E & J Gallo Wineryv.Chemistry Spirits, LLC

Trademark Trial and Appeal Board

Sep 4, 2019

91227543 (T.T.A.B. Sep. 4, 2019)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: September 4, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____
E & J Gallo Winery
v.
Chemistry Spirits, LLC
________

Opposition No. 91227543
against Serial No. 86506777
_______

Michael J. Salvatore and Steven M. Weinberg of Holmes Weinberg PC
for E & J Gallo Winery.
Kevin M. Welch of Law Office of Kevin M. Welch
for Chemistry Spirits, LLC.
_______

Before Cataldo, Kuczma and Lynch,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, Chemistry Spirits, LLC, seeks registration on the Principal Register of
the standard character mark BOON identifying “alcoholic beverages, namely,
distilled spirits; edible capsules designed for consumption containing various distilled
spirits” in International Class 33.1

1 Application Serial No. 86506777 was filed on January 19, 2015, based upon Applicant’s
assertion of a bona fide intent to use the mark under Trademark Act Section 1(b), 15 U.S.C.
§ 1051(b).
Opposition No. 91227543
2
Opposer, E & J Gallo Winery, opposes registration on the ground of priority and
likelihood of confusion based on its ownership of four registrations for marks,2
including BOONE’S (in typed or standard characters)3 identifying “wine” in
International Class 33;4 and “alcoholic beverages except beers” in International Class
33.5
In its answer, Applicant denies the salient allegations in the notice of opposition.6
I. The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the involved application. In addition, during their
assigned testimony periods the parties submitted the following testimony and
evidence.
For Opposer:
1. Copies of 485 third-party registrations submitted by notice of reliance;7

2 1 TTABVUE.
3 Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. §2.52, was amended to replace
the term “typed” drawing with “standard character” drawing. A mark depicted as a typed
drawing is the legal equivalent of a standard character mark.
4 Registration No. 1496065 issued July 12, 1988. Second Renewal.
5 Registration No. 4510869 issued April 8, 2014.
Opposer also pleads ownership of Reg. No. 0694649 for the mark identifying
“wine” and Reg. No. 3789860 for the mark BOONE’S FARM (in standard characters)
identifying “wines.”
6 4 TTABVUE. Because Applicant did not pursue its pleaded affirmative defenses by motion
or at trial, they are deemed waived. See, e.g., Harry Winston, Inc. v. Bruce Winston Gem
Corp., 111 USPQ2d 1419, 1422 (TTAB 2014) (pleaded affirmative defenses not pursued in
the brief considered waived).
7 29 TTABVUE.
Opposition No. 91227543
3
2. Applicant’s responses to Opposer’s written discovery requests; Applicant’s
written responses to Opposer’s written discovery requests; Applicant’s
responses to Opposer’s requests for admission; portions of the discovery
deposition of Applicant’s founder, Joshua Held; printouts of the results of
searches from youtube.com and google.com regarding Opposer’s marketing
of its goods under the marks in its pleaded registrations; and printouts from
third-party websites of wineries and distilleries offering wines and distilled
spirits, all submitted by notice of reliance;8 and
3. The testimony declaration of Opposer’s Director-Marketing, Alex Lee,
introducing evidence of use and marketing of Opposer’s pleaded marks on
its goods and the trade channels in which such goods are encountered,
copies of Opposer’s pleaded registrations, and the results of marketing
studies commissioned by Opposer in connection with potential expansion of
its products under the BOONE and THUNDERBIRD marks.9
For Applicant:
1. Dictionary definitions of BOON and BOONE, as well as reference materials
discussing the proper use of apostrophes, submitted by notice of reliance.10

8 30 TTABVUE.
9 31-32 TTABVUE. We note that much of this evidence has been designated as confidential.
In this decision, we will discuss only in general terms evidence found to be confidential. See,
e.g., Noble House Home Furnishings, LLC v. Floorco Enters., LLC, 118 USPQ2d 1413, 1416
n.21 (TTAB 2016).
10 34 TTABVUE.
Opposition No. 91227543
4
Only Opposer filed a brief.11
II. Evidentiary Objection
In its brief, Opposer objects to Applicant’s dictionary and reference work evidence
“on the grounds that such definitions and purported explanations are irrelevant and
lack evidentiary value”12 As a general matter, “the Board is capable of weighing the
relevance and strength or weakness of the objected-to testimony and evidence,
including any inherent limitations,” and keeping in mind “the various objections
raised by the parties” in determining the probative value of objected-to testimony and
evidence. Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121 USPQ2d 1477, 1479
(TTAB 2017).
Thus, we deem the evidence admissible and have accorded it whatever probative
value it merits, keeping Opposer’s objections in mind, and comment as needed on its
probative value elsewhere in the opinion. See Alcatraz Media Inc. v. Chesapeake
Marine Tours Inc., 107 USPQ2d 1750, 1755 (TTAB 2013), aff’d mem., 565 Fed. Appx.
900 (Fed. Cir. 2014); Kohler Co. v. Baldwin Hardware Corp., 82 USPQ2d 1100, 1104
(TTAB 2007).
III. Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1061-62 (Fed. Cir. 2014), cert. denied, 135 S. Ct. 1401, 191 L. Ed. 2d

11 36 TTABVUE.
12 36 TTABVUE 6,
Opposition No. 91227543
5
360 (2015); Lipton Indus., Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185,
187-89 (CCPA 1982) see also, e.g., Bell’s Brewery, Inc. v. Innovation Brewing, 125
USPQ2d 1340, 1344 (TTAB 2017). In order to meet the standing requirement, a
plaintiff need only show that it has a real interest, i.e., a personal stake, in the
outcome of the proceeding, and a reasonable basis for its belief of damage. See Ritchie
v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025-26 (Fed. Cir. 1999); Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir.
2012). A belief in likely damage can be shown by establishing a direct commercial
interest. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.
Cir. 2000).
Opposer’s standing in this proceeding is established by its pleaded registrations,
which the record shows to be valid and subsisting, and owned by Opposer.13
Cunningham, 55 USPQ2d at 1844; Otter Prods. LLC v. BaseOneLabs LLC, 105
USPQ2d 1252, 1254 (TTAB 2012). In addition, because Opposer’s pleaded
registrations are of record, priority is not an issue with respect to the goods identified
in the registrations. Penguin Books Ltd. v. Eberhard, 48 USPQ2d 1280, 1286 (TTAB
1998) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108, 110 (CCPA 1974)).
IV. Likelihood of Confusion
Our determination under Section 2(d), 15 U.S.C. § 1052(d), is based on an analysis
of all of the facts in evidence that are relevant to the factors bearing on likelihood of

13 32 TTABVUE 4, 12-19.
Opposition No. 91227543
6
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Indus., Inc., 135 S. Ct. 1293,
113 USPQ2d 2045, 2049 (2015); see also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Opposer must establish that there is a
likelihood of confusion by a preponderance of the evidence. Centroamericana, S.A. v.
Cerveceria India, Inc., 892 F.2d 1021, 13 USPQ2d 1307, 1311 (Fed. Cir. 1989)
(plaintiff’s burden is to establish the case by a preponderance of the evidence).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods. See Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). Varying
weights may be assigned to each DuPont factor depending on the evidence presented.
Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261
(Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687-88 (Fed. Cir.
1993). The DuPont factors relevant to this proceeding are discussed below.
We will focus our likelihood of confusion analysis on the BOONE’S mark in
Opposer’s pleaded Registration Nos. 1496065 (‘065 Reg.) and 4510869 (‘869 Reg.)
because when that mark is considered vis-à-vis the applied-for mark and identified
goods, it is that mark that is most likely to support a finding of likelihood of confusion.
See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. The nature and similarity or dissimilarity of the goods and the established,
likely-to-continue trade channels.
We now consider the second and third DuPont factors, the similarity or
dissimilarity of the parties’ goods and the parties’ established, likely-to-continue
Opposition No. 91227543
7
trade channels. The second DuPont factor concerns the “similarity or dissimilarity
and nature of the goods or services as described in an application or registration,”
Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d
1157, 1159 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261,
62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Comput. Servs. Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant’s goods are identified
as “alcoholic beverages, namely, distilled spirits; edible capsule designed for
consumption containing various distilled spirits.” The goods in Opposer’s ‘869 Reg.
are identified as “alcoholic beverages except beers.”
Opposer contends that its goods “fully encompass Applicant’s stated goods. Thus,
the goods at issue are overlapping and legally identical.”14 We find that Opposer’s
broadly identified “alcoholic beverages except beers,” encompass, at least, Applicant’s
more narrowly identified “alcoholic beverages, namely, distilled spirits” in the
challenged application. In other words, Applicant’s distilled spirits are subsumed
under the more generally identified alcoholic beverages recited in the ‘869 Reg. See,
e.g., Southwestern Mgmt., Inc. v. Ocinomled, Ltd, 115 USPQ2d 1007, 1025 (TTAB
2015) (With a broad identification of services, “we must presume that the services
encompass all services of the type identified”). As a result, the goods in Applicant’s
application are, in part, legally identical to the goods in the ‘869 Reg. Accordingly,
there is no need for us to further consider the relatedness of these goods. See SquirtCo
v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 938-39 (Fed. Cir. 1983) (holding that a

14 36 TTABVUE 11.
Opposition No. 91227543
8
single good from among several may sustain a finding of likelihood of confusion);
Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986, 988
(CCPA 1981) (likelihood of confusion must be found if there is likely to be confusion
with respect to any item that comes within the identification of goods or services in
the application).
With regard to the ‘065 Reg., Opposer has introduced printouts from the websites
of 18 third-party wineries and distilleries offering, under the same marks, both wines
and distilled spirits.15 This evidence demonstrates public exposure to producers of
wines also producing distilled spirits and marketing them to the public under the
same marks. Opposer further has introduced printed copies of 485 third-party
registrations for marks identifying wines and various distilled spirits.16 Although
these registrations are not evidence that the marks shown therein are in use or that
the public is familiar with them, they nonetheless have probative value to the extent
they serve to suggest that the respective goods are of a kind that may emanate from
a single source under the same mark. See In re Anderson, 101 USPQ2d 1912, 1919
(TTAB 2012); In re Davey Prods. Pty. Ltd., 92 USPQ2d 1198, 1203 (TTAB 2009). The
large number of registrations is particularly persuasive. In view of the marketplace
evidence and the third-party registration evidence, we find Applicant’s goods related
to the goods in the ‘065 Reg.

15 30 TTABVUE 79-181.
16 29 TTABVUE 15-174.
Opposition No. 91227543
9
The third DuPont factor concerns “[t]he similarity or dissimilarity of established,
likely-to-continue trade channels.” Stone Lion Capital v. Lion Capital, 110 USPQ2d
at 1161 (quoting DuPont, 177 USPQ at 567). Inasmuch as the goods identified in the
application and the ‘869 Reg. are, in part, legally identical, we must presume that the
channels of trade and classes of purchasers for these goods are the same. See 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); American Lebanese Syrian Associated Charities Inc. v.
Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
With regard to the ‘065 Reg., as noted above Opposer has introduced printouts
from the websites of 18 third-party wineries and distilleries offering both wines and
distilled spirits for sale at their physical locations and through their internet
websites.17 Applicant has not yet commenced use of its challenged mark.18 Further,
there are no recited restrictions in either Applicant’s or Opposer’s identification of
goods as to their channels of trade. See Octocom, 16 USPQ2d at 1787 (“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.”) (citations omitted). As a result, both Opposer’s goods and Applicant’s goods

17 30 TTABVUE 79-181.
18 30 TTABVUE 9-32.
Opposition No. 91227543
10
are presumed to move in all trade channels customary therefor, and to be available
to all classes of consumers. Evidence establishes that these channels of trade include
the physical locations and corresponding websites of distilleries and wineries, and
therefore overlap.
In view thereof, the DuPont factors regarding the similarity of the goods, channels
of trade, and classes of purchasers favor a finding of a likelihood of confusion.
B. Strength of Opposer’s mark
We next consider the strength of Opposer’s BOONE’S mark in order to evaluate
the scope of protection to which it is entitled. Opposer argues that
Given (a) the extensive consumption of BOONE’S® products by millions
of consumers, (b) their widespread availability in grocery stores,
supermarkets, beverage stores, liquor stores, pharmacies, convenience
stores, restaurants and bars throughout the country, and (c) the
marketing efforts used to continuously promote BOONE’S® products, it
is undisputed that the BOONE’S® marks have achieved widespread
notoriety.19

In determining strength of a mark, we consider both inherent or conceptual
strength, based on the nature of the mark itself, and “fame” or commercial strength.
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476
(TTAB 2014); see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681,
1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).”); In re
Fabfitfun, 127 USPQ2d 1670, 1673-6 (TTAB 2018).

19 35 TTABVUE 18.
Opposition No. 91227543
11
“[T]he strength of a mark is not a binary factor” and “varies along a spectrum from
very strong to very weak.” Palm Bay Imps. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005) (internal
citations omitted). Strength may be measured indirectly by the volume of sales and
advertising expenditures in connection with the goods sold under the mark, and other
factors such as length of time of use of the mark; widespread critical assessments;
notice by independent sources of the goods identified by the marks; and the general
reputation of the goods. Weider Publ’ns, LLC v. D & D Beauty Care Co., 109 USPQ2d
1347, 1354 (TTAB 2014); see also Bose Corp. v. QSC Audio Prods. Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1308 (Fed. Cir. 2002) (recognizing indirect evidence as appropriate
proof of strength).
We begin with the inherent or conceptual strength of Opposer’s mark. Applicant
introduced dictionary definitions of “Boone” as a biographical and geographical name,
including: the U.S. pioneer Daniel Boone, the U.S. singer Pat Boone, and cities in
central Iowa and Northwest North Carolina.20 To the extent Applicant contends that
the mark is primarily merely a surname or geographical term, we note that both
registrations for BOONE’S issued on the Principal Register with no claim of acquired
distinctiveness under Trademark Act Section 2(f), 15 U.S.C. § 1052(f). Cf. Yamaha
Int’l Corp. v. Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir.
1988) (“Where…an applicant seeks a registration based on acquired distinctiveness
under Section 2(f), the statute accepts a lack of inherent distinctiveness as an

20 34 TTABVUE 8-16.
Opposition No. 91227543
12
established fact.”). They are, of course, entitled to the statutory presumptions under
Trademark Act Section 7(b), 15 U.S.C. § 1057(b).
Regarding the commercial strength of its mark, Opposer has introduced largely
confidential evidence of sales volume and revenue since 1959 in numerous retail
outlets of products under the BOONE’S mark.21 Opposer also introduced evidence of
its marketing efforts directed toward products under its BOONE’S mark.22 Opposer’s
sales and marketing numbers are quite substantial. Opposer does not assert that its
mark is famous, and we note that Opposer has not placed these figures in a context
that would prove fame. See Bose Corp. v. QSC Audio Products, 63 USPQ2d 1303, 1309
(Fed. Cir. 2002). However, even these raw numbers of product sales and advertising
expenses are sufficient to show that Opposer’s mark has had a significant degree of
exposure. Opposer further introduced evidence of marketing studies showing
moderate levels of aided awareness among consumers of products under the
BOONE’S mark.23
We find that Opposer’s BOONE’S mark, through long use, national sales, and
marketing efforts, has established a heightened degree of commercial strength.
Opposer’s mark further is registered, and must be accorded all of the presumptions
that are to be accorded a registered mark pursuant to Section 7(b) of the Trademark

21 See generally, 31 TTABVUE; 32 TTABVUE.
22 Id.
23 Id.
Opposition No. 91227543
13
Act, 15, U.S.C. § 1057(b). On this record, Opposer’s BOONE’S mark is therefore
entitled to a broad scope of protection.
C. Similarity of the Marks
Turning to the first DuPont factor, involving the comparison of the marks, we
consider them “in their entireties as to appearance, sound, connotation and
commercial impression.” Palm Bay, 73 USPQ2d at 1691 (quoting DuPont, 177 USPQ
at 567). “The proper test is not a side-by-side comparison of the marks, but instead
‘whether the marks are sufficiently similar in terms of their commercial impression’
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs., 101 USPQ2d at 1721 (citation omitted). The
appropriate emphasis is on the recollection of the average customer, who normally
retains a general rather than a specific impression of trademarks. Spoons Rests., Inc.
v. Morrison, Inc., 23 USPQ2d 1735, 1741 (TTAB 1991) (citations omitted), aff’d mem.
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). See Franklin Mint Corp. v. Master
Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981); Inter IKEA Sys. B.V. v.
Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014).
Additionally, where, as in the case of the pleaded ‘869 Reg., the goods of an
applicant and opposer are in part identical or virtually identical, the degree of
similarity between the marks required to support a finding that confusion likely
declines. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1801
(Fed. Cir. 2018) (quoting In re Viterra Inc., 671 F.3d 1358, 1363, 101 USPQ2d 1905,
1908 (Fed. Cir. 2012)).
Opposition No. 91227543
14
To recap, Applicant’s mark is BOON in standard characters and Opposer’s mark
is BOONE’S in typed or standard characters. The marks are highly similar in
appearance and sound, differing only in the addition of a silent letter “E” and
possessive apostrophe and letter “S” at the end of Opposer’s mark.
As between BOON and BOONE’S we see little viable distinction. To the extent
Applicant’s mark is perceived to be a singular form of BOONE’S, the distinction is
not sufficient to prevent likely confusion. Wilson v. Delaunay, 114 USPQ 339, 341
(CCPA 1957); Chicago Bears Football Club v. 12th Man/Tenn. LLC, 83 USPQ2d
1073, 1077 (TTAB 2007). If the BOONE’S mark is perceived as a possessive form of
BOON, that too is not a sufficient distinction. In re Binion, 93 USPQ2d 1531, 1534
(TTAB 2009); In re Curtice-Burns, Inc., 231 USPQ 990, 992 (TTAB 1986); Winn’s
Stores, Inc. v. Hi-Lo, Inc., 203 USPQ 140, 143 (TTAB 1979). In all important respects,
we find Applicant’s mark highly similar in appearance and sound to Opposer’s mark,
giving the impression of being minor variations of one another.
With regard to Applicant’s evidence of the proper use of apostrophes and its
bearing on the similarity of the marks,24 the Federal Circuit Court of Appeals faced
a very similar argument in In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004). The applicant had argued that “the Board improperly dissected the
two marks in violation of the anti-dissection rule,” in part because the Board gave
little weight to the fact that its mark included the term GASPAR, while the cited
registration used the possessive GASPAR’S. The court disagreed:

24 34 TTABVUE.
Opposition No. 91227543
15
After discounting any commercial impression of JOSE and GOLD,
Chatam is left with GASPAR as the dominant feature of its mark. In
comparison, the dominant feature of the registered mark is GASPAR’S,
which is simply the possessive form of the surname GASPAR. Viewed in
their entireties with non-dominant features appropriately discounted,
the marks become nearly identical. That is, the dominant feature of
Chatam’s mark, GASPAR, is also the dominant feature of the registered
mark, GASPAR’S, albeit in possessive form. Thus, the Board correctly
perceived that GASPAR and GASPAR’S convey a similar appearance,
sound, connotation, and commercial impression.

Id. at 1946-47. See also, Hunt Foods & Indus., Inc. v. Gerson Stewart Corp., 367 F.2d
431, 151 USPQ 350 (CCPA 1966) (likelihood of confusion found between HUNT and
HUNT’S, used on significantly different goods); In re Binion, 93 USPQ2d 1531; 1534
(TTAB 2009) (finding BINION and BINION’S “virtually identical”); Georgia-
Southern Oil Inc. v. Richardson, 16 USPQ2d 1723, 1725 (TTAB 1990) (“The marks
are virtually identical, differing by only a possessive letter ‘s’ in user's mark.”); In re
Curtice-Burns, Inc., 231 USPQ 990, 992 (TTAB 1986) (finding McKENZIE and
McKENZIE’S nearly identical).
With regard to meaning, Applicant’s evidence establishes that BOONE’S is the
possessive of a surname or geographical name Boone, while BOON is “something to
be thankful for; blessing; benefit.”25 We recognize the distinction between the
meanings of these marks. However, not all consumers of the goods under these marks
likely would perceive the difference in meanings deriving from this minor spelling
variation and, even in the event they did, this distinction fails to outweigh the very
high degree of similarity in the marks’ appearance and sound. Similarity in any one

25 34 TTABVUE.
Opposition No. 91227543
16
of these factors is sufficient to support a determination of likelihood of confusion. See
Krim-Ko Corp. v. The Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968)
(“It is sufficient if the similarity in either form, spelling or sound alone is likely to
cause confusion”) In re White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) (“In
appropriate cases, a finding of similarity as to any one factor (sight, sound or
meaning) alone ‘may be sufficient to support a holding that the marks are confusingly
similar”’) (citations omitted)).
For the foregoing reasons, we find that Applicant’s BOON mark and Opposer’s
BOONE’S mark to be far more similar than dissimilar in overall connotation and
commercial impression.
D. Consumer Sophistication
The fourth DuPont factor is the conditions under which and buyers to whom sales
are made. Applicant argues that
consumers of the parties’ goods are likely to exercise a low degree of care
when making purchasing decisions, which further increases the
likelihood of confusion. The Board has held with respect to wines that
likely confusion is measured by purchasers of “not only expensive wines
sold to careful, discriminating wine connoisseurs through fine wine and
spirits stores but also less expensive wines sold to ordinary consumers
through liquor stores, grocery stores, supermarkets, drug stores and the
like.” (citations omitted)26

Because the descriptions of goods are not restricted by price point, we must
presume that the parties offer or intend to offer various alcoholic beverages at all

26 35 TTABVUE 12.
Opposition No. 91227543
17
price points to the full range of usual consumers for such goods.27 Stone Lion, 110
USPQ2d at 1162 (stating that registrability must be decided based on the
identification of goods or services “‘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’”) (quoting Octocom, 6 USPQ2d
at 1787); In re Hughes Furn. Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015). This
includes both more modestly priced alcoholic beverages as well as more expensive
wines and spirits directed toward a more discerning palate. We find that the fourth
DuPont factor is neutral.
E. Evidence of Actual Confusion
Finally, we agree with Opposer’s argument under the eighth DuPont factor that,
as the Federal Circuit has noted, it is unnecessary to show actual confusion to
establish a likelihood of confusion. See, e.g., Herbko Int’l, 64 USPQ2d at 1380; Weiss
Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842-43 (Fed. Cir.
1990); Schering-Plough Health Care Prods. Inc. v. Ing-Jing Huang, 84 USPQ2d 1323,
1328 (TTAB 2007). “A showing of actual confusion would of course be highly
probative, if not conclusive, of a high likelihood of confusion. The opposite is not
necessarily true, however. The lack of evidence of actual confusion carries little
weight.” Majestic Distilling, 65 USPQ2d at 1205. Therefore, we find that the eighth
DuPont factor is neutral.

27 For this reason, we are not concerned with evidence of record indicating that Opposer’s
goods under its BOONE’S mark are modestly priced. In any event, Applicant has not yet
commenced use of its BOON mark.
Opposition No. 91227543
18
V. Balancing the factors
We have considered all of the arguments and evidence of record, including any not
specifically discussed herein, and all relevant DuPont factors. Applicant’s standard
character mark, BOON, is similar in appearance, sound and commercial impression
to Opposer’s pleaded mark, BOONE’S, which is entitled to a broad scope of protection
primarily due to evidence of its commercial strength. Moreover, the goods at issue are
legally identical in part as to Opposer’s ‘869 Reg. and related on the evidence of record
as to Opposer’s ‘065 Reg., and they are marketed through the same trade channels to
the same consumers. The remaining DuPont factors are neutral. We find that
Applicant’s mark so resembles Opposer’s pleaded mark in the ‘869 Reg. and ‘065 Reg.
as to be likely to cause confusion or to cause mistake or to deceive.
Decision: The opposition to Application Serial No. 86506777 is sustained and
registration is refused.