Wine B&B Co.

Trademark Trial and Appeal Board

Feb 6, 2013

No. 85125544 (T.T.A.B. Feb. 6, 2013)

Mailed:
February 6, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Wine B&B Co.
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Serial No. 85125544
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Matthew H. Swyers of The Trademark Company for Wine B&B Co.

Michelle E. Dubois, Trademark Examining Attorney, Law
Office 107 (J. Leslie Bishop, Managing Attorney).
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Before Seeherman, Zervas and Gorowitz, Administrative
Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:

Wine B&B Co. (“applicant”) filed an application to
register the standard character mark SECRET WINE SHOP on
the Principal Register for (i) “wines” in International
Class 33 under Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b); and (ii) “wine bars” in International Class 43
under Trademark Act Section 1(a), 15 U.S.C. § 1051(a).
Applicant claims first use and first use in commerce on
December 21, 2009 for “wine bars.” Applicant entered a
disclaimer of “wine shop.”
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser. No. 85125544
2
The assigned examining attorney refused registration
of applicant’s mark under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that applicant's
mark used on applicant’s goods and services so resembles
the following three marks as to be likely to cause
confusion or mistake or to deceive:
(i) SECRET ALE (standard character form,
Registration No. 2063872, ALE disclaimed) for
“beverages, namely beer and ale” in International
Class 32;

(ii) (Registration
No. 3042232) for “wines” in International Class
33;1 and

1 The registration contains the following description of the
mark:
The mark consists of a stylized depiction of the word
"SECRETO" above which is a circular design entered on
an aged or worn parchment. The design shown on the
parchment is in the nature of a circle within which is
wording on the inner perimeter. The innermost portion
of the circle shows a human head in profile above
which is shown a crown.
The translation statement entered in the registration record
provides, “The wording ‘SECRETO VINA MAYOR’ in the mark
translates into English from Spanish as ‘SECRET VINEYARD MAJOR’
and the word ‘RIBERA’ translates into English from Spanish as
‘BANK’ or ‘SHORE’.”
Ser. No. 85125544
3

(iii) SECRET LABEL (standard character form,
Registration No. 3223374) for “wine” in
International Class 33.

The three registrations are owned by three different
entities.
Applicant appealed the refusal and briefs have been
filed. We reverse the refusal to register.
Our determination under Trademark Act § 2(d) is based
on an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Rests.
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
To evaluate the similarity of the marks, we first
consider the strength of SECRET, the common term in
applicant’s and registrants’ marks. In addition to the
three registrations cited by the examining attorney, the
record includes the following third-party registrations
(all owned by different entities) for marks containing the
Ser. No. 85125544
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term SECRET or SECRETO, which are either for wine or for
services that are wine-related:
SECRET CLONE, Registration No. 3297322 for
“wine”;

SECRET OF PINK, Registration No. 3268644 for
goods including “wine”;

VALLE SECRETO VINEYARDS WINERY and design,
Registration No. 3912044 for “wines”;

TIERRA SECRETS, Registration No. 3661713 for
“wine”;

SECRET DE FAMILLE, Registration No. 3729615 for
“wines”;

SECRET ACRE, Registration No. 3851169 for “wine”;

SECRET D’AMI and design, Registration No. 3405680
for goods including “wine”;

SECRETO DE VIU MANENT, Registration No. 4065617
for “wines”;

SECRET DE GRAND BATEAU, Registration No. 3818617
for “wines” and “wholesale and retail store
services featuring wine; on-line wholesale and
retail store services featuring wine”;

SECRET DE CARDINALE, Registration No. 3708846 for
“wine”;

SECRET DE LA COMPTESSE, Registration No. 3537294
for “wines, wines protected under the Bordeaux
appellation of origin”;

SECRETO PATAGONICO, Registration No. 3502758 for
“wines”;

LAKEWOOD’S BEST KEPT SECRET, U.S. Registration
No. 2890441 for “bar services”;

SAAM LITTLE SECRET, U.S. Registration No. 3840507
for “restaurant and bar services”; and
Ser. No. 85125544
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TOP SECRET HOTELS, U.S. Registration No. 3891775
for services including “bar services” and “public
house services.”

Although the third-party registrations are not
evidence of actual use of the marks, the numerous third-
party registrations – as well as the three cited
registrations - demonstrate that the addition of various
terms to SECRET has been sufficient for the Office to view
the registered marks as being sufficiently different from
one another such as not to cause confusion, and that the
owners of the registrations did not have a problem with the
later registration of the other registered marks. See In
re Hartz Hotel Services Inc., 102 USPQ2d 1150, 1154 (TTAB
2012) (“It is clear from the third-party registrations that
the addition of a geographic location to the word GRAND
HOTEL has been sufficient for the Patent and Trademark
Office to view these marks as being sufficiently different
from the cited registrant's mark, and from each other, such
as not to cause confusion. We presume that the owner of
the cited registration did not have a problem with the
registration of these third-party marks, as they all issued
after the registration of the cited registrant's
registration without challenge by the registrant.”). See
also, J. Thomas McCarthy, McCarthy on Trademarks and Unfair
Ser. No. 85125544
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Competition § 11:90 (4th ed. 2012) (“[Third-party]
registrations … show that the PTO, by registering several
marks with such a common segment, recognizes that portions
of such composite marks other than the common segment are
sufficient to distinguish the marks as a whole and to make
confusion unlikely.”).
With this in mind, we compare applicant’s mark with
the three cited marks. In addition to SECRET, applicant’s
mark has the wording WINE SHOP, so that the mark as a whole
conveys the meaning of a place. In contrast, the SECRET
ALE mark refers to an alcoholic beverage, SECRETO is a
Spanish language term which gives the mark, used in the
context of wine, a South American or Spanish flavor. With
regard to the SECRET LABEL mark, the examining attorney
submitted with her brief the following definitions of
“label” from The American Heritage Dictionary of the
English Language (4th ed. 2000), accessed at
thefreedictionary.com, of which we take judicial notice;
“a distinctive name or trademark identifying a product or
manufacturer, especially a recording company.”2 Based on

2 The Board may take judicial notice of dictionaries and
encyclopedias, including online dictionaries and encyclopedias
which exist in printed format. See In re Cyber Financial.Net.,
Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002). See also 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).
Ser. No. 85125544
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this definition, consumers will view the phrase SECRET
LABEL as the equivalent of “SECRET brand.” The connotation
of each mark is different. Hence we find the marks are
different from one another.
We find that the dissimilarity of the marks outweighs
the other du Pont factors that would favor a finding of
likelihood of confusion, namely, the similarity of the
goods and services, overlapping trade channels and
purchasers, and purchasers who are not sophisticated or
making purchases with particular care. See Kellogg Co. v.
Pack-Em Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145
(Fed. Cir. 1991) (“We know of no reason why, in a particular
case, a single du Pont factor may not be dispositive. …
‘each [of the thirteen elements] may from case to case play
a dominant role.’”). Accordingly, we find that applicant's
mark SECRET WINE SHOP for wines and wine bars is not likely
to cause confusion with each of the cited registrations.
Decision: The refusal to register applicant’s mark in
both International Classes 33 and 43 is reversed.