Geo. G. Sandeman Sons & Co.v.Narmada Winery LLC

Trademark Trial and Appeal BoardSep 12, 2013

No. 91198088 (T.T.A.B. Sep. 12, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB Mailed: September 12, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Geo G. Sandeman Sons & Co. v. Narmada Winery LLC _____ Opposition No. 91198088 to application Serial Nos. 85082021 and 85082022 _____ Ryan A. McGonigle and John Rannells of Baker and Rannells PA for Geo G. Sandeman Sons & Co. Clifford D. Hyra of Symbus Law Group LLC for Narmada Winery LLC. ______ Before Bucher, Cataldo and Masiello, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: On July 10, 2010, applicant, Narmada Winery, LLC, filed application Serial Nos. 850820211 and 850820222 under Section 1(a) of the Trademark Act to register on the Principal Register the following marks: 1 May 23, 2007 is asserted as the date of first use of the mark anywhere and in commerce. 2 June 20, 2008 is asserted as the date of first use of the mark anywhere and in commerce. Color is not claimed as a feature of the mark. The mark consists of a peacock above the word “Narmada,” which in turn is above the word “Winery.” Opposition No. 91198088 2 NARMADA WINERY (standard characters, “Winery” disclaimed); and (“Winery” disclaimed), both reciting “wines” in International Class 33 as their identified goods. Registration has been opposed by Geo. S. Sandeman Sons & Co. (“opposer”). As grounds for opposition, opposer asserts that it is the owner of the following mark, previously used and registered on the Principal Register: reciting “sherry wine” in International Class 33 as the identified goods.3 Opposer argues in its amended notice of opposition that it has used the mark in its pleaded registration in connection with the above listed goods since long prior to the filing date of applicant’s involved applications; that applicant’s marks, when used on applicant’s goods so 3 Registration No. 0090925 issued on April 1, 1913. Color is not claimed as a feature of the mark. Sixth renewal. Opposition No. 91198088 3 resemble opposer’s mark for its recited goods as to be likely to cause confusion, to cause mistake, or to deceive under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d); and that opposer will be damaged thereby. In addition, opposer asserts that applicant’s marks are geographically deceptive under Section 2(a), 15 U.S.C. § 1052(a), and primarily geographically deceptively misdescriptive under Section 2(e)(3), 15 U.S.C. § 1052(e)(3). Applicant’s amended answer consists of a general denial of the allegations contained in the amended notice of opposition.4 Evidentiary Objections Opposer has objected to applicant’s First, Fourth, Seventh, Ninth, Eleventh, Twelfth, and Fifteenth Notices of Reliance. Most of opposer’s objections relate to relevance and probative value. However, we see no reason to discuss each objection, as none of them is outcome determinative. Rather, we have considered the entire record in making our decision, keeping in mind opposer’s various objections, and have accorded whatever probative value the subject evidence merits. See Krause v. Krause Publications Inc., 76 USPQ2d 4 In addition, applicant asserted certain affirmative defenses but did not pursue them at trial and further waived them in its brief (p. 39, n. 5). Accordingly, they will be given no consideration. Opposition No. 91198088 4 1904, 1907 (TTAB 2005) (“[w]here we have relied on testimony to which respondent objected, it should be apparent to the parties that we have deemed the material both admissible and probative to the extent indicated in the opinion.”). The Record The record in this case consists of the pleadings and the files of the involved applications. In addition, opposer filed the following evidence by notice of reliance: 1. Certified status and title copy of its pleaded Registration No. 90925; 2. Excerpts from certain of applicant’s responses to Interrogatory Nos. 3, 5, 7-8, 13-15 and 17; 3. Excerpts from certain of applicant’s responses to Requests for Admission Nos. 3-5, and 8-10; 4. Copies of official records downloaded and printed from the U.S. Alcohol and Tobacco Tax and Trade Bureau’s (“TTB”) database, namely, copies of COLA Registry Label Approvals for applicant’s goods bearing applicant’s marks; 5. Copies of printouts downloaded and printed from applicant’s Internet website; 6. Copies of printouts from Internet websites related to the Indian wine industry and the Narmada River, namely, printouts downloaded and/or printed from: (a) Wine Producing Regions in India; (b) Narmada River; (c) Indian Grape Processing Board (Ministry of Food Processing Industries); Opposition No. 91198088 5 (d) Harvesting Wine Grapes in India; (e) Narmada River Basin: An Overview (map); (f) Madhya Pradesh Grape Processing Industrial Policy 2006; (g) India Rivers (Map); (h) India's Longest Rivers (Map); (i) Insight Guides: India (2011 Apa Publications UK Ltd); (j) Oxford Atlas of the World (18th ed. Oxford Univ. Press, 2011); and (k) India: DK Eyewitness Travel Guide (2011 Dorling Kindersley Limited). Applicant, for its part, submitted the following evidence by notice of reliance: 1. Copy of applicant’s response to Interrogatory No. 3; 2. Copies of excerpts from printed publications and printouts from Internet websites, namely (a) 1000 Great Everyday Wines from The World’s Best Wineries (2011 DK Publishing); (b) The Everything Guide to Wine (2010 F+W Media, Inc.); and (c) Brittania Online Encyclopedia; 3. Copies of dictionary definitions from The American Heritage Desk Dictionary (5th ed. 2013, Houghton Mifflin Harcourt Publishing Company); 4. Excerpts from (a) opposer’s responses to certain Requests for Admission, Request Nos. 3-5, 12 and 14; and (b) opposer’s response to certain Interrogatories, namely, Interrogatory Nos. 2, 4-5, 8, and 14-15; 5. Copies of excerpts from printed publications and printouts from Internet websites, namely (a) India, The Opposition No. 91198088 6 Pristine Beauty; (b) World River Map; (c) Principal Rivers of the World; and (d) DK Eyewitness Travel India (2011 Dorling Kindersley Limited); 6. Copies of printouts from Internet websites, namely (a) Search Results for Narmada in the United States; (b) Get a People Search Report on Narmada; (c) White Pages; 7. Copies of (a) third party Registration No. 2755142 for the mark ARMADOR for “wines;” (b) the website of Chile- based Odfjell Vineyards; and (c) TTB COLA Registry Label Approvals for ARMADOR; 8. Copies of printouts of various pages downloaded from opposer’s Internet website; 9. Copies of a TTAB document for a Request for Initial Sixty-Day Extension of Time to Oppose Odfjell Vineyards S.A.’s ARMADOR mark; 10. Copies of reviews for Narmada Winery downloaded and printed from Yelp.com; 11. Copies of printed publications, namely, (a) The American Heritage Desk Dictionary (2013 Houghton Mifflin Harcourt Publishing Company); (b) The Oxford English Dictionary (1989, Vol. X, Oxford Univ. Press); (c) Random House Webster's College Dictionary (2001 Random House); and (d) Webster's New Explorer College Dictionary (2007 Merriam- Webster); Opposition No. 91198088 7 12. Copies of printouts from Internet websites, namely: (a) Armida.com; (b) Melandrose.com; and (c) a TTB COLA Registry Label Approval for ARMIDA; 13. Copies of printouts from an Internet website, namely, Blue Ridge Wine Way; 14. Copies of printouts from an Internet website, namely, Swirl, Sip, Snark; 15. Copies of third-party registrations for the marks (a) ARCATA (Reg. No. 2805972); (b) ALBADA and design (Reg. No. 3372023); (c) ARIANA (Reg. No. 3642267); (d) ARMAN (Reg. No. 3817479); (e) ARUNDA (Reg. No. 3194649); (f) AYMARA (Reg. No. 3119558); and (g) TAMADA (Reg. No. 3761760). Opposer and applicant filed main briefs on the case. Opposer’s Standing and Priority of Use Because opposer has properly made its pleaded registration of record, and further because opposer has asserted a plausible likelihood of confusion claim, opposer has established its standing to oppose registration of applicant’s 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). Moreover, because opposer’s pleaded registration is of record, Section 2(d) priority is not an issue in this case as to the mark and goods covered thereby. Opposition No. 91198088 8 See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).5 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, even those not specifically discussed in this decision. 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 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). The Goods, Channels of Trade, and Classes of Consumers In the present case, opposer’s goods, identified as “sherry wine,” are encompassed and subsumed by applicant’s more broadly identified goods, namely, “wines.”6 Because we must presume that applicant’s “wines” include “sherry wine,” the parties’ goods are legally identical for purposes of our likelihood of confusion determination. 5 In addition, applicant concedes opposer’s priority. (brief, p. 15, fn 1). 6 Applicant concedes that the goods are “related.” Id. Opposition No. 91198088 9 Where the goods in the involved applications or pleaded registration are broadly identified as to their nature and type (as is the case herein), such that there is an absence of any restrictions as to the channels of trade and no limitation as to the classes of purchasers, it is presumed not only that in scope the identification of goods encompasses all the goods of the nature and type described therein, but that the identified goods are offered in all channels of trade which would be normal therefor, and that they would be purchased by all potential buyers thereof. See Interstate Brands Corp. v. McKee Foods Corp., 53 USPQ2d 1910 (TTAB 2000). Because there are no restrictions as to channels of trade or classes of purchasers recited in the involved applications or the pleaded registration, again we must presume that applicant’s “wines” are offered in all channels of trade normal therefor, including those channels of trade in which opposer’s “sherry wine” is encountered, and to the same classes of consumers. As a result, these du Pont factors favor a finding of likelihood of confusion. Strength of Opposer’s Mark Turning to the strength of opposer’s ARMADA mark, we observe that while opposer does not argue that its mark is famous, it nonetheless has been registered for a century. Further, the term “armada” is defined as “a fleet of Opposition No. 91198088 10 warships.”7 There is no evidence of record that the term “armada” possesses any meaning or significance in relation to opposer’s goods. As such, ARMADA appears to be arbitrary as applied to the goods identified in opposer’s registrations. Thus, the ARMADA mark appears to be conceptually strong. On the other hand, applicant submitted evidence8 of a single third party’s use of the mark ARMIDA WINERY and design for wine. However, the extent to which this third party has used the ARMIDA WINERY and design mark is not clear from the record. In addition, applicant submitted evidence9 in the nature of copies of the following eight third-party registrations for marks for wine and other alcoholic spirits: ARMADOR (Reg. No. 2755142); ARCATA (Reg. No. 2805972); ALBADA and design (Reg. No. 3372023); ARIANA (Reg. No. 3642267); ARMAN (Reg. No. 3817479); ARUNDA (Reg. No. 3194649); AYMARA (Reg. No. 3119558; and TAMADA (Reg. No. 3761760). However, the probative value of the registration evidence is very limited because applicant presented no evidence concerning the extent to which the marks in these third-party registrations are used in commerce. See Palm 7 Applicant’s 3rd Notice of Reliance, The American Heritage® Desk Dictionary, (5th ed. 2013). 8 Applicant’s 12th Notice of Reliance. 9 Applicant’s 7th, 12th and 15th Notices of Reliance. Opposition No. 91198088 11 Bay Imports Inc., 73 USPQ2d at 1693. Moreover, a review of the third-party registrations reveals that none of the marks are as similar to the marks at issue in this case as the marks at issue are to each other. Thus, applicant’s evidence, consisting of use of the mark ARMIDA WINERY by a single third party, does not establish that there is widespread use of similar marks for wine such that opposer’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. The Marks Thus, we turn to the similarity or dissimilarity of the marks. In making our determination under the first du Pont factor, we consider whether applicant’s marks and opposer’s mark are similar or dissimilar when viewed in their entireties in terms of appearance, sound, connotation and overall commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot, 73 USPQ2d at 1692. The test, under this 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 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. Because the involved goods would Opposition No. 91198088 12 be marketed to the general public, our focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). In this case, opposer’s mark is and applicant’s marks are NARMADA WINERY and Turning first to a comparison of applicant’s NARMADA WINERY mark and opposer’s ARMADA mark depicted above, we observe that the marks are similar in appearance inasmuch as the term NARMADA encompasses the entirety of opposer’s ARMADA mark. The disclaimed term WINERY in applicant’s mark clearly is, at best, highly descriptive of applicant’s goods and contributes little to the mark’s overall impression. Thus, the distinctive term NARMADA in applicant’s mark is nearly identical in appearance to opposer’s ARMADA mark. Furthermore, it is well-settled that there is no “correct” Opposition No. 91198088 13 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 NARMADA and ARMADA, which are highly similar in appearance and spelling, would appear to be highly similar in pronunciation. With regard to connotation, as discussed above the term ARMADA connotes a large fleet of warships. Opposer and applicant agree that the term NARMADA in applicant’s NARMADA WINERY mark identifies one of the seven holy rivers in India, while applicant contends in addition that the term is also the name of the mother of applicant’s founder, and a surname in the United States.10 Thus, the marks have different meanings. However, it is not at all clear on this record the extent to which any of the asserted meanings of NARMADA would be apparent to consumers in the U.S. Accordingly, we take into consideration the possibility that consumers may perceive NARMADA as a coined term having no meaning. Because it is not clear whether consumers would be aware of the meanings of the term NARMADA, the difference in meanings between the marks may not be as significant as the similarities in appearance and sound. 10 Opposer’s 2nd Notice of Reliance. Applicant’s 1st and 2nd Notices of Reliance. Opposition No. 91198088 14 Based upon the foregoing, we find that opposer’s ARMADA mark and applicant’s NARMADA WINERY mark are highly similar in appearance and sound, and different in meaning. However, similarity in any one of the elements of sound, appearance, meaning, or commercial impression 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”); and 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)). Therefore, even if the marks have different meanings, it does not necessarily mean there is no likelihood of confusion. In this case, we find that the strong similarities in the marks’ appearance and sound outweigh the differences in meaning and that, when viewed as a whole, the marks convey highly similar commercial impressions. Turning next to a comparison of opposer’s mark with applicant’s mark Opposition No. 91198088 15 based upon the above discussion we find that the wording ARMADA and NARMADA WINERY to be highly similar in appearance and sound, although different in meaning. The stylization of the wording in the marks is different; however, neither mark features such highly stylized lettering that the differences between them would be sufficient to distinguish the marks. In addition, applicant’s mark includes the stylized design of a peacock. 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 Opposition No. 91198088 16 Candy Company v. Gold Medal Candy 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 applicant’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 peacock design element in applicant’s mark. The peacock design is relatively prominent in size and appears distinctive as applied to the goods. Nonetheless, the pictorial design would not be used by consumers to call for applicant’s goods. Rather, the term NARMADA, displayed in large, prominent letters below the design, and to a lesser extent Opposition No. 91198088 17 the term WINERY, is far more likely to be articulated by consumers requesting applicant’s goods. In view of the foregoing, we find that opposer’s ARMADA mark and applicant’s mark, NARMADA WINERY and design, are more similar than dissimilar in appearance, sound, and 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 as to the marks in both of the involved applications. 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 applicant’s mere reliance upon contemporaneous use of the marks in the United States for five and six years, respectively, 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 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. Opposition No. 91198088 18 Summary In view of the foregoing, we find that opposer has established its standing to bring this proceeding; its priority of use; and, upon balancing the du Pont factors of which there is evidence of record, that a likelihood of confusion exists between its mark and applicant’s marks, as used in connection with the parties’ legally identical goods. DECISION: The opposition is sustained on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), and registration to applicant is refused as to both applications. In view thereof, we need not determine opposer’s claims brought under Section 2(a), 15 U.S.C. § 1052(a), and Section 2(e)(3), 15 U.S.C. § 1052(e)(3).

Geo. G. Sandeman Sons & Co. v. Narmada Winery LLC