Kysela Pere et Fils, Ltd.

Trademark Trial and Appeal BoardNov 2, 2010

No. 77575580 (T.T.A.B. Nov. 2, 2010)

Mailed: November 2, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE __________ Trademark Trial and Appeal Board __________ In re Kysela Pere et Fils, Ltd. __________ Serial No. 77575580 __________ Adrienne White of WRB-IP LLP for Kysela Pere et Fils, Ltd. Laurie Ann Mayes, Trademark Examining Attorney, Law Office 101 (Ronald R. Sussman, Managing Attorney). __________ Before Seeherman, Walters and Bergsman, Administrative Trademark Judges. Opinion by Walters, Administrative Trademark Judge: Kysela Pere et Fils, Ltd. has filed an application to register the standard character mark HUGUES BEAULIEU on the Principal Register for “wine,” in International Class 33.1 The examining attorney has issued a final refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. 1052(d), on the ground that applicant’s mark so resembles the previously registered marks shown below, owned by 1 Serial No. 77575580, filed September 22, 2008 based on use in commerce, alleging first use and use in commerce as of March 1, 1995. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77575580 2 Diageo Chateau & Estate Wines Company, that, if used on or in connection with applicant’s goods, it would be likely to cause confusion or mistake or to deceive. Registration No. Mark Goods 1159373 [Issued 6/30/1981; Renewed; Section 15 affidavit acknowledged] “Wines,” in International Class 33 2552264 [Issued 3/26/2002; Sections 8 & 15 affidavits accepted and acknowledged, respectively] Words: SINCE 1900 BV CLONE 4 BEAULIEU VINEYARD SIGNET COLLECTION Disclaimer: "SINCE 1900" and "VINEYARD" and "SIGNET COLLECTION" Translation: The English translation of "BEAULIEU" is "beautiful place." Description: The lining of the letters "BV" in the drawing is a feature of the mark and is not intended to indicate color. “Alcoholic beverages, namely wines,” in International Class 33 3035408 [Issued 12/27/2005] BEAULIEU VINEYARD Disclaimer: VINEYARD Translation: The English translation of "BEAULIEU" is "beautiful place." “Alcoholic beverages, namely, wines,” in International Class 33 Serial No. 77575580 3 3067923 [Issued 3/14/2006] Words: BEAULIEU VINEYARD AUTHENTIC SINCE 1900 SINCE 1900 MCM SINCE 1900 Disclaimer: "VINEYARD" and "AUTHENTIC SINCE 1900" and "SINCE 1900" and "SINCE 1900" Translation: The English translation of "BEAULIEU" is "beautiful place." Description: The mark consists of a seal containing the image of a winery and vineyard encircled by the words SINCE 1900 MCM SINCE 1900, enclosed in a decorative square design, to the left of which appear the words BEAULIEU VINEYARD AUTHENTIC SINCE 1900. “Alcoholic beverages, namely, wines,” in International Class 33 3067924 [Issued 3/14/2006] Words: BEAULIEU VINEYARD AUTHENTIC SINCE 1900 SINCE 1900 MCM SINCE 1900 Disclaimer: "VINEYARD" and "AUTHENTIC SINCE 1900" and "SINCE 1900" and "SINCE 1900" Translation: The English translation of "BEAULIEU" is "beautiful place." Description: The mark consists of a red seal with contrasting text containing the image of a winery and “Alcoholic beverages, namely, wines,” in International Class 33 Serial No. 77575580 4 vineyard encircled by the words SINCE 1900 MCM SINCE 1900, enclosed in a decorative square design, to the left of which appear the words BEAULIEU VINEYARD AUTHENTIC SINCE 1900. Color: The color red is claimed as a feature of the mark. 3178253 [Issued 11/28/2006] Disclaimer: VINEYARD Translation: The English translation of "BEAULIEU" is "beautiful place." “Alcoholic beverages, namely, wines,” in International Class 33 3026764 [Issued 12/13/2005] Words: BEAULIEU VINEYARD BV COASTAL ESTATES Disclaimer: VINEYARD and ESTATES Translation: The foreign wording in the mark translates into English as "beautiful place." “Alcoholic beverages, namely, wines,” in International Class 33 3451426 [Issued 6/17/2008] Words: SIGNET COLLECTION BEAULIEU VINEYARD BV SINCE 1900 Disclaimer: "VINEYARD", "SINCE", "1900" and "COLLECTION" Translation: The foreign wording in the mark “Alcoholic beverages, namely, wines,” in International Class 33 Serial No. 77575580 5 translates into English as "beautiful place." Applicant has appealed. Both applicant and the examining attorney have filed briefs. We affirm the refusal to register. We focus our comments on the issue of likelihood of confusion with respect to the following cited registrations, which are the most relevant because the marks therein are the most similar among the cited registrations to applicant’s mark: Registration No. Mark Goods 1159373 [Issued 6/30/1981; Renewed; Section 15 affidavit acknowledged] “Wines,” in International Class 33 3035408 [Issued 12/27/2005] BEAULIEU VINEYARD Disclaimer: VINEYARD Translation: The English translation of "BEAULIEU" is "beautiful place." “Alcoholic beverages, namely, wines,” in International Class 33 3178253 [Issued 11/28/2006] Disclaimer: VINEYARD Translation: The English translation of "BEAULIEU" is "beautiful place." “Alcoholic beverages, namely, wines,” in International Class 33 Introduction Applicant contends there is no likelihood of confusion because the marks engender distinctly different Serial No. 77575580 6 connotations and commercial impressions, stating that its mark, HUGUES BEAULIEU, will be perceived as the name of a person, whereas, BEAULIEU in the registered marks is likely to be perceived as the phrase “beautiful place.” Applicant argues that the marks are further distinguishable by the sophisticated nature of consumers who buy wine, stating that wine consumers exercise a higher degree of care in their purchasing decisions because wines can be expensive and have different and complex aromas, textures and tastes. The examining attorney contends that the marks are substantially similar; that BEAULIEU has the same connotation as a surname in both applicant’s and registrant’s marks; and that the goods are identical and, thus, that the purchasers and trade channels are also identical. She notes that the identification of goods is broad and encompasses inexpensive and costly wines; and that the relevant purchaser of wine is the general consumer and encompasses those persons with little knowledge of wines and impulse purchasers, as well as wine connoisseurs who deliberate carefully about wine purchases. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of Serial No. 77575580 7 confusion issue. See In re E. I. du Pont de Nemours and 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). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 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); and In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and the cases cited therein. The Goods, Channels of Trade and Class of Consumers The question of likelihood of confusion must be determined based on an analysis of the goods recited in applicant’s application vis-à-vis the goods recited in the registration, rather than what the evidence shows the goods actually are. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). While registrant’s identification of goods is wordier than Serial No. 77575580 8 applicant’s identification of goods, applicant’s goods and registrant’s goods are identical, i.e., wines. Because the goods are identical, we must presume that they travel in the same channels of trade and are sold to the same classes of consumers. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical and in-part related nature of the parties’ goods, and the lack of any restrictions in the identifications thereof as to trade channels and purchasers, these clothing items could be offered and sold to the same classes of purchasers through the same channels of trade”); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers”). These du Pont factors weigh against registration. Consumer Degree of Care The issue of likelihood of confusion in an ex parte case must be determined on the basis of the identification of goods in applicant's application and registrant's registration. In re Opus One Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); and In re Jeep Corporation, 222 USPQ 333, 337 (TTAB 1984). Because there are no restrictions or limitations in the descriptions of goods for the Serial No. 77575580 9 application or cited registrations, the wines identified in the application and the cited registrations must be presumed to encompass inexpensive or moderately-priced wines. In view thereof, applicant’s arguments regarding the sophisticated nature of consumers who buy wine and exercise a higher degree of care in their purchasing decisions are not persuasive. See In re Opus One Inc., 60 USPQ2d at 1817; see also In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986) (evidence that relevant goods are expensive wines sold to discriminating purchasers must be disregarded given the absence of any such restrictions in the application or registration). There is no evidence in the record from which we might conclude that wine is necessarily expensive or that wine purchasers are necessarily sophisticated and careful in their purchasing decisions. On the contrary, the record includes excerpts from different Internet websites listing and reviewing wines of various prices, including some wines listed for as little as three dollars per bottle and referring to impulse wine purchases. Accordingly, this factor does not weigh in applicant’s favor. The Marks We now consider whether applicant’s mark and the registered marks, when viewed in their entireties, are Serial No. 77575580 10 similar in terms of appearance, sound, connotation and commercial impression. In analyzing the similarity or dissimilarity of the marks, we are mindful that where, as here, the goods at issue are identical, the degree of similarity between the marks need not be as great as where there is recognizable disparity between goods. In re Tender Tootsies Limited, 185 USPQ 627, 628-629 (TTAB 1975). 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 terms of their overall commercial impressions that confusion as to the source of the goods or services offered under the respective marks is likely to result. H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715 (TTAB 2008). Furthermore, although the marks at issue must be considered in their entireties, it is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Both applicant and the examining attorney submitted evidence. Applicant submitted an entry from www.babynamer.com of “HUGUES” as a given name for a boy. Serial No. 77575580 11 Applicant’s evidence includes an excerpt from a public relations article about registrant’s history indicating that registrant’s trademark was derived from the remark by the wife of registrant’s founder, “Quel beau lieu” (i.e., “what a beautiful place”), upon first seeing the land purchased for the vineyard.2 The examining attorney submitted entries from the Pocket Oxford-Hachette Dictionary (2006) (excerpted from www.wordreference.com) defining “beau” as “beautiful” and “lieu” as “place.” Each definition includes a list of common compound words, but neither list includes “beaulieu” or “beau lieu.” A Wikipedia entry for “Beaulieu” references, for France, a long list of noted persons and places with BEAULIEU in the name; and, for the United States, a list of one town, one historic home, three companies and five noted individuals with BEAULIEU in the name. Excerpts from Internet telephone directories include over 300 people in each of the states of California, Florida, Massachusetts and New York with the surname BEAULIEU. To establish that the use of surnames as part of marks for wines and vineyards is common, the examining attorney submitted numerous third-party registrations, many 2 We do not view the article as proving the truth of this statement. Serial No. 77575580 12 registered pursuant to Section 2(f) of the Trademark Act, for different purported surname marks for wines and vineyards. The examining attorney also submitted third- party registrations to establish that it is a common practice for the same vineyard to use both surname marks and full-name marks to identify its wines (i.e., GALLO, ERNEST GALLO, and JULIO GALLO; PEPI and ROBERT PEPI; MUMM and G.H. MUMM; and HALL and KATHRYN HALL). Both applicant’s and registrant’s marks contain the word BEAULIEU. In fact, BEAULIEU is the only wording in registrant’s mark in Registration No. 1159373 (‘373). The mark includes a stylized script, but this script is not unusual and it is of little significance in the overall commercial impression of the mark. Clearly, the word BEAULIEU is the dominant portion of the ‘373 registered mark. The marks in registrant’s Registration Nos. 3035408 (‘408) and 3178253 (‘253) begin with the word BEAULIEU, followed by the highly descriptive and disclaimed term VINEYARD. Because of the highly descriptive nature of the term VINEYARD in connection with wine, and because BEAULIEU is the first word in the ‘408 and ‘253 marks, we find that BEAULIEU is the dominant portion of each of these registered marks. As with the ‘373 registration, the script used for the wording in the ‘253 registration is not Serial No. 77575580 13 unusual and it is of little significance in the overall commercial impression of the mark. Applicant’s mark consists of the word BEAULIEU preceded by the word HUGUES. We accept applicant and the examining attorney’s position that applicant’s mark may be perceived as an individual’s name, or perhaps as a combination of two surnames, HUGUES and BEAULIEU.3 However, it is equally likely that BEAULIEU in registrant’s marks will be perceived as a surname by consumers. While the two syllables of BEAULIEU may be separated and translated into, respectively, “beautiful” and “place,” there is no evidence that the compound word, BEAULIEU, exists in either French or English. Rather, there is significant evidence that it is a surname in the United States. Moreover, BEAULIEU has the look and feel of a surname, especially as it precedes VINEYARD in the ‘408 and ‘253 registrations. The examining attorney submitted twenty-three third- party registrations, all for wines, to support her contention that numerous third-party registrants have adopted marks with the look and feel of surnames in connection with wines and vineyards. While these third- party registrations are not evidence of the use of the 3 It is not clear to what extent HUGUES is used as a given name in the United States; the entry from www.babynaming.com states that “This boy’s name is used in French.” Serial No. 77575580 14 marks contained therein, nor are they proof that consumers are familiar with the marks, they do suggest that at least the twenty-three registrants herein have adopted marks that appear to include surnames. Hilson Research Inc. v. Society for Human Resource Management, 27 USPQ2d 1423 (TTAB 1992). We find that the likely connotation of applicant’s mark is as a person’s name, or perhaps as two surnames, and the likely connotation of BEAULIEU in registrant’s marks is as a surname.4 Further, the addition of a first name to applicant’s mark does not distinguish the marks. The third-party evidence suggests that at least several vintners have adopted both full name and surname marks in connection with their wines and vineyards. Thus, consumers familiar with registrant’s marks may simply conclude that applicant’s mark is an alternate version of registrant’s marks, perhaps adopted in conjunction with a distinct wine variety. Thus, although the marks have certain differences, when we compare them in their entireties we find that on the whole they are similar in appearance, sound, 4 Contrary to applicant’s arguments, the translation of BEAULIEU in the cited registrations is not determinative of the likely connotation or commercial impression of the marks, nor does it suggest that we should invoke the doctrine of foreign equivalents with respect to the registered marks alone. Similarly, that the cited registered marks are not registered pursuant to Section 2(f) of the Trademark Act is immaterial to our consideration of the connotation of BEAULIEU therein. Serial No. 77575580 15 connotation and commercial impression and that the additional wording and/or script in each mark is not sufficient to distinguish the marks when used on identical goods. Moreover, registrant’s marks in the ‘373 and ‘253 registrations are in script and applicant has a standard form mark. If registered, applicant’s rights in its registration would extend to the use of the mark in the same rather unremarkable script of the registrant’s mark. This du Pont factor weighs against registration. Conclusion When we consider the record and the relevant likelihood of confusion factors, and all of applicant’s arguments relating thereto, including those arguments not specifically addressed herein, we conclude that in view of the substantial similarity in the commercial impressions of applicant’s mark, HUGUES BEAULIEU, and registrant’s marks, BEAULIEU in stylized script and BEAULIEU VINEYARD, both with and without stylized script, their contemporaneous use on the identical goods, wines, is likely to cause confusion as to the source or sponsorship of such goods. Decision: The refusal under Section 2(d) of the Act is affirmed.