DevRonn Enterprises, LLC

Trademark Trial and Appeal BoardMay 11, 2021

88729962 (T.T.A.B. May. 11, 2021)

This Opinion is not a Precedent of the TTAB Mailed: May 11, 2021 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re DevRonn Enterprises, LLC _____ Serial No. 88729962 _____ Pejman Yedidsion of Brooks Acordia IP Law, PC, for DevRonn Enterprises, LLC. Christopher M. Nunley, Trademark Examining Attorney, Law Office 104, Zachary Cromer, Managing Attorney. _____ Before Zervas, Bergsman and Shaw, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: DevRonn Enterprises, LLC (“Applicant”) has filed an application pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), for registration on the Principal Register of the following mark for “wine” in International Class 33:1 1 Application Serial No. 88729662, filed on December 17, 2019. The application claims first use and first use in commerce on October 1, 2019. Page references to the application record are to the downloadable .pdf version of the USPTO's Trademark Status & Document Retrieval (TSDR) system. References to the briefs and orders on appeal are to the Board's TTABVUE docket system. Serial No. 88729962 - 2 - The application describes the mark as “consist[ing] of the stylized word ‘MOSS’ in gold placed against a black background. Six gray lines extend over the ‘O’ in moss to a stylized fretboard also in gray. The color white is not claimed as a feature of the mark and merely serves as background and/or transparent areas.” “The color(s) gold, black, and gray is/are claimed as a feature of the mark.” The Examining Attorney refused registration pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark is likely to cause confusion with the following standard character marks registered to different owners on the Principal Register for: ● MOSSVINEYARDS (Registration No. 4250388) for “wine” in International Class 33; and ● MOSS (Registration No. 5189662) for “Beer; Beer, ale and Lager” in International Class 32. Serial No. 88729962 - 3 - After the refusal was made final, Applicant appealed and filed a request for reconsideration. The Board suspended the appeal and remanded the application to the Examining Attorney for consideration of the request for reconsideration. The Examining Attorney denied the request for reconsideration, the appeal resumed and Applicant and the Examining Attorney filed briefs. We affirm the refusal to register. Our determination under Section 2(d) of the Trademark Act is based on an analysis of the probative facts in evidence that are relevant to the factors bearing on a likelihood of confusion. See In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (“DuPont”); see also Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). We consider each DuPont factor that is relevant or for which there is argument and evidence of record. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). “Not all of the [DuPont] factors are relevant to every case, and only factors of significance to the particular mark need be considered.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1719 (Fed. Serial No. 88729962 - 4 - Cir. 2012) (quoting In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259 (Fed. Cir. 2010)). We first consider the Examining Attorney’s refusal based on the registered mark MOSSVINEYARDS for goods identical to the goods identified by Applicant. If we conclude there is a likelihood of confusion with respect to this registered mark, we need not address the Examining Attorney’s likelihood of confusion refusal with regard to the registered mark MOSS for different goods. a. Similarity of the Goods and Trade Channels We evaluate the relatedness of the respective goods based on their identifications in the subject application and cited registration. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); see also Octocom Sys. Inc. v. Hous. Comput. Servs. 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.”). Applicant’s and Registrant’s goods – “wine”– are identical, and Applicant does not contend otherwise. Because the goods described in the application and the cited registration are identical, we presume that the channels of trade and classes of purchasers are the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) Serial No. 88729962 - 5 - (legally identical goods are presumed to travel in same channels of trade to same class of purchasers); In re Yawata Iron & Steel Co., 403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical goods, the channels of trade and classes of purchasers are considered to be the same); United Glob. Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB 2014); Am. Lebanese Syrian Associated Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011). The DuPont factors regarding the similarity of the goods, trade channels and classes of consumers hence weigh in favor finding a likelihood of confusion. b. Number and Nature of Similar Marks in Use on Similar Goods Before we compare the marks, we address Applicant's argument in its brief that the cited mark is “diluted,”2 based on nine third-party registrations for marks containing the term “MOSS” for various beverages. The Federal Circuit has held that evidence of the extensive registration and use of a term by others for similar goods can show the term’s weakness. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. v. Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). Third-party registrations and uses may “show that the common term [between two marks] has an accepted meaning in a given field and that marks containing the term have been registered and used for related goods because the remaining portions of the mark may be sufficient to distinguish the marks as a whole from one another.” Promark v. GFA 2 Applicant’s brief at p. 13, 6 TTABVUE 14. Serial No. 88729962 - 6 - Brands, Inc., 114 USPQ2d 1232, 1244 (TTAB 2015); see also In re Box Solutions Corp., 79 USPQ2d 1953, 1955 (TTAB 2006) (“Third-party registrations can be used in the manner of a dictionary definition to illustrate how a term is perceived in the trade or industry”). Applicant has not offered any third-party use evidence and relies only on registration evidence to support weakness. Applicant ’s evidence therefor does not demonstrate actual consumer exposure to other marks containing or consisting of “MOSS,” because in this regard, “[t]he probative value of third-party trademarks depends entirely upon their usage.” See Palm Bay Imps., 73 USPQ2d at 1693. With regard to the third-party registrations, three are for unrelated goods – non- alcoholic beverages – and Applicant has not offered evidence or an explanation as to why they are relevant to the issues before us. See i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (disregarding third-party registrations for goods in other classes where the proffering party “has neither introduced evidence, nor provided adequate explanation to support a determination that the existence of I AM marks for goods in other classes ... support[s] a finding that registrants’ marks are weak with respect to the goods identified in their registrations”); In re Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009) (third-party registrations for goods that appear to be in fields which are far removed from the goods at issue are of limited probative value). Two of such registrations are owned by the same entity. The remaining six registrations are: ● Reg. No. 5026622 for MOSS ROXX for alcoholic beverages except beers; Serial No. 88729962 - 7 - ● Reg. No. 5124958 for JMC MC MOSS CREEK MOONSHINE THE KINDRED SPIRIT HERITAGE 1903 and Design for distilled spirits; ● Reg. No. 4960236 for MOSSWOOD for whiskey; ● Reg. No. 5963845 for MOSSBURN for alcoholic beverages, except beers; whisky; spirits; ● Reg. No. 3332252 for MOSSBACK for wine; and ● Reg. No. 5438932 for M MOSS MILL BREWING CO. and Design for beer. We may also consider the cited MOSS registration for “Beer; Beer, ale and Lager.” Only three of these seven registrations identify, or cover, wine as goods. MOSSWOOD, MOSSBURN and MOSSBACK have different commercial impressions than MOSS. MOSSWOOD and MOSSBURN have no apparent meaning in English and include terms in addition to MOSS. “Mossback” is defined as “a large sluggish fish (such as a largemouth bass)” or “an extremely old-fashioned or reactionary person : FOGY.”3 We find the remaining four third-party registrations – none of which are for wine – lacking to demonstrate the conceptual weakness of “moss” for wine. The sixth DuPont factor therefore is neutral in the likelihood of confusion analysis. c. Similarities of the Marks We now consider whether Applicant’s and Registrant’s marks are similar when viewed in their entireties in terms of appearance, sound, connotation and commercial 3 https://www.merriam-webster.com/dictionary/mossback (accessed May 7, 2021). We take judicial notice of this definition. The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Serial No. 88729962 - 8 - impression. See Stone Lion Capital Partners, 110 USPQ2d at 1160 (quoting Palm Bay Imps., 73 USPQ2d at 1689). The test under this DuPont factor is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar that confusion as to the source of the goods offered under the respective marks is likely to result. See i.am.symbolic, 123 USPQ2d at 1748; Coach Servs. Inc., 101 USPQ2d at 1721. The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). Because the goods at issue are wine, the average purchaser is an ordinary consumer who purchases or drinks wine. Also, “when marks would appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). While we must consider the marks in their entireties, it is entirely appropriate to accord greater importance to the verbal or more distinctive elements in the marks than to the non-verbal or less distinctive elements in determining whether the marks are similar. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“[T]here 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 consideration of the marks in their entireties.”). Serial No. 88729962 - 9 - The marks are more similar than dissimilar “in their entireties as to appearance, sound, connotation and commercial impression,” because they both contain the identical term MOSS. Palm Bay Imps., 73 USPQ2d at 1691 (quoting DuPont, 177 USPQ at 567). Indeed, the first term in a mark such as Registrant’s is often its dominant portion. Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t 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 Imps., 73 USPQ2d at 1692; Century 21 Real Estate 23 USPQ2d at 1700. In addition to being first, MOSS is the dominant portion of Registrant’s mark because the term that follows it, VINEYARDS, is at least merely descriptive of a feature of Registrant’s wine. “Vineyard” is defined in the Merriam-Webster Dictionary as “a field where grapes are grown,”4 and, of course, wine is made from grapes. The evidence also reflects that “vineyard” is used to mean “winery.” See references to “Fennwood Vineyard,”5 “Schram Vinyards”6 and “Tarula Vineyards.7 “It is settled that descriptive terms are entitled to less weight in our analysis. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive 4 https://www.merriam-webster.com/dictionary/vineyard (accessed on May 6, 2021). We take judicial notice of this definition. 5 March 7, 2020 Office Action, TSDR 6. 6 September 21, 2020 Office Action, TSDR 7. This webpage also states, “We feature some flagship beers from our brewery, Schram Haus, which are available at the vineyard.” Id. at TSDR 6. 7 Id., TSDR 9, Serial No. 88729962 - 10 - component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re Nat’l Data, 224 USPQ at 752); In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (BINION’S, not disclaimed word ROADHOUSE, is dominant element of BINION’S ROADHOUSE); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). We have not ignored the design component of Applicant ’s mark, which according to Applicant includes a stylized fretboard of a guitar, as well as the word MOSS.8 However, here, as in many cases, the shared term MOSS is more important than the design, because it will be used to call for the goods and more clearly and readily identifies the source of Applicant’s goods than the design. See e.g. Viterra, 101 USPQ2d at 1911 (“[T]he verbal portion of a word and design mark likely will be the dominant portion”); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987) (holding that “if one of the marks comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services” and “because applicant’s mark shares with registrant’s mark that element responsible for creating its overall commercial impression, the marks are confusingly similar”). Furthermore, because Registrant’s mark is in standard character format, it could be displayed in any lettering style, color or font, and Registrant would be free to display its mark in a font much as Applicant displays the term MOSS in its mark, heightening the likelihood of confusion. In re Viterra, 101 8 Applicant’s brief at p. 7, 6 TTABVUE 8. Serial No. 88729962 - 11 - USPQ2d at 1909; Citigroup, 98 USPQ2d at 1258-59; In re Strategic Partners Inc., 102 USPQ2d 1397, 1399 (TTAB 2012). While the design elements in Applicant’s mark aids in distinguishing the marks when considered side-by-side, that is not the test. Rather, the test is whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the goods offered under the marks is likely to result. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) (quoting Coach Servs., 101 USPQ2d at 1721). Here, the marks are sufficiently similar given that they share the identical, apparently arbitrary term MOSS, which is the first term in Registrant’s mark and dominant feature of both marks and will be used to call for Applicant’s and Registrant’s goods, such as in a wine store or in a restaurant or bar.9 Indeed, those familiar with Registrant’s wine may, upon encountering Applicant’s mark, believe that Registrant has adopted a variation of its mark also for wine, but with a design element. Upon consideration of the foregoing, we remain unpersuaded by Applicant’s arguments that the marks are dissimilar. As we noted above, “when marks would appear on virtually identical goods … the degree of similarity necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate, 23 USPQ2d at 1700; see also In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010) The DuPont 9 For this reason, we are not persuaded by Applicant’s argument that “in the wine industry … the design of wine labels is the predominant factor influencing purchasing decisions. The label is often the only resource a buyer has for evaluating the wine before purchasing it.” Applicant’s brief at p. 9, 6 TTABVUE 10. Serial No. 88729962 - 12 - factor regarding the similarity of the marks hence favors a finding of likelihood of confusion. d. No Actual Confusion Turning to Applicant’s argument about the lack of actual confusion, it is not only unsupported by any evidence but also is irrelevant. We have not heard from Registrant on the question of actual confusion and hence cannot gauge whether or the extent to which there has been an opportunity for confusion to occur if it were likely to occur. See Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“The absence of any showing of actual confusion is of very little, if any, probative value here because (1) no evidence was presented as to the extent of ETF’s use of the VITTORIO RICCI mark on the merchandise in question in prior years ....”); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). Moreover, a lack of evidence of actual confusion carries little weight in an ex parte case such as this. Majestic Distilling, 65 USPQ2d at 1205. “[I]t is unnecessary to show actual confusion in establishing likelihood of confusion.” Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). This factor is neutral. e. Conclusion With regard to Registration No. 4250388 for the mark MOSSVINEYARDS, we have found Applicant’s and Registrant’s goods to be identical and presume the trade channels and purchasers to also be identical. In addition, we have found the marks Serial No. 88729962 - 13 - to be similar. We therefore conclude that Applicant’s mark for wine would likely be confused with Registrant’s MOSSVINEYARDS mark also for wine. Because we have found confusion is likely with regard to Registration No. 4250388 for the mark MOSSVINEYARDS, we need not reach the question of likelihood of confusion with regard to Registration No. 5189662 for the mark MOSS for other goods. Decision: The refusal to register under Section 2(d) is affirmed.