Constellation Brands, Inc.v.Ronny Gjerstad

Trademark Trial and Appeal BoardNov 2, 2007

No. 91160537 (T.T.A.B. Nov. 2, 2007)

Mailed: November 2, 2007 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Constellation Brands, Inc. v. Ronny Gjerstad, dba Taylors Ridge Vineyard _____ Opposition No. 91160537 to application Serial No. 76517026 filed on May 27, 2003 _____ John M. Rannells of Baker and Rannells PA for Constellation Brands, Inc. Ronny Gjerstad pro se. ______ Before Quinn, Hairston and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Ronny Gjerstad, dba Taylors Ridge Vineyard, filed an intent-to-use application for the mark TAYLORS RIDGE VINEYARD, in standard character format, for goods ultimately identified as “wine.”1 Constellation Brands, Inc. opposed the registration of applicant’s mark on the ground of priority of use and likelihood of confusion. Opposer claimed ownership of the 1 Application Serial No. 76517026, filed May 27, 2003. Applicant disclaimed the exclusive right to use the word “vineyard.” THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91160537 2 following registrations comprising the name “Taylor,” in whole or in part, for wines: 1. Registration No. 0651282 for the mark TAYLOR, issued September 3, 1957, under the provisions of Section 2(f) of the Trademark Act of 1946 (Sections 8 and 15 affidavits accepted and acknowledged; second renewal);2 2. Registration No. 2648355 for the mark TAYLOR NEW YORK RHINE WINE, issued November 12, 2002; 3. Registration No. 2641879 for the mark TAYLOR CALIFORNIA CELLARS, issued October 29, 2002; 4. Registration No. 2641878 for the mark TAYLOR NEW YORK PORT, issued October 29, 2002; and, 5. Registration No. 2641877 for the mark TAYLOR CALIFORNIA CELLARS BURGUNDY, issued October 29, 2002. Accordingly, opposer alleged that applicant’s mark TAYLORS RIDGE VINEYARD, when used in connection with wine, so resembles opposer’s registered marks as to be likely to cause confusion. Applicant, in his answer, denied the salient allegations of the notice of opposition. The Record By operation of Trademark Rule 2.122, 37 CFR §2.122, the record includes the pleadings and the application file for applicant’s mark. The record also includes the following testimony and evidence: 2 On September 24, 2007, opposer’s third renewal was granted and its Section 8 declaration of use was accepted. Opposition No. 91160537 3 A. Opposer’s evidence. 1. Opposer’s notices of reliance on the following items: A. News articles from printed publications in general circulation in the United States for the purpose of demonstrating the asserted renown and fame of opposer’s marks, the goods marketed by opposer, and the channels of trade through which opposer’s wine has been distributed; and, B. Certified copies showing that opposer’s pleaded registrations are subsisting and owned by opposer; and, 2. The testimony deposition of William Encherman, the President of Canandaigua Wine Company, a division of opposer, with attached exhibits. B. Applicant’s evidence. During his testimony period, applicant filed a three- page unsworn personal statement with the caption “Trial testimony of Ron Gerstad.” In an order dated January 24, 2007, the Board granted opposer’s motion to strike applicant’s trial testimony, and struck applicant’s statement. Applicant did not introduce any other testimony or evidence, nor did applicant file a brief on the case. Opposition No. 91160537 4 Standing Because opposer has properly made its pleaded registrations of record, opposer has established its standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). Priority Because opposer’s pleaded registrations are of record, Section 2(d) priority is not an issue in this case. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Likelihood Of Confusion Our determination of likelihood of confusion under Section 2(d) of the Lanham Act is based on an analysis of all the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). The relevant du Pont factors are discussed below. A. Fame We turn first to the factor of fame, because this factor plays a dominant role in cases featuring a famous or Opposition No. 91160537 5 strong mark. Kenner Parker Toys Inc. v. Rose Arts Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). Famous marks are accorded more protection precisely because they are more likely to be remembered and associated in the public mind than a weaker mark. Id. Indeed, “[a] strong mark . . . casts a long shadow which competitors must avoid.” Id. A famous mark is one “with extensive public recognition and renown.” Id. See also Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). In determining whether a mark is famous, we may consider sales, advertising expenditures, and the length of time the mark has been used. Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002); Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811, 1817 (TTAB 2005). This information, however, must be placed in context (e.g., a comparison of advertising figures with competitive products, market share, reputation of the product, etc.). Bose Corp. v. QSC Audio Products Inc., supra. The evidence supporting the fame of opposer’s TAYLOR marks for wines includes opposer’s continuous use of its marks since 1880 (with the exception of prohibition),3 3 Encherman Dep., p. 12. Opposition No. 91160537 6 opposer’s extensive sales of TAYLOR wines, and opposer’s market share. From September 1993 through September 2005, opposer sold over 26 million cases of TAYLOR wine for gross sales of almost $560 million wholesale.4 Over that 11-year period, opposer sold a yearly average of almost 2.4 million cases of TAYLOR wine for gross sales of over $50 million wholesale. By virtue of its sales, TAYLOR LAKE COUNTRY wine is the largest selling New York branded table wine in the United States and it is within the top ten in the “value” wine category. TAYLOR CALIFORNIA CELLARS wine is the sixth largest selling “value” wine brand in the United States. TAYLOR dessert wines are the second largest selling brand of dessert wines sold in the United States.5 On the other hand, because opposer’s wines are primarily “value” or “popular priced” wines, opposer does not heavily advertise its products. Opposer’s marketing is directed to wholesalers and retailers.6 The news and magazine articles introduced by opposer are not persuasive and have little probative value regarding 4 Encherman Dep., p. 15-18; Exhibit 2. Mr. Encherman testified that the approximate value of the retail sales of opposer’s wine is twice the wholesale sales. Therefore, over the eleven-year period, opposer’s retail sales are approximately $1 billion. (Encherman Dep., p. 17). 5 Encherman Dep., p. 18. Mr. Encherman testified that “value” wine is low cost wine. (Encherman Dep., p. 11). 6 Encherman Dep., pp. 18-19. Opposition No. 91160537 7 the fame or renown of opposer’s TAYLOR marks because the articles do not discuss the sales and marketing of opposer’s wines or the renown of opposer’s marks. The following representative articles are illustrative of the nature of the articles that have been introduced: The obituary of Walter Taylor in the New York Times (October 1, 1934) News of Food: Spareribs “Come to Our Barbecue” Barbecued spareribs are included in a new attractively illustrated sixteen page booklet, “Come to Our Barbecue.” It is available free from the Taylor Wine Company. New York Times (June 13, 1955) Vintage Year Delights U.S. Wine Makers * * * The big producers in New York State are Taylor Wine Company, Inc., Widmer’s Wine Cellars; Great Western; Gold Seal Vineyards, Inc.; and the Putnam Wine Company. New York Times (November 1, 1959) The Wine Revolution: American Jug Is “In” Cost-conscious American wine drinkers, frustrated and confused by ups and downs in prices, are changing their attitudes and buying habits . . . * * * Opposition No. 91160537 8 From New York State, the country’s second-largest wine producer, comes this report from Joseph Swarthout, President of Taylor Wine Company: “This year’s harvest was very good both in quality and quantity - - in fact, better than we anticipated.” U.S. News & World Report (December 29, 1975). Columbia’s new script: Pinball * * * What is more, Hirschfield, who also considered Schenely Industrial and Taylor Wine as takeover possibilities, says that Gottlieb could grow at 10% to 15% (sic) annual rate over the next several years. Business Week (December 27, 1976). Is Bully Hill Being Bullied? Usually wine lovers argue about what’s in a bottle, not what’s on its label. Not so in upstate New York. There a bunch of people who run the Taylor Wine Company but aren’t Taylors are in the midst of a legal feud with a Taylor who runs a vineyard outside Hammondsport named Bully Hill. The Washington Post (August 3, 1978). The Great California Wine Tasting Dispute; The California Wine Test Dispute; Tempers Flare Over Taylor’s Advertising Claims Addy Bassin, owner of MacArthur Liquors, and one of the best known wine merchants in town is furious. The Taylor Wine Company, now owned by Coca-Cola, has Opposition No. 91160537 9 done what he considers the inexcusable, and some others in the wine business consider questionable. Taylor is using television commercials and full-page newspaper advertisements based on a taste test conducted with their new California Cellars wines and those of four other vintners. According to the ad Taylor wines take three firsts and one second place. “I won’t carry that stuff in my store because of those ads,” Bassin says. “I think they’re misleading and deceptive.” The Washington Post (October 19, 1978). In addition, there were numerous financial stories regarding the purchase of opposer by The Coca-Cola Company. “In view of the extreme deference that is accorded to 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, we think that it is the duty of a plaintiff asserting that its mark is famous to clearly prove it.” Blue Man Productions Inc. v. Tarmann, supra at 1819. Although opposer has shown that its marks have achieved a high degree of recognition, the evidence is insufficient to support a finding that the marks are famous. Thus, although we find that opposer’s TAYLOR marks are strong marks, entitled to a broad scope of protection or exclusivity of use, they are not famous marks entitled to the extensive breadth of protection accorded truly famous marks. Opposition No. 91160537 10 B. The similarity or dissimilarity and nature of the goods as described in the application and opposer’s registrations. The goods are identical (i.e., wine). C. The similarity or dissimilarity of established, likely- to-continue trade channels and buyers to whom sales are made. It is well settled that in determining the issue of likelihood of confusion, we must consider the description of goods set forth in the relevant application and registrations, regardless of what the record may reveal as to the particular nature of the goods at issue, their trade channels, or the classes of purchasers to whom sales are made. CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983); Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). Where the goods are identical, we must presume that the goods move in all channels of trade that are appropriate for such goods and that they may be sold to all classes of purchasers. Miles Laboratories v. Naturally Vitamin Supplements, 1 UPSQ2d 1445, 1450 (TTAB 1987). Therefore, we conclude that applicant’s and opposer’s wines move in the same channels of trade and are sold to the same classes of consumers, including connoisseurs and ordinary consumers. Opposition No. 91160537 11 D. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. We now turn to the du Pont factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., supra. Where, as in this case, the marks appear on identical goods, the degree of similarity between the marks that is necessary to support a finding of likelihood of confusion declines. Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). While not visually identical, opposer’s marks and applicant’s mark are substantially similar in appearance. The names “Taylor” and “Taylors” are virtually identical. The addition of the letter “s” to applicant’s “Taylors” name in the mark TAYLORS RIDGE VINEYARD does little to distinguish it from registrant’s TAYLOR marks. See In re Home Federal Savings and Loan Association, 213 USPQ 68, 69 (TTAB 1982) (“That applicant’s mark ‘TRAN$FUND’ has a dollar sign where registrant’s mark has a letter ‘S’ is inconsequential in a comparison of the sound, appearance, and meaning of the two marks”); Goodyear Tire & Rubber Co. v. Dayco Corp., 201 USPQ 485, 488 n.1 (TTAB 1978) (“Fast- Finder” with a hyphen is the equivalent of “Fastfinder” without a hyphen); In re Strathmore Products, Inc., 136 USPQ Opposition No. 91160537 12 81, 82 (TTAB 1962) (GLISS’N is simply a contraction of GLISTEN and therefore they have the same meaning). The names “Taylor” and “Taylors” are central to both opposer’s marks and applicant’s mark, respectively, because they are the first words consumers see when encountering the marks. Therefore, the names “Taylor” and “Taylors” are more likely to have a greater impact on purchasers and be remembered by them. Presto Products Inc. v. Nice-Pak 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. Vueve Clicquot Ponsardin, supra at 1692 (“Vueve” is the most prominent part of the mark VUEVE CLICQUOT because “vueve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of America, supra (upon encountering the marks, consumers must first notice the identical lead word). Moreover, applicant’s mark, TAYLORS RIDGE VINEYARD, encompasses opposer’s entire TAYLOR mark. Likelihood of confusion is often found where the entirety of one mark is incorporated within another. The Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194 UPSQ 419, 422 (CCPA 1977) (“When one incorporates the entire arbitrary mark of another into a composite mark, inclusion in the composite mark of a significant, nonsuggestive element will not necessarily Opposition No. 91160537 13 preclude a likelihood of confusion”); Johnson Publishing Co. v. International Development Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY for cosmetics and EBONY DRUM for hairdressing and conditioner). We also find that the marks are aurally similar because applicant’s mark and opposer’s marks share the names “Taylor” or “Taylors” as their first word. With respect to the connotation and commercial impression of the marks, there is nothing in the record to indicate that the names “Taylor” or “Taylors” have any meaning in the field of wine. Thus, “Taylor” and “Taylors” will be perceived as names. Consumers familiar with opposer’s well-known TAYLOR wines upon encountering applicant’s TAYLORS RIDGE VINEYARD may believe that applicant’s wine is an addition to opposer’s TAYLOR line of wines from opposer’s (i.e., Taylor’s) Ridge Vineyard. Thus, we find that opposer’s TAYLOR marks and applicant’s TAYLORS RIDGE VINEYARD engender similar commercial impressions. We reach the same conclusion with respect to opposer’s TAYLOR NEW RHINE WINE, TAYLOR CALIFORNIA CELLARS, TAYLOR NEW YORK PORT, and TAYLOR CALIFORNIA CELLARS BURGUNDY marks. The addition of the descriptive words in opposer’s other registered marks do not distinguish opposer’s marks from appoicant’s mark. Opposition No. 91160537 14 In view of the foregoing, opposer’s TAYLOR marks and applicant’s TAYLORS RIDGE VINEYARD are similar in appearance, sound, meaning and commercial impression. E. Balancing the factors. In weighing the likelihood of confusion factors present in this case, we find that opposer’s TAYLOR marks are strong marks, that the goods at issue are identical, that the goods move in the same channels of trade and are sold to the same classes of consumers, and that the marks are similar. Accordingly, applicant’s TAYLORS RIDGE VINEYARD mark, when used in connection with wine, so resembles opposer’s TAYLOR marks for wine as to be likely to cause confusion. Decision: The opposition is sustained and registration to applicant is refused.