Bell's Brewery, Inc.v.Bell Hill Vineyards, LLC

Trademark Trial and Appeal Board

Dec 18, 2009

No. 91177980 (T.T.A.B. Dec. 18, 2009)

Mailed: December 18, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board

______

Bell’s Brewery, Inc.
v.
Bell Hill Vineyards, LLC
_____

Opposition No. 91177980
to application Serial No. 76662206
filed on June 27, 2006
_____

Sarah M. Robertson of Dorsey & Whitney LLP for Bell’s
Brewery, Inc.

Bell Hill Vineyards, Inc. pro se.
______

Before Kuhlke, Walsh and Ritchie, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Bell Hill Vineyards, seeks registration of
the mark BELL HILL in standard characters for goods
identified in the application as “packaged wine” in
International Class 33.1

1 Serial No. 76662206, filed June 27, 2006. The application is
based on an allegation of a bona fide intention to use the mark
in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§1151(b).

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91177980
2

Opposer, Bell’s Brewery, Inc., opposed registration of
applicant’s mark on the following grounds: (1) that, as
used in connection with applicant’s goods, the mark so
resembles opposer’s registered mark in connection
with “beer, including porter and ale, stout and malt
liquor,” as to be likely to cause confusion, to cause
mistake, or to deceive under Trademark Act Section 2(d), 15
U.S.C. §1052(d); (2) BELL HILL is primarily geographically
descriptive of the location at which the goods will be
produced under Trademark Act Section 2(e)(2), 15 U.S.C.
1052(e); and (3) applicant, in prosecuting its application,
committed fraud on the U. S. Patent and Trademark Office in
claiming that BELL HILL had no geographic significance.
By its amended answer applicant denied the salient
allegations.2
EVIDENTIARY ISSUES
As a preliminary matter, opposer objects to the
testimony of applicant’s witness, David A. Lose, on the
bases that: (1) “as a former paid employee of Bell Hill,
Lose cannot be considered to be an independent expert”; and

2 In addition, applicant, under the caption “Affirmative
Defenses” made both amplifications of its denials and pleaded the
affirmative defense of unclean hands. However, inasmuch as
applicant did not address this defense in its brief it is waived
and we give it no consideration.

Opposition No. 91177980
3
(2) “the subject matter of Lose’s ‘expert’ testimony is
irrelevant to the trademark issues raised in this case.”
Br. p. 29. Applicant responds that the “extent of Mr.
Lose’s relationship with Bell Hill was a minor consulting
job in early 2006 in advising what type of Federal and State
licenses to pursue [and he] had nothing to do with selection
of the name BELL HILL or label approval with the Department
of Treasury, ATTB.” Br. p. 33. In addition, applicant
argues that his testimony is “relevant to the factual issue
of the relationship of geographic brand names and the bottle
contents of wine products [and] a purchaser’s belief as to
the geographic origin of the wine bearing the mark BELL
HILL.” Br p. 34.
First, an expert witness’s bias goes to the weight and
not the admissibility of the testimony. DiCarlo v. Keller
Ladders, Inc., 211 F.3d 465, 468 (8th Cir. 2000). See also
29 Fed. Prac. & Proc. Evid. §6266 (1st ed.). We find that
under the circumstances Mr. Lose is not unduly biased and
the objection is overruled on that basis. However, the
Board has reviewed the testimony in conjunction with the
objections based on relevancy and accorded it appropriate
probative value.
EVIDENCE OF RECORD
The evidence of record consists of the pleadings
herein; the file of the opposed application; opposer’s
Opposition No. 91177980
4
status and title copy of its Registration No. 2749090 for
the mark BELL’s and design, submitted under testimony;
opposer’s notice of reliance on various printed
publications; opposer’s testimony deposition, with exhibits,
of Larry Bell, opposer’s founder and owner; applicant’s
testimony depositions, with exhibits, of Julia Martelli,
applicant’s owner and manager, and David A. Lose, a winery
and brewery records consultant presented as an expert
witness; applicant’s notices of reliance on Larry Bell’s
discovery deposition, certain other discovery responses, and
official records;3 and opposer’s rebuttal notice of reliance
on various official records and discovery responses.
PRIORITY/STANDING
Because opposer has made its pleaded registration of
record and has shown that the registration is valid and
subsisting and owned by opposer, opposer has established its
standing to oppose registration of applicant’s mark and its
priority is not in issue. See King Candy Co., Inc. v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Accordingly, we turn to the first claim under Section
2(d) and the issue of likelihood of confusion.

3 The requests for production of documents and responses are not
properly of record and have not been considered. Trademark Rule
2.120(j)(3)(ii); TBMP §704 (2d ed. rev. 2004).
Opposition No. 91177980
5
LIKELIHOOD OF CONFUSION
Our likelihood of confusion determination under Section
2(d) 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 and 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).
Opposer’s pleaded registration is for the mark BELL’S
in stylized form with a design element. This registration
issued on August 12, 2003 for goods identified as “beer,
including porter and ale, stout and malt liquor” in
International Class 32.4 Opposer presented evidence and
argument on the factors of the similarity of the marks, the

4 Opposer also included its pleaded application Serial No.
77243262, filed July 31, 2007, for the mark BELL’S in standard
character form for “wines” stating that it “filed that
application based upon a natural expansion of the use of its
BELL’S Trademark into a related class of goods and a bona fide
intent to use the mark in commerce.” Amended Pleading ¶ 2.
Inasmuch as the filing date of this application is after
applicant’s filing date of June 27, 2006 and opposer has not
pleaded or proven prior use of this standard character mark with
wine, we only consider it for the stated purpose in the pleading,
namely, to lend support for opposer’s position that wine is a
natural extension of beer. Moreover, opposer did not plead
common law rights based on use of the word BELL’S by itself.
Although there are some examples in the record of labels where
BELL’S appears apart from the design element in the registration,
the testimony does not provide information as to when those
particular labels and packaging were used. In addition, based on
the record opposer changed its name to Bell’s in 2005. Bell
Test. p. 28. However, opposer did not plead trade name use. In
view of these deficiencies in the record and pleading, we
restrict our analysis to opposer’s registered mark BELL’S and
design.

Opposition No. 91177980
6
relatedness of the goods, channels of trade, classes of
purchasers and the strength of its mark.
We begin with the factor of the strength of opposer’s
mark because it “plays a dominant role in cases featuring a
famous or strong mark [and] [f]amous or strong marks enjoy a
wide latitude of legal protection.” Kenner Parker Toys Inc.
v. Rose Art Industries Inc., 963 F.2d 350, 22 USPQ2d 1453,
1456 (Fed. Cir. 1992). See also Recot Inc. v. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). “[T]he
fame of a mark may be measured indirectly, among other
things, by the volume of sales and advertising expenditures
of the goods traveling under the mark, and by the length of
time those indicia of commercial awareness have been
evident.” Bose Corp. v. QSC Audio Products, Inc., 293 F.3d
1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002).
Opposer has used the mark on beer since at least 1985
and its gross revenues have risen steadily.5 The brand is
promoted in stores, print advertisements, on opposer’s
website, in press releases to beer publications and in local
events for new releases of beer products. Various beer-
related associations and organizations have ranked BELL’S
beer among the highest rated beers in the United States and
worldwide. BELL’S beers have been referenced in articles
published in various print media, including “Denver Rocky

5 The exact figures were submitted under seal.
Opposition No. 91177980
7
Mountain News,” the “Chicago Tribune” and “The New York
Times.” While BELL’S beer is not available nationwide, its
current distribution includes several states.
We acknowledge the record shows a devoted following for
BELL’S beer products and BELL’S has received high reviews
from organizations that review beer products. However, the
record evidence does not show such extensive public exposure
to rise to the level of strength such that it plays a
dominant role in the determination. Lacoste Alligator S.A.
v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009) (“Because
of the extreme deference that we accord a famous mark in
terms of the wide latitude of legal protection it receives,
and the dominant role fame plays in the likelihood of
confusion analysis, it is the duty of the party asserting
that its mark is famous to clearly prove it”); Leading
Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901
(TTAB 2007).
This brings us then to our consideration of the
similarities between opposer’s and applicant’s goods,
channels of trade and classes of purchasers. We must make
our determinations under these factors based on the goods as
they are recited in the application and registration,
respectively. See 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
Opposition No. 91177980
8
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 sales of the goods are directed.”); and In re Elbaum,
211 USPQ 636 (TTAB 1981).
Applicant’s goods, as identified, are “packaged wine”
in International Class 33 and opposer’s goods, as
identified, are “beer, including porter and ale, stout and
malt liquor” in International Class 32.
Opposer argues that wine and beer are related goods and
submitted under testimony excerpts from third-party websites
showing wine and beer offered under the same mark. See Bell
Test. pp. 55, 57 Exh. No. 30.
We find that beer and wine are somewhat related and the
record shows at least some consumer exposure to wine and
beer being marketed under the same mark. However, this
record does not establish that it is common practice for
these goods to emanate from the same source.6
Given the lack of restrictions in the identifications
of goods, we must presume that the parties’ goods travel
through all ordinary trade channels, which would include for

6 While opposer cites to prior decisions where beer and wine have
been found to be related, it is incumbent on opposer to establish
this fact based on the evidence presented in its case.
Opposition No. 91177980
9
both liquor stores, grocery stores, bars and restaurants.
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); and Octocom, 16 USPQ2d at
1783. Similarly, these goods would be offered to the same
consumers.
Applicant’s arguments centered on the differences
between its and opposer’s actual channels of trade ignore
well established case law requiring that the comparison of
the goods is based on how the identifications read in the
involved application and opposer’s registration.
Applicant argues that the goods are of some quality and
the purchasers of the parties’ respective wine and beer
would be sophisticated. We reiterate that the
identifications have no such restrictions and we must
consider the lowest level of sophistication for these goods.
Therefore, the overlap in class of customers for the goods,
as identified, includes the general public in addition to
the more sophisticated connoisseur of craft beers and wine.
Thus, as to the general public, while these are not impulse
transactions, the sophistication of the consumer is not very
high. With regard to the more discerning wine and beer
consumers, while we may infer a higher level of scrutiny in
their purchasing, there is not sufficient evidence of record
upon which to make a determination that this factor would
outweigh the other du Pont factors. Moreover, even
Opposition No. 91177980
10
sophisticated buyers are not immune from confusion. In re
Decombe, 9 USPQ2d 1812 (TTAB 1988).
We turn then to a consideration of the marks. With
respect to the involved marks, we examine the similarities
and dissimilarities of the marks in their appearance, sound,
meaning, and commercial impression. Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The test is
not whether the marks can be distinguished when subjected to
a side-by-side comparison, but rather whether the marks are
sufficiently similar in their entireties that confusion as
to the source of the goods offered under the respective
marks is likely to result.
As noted above, we make our comparison based on the
BELL’S and design mark in opposer’s pleaded registration.
However, given the dominance of the word BELL’S in that
registration, consideration of the word BELL’S in standard
characters would not alter the outcome of this decision.
Opposer’s basic position is that the marks share the
word BELL. While it is true that applicant’s mark begins
with this word, which can serve to increase similarity, see
Palm Bay Imports, 73 USPQ2d at 1689, in this case we read
applicant’s mark as a unitary phrase BELL HILL which has the
connotation and commercial impression of a place. This is
very different from opposer’s mark that evokes bells when
Opposition No. 91177980
11
viewed in concert with its design element or simply a last
name when viewing the word element by itself, as the
dominant element in opposer’s mark. We find the overall
connotation and commercial impressions quite different and
sufficient to outweigh any similarities in appearance or
sound based on the common element BELL.
Because the marks are so different, the du Pont factor
of the dissimilarities of the marks outweighs the other
relevant du Pont factors discussed above. In view thereof,
we conclude that there is no likelihood of confusion between
applicant’s mark BELL HILL and opposer’s mark BELL’S and
design. 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”). See also, In re E.I. du Pont de
Nemours & Co., USPQ at 567 (“[E]ach [of the thirteen
elements] may from case to case play a dominant role”).
In view of the above, opposer has not proven its claim
of likelihood of confusion under Section 2(d) of the
Trademark Act.
PRIMARILY GEOGRAPHICALLY DESCRIPTIVE
We next consider opposer’s claim under Section 2(e)(2)
of the Trademark Act. The test for determining whether a
term is primarily geographically descriptive is whether (1)
the term in the mark sought to be registered is the name of
Opposition No. 91177980
12
a place known generally to the public, and (2) the public
would make a goods/place association, that is, believe that
the goods or services for which the mark is sought to be
registered originate in that place. See In re Societe
Generale des Eaux Minerals de Vittel S.A., 824 F.2d 957, 3
USPQ2d 1450 (Fed. Cir. 1987) (hereinafter Vittel); In re JT
Tobacconists, 59 USPQ2d 1080 (TTAB 2001); University Book
Store v. University of Wisconsin Board of Regents, 33 USPQ2d
1385 (TTAB 1994); and In re California Pizza Kitchen, Inc.,
10 USPQ2d 1704 (TTAB 1988). If the goods do in fact emanate
from the place named in the mark, the goods/place
association can be presumed. In re Carolina Apparel, 48
USPQ2d 1542 (TTAB 1998). One exception to that presumption
is if “the place named in the mark is so obscure or remote
that purchasers would fail to recognize the term as
indicating the geographical source of the goods.” Vittel, 3
USPQ2d at 1451. The determination of the goods/place
association is made not in the abstract, but rather in
connection with the goods or services with which the mark is
used and from the perspective of the relevant public for
those goods. See In re MCO Properties Inc., 38 USPQ2d 1154
(TTAB 1995) (FOUNTAIN HILLS geographically descriptive where
relevant public for applicant’s service of developing real
estate includes people considering purchasing real property
in Fountain Hills, Arizona).
Opposition No. 91177980
13
The evidence establishes that there is a road named
Bell Hill and applicant derived the mark from this road.
See Martelli Test. p. 13 (“Q. And why did you pick Bell
Hill? A. It was a name of a road that we turn off to get
to our vineyard and it was something that the local people
were familiar with.”) Beyond that there is not sufficient
evidence to establish that Bell Hill designates a specific
geographic region or location other than this local road.
The handful of references in marketing materials or menus
provided by opposer are not sufficient to establish that
Bell Hill is the geographic designation of a specific region
or location.7
In contrast, applicant’s evidence shows that there is
no such geographic designation in their area listed in the
Geographic Names Information Systems, a database maintained
by the U.S. Board on Geographic Names, within the U.S.
Geological Survey in the Department of the Interior.8
Martelli Test. Exh. 3; App. Second Not. Rel. Exh. 2.

7 For example, opposer introduced a webpage from a third-party
winery that includes the following description of its vineyard:
“The vineyard is located on the Bell Hill bench of Lake County
just south of Kelseyville.” Martelli Test. Exh. M2. Applicant
testified that it is not aware of a place called “Bell Hill
Bench” and points to the third party’s label which shows the wine
as coming from the “Kelseyville Bench.” App. Second Not. Rel.
Exh. 1. Moreover, even if there were such a place called “Bell
Hill Bench” by the locals this would be simply too remote of a
geographic reference to bar registration under Section 2(e)(2).

8 Applicant’s arguments that BELL HILL is not a recognized
appellation or viticultural area are not relevant. In cases
involving claims of mere descriptiveness under Section 2(e)(1) of
Opposition No. 91177980
14
We find that BELL HILL as the name of a road (or even
the local reference to a topographical rise) is so obscure
or remote that purchasers of applicant’s wine would
typically fail to recognize the term as indicating the
geographical source of applicant’s goods. In re Brouwerij
Nacional Balashi NV, 80 USPQ2d 1820 (TTAB 2006).
These facts are distinguished from those in Fountain
Hills. Fountain Hills involved real estate services for the
town of Fountain Hills which were directed to prospective
purchasers of real estate in Fountain Hills. The involved
geographic designation was the name of a town not an
insignificant road. Further, the real estate services
pertained specifically to the town and all potential
purchasers would be aware of the significance of the
geographic designation. Here, the wine can be sold
nationwide and although some local purchasers buying the
wine may know of the local road Bell Hill, that is not
enough to make it geographically significant and transform
it from being an obscure or remote reference. See Vittel,

the Trademark Act, “[t]he fact that the term ‘coastal’ is not an
appellation or a viticultural area ... does not raise a genuine
issue of material fact with respect to the issue of mere
descriptiveness inasmuch as opposer need only prove that
applicant’s proposed mark describes a feature, quality, purpose,
characteristic, etc. of the goods.” Callaway Vineyard & Winery
v. Endsley Capital Group Inc., 63 USPQ2d 1919, 1923 (TTAB 2002).
Similarly, for primarily geographically descriptive claims, an
opposer need only prove that the place named is known generally
to the public and the public would make a goods/place
association.

Opposition No. 91177980
15
supra. In view thereof, opposer has not proven its claim of
primarily geographically descriptive under Section 2(e)(2)
of the Trademark Act.
FRAUD
Fraud in the procurement of a registration occurs when
an applicant knowingly makes a false, material
misrepresentation with the intent to deceive the U. S.
Patent and Trademark Office (USPTO). In re Bose Corp., 580
F.3d 1240, 91 USPQ2d 1938 (Fed. Cir. 2009); Entbridge Inc.
v. Excelerate Energy LP, 92 USPQ2d 137 (TTAB 2009). The
evidence of deceptive intent must be clear and convincing
and there is no fraud if a false misrepresentation is
occasioned by an honest misunderstanding or inadvertence
without a willful intent to deceive. Id.
In view of our findings as to the remoteness of the
geographic reference of Bell Hill, applicant did not commit
fraud when it represented to the USPTO that Bell Hill did
not have a geographic significance. Moreover, opposer did
not present evidence of applicant’s intent to deceive. In
view thereof, opposer has not proven its claim of fraud.
Finally, opposer asserts that “Bell Hill’s defense of
this case is colored by Bell Hill’s lack of candor about the
geographic meaning of BELL HILL and the extent to which it
has consulted with an attorney in this case.” Reply Br. p.
8. Presumably, opposer is presenting this argument to
Opposition No. 91177980
16
attack applicant’s credibility at trial. In short, we find
nothing in the record to undermine applicant’s credibility.
For example, opposer asserts that despite the fact that
applicant “admits that BELL HILL is the name of a lane and a
low topographical rise close to Bell Hill’s vineyard”
applicant made contrary assertions in its brief that there
is no feature named Bell Hill and in its responses to
opposer’s requests for admissions 10 and 11 denied that Bell
Hill is the name of street.” Reply Br. p. 8. Applicant
denied and admitted the following requests for admission:
10. Bell Hill in the Bell Hill Designation refers
to a street, landmark or other geographic feature
in or around which Applicant produces the goods
specified in the Application. Denied.

11. Bell Hill describes the area in or around
which Applicant produces the goods specified in
the Application. Denied.

13. Bell Hill is the name of a road in
Kelseyville, Lake County, California. Admitted.

Request No. 10 can be read to imbue all options with
the designation “geographic feature” which applicant denies.
Applicant without hesitation admits the more narrowly
defined request that it is the name of a road. This simply
reveals applicant’s position in this proceeding that Bell
Hill does not have geographic significance. In addition,
while the grapes are grown in a vineyard near Bell Hill
road, the production of applicant’s goods, wine, occurs at a
winery that is not located on Bell Hill road.
Opposition No. 91177980
17
Decision: The opposition is dismissed on all claims.