Babich Wines Ltd.v.Vina Bibich

Trademark Trial and Appeal Board

Aug 24, 2012

No. 92051180 (T.T.A.B. Aug. 24, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: August 24, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Babich Wines Ltd.
v.
Vina Bibich
_____

Cancellation No. 92051180
_____

Elizabeth A. Linford of Ladas & Parry LLP for Babich Wines
Limited.

Kathleen T. Petrich of Graham & Dunn PC for Vina Bibich.
_____

Before Cataldo, Shaw and Greenbaum,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Petitioner, Babich Wines Ltd., has petitioned to
partially cancel Registration No. 3643087, owned by
respondent, Vina Bibich, for the mark shown below. The
registration issued on the Principal Register on June 23,
2009. The goods are identified therein as “olive oil,” in
International Class 29 and “wine” in International Class 33.
In the application, filed on November 24, 2008, underlying
Registration No. 3643087, respondent asserted March 15, 2006
Cancellation No. 92051180
2
as a date of first use of the mark in commerce on both
classes of goods.1

In its petition for cancellation, petitioner alleges
that it is the owner of Registration No. 2682970 for the
mark BABICH in typed or standard characters for “wines,
distilled spirits and potable spirits” in International
Class 33. The registration issued on the Principal Register
on February 4, 2003. In the application, filed on December
3, 2001, underlying Registration No. 2682970, petitioner
asserted 1986 as a date of first use of the mark in commerce

1 The design consists of a family emblem having a rooster
standing atop of a helmet with a feather, the helmet is atop of a
stretched mantle upon which a shield having three half-moons is
displayed, all essentially surrounded by a circle, which in turn
is surrounded by laurel leaves arranged in a wreath atop of which
is a sash with the word "BIBICh", which is all surrounded by a
scalloped circular shape. The wording "BIBICh" is below the
design.
Color is not claimed as a feature of the mark.
Cancellation No. 92051180
3
on the goods.2 Petitioner further alleges that it has made
prior use of the mark BABICH in connection with the goods
recited in its registration; and that as a result of the
similarity between the parties’ marks as applied to
petitioner’s goods and respondent’s goods in Class 33,
namely, “wine,” confusion is likely among consumers as to
the source of those goods. As a result, petitioner seeks
cancellation of respondent’s registration solely as to
“wine” in Class 33 under Section 2(d) of the Trademark Act,
15 U.S.C. § 1052(d).3
In its answer, respondent denied the salient
allegations of the petition to cancel.4
The Record
The record in this case consists of the pleadings and
the file of respondent’s involved Registration No. 3643087.
Pursuant to stipulation, the parties submitted the testimony
by declaration, with exhibits, of the following individuals:
petitioner’s General Manager, David Ross
Babich (trial and rebuttal declarations);
respondent’s co-owner and co-founder, Alen Bibich; and

2 Section 8 affidavit accepted; Section 15 affidavit
acknowledged.
3 In its petitioner for cancellation, petitioner also asserted a
claim of dilution under Trademark Act Section 43(c), but did not
pursue such claim at trial. Accordingly, it is deemed waived.
4 Respondent also asserted certain affirmative defenses but did
not pursue them by motion or at trial. Accordingly, they are
deemed waived. Respondent further asserted as “affirmative
Cancellation No. 92051180
4
respondent’s US Sales Agent, Daniel Pedisich. In
addition, both parties submitted notices of reliance.
Petitioner and respondent filed main briefs and
petitioner filed a reply brief.
Petitioner’s Standing
Because petitioner has properly made its pleaded
registration of record, and further has shown, by its use
and registration of a mark that is at least arguably similar
to respondent’s mark that it is not a mere intermeddler, we
find that petitioner has established its standing to
petition to cancel respondent’s registration for its
involved mark. See Cunningham v. Laser Golf Corp., 222 F.3d
943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185
(CCPA 1982). We note in addition that respondent does not
dispute petitioner’s standing to bring this proceeding.
Priority of Use
It is well-settled that in the absence of any evidence
of earlier use, the earliest date upon which a respondent
may rely is the filing date of its underlying application.
See Trademark Act Section 7(c), 15 U.S.C. §1057(c). See
also Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d
1840 (TTAB 1995). In this case, the application that
matured into respondent’s registration at issue was accorded

defenses” matters that are more in the nature of amplifications
Cancellation No. 92051180
5
a filing date of November 24, 2008. Inasmuch as respondent
has neither alleged nor introduced any evidence to support a
finding that it made earlier use of its mark, we find that
November 24, 2008 is the earliest date upon which respondent
is entitled to rely for purposes of priority.
The filing date of petitioner’s pleaded registration is
December 3, 2001. Because the filing date of petitioner’s
underlying application predates the filing date of
respondent’s underlying application, petitioner clearly has
established its priority as to its pleaded registration. We
note in addition that respondent concedes petitioner’s
priority of use.
We turn then to our determination of the issue of
likelihood of confusion.
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the 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 &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In
re Majestic Distilling Company, Inc., 315 F.3d 1311, 65

of its denials and have been so construed.
Cancellation No. 92051180
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USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The Goods
Turning first to our consideration of the similarities
or dissimilarities between the parties’ goods, we note that
the Class 33 goods recited in respondent’s involved
registration are “wine.” Petitioner’s pleaded registration
recites “wines, distilled spirits and potable spirits.”
Thus, respondent’s goods are identical in part to those of
petitioner. Furthermore, we note that “Registrant has
already conceded the second du Pont factor in favor of the
Petitioner (both marks are used for wine).”5
The identity in part of the parties’ goods favors a
finding of likelihood of confusion.6
Channels of Trade and Classes of Purchasers
When the goods are identical, we must assume that the
channels of trade and purchasers are also the same.
Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003)
(“Given the in-part identical and in-part related nature of
the parties’ goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers,

5 Respondent’s brief, p. 10.
6 Because respondent’s “wine” is identical to the “wines” recited
in petitioner’s pleaded registration, we need not also determine
whether such goods are related to petitioner’s other recited
goods, namely, “distilled spirits and potable spirits.” See
Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335,
209 USPQ 986, 988 (CCPA 1981).
Cancellation No. 92051180
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these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade”);
and In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB
1994) (“Because the goods are legally identical, they must
be presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”).
In this case, neither petitioner’s wines nor those of
respondent recite any restrictions as to varietal or price
range; the trade channels in which they are offered; or the
consumers to whom they are marketed. Thus, respondent’s
argument that the trade channels and conditions of sale are
different is misplaced. As noted in the preceding
paragraph, where the goods are identical, we must presume
overlapping trade channels and classes of purchasers.
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The
authority is legion that the question of registrability of
an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed”).
As a result, petitioner’s wines and respondent’s wine
must be presumed to include wines of all varietals and all
Cancellation No. 92051180
8
prices; to be marketed through all channels of trade
customary therefor; and to be made available to all classes
of consumers who may legally purchase them. Accordingly,
this du Pont factor further favors a finding of likelihood
of confusion.
Given the identical nature of the parties’ goods, their
channels of trade and purchasers, we move on to consider
whether the marks are similar or dissimilar in their
entireties as to appearance, sound, connotation and
commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1691
(Fed. Cir. 2005).
The Marks
Turning to our consideration of the marks at issue, we
note initially that, "[w]hen marks would appear on virtually
identical ... [goods or] services, the degree of similarity
[of the marks] necessary to support a conclusion of likely
confusion declines." See Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992), cert. denied, 506 U.S. 1034 (1994). See also
ECI Division of E-Systems, Inc. v. Environmental
Communications Inc., 207 USPQ 443, 449 (TTAB 1980). The
test, under the first du Pont factor, is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
Cancellation No. 92051180
9
similar in terms of their overall commercial impression that
confusion as to the source of the goods offered under the
respective marks is likely to result.
In this case, petitioner’s BABICH mark is similar to
respondent’s mark

in that the word portion of respondent’s mark, i.e., BIBICH,
is nearly identical in appearance to petitioner’s mark.
With regard to the sound of the terms in the marks, we note
that both petitioner’s and respondent’s declarants have
testified regarding the proper pronunciation thereof.
However, we are not persuaded by the mere opinions of the
parties’ declarants regarding the pronunciation of the
wording BABICH and BIBICH. While we acknowledge that both
terms are surnames of individuals associated with the
parties, there is little evidence of record of the extent to
which consumers of the parties’ goods would be aware of the
Cancellation No. 92051180
10
terms’ significance, or whether they would be familiar with
the pronunciation thereof. Furthermore, it is well-settled
that there is no “correct” pronunciation for the terms
comprising a mark. In re Teradata Corporation, 223 USPQ
361, 362 (TTAB 1984) (“as we have said many times, there is
no ‘correct’ pronunciation of a trademark”). Thus, on the
record before us, the terms BABICH and BIBICH, which are
highly similar in appearance and spelling, would appear to
be highly similar in pronunciation.
Thus, petitioner’s BABICH mark and respondent’s BIBICH
and design mark are similar in sight and sound to the extent
that they share highly similar wording. 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 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”). On the other hand,
different features may be analyzed to determine whether the
marks are similar. Price Candy Company v. Gold Medal Candy
Cancellation No. 92051180
11
Corporation, 220 F.2d 759, 105 USPQ 266, 268 (CCPA 1955).
In fact, 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 the ultimate
conclusion rests on a consideration of the marks in their
entireties. In re National Data Corp., 224 USPQ at 751.
In this regard, there are a number of cases that
reflect the principle that if a mark comprises both a word
and a design, the word is normally accorded greater weight
because it would be used by purchasers to request the goods
or services. See In re Appetito Provisions Co., 3 USPQ2d
1553, 1554 (TTAB 1987); and Kabushiki Kaisha Hattori
Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985). In this
case, we find that the word portion of respondent’s mark is
the dominant element thereof because consumers would use it
to call for the goods identified thereby. In so
determining, we do not discount or ignore the design element
in respondent’s mark. The design, identified by respondent
as its family emblem, is prominent in size and distinctive.
Nonetheless, the pictorial elements of the design do not
lend themselves to pronunciation or even ready
identification, and would not be used by consumers to call
for respondent’s goods. Rather, the term BIBICH, displayed
in large, prominent letters below the design, and also
displayed at the top of the design itself, is far more
Cancellation No. 92051180
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likely to be articulated by consumers requesting
respondent’s goods. Further, because the term BIBICH
appears in the design, the design element of the mark serves
to reinforce the term BIBICH as it appears below and thus
draws additional attention to the word portion of
respondent’s mark.
In view of the foregoing, we find that petitioner’s
BABICH mark and respondent’s mark, BIBICH and design, are
more similar than dissimilar in appearance, sound,
connotation and, when viewed as a whole, convey highly
similar overall commercial impressions. As a result, this
du Pont factor favors a finding of likelihood of confusion.
Third-Party Use of Similar Marks
The next factor we consider is the number and nature of
similar marks in use on similar goods. In this regard,
respondent submitted evidence in the nature of eight live
third-party registrations for various CH-formative marks for
wine.7 However, the probative value of this evidence is
very limited because respondent presented no evidence
concerning the extent to which these third-party marks are

7 Cancelled Registration No. 2472813 and the pending and
abandoned application also submitted by respondent are of no
value. See Action Temporary Services Inc. v. Labor Force Inc.,
870 F.2d 1563, 10 USPQ2d 1307, 1309 (Fed. Cir. 1989)(“[A]
cancelled registration does not provide constructive notice of
anything”); and Interpayment Services Ltd. v. Docters & Thiede,
66 USPQ2d 1463 (TTAB 2003)(applications show only that they have
been filed).

Cancellation No. 92051180
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used in commerce. See Palm Bay Imports Inc., 396 F.3d at
1373, 73 USPQ2d at 1693. Moreover, a review of the third-
party marks reveals that none are as similar to the marks at
issue in this case as the marks at issue are to each other.8
Thus, respondent’s evidence does not establish that there is
widespread use of similar marks for wine such that
petitioner’s mark is weak and entitled to only a narrow
scope of protection. This factor, therefore, is at best
neutral or favors a finding of likelihood of confusion.
Actual Confusion
Another du Pont factor briefly discussed by the parties
is the existence or lack of actual confusion. On this
record, we find that petitioner’s slender evidence of actual
confusion to be less than probative.9 On the other hand,
respondent’s mere reliance upon contemporantous use of the
marks in the United States for 6 years similarly is not
probative. In that regard, it has often been recognized
that evidence of actual confusion is very difficult to
obtain. Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101
USPQ2d 1826, 1834 (TTAB 2012). Moreover, it is not

8 The marks include GRGICH HILLS (Registration No. 1362311;
GRGICH HILLS and design (Registration Nos. 1388360 and 2472813);
BACKOVICH (Registration No. 18339950; GIVICH VINEYARDS PREMIUM
WINES EST. 1989 and design (Registration No. 3122501); BASTIANICH
(Registration No. 2898924); SCHLOSS BIEBRICH (Registration No.
1570121); and HELFRICH (Registration No. 3610663).
9 Babich Declaration, para. 51, Exhibit 27; and Pedisich
Declaration, para. 11.

Cancellation No. 92051180
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necessary to show actual confusion in order to establish
likelihood of confusion. See Weiss Associates Inc. v. HRL
Associates Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir.
1990). As a result, this du Pont factor is neutral.
Respondent’s Intent in Adopting Its Mark
Finally, petitioner argues that by virtue of
respondent’s application for the mark BIBICH and design only
after petitioner sent a cease and desist letter to
respondent demanding that it cease use of BIBICH as a mark;
and respondent’s acknowledgment that is was aware of
petitioner and its mark prior to seeking registration of the
mark at issue, respondent acted in bad faith.10
We find, however, that petitioner’s evidence falls
short of establishing that respondent has acted in bad faith
in applying for the mark at issue herein. Cf. L.C.
Licensing Inc. v. Berman, 86 USPQ2d 183, 1891 (TTAB 2008)
(bad faith adoption of a mark is strong evidence that
confusion is likely because an inference may be drawn from
the imitator’s expectation of confusion); Broadway Catering
Corp. v. Carla Inc., 215 USPQ 462, 465 (TTAB 1982) (“One’s
wrongful intent to trade on the trademark or trade name of
another is strong evidence that confusion is likely. Such

10 Babich Declaration, para 45, Exhibit 20; Petitioner’s Notice of
Reliance, Exhibit 29.

Cancellation No. 92051180
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inference is drawn from the imitator’s own expectation of
confusion as to the source of his product”).
As a result, this du Pont factor is neutral.
Conclusion
We have carefully considered all of the testimony
declarations and evidence pertaining to priority of use, the
relevant du Pont factors, as well as all of the parties’
arguments with respect thereto, including any evidence and
arguments not specifically discussed in this opinion.
We conclude that petitioner has established priority of
use as to its BABICH mark and that consumers familiar with
petitioner’s goods under such mark would be likely to
believe, upon encountering respondent’s BIBICH and design
mark for its identical goods, that the parties’ goods
originate with or are associated with or sponsored by the
same entity. In making our determination, we have balanced
the relevant du Pont factors. The factors of the identity
in part of the goods, their trade channels and consumers,
and similarities in the marks weigh strongly in petitioner’s
favor.
DECISION: Based upon our findings above, the petition
for partial cancellation on the ground of priority and
likelihood of confusion is granted. Registration No.
3643087 will be partially cancelled in due course, solely as
to the goods recited in Class 33, namely, “wine.”
Cancellation No. 92051180
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