic beverages that are marketed in many of the same channels of trade to
many of the same consumers”); In re Kysela Pere, 98 USPQ2d at 1267 (“It is also
common knowledge that [beer and wine] can be purchased in liquor stores and, in
some cases, supermarkets and other retail outlets.”); In re Sailerbrau, 23 USPQ2d
at 1720 (“both beer and wine may be found in the same outlets, whether they be
liquor stores or supermarkets”); Schieffelin & Co. v. The Molson Companies Ltd., 9
USPQ2d 2069, 2073 (TTAB 1989) (“A typical consumer of alcoholic beverages may
drink more than one type of beverage and may shop for different alcoholic beverages
Serial No. 86218002
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in the same liquor store. Moreover, a person may serve more than one kind of
alcoholic beverage before or during a meal or at a party.”).
In short, the goods are related and their channels of trade overlap. These factors
also weigh in favor of a finding of likelihood of confusion.7
Applicant’s argument that the coexistence of the cited registrations establishes
that WHITE BIRCH is weak for alcoholic beverages is not well taken. The cited
registrations are owned by only two owners, which is not sufficient to establish that
WHITE BIRCH or variations thereof is weak.
Applicant’s argument that confusion is unlikely because the relevant consumers
are “sophisticated” and “discerning” is irrelevant, because neither Applicant’s nor
Registrants’ identifications of goods specify the types of purchasers for Applicant’s
or Registrants’ goods. Therefore, we must presume that Applicant’s and
Registrants’ identified goods encompass inexpensive and expensive varieties of the
identified goods, and that the goods are offered to all types of customers therefor.
See e.g., Stone Lion Capital, 110 USPQ2d at 1162-63 (“Stone Lion effectively asks
this court to disregard the broad scope of services recited in its application, and to
instead rely on the parties’ current investment practices … the Board properly
considered all potential investors for the recited services, including ordinary
consumers seeking to invest in services with no minimum investment
requirement.”) (emphasis in original). This factor is neutral.

7 Applicant’s attempts to distinguish the goods and their channels of trade are unavailing,
because the differences Applicant cites are not reflected in Applicant’s or Registrants’
identifications of goods. Octocom Systems, Inc. v. Houston Computers Services, Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Serial No. 86218002
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The lack of actual confusion is also irrelevant, because there is no evidence
regarding the nature and extent of any contemporaneous use in the marketplace by
Applicant and Registrants that would show that there has been an opportunity for
confusion to occur if it were likely to occur. In re Kangaroos U.S.A., 223 USPQ 1025,
1026-27 (TTAB 1984). In any event, the lack of evidence of actual confusion carries
little weight, especially in an ex parte context. In re Majestic Distilling, 65 USPQ2d
at 1205. We therefore find that this du Pont factor is also neutral.
Conclusion
Applicant’s and Registrants’ marks are quite similar, and their goods are related
and presumed to travel in overlapping channels of trade to some of the same
consumers. Accordingly, confusion is likely.
Decision: The Section 2(d) refusal to register Applicant’s mark is affirmed.