World of Wine Events, LLC

Trademark Trial and Appeal Board

Feb 19, 2015

No. 86013688 (T.T.A.B. Feb. 19, 2015)

This Opinion is not a
Precedent of the TTAB

Mailed: February 19, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re World of Wine Events, LLC
________

Serial No. 86013688
_______

Rob G. Leach of Charmasson Buchaca & Leach LLP for World of Wine
Events, LLC.

Betty Chang, Trademark Examining Attorney, Law Office 115 (John
Lincoski, Managing Attorney).
_______

Before Kuhlke, Cataldo and Wellington,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

World of Wine Events, LLC (“Applicant”) seeks registration on the
Principal Register of the mark SAN DIEGO BAY WINE & FOOD FESTIVAL
in standard characters for
arranging, organizing, conducting, and hosting social
entertainment events; conducting entertainment exhibitions in
the nature of food and wine festivals; consultation in the field of
special event planning for social entertainment purposes;
entertainment services, namely, wine and food tastings

Serial No. 86013688

2
in International Class 41.1 Applicant filed the involved application with a
claim of acquired distinctiveness under Section 2(f) of the Trademark Act, 15
U.S.C. § 1052(f), and a disclaimer of the exclusive right to use the term WINE
& FOOD FESTIVAL apart from the mark as shown.
The Trademark Examining Attorney has refused registration of
Applicant’s mark on the ground of a likelihood of confusion under Section 2(d)
of the Trademark Act, 15 U.S.C. § 1052(d), in view of the mark SAN DIEGO
BAY, registered to San Diego Unified Port District on the Supplemental
Register for
promoting business and tourism, namely, providing information
concerning events, attractions, accommodations, retail-shop
locations, harbor activities, marine activities, and boating
activities and services therefor on and around San Diego Bay
consisting of 27 miles of waterfront along the five cities of San
Diego, Coronado, Chula Vista, Imperial Beach, and National
City

in International Class 35;2 and registered by the same entity on the Principal
Register with a claim of acquired distinctiveness under Trademark Act
Section 2(f) for
Promoting the economic development in the waterfront area of
San Diego and promoting business, namely, providing
information concerning events, attractions, accommodations,
retail-shop locations, harbor activities, marine activities, and
boating activities and services therefor on and around the bay
area consisting of 34 miles of waterfront along five cities of San
Diego, Coronado, Chula Vista, Imperial Beach, and National

1 Application Serial No. 86013688 was filed on July 18, 2013, based upon Applicant’s
allegation of first use of the mark anywhere and in commerce on December 1, 2004,
under Section 1(a) of the Trademark Act.
2 Registration No. 2652995 issued on November 19, 2002. Section 8 affidavit
accepted. Renewed.
Serial No. 86013688

3
City; Promoting tourism in the San Diego waterfront area and
promoting business, namely, providing information concerning
events, attractions, accommodations, retail-shop locations,
harbor activities, marine activities, and boating activities and
services therefor on and around the bay area consisting of 34
miles of waterfront along five cities of San Diego, Coronado,
Chula Vista, Imperial Beach, and National City area

in International Class 35.3

Applicant filed a request for reconsideration and appealed the final
refusal. The Examining Attorney denied the request for reconsideration. The
refusal has been fully briefed by Applicant and the Examining Attorney,
including a reply brief from Applicant.
Likelihood of Confusion
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 or services. See Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA
1976). See also In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531
(Fed. Cir. 1997).

3 Registration No. 3540205 issued on December 2, 2008.
Serial No. 86013688

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Registration No. 3540205
For purposes of the du Pont factors that are relevant to this appeal we
will consider Applicant’s involved mark and the mark that is the subject of
cited Registration No. 3540205. If likelihood of confusion is found as to the
mark and services in this registration, it is unnecessary for us to consider the
other cited registration because the identical mark identifies services that
essentially are encompassed by those recited in Registration No. 3540205.
Conversely, if likelihood of confusion is not found as to the mark and services
in this registration, we would not find likelihood of confusion as to the mark
and services in the other cited registration.
Scope of Protection Accorded the Cited Mark
As Applicant notes, this mark is registered on the Principal Register
with a claim of acquired distinctiveness under Section 2(f). Applicant argues
that registrant’s “mark is geographically descriptive and weak, entitling the
mark to only a narrow scope of protection, meaning that the marks and
services must be substantially identical for a likelihood of confusion.” 4
TTABVue 6.4
While we find the marks to be conceptually weak, Applicant misstates
the standard for the scope of protection to be accorded such a mark. Rather, it
is settled that the scope of protection to be afforded a mark issued on the

4 Record citations are to TTABVue, the Trademark Trial and Appeal Board’s
publically available docket history system. See Turdin v. Trilobite, Ltd., 109
USPQ2d 1473, 1476 n.6 (TTAB 2014).

Serial No. 86013688

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Supplemental Register, cited as a bar to registration on the ground of
likelihood of confusion, “has been limited to the substantially identical
notation and/or to the subsequent use and registration thereof for
substantially similar goods” in order for us to find a likelihood of confusion.5
See Hunke & Jochheim, 185 USPQ 188, 189 (TTAB 1975); see also In re
Clorox Co., 578 F.2d 305, 198 USPQ 337 (CCPA 1978). With regard to cited
Registration No. 3540205,
The Court of Appeals for the Federal Circuit and the Trademark
Trial and Appeal Board have recognized that merely descriptive
and weak designations may be entitled to a narrower scope of
protection than an entirely arbitrary or coined word. See Palm
Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en
1772, 396 F.3d 1369, 1373, 73 USPQ2d 1689, 1693 (Fed. Cir.
2005); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1026
(TTAB 2009); In re Box Solutions Corp., 79 USPQ2d 1953, 1957-
58 (TTAB 2006); In re Cent. Soya Co., 220 USPQ 914, 916
(TTAB 1984). However, even a weak mark is entitled to
protection against the registration of a similar mark for closely
related goods or services. See King Candy Co. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 1401, 182 USPQ 108, 109 (C.C.P.A.
1974).

TMEP § 1207.01(b)(ix) (January 2015). As a result, we must determine
herein whether the Applicant’s involved mark and the mark in cited
Registration No. 3540205, issued on the Principal Register with a claim of
acquired distinctiveness, are similar and identify services that are closely
related.

5 This standard of comparison for likelihood of confusion purposes would apply to
cited Registration No. 2652995, issued on the Supplemental Register.
Serial No. 86013688

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The Services
We turn now to the du Pont factor involving the relatedness of
Applicant’s services and Registrant’s services. It is settled that in making our
determination, we must look to the services as identified in the application
vis-à-vis those recited in the cited registration. See Octocom Sys., Inc. v.
Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). It
is also not necessary that the respective services be competitive, or even that
they move in the same channels of trade to support a holding of likelihood of
confusion. It is sufficient that the respective services are related in some
manner, or that the conditions and activities surrounding the marketing of
the services are such that they would or could be encountered by the same
persons under circumstances that could give rise to the mistaken belief that
they originated from the same producer. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991).
In this case, Applicant arranges, organizes, conducts and hosts
entertainment events and exhibitions, including wine and food festivals, and
provides consultation in connection therewith. Registrant promotes tourism,
economic development and business in the San Diego waterfront area by
providing information concerning events, attractions, accommodations, retail
shops, and marine-related events. The Examining Attorney argues that “the
evidence of record shows that the same entity commonly arranges, organizes
Serial No. 86013688

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or conducts events related to food and wine events and provide[s] information
about those or other events under the same marks.”6 In support of her
position, the Examining Attorney has submitted, with her January 7, 2014
final Office Action, evidence in the form of the following Internet webpages
purporting to demonstrate that services of the types identified in the
application and the cited registration have been offered by a single company
under the same mark.
S and B Events conducts and provides information about
Alexandria’s Food and Wine Festival.
alexandriafoodandwine.com/contact-us-2 and
alexandriafoodandwine.com;

Trigger Agency produces “Fine Wine, Beer and Spirits Events”
and provides information about them.
triggeragency.com/about and
drinkeatrelax.com/events;

Coastal Luxury Management (CLM) “operates several annual
multi-day events with offerings from wineries, celebrity chefs,
tastings and cooking demos” and provides information about
Pebble Beach Food & Wine, Los Angeles Food & Wine Festival,
and others.
inc.com/profile/coastal-luxury-management and
pbfw.com/index.cfm/clm_ventures.htm;

Austin Food and Wine Alliance fosters “awareness and
innovation in the Central Texas culinary community through
grants, education, programming and events” and provides
information about the events Live Fire!, Wine & Swine Annual
Pig Roast and Chef Wine & Dine Series.
austinfoodwinealliance.org;

Charleston Wine + Food Festival is a non-profit organization
that conducts the Festival and other events, and provides
information about them.
charlestonwineandfood.com/about-the-festival;

6 6 TTABVue 14.
Serial No. 86013688

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Ashville Wine & Food Festival conducts the Festival and
provides information about it.
ashevillewineandfood.com/about-festival;

The Big Sur Food and Wine Festival “is a giving organization
that holds events to promote Big Sur as a culinary destination”
and provides information about the Festival.
bigsurfoodandwine.org/about;

Brandywine Valley Wine Trail conducts the Brandywine Food
and Wine Festival and provides information about it.
pawinefestival.com;

The Tourism Leadership Council conducts the Savannah Food &
Wine Festival and provides information about it.
savannahfoodandwinefest.com/index.html;

Gourmet Shows produces the Philadelphia Taste Festival of
Food Wine and Spirits, and provides information about it and
other events.
philly.gourmetshows.com and
gourmetshows.com; and

Cecil County Food and Wine Festival, LLC conducts the Festival
and provides information about it.
cecilwinefest.com.

With her November 5, 2013 first Office Action, the Examining Attorney made
of record the following Internet evidence purporting to show that “the same
entity commonly provides the relevant services unrelated to food and wine,
under the same or similar marks.”7
Plan Ahead Events provides on-site event management services
and markets events by providing information.
planaheadevents.com/onsite-eventmanagement.html;

The Great Event.com plans events and markets them by
providing information.
thegreatevent.com; and

7 6 TTABVue 15.
Serial No. 86013688

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The Event Group International plans corporate events including
marketing the events.
teginternational.com/Corporate-Event-Planners/corporate-
eventplanning-packages.

With one possible exception, all of the Examining Attorney’s evidence
appears to show that a single entity plans, organizes and conducts, inter alia,
wine and food festivals and provides information about those events.
However, this evidence fails to demonstrate that a single entity conducts
wine and food festivals and other entertainment events and also provides
information about events other than the ones they themselves conduct. In
other words, the Examining Attorney’s evidence shows only that entities
conducting entertainment events including wine and food festivals may also
provide information about those entertainment events. But only two of the
Internet websites (philly.gourmetshows.com and gourmetshows.com) may be
read as indicating that the same entity also provides information about other
entertainment events; and it is not at all clear that these sites provide
information in relation to promoting business, tourism and economic
development. As a result, we find insufficient support for the Examining
Attorney’s position that the services are sufficiently related for purposes of
our likelihood of confusion determination.
Accordingly, we find that the du Pont factor of the similarity or
dissimilarity of the services favors a finding of no likelihood of confusion.

Serial No. 86013688

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The Marks
Next we consider the similarity or dissimilarity of the marks at issue
in their entireties as to appearance, sound, connotation and commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). While we
consider each mark in its entirety, there is nothing improper in stating that,
for rational reasons, more or less weight has been given to a particular
feature of a mark, provided that our ultimate conclusion rests upon a
comparison of the marks in their entireties. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
The Examining Attorney contends that Applicant’s mark merely adds
the generic wording WINE & FOOD FESTIVAL, which serves no source-
identifying function, to the cited mark. Applicant, for its part, contends that
the cited mark consists of a weak, geographically descriptive term, and that
It would be a severe and unfair limitation on free enterprise to
deprive others from using “San Diego Bay” in combination with
other words and terms in their trademarks, especially over such
an enormous geographical area in which there are numerous
such businesses. If that was the case, [Registrant] would have
an unfair monopoly on the descriptive words “San Diego Bay”,
spanning an enormous territory surrounding San Diego Bay in
which businesses need to fairly compete, including the use of the
same geographically descriptive words, but in combination with
other words to draw a distinction between the various marks.8

8 4 TTABVue 8.
Serial No. 86013688

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In support of its contention, Applicant made of record with its June 13, 2014
Request for Reconsideration the following Internet evidence showing use of
SAN DIEGO BAY-formative designations for various services.
San Diego Bay Parade of Lights, “a time-honored holiday
tradition brought to San Diego by the boating community”
featuring “more than 80 boats lavishly decorated according to a
new theme every year.”
sdparadeoflight.org;9

San Diego Bayfair, a hydroplane powerboat race
sandiegobayfair.org;

San Diego Bay Adventures, providing personal watercraft, boat
and standup paddleboard tours of San Diego Bay
sdbayadventures.com; and

San Diego Bay Cruises and Private Yacht Charters, providing
power and sailing yacht cruises and boatels (hotels located
onboard boats) in San Diego
sandiegobaycruises.com.

Applicant further made of record a copy of third-party Registration No.
3439438, issued on the Principal Register for the mark displayed below

with a claim of acquired distinctiveness, in part, as to SAN DIEGO BAY
PARADE OF LIGHTS, and with PARADE OF LIGHTS disclaimed, for

9 This event is sponsored in part by “Unified Port of San Diego,” which appears to be
related to San Diego Unified Port District, owner of the cited registrations.
Serial No. 86013688

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“entertainment, namely, production of a parade; entertainment services,
namely, fireworks displays; entertainment in the nature of a parade.”10
We note initially that neither Applicant nor the Examining Attorney
made of record a definition of SAN DIEGO BAY. We hereby take judicial
notice of the commonly known fact that SAN DIEGO BAY describes the bay
and waterfront area adjacent to the city of San Diego, California.11 Thus, as
to both Applicant’s mark and that in the cited registrations, the term SAN
DIEGO BAY is inherently a weak source indicator because it is
geographically descriptive, identifying a well-known area surrounding San
Diego, California. Customers would therefore readily entertain the possibility
that the term SAN DIEGO BAY might be adopted by any merchant located in
the San Diego waterfront area. Nonetheless we agree that SAN DIEGO BAY
is the dominant portion of Applicant’s mark, because FOOD & WINE
FESTIVAL is the generic name of certain of the recited services and, alone,
has no source-indicating capacity.
Because the similarity or dissimilarity of the marks is determined
based on the marks in their entireties, the analysis cannot be predicated on
dissecting the marks into their various components; that is, the decision must
be based on the entire marks, not just part of the marks. In re National Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985); see also Franklin

10 This registration subsequently cancelled on January 9, 2015.
11 The Board may take judicial notice of commonly known facts that are not
reasonably in dispute. See, e.g., In re Brown-Forman Corp., 81 USPQ2d 1284, 1286
(TTAB 2006) (Baton Rouge is the capital of Louisiana).
Serial No. 86013688

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Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 23, 234 (CCPA
1981) (“It is axiomatic that a mark should not be dissected and considered
piecemeal; rather, it must be considered as a whole in determining likelihood
of confusion”). Thus, we look to the entirety of Registrant’s SAN DIEGO BAY
mark and Applicant’s SAN DIEGO BAY WINE & FOOD FESTIVAL mark to
determine their similarity and dissimilarity.
The two marks at issue are obviously similar to the extent that
Applicant’s mark incorporates the entirety of that of Registrant as its only
distinctive – albeit inherently weak – part. Nonetheless, we find that they
create different commercial impressions when they are considered in their
entireties in the context of the offered services. Applicant’s mark would be
perceived as a source of wine and food tastings identified by the designation
SAN DIEGO BAY WINE & FOOD FESTIVAL. Registrant’s mark would be
perceived as promoting business, tourism and economic development in the
nature of information services regarding events, attractions,
accommodations, marine activities and shopping in the waterfront area of
San Diego, California. Because of these differences in commercial impression,
the distinction between the wording SAN DIEGO BAY and SAN DIEGO BAY
WINE & FOOD FESTIVAL warrants attention in our determination of
whether the marks are likely to engender confusion. We note Applicant’s
argument that
the additional words in the Applicant’s mark convey a
commercial impression about particular event services, as
Serial No. 86013688

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opposed to a much broader, non-specific impression conveyed by
[Registrant’s] mark. In other words, consumers seeing both
marks will perceive the additional words in the Applicant’s
mark as significant and distinguishing because “San Diego Bay”
is entirely nonspecific, while “San Diego Bay Wine & Food
Festival” is particular to event services, and even to a particular
event.12

There is sufficient distinction between the ideas suggested by the plain
meaning of the words SAN DIEGO BAY used in connection with the specified
information services and SAN DIEGO BAY WINE & FOOD FESTIVAL used
in connection with the specified event services that we think it unlikely that
consumers of the respective services would perceive a commercial
relationship between these two marks. Accordingly, we find that the du Pont
factor of the similarity or dissimilarity of the marks weighs somewhat
against a finding of likelihood of confusion.
Conclusion
We have considered all of the arguments and evidence of record,
including those not specifically discussed herein,13 and all relevant du Pont
factors. In view of the weakness of the respective marks and the different
commercial impressions created by the marks at issue when considered in the
context of the parties’ dissimilar services, we find that Applicant’s mark is
not likely to cause confusion, mistake or deception as to the source of
Applicant’s services.

12 4 TTABVue 9.
13 In view of our determination, we find it unnecessary to consider Applicant’s
arguments and evidence relating to Registrant’s purported implied consent to the
registration of Applicant’s mark.
Serial No. 86013688

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Decision: The refusal to register is reversed.