Luxco, Inc. and Heaven Hill Distilleries, Inc.v.Saint Lucia Distillers Limited

Trademark Trial and Appeal Board

Aug 2, 2012

No. 91193668 (T.T.A.B. Aug. 2, 2012)

Mailed: August 2, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Luxco, Inc. and Heaven Hill Distilleries, Inc.

v.

Saint Lucia Distillers Limited
_____

Opposition No. 91193668
to application Serial No. 77743036
and application Serial No. 77759962
_____

Michael R. Annis of Husch Blackwell Sanders LLP for Luxco,
Inc. and Heaven Hill Distilleries, Inc.

Mark Wisnosky of the Law Office of Mark Wisnosky for Saint
Lucia Distillers Limited.
______

Before Bucher, Bergsman and Lykos,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Saint Lucia Distillers Limited (“applicant”) filed two
intent-to-use applications for the mark ADMIRAL RODNEY, in
standard character form, and ADMIRAL RODNEY EXTRA OLD ST.
LUCIA RUM and design, shown below, for rum, in Class 33.
Applicant disclaimed the exclusive right to use “Extra Old
St. Lucia Rum.” In the applications, applicant stated that
Admiral Rodney does not identify a living individual.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.
Opposition No. 91193668
2

Heaven Hill Distilleries, Inc., through its predecessor
in interest, Luxco, Inc., (“opposers”), opposed the
registration of applicant’s marks on the ground of
likelihood of confusion under Section 2(d) of the Trademark
Act of 1946, 15 U.S.C. § 1052(d).1 Specifically, opposers
alleged ownership and prior use of the registered trademarks
listed below for rum.
1. Registration No. 2336367 for the mark ADMIRAL
NELSON’S, in typed drawing form;2 and
2. Registration No. 2436494 for the mark ADMIRAL
NELSON’S PREMIUM SPICE RUM and design, shown below.3

1 Opposers also asserted dilution by blurring but did not argue
that ground in its brief and, therefore, we deem that claim
waived. See e.g., Knight Textile Corp. v. Jones Investment Co.,
75 USPQ2d 1313, 1314 n.4 (TTAB 2005).
2 Issued March 28, 2000; renewed.
3 Issued March 20, 2001; renewed.

Opposition No. 91193668
3
The original registrant disclaimed the exclusive right to
use “Premium Spice Rum.” Also, the original registrant
stated in its applications for registration that Admiral
Nelson does not identify a living individual.
Applicant, in its answer, denied the salient
allegations in the notice of opposition.
After the close of discovery and trial, opposers filed
a motion to substitute Heaven Hill Distilleries as the
opposer because the ADMIRAL NELSON’S marks, registrations,
and the goodwill associated with the marks have assigned to
Heaven Hill Distilleries and that assignment has been
recorded with the USPTO.4 Applicant opposed the motion to
substitute. In light of applicant’s objection, the Board
joined Heaven Hill Distilleries rather than substitute it as
the opposer.5
Evidentiary Objections
Opposers have filed numerous objections against certain
testimony and exhibits introduced by applicant. None of the
testimony and/or exhibits sought to be excluded is outcome
determinative. Given this fact, coupled with the number of
objections, we see no compelling reason to discuss the
objections in a detailed fashion. Suffice it to say, we
have considered all of the testimony and exhibits submitted

4 Reel 4574, frame 0726, recorded on July 1, 2011.
5 See TBMP § 512.01 (3rd ed. 2011).

Opposition No. 91193668
4
by the parties. In doing so, we have kept in mind the
various objections raised by opposers, and we have accorded
whatever probative value the subject testimony and exhibits
merit.
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR
§ 2.122(b). In addition, the parties introduced the
evidence identified below.
A. Opposers’ testimony and evidence.
1. Notice of reliance on the items listed below:
a. copies of opposers’ pleaded registrations
made by the USPTO showing the current status
of and title to the registrations;
b. Copies of the files for opposers’ pleaded
registrations;
2. Notice of reliance on applicant’s responses to
opposers’ requests for admission and
interrogatories; and
3. Testimony deposition of Donn Lux, Chairman, CEO
and President of Luxco, Inc., with attached
exhibits;
B. Applicant’s testimony and evidence.
1. Notice of reliance on the items listed below:
Opposition No. 91193668
5
a. Excerpts from Frederick H. Smith, Caribbean
Rum and Social and Economic History, pp. 27
and 233-237 (2008);
b. Excerpts from Ray Foley, The Rum 1000: The
Ultimate Collection of Rum Cocktails,
Recipes, Facts, and Resources, pp. 1-3
(2008);
c. Chapter 4 from The Beverage Alcohol Manual
(BAM), A Practical Guide, Basic Mandatory
Labeling Information for Distilled Spirits,
Volume 2, Department of the Treasury Alcohol&
Tobacco Tax & Trade Bureau, TTBP5110.7
(2007); and
d. Excerpts from Ian Williams, Rum, A Social and
Sociable History, pp. 225 and 239-241, 309
(2006); and
3. Testimony deposition by written question of Laurie
Barnard, applicant’s Managing Director, with
attached exhibits.
Standing
Because opposers have properly made their pleaded
registrations of record, opposers have established their
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943,
55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries,

Opposition No. 91193668
6
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185,
189 (CCPA 1982).
Priority
Because opposers’ pleaded registrations are of record,
Section 2(d) priority is not an issue in this case as to the
marks and the products covered by the registrations. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108, 110 (CCPA 1974).
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 issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In
re Majestic Distilling Company, Inc., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
A. The fame of opposers’ marks.

This du Pont factor requires us to consider the fame of
opposers’ marks. Fame, if it exists, plays a dominant role
in the likelihood of confusion analysis because famous marks
enjoy a broad scope of protection or exclusivity of use. A
famous mark has extensive public recognition and renown.
Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C.
Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
Opposition No. 91193668
7
2000); Kenner Parker Toys, Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Fame may be measured indirectly by the volume of sales
and advertising expenditures of the goods and services
identified by the marks at issue, “by the length of time
those indicia of commercial awareness have been evident,”
widespread critical assessments and through notice by
independent sources of the products identified by the marks,
as well as the general reputation of the products and
services. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
at 1305-1306 and 1309. Although raw numbers of product
sales and advertising expenses may have sufficed in the past
to prove fame of a mark, raw numbers alone may be
misleading. Some context in which to place raw statistics
may be necessary (e.g., the substantiality of the sales or
advertising figures for comparable types of products or
services). Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d
at 1309.
Finally, because of the extreme deference that we
accord 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, it is the duty of the
party asserting that its mark is famous to clearly prove it.
Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007).
Opposition No. 91193668
8
Opposers have introduced the following testimony and
evidence regarding the fame of the ADMIRAL NELSON’S marks:
1. Opposers, through their predecessors-in-interest,
have been selling ADMIRAL NELSON’S rum since at least 1990;6
2. ADMIRAL NELSON’S rum is the fifth-largest selling
rum in the United States;7
3. ADMIRAL NELSON’S rum is sold in all fifty states;8
4. Since 2002, revenues generated by the sale of
ADMIRAL NELSON’S rum and the number of units sold have been
significant;9
5. Opposers have extensively marketed ADMIRAL
NELSON’S rum;10 and
6. ADMIRAL NELSON’S rum has won several awards,
including being named as a “Hot Brand” from 2006 through

6 Lux Dep., p. 20. In their brief, opposers cited their pleaded
registrations as evidence of their use of the mark since 1986.
However, the dates of use claimed in an [application] for
registration are not evidence on behalf of a registrant. “[A]
date of use must be established by competent evidence.”
Trademark Rule 2.122(b)(2), 37 CFR § 2.122(b)(2). See also J. C.
Hallmark Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435,
437 (CCPA 1965) (the presumption emanating from a certificate of
registration relates back to the filing date of the application
on which registration is predicated); Brewski Beer Co. v. Brewski
Bros. Inc., 47 USPQ2d 1281, 1284 (TTAB 1998). The testimony of
Mr. Lux establishes 1990 as the earliest date of use.
7 Lux Dep., pp. 53 – 54.
8 Lux Dep., p. 38.
9 Lux Dep., pp. 38 – 50, Exhibits 8 – 10. Opposers’ testimony
and evidence regarding their sales and advertising expenditures
has been designated confidential. Accordingly, we may only refer
to the sales and advertising figures in general terms.
10 Lux Dep., Exhibit 9.
Opposition No. 91193668
9
2011 by Market Watch magazine, a leading trade publication
in the “beverage alcohol industry.”11
While opposers have achieved commercial success and a
high degree of renown, the evidence of record is not
sufficient to establish that opposers’ ADMIRAL NELSON’S
marks are famous for purposes of likelihood of confusion.
Nevertheless, in view of opposers’ extensive sales and
advertising expenditures, as well as the unsolicited media
attention they have received, we find that opposers’ ADMIRAL
NELSON’S marks have a high degree of public recognition and
renown. Indeed, when coupled with the arbitrary nature of
the mark, ADMIRAL NELSON’S is entitled to a broad scope of
protection or exclusivity of use.
B. The similarity or dissimilarity and nature of the
products described in the applications and
registrations, the likely-to-continue trade channels
and classes of consumers.

The goods at issue are identical: rum. Because the
goods are identical, we may presume that the channels of
trade and classes of purchasers are the same. See In re
Thor Tech Inc., 90 USPQ2d 1634, 1639 (TTAB 2009); 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.”). See also In re
Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed.

11 Lux Dep., pp. 75 – 78, Exhibits 22 - 26.
Opposition No. 91193668
10
Cir. 2012) (even though there was no evidence regarding
channels of trade and classes of consumers, the Board was
entitled to rely on this legal presumption in determining
likelihood of confusion).
C. The number and nature of similar marks in use on
similar goods.

There was no evidence of any other “Admiral” marks in
use in connection with rum or any other alcoholic beverage.
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 likelihood of confusion
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., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd.,
8 USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co.,
6 USPQ2d 1041, 1042 (TTAB 1987). In comparing the marks, we
are mindful that 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 impression so that
confusion as to the source of the goods offered under the
respective marks is likely to result. San Fernando Electric
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683,
Opposition No. 91193668
11
196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v.
Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991), aff’d
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The
proper focus is on the recollection of the average customer,
who retains a general rather than specific impression of the
marks. Winnebago Industries, Inc. v. Oliver & Winston,
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Since the
goods at issue are rum, we are dealing with average
consumers.
We also note that where, as here, the goods are
identical, the degree of similarity necessary to find
likelihood of confusion need not be as great as where there
is a recognizable disparity between the goods. Century 21
Real Estate Corp. v. Century Life of America, 970 F.2d 874,
23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Schering-Plough
HealthCare Products Inc. v. Ing-Jing Huang, 84 USPQ2d 1323,
1325 (TTAB 2007); Jansen Enterprises Inc. v. Rind, 85 USPQ2d
1104, 1108 (TTAB 2007).
The marks are similar to the extent that they both
begin with the word “Admiral” and are followed by a two
syllable name (i.e., Nelson’s and Rodney). In addition,
they engender similar commercial impressions by suggesting a
nautical theme. On the other hand, there is nothing
particularly distinctive with using a nautical theme in
Opposition No. 91193668
12
connection with the sale of rum because there is a long-time
association between rum and sailors. Applicant submitted
the following excerpts from books in general circulation to
show that authors have written about the association between
rum and sailors.12
1. Frederick H. Smith, Caribbean Rum and Social and
Economic History, (2008).
a. Page 27
In early modern Europe, alcohol was
deeply ingrained in maritime
communities, and seamen considered it a
necessary provision on trading ventures.
The potential disasters that could
result from the limited availability of
fresh water on long sea voyages made
alcohol a critical store in long
distance maritime trade. …
While wine, brandy, and gin filled the
hulls of ships departing Europe,
Caribbean sugar planters exploited the
maritime demand for alcohol on the other
side of the Atlantic and sold rum to
traders for the return voyage. As early
as the mid-seventeenth century, planters
in Barbados sold rum to “Ships [where it
was] … drunk by the way.” These seamen
helped spread the taste of rum to other
regions of the Atlantic.

b. Page 236
Rum labels embrace symbols of
masculinity. Pirates adorn Old Brigand,
Captain Morgan, Buccaneer, and Tortola
Spiced rums. Some labels portray
maritime images that highlight the

12 As opposers point out in its objections to applicant’s
evidence, the excerpts from these books are admissible and
probative only for what they show on their face and not for the
truth of the matters asserted therein.

Opposition No. 91193668
13
rugged and independent seafaring life.
Sailing ships, for example, grace
varieties of Nelson, Montebello, El
Dorado, and Bounty. Two sailors lean on
a cask of rum on the label of Cruzan
151. Pusser’s rum romanticizes the
tradition of rum rations in the British
Royal Navy. Bounty and Captain Bligh
honor the career of the mutiny-struck
ships. Don Q, Grand Corsaire, and
Cavalier labels are adorned with images
of swashbuckling gentlemen from a more
adventurous age.

2. Ray Foley, The Rum 1000: The Ultimate Collection
of Rum Cocktails, Recipes, Facts, and Resources, pp. 1 and 3
(2008):
Other names used for rum are: Nelson Blood,
Navy Neater,
Demon Water, and
Pirate’s Drink.
* * *
The British Royal Navy gave its sailors a daily
rum ration until July 31, 1970.

3. Ian Williams, Rum, A Social and Sociable History,
pp. 225 (2006).
In 1931, H. Warner Allen, every bit as
patriotic and with just as much or as
little evidence as Taussig had for
annexing the spirit of the United
States, wrote:

Rum is the Englishman’s spirit, the
true spirit of adventure. Whiskey
belongs to Scotland and Ireland,
Brandy to France, Gin to Holland,
but Rum is essentially English
despite its tropical origin. The
very word calls up heroic memories
Opposition No. 91193668
14
of the iron seamen who on the
lawful and unlawful occasions built
up the British Empire overseas, and
if ever Rum were to disappear from
navy rations, a great tradition
would be tragically broken.

“Admiral” is a title that means “1. the commander in
chief of a fleet. 2. a navel officer of the highest rank.
3. a naval officer of high rank.”13 Therefore, the marks
identify separate and distinct individuals - Admiral Nelson
and Admiral Rodney - and the term “Admiral” is akin to the
terms “Mister” or “Doctor.”
In fact, during the prosecution of applicant’s
application, the examining attorney submitted evidence
identifying Admirals Rodney and Nelson and demonstrating
that they are different historical figures.
Admiral Rodney is “[t]he British admiral George Brydges
Rodney, 1st Baron Rodney (1718-1792), by winning notable
victories in the Caribbean waters over French, Spanish and
Dutch forces, contributed substantially to British command
of the seas in the late 18th century.”14
Admiral Nelson is Vice Admiral Horatio Nelson (1758-
1805), another noted British naval hero.15

13 The American Heritage Dictionary of the English Language
(Unabridged), p. 26 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
14 August 26, 2009 Office action.
15 August 26, 2009 Office action. Admiral Nelson “is still
generally accepted as the most appealing of Britain’s national
heroes.” “Horatio Nelson, Viscount Nelson,” Encyclopedia
Opposition No. 91193668
15
Nelson’s victories ensured that the
British controlled the seas for the
duration of the Napoleonic wars and
prevented the French for ever attempting
to invade Britain. His strategic vision
and tactical flexibility set him apart
from his contemporaries and have been
emulated in the centuries since his
death. Nelson possessed the innate
ability to inspire his men to achieve
beyond what they thought possible. This
“Nelson Touch” was a hallmark of his
command style and has been sought by
subsequent leaders.16

The above-noted facts regarding Admiral Nelson and Admiral
Rodney are not referenced to show that typical U.S.
consumers recognize British naval heroes, but to demonstrate
that the names Admiral Nelson and Admiral Rodney identify
different individuals and, when used as marks, are likely to
be construed as different names. Accordingly, we find that
the marks have different meanings.
In analyzing the similarities and dissimilarities of
the marks, the differences in their appearance, sound and
meaning outweigh the similarity arising from the fact that
both marks begin with the word “Admiral.” Accordingly, we
find that applicant’s ADMIRAL RODNEY marks are not similar
to opposers’ ADMIRAL NELSON’S marks.

Britannica Online Academic Edition, Encyclopedia Britannica Inc.
(2012). The Board may take judicial notice of standard reference
works. In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511,
1514 n.4 (TTAB 2001) (other standard reference works); Sprague
Electric Co. v. Electrical Utilities Co., 209 USPQ 88, 96 n.3
(TTAB 1980).
16 August 26, 2009 Office action.

Opposition No. 91193668
16
E. Balancing the factors.
Despite the strength of opposers’ marks, the identity
of the goods and presumption that the goods move in the same
channels of trade and are sold to the same classes of
consumers, consumers will distinguish the marks because
ADMIRAL RODNEY is not confusingly similar to ADMIRAL
NELSON’S. In other words, in this case, the dissimilarity
of the marks is the most important factor. See, e.g.,
Kellogg Co. v. Pack-Em Enterprises Inc., 951 F.2d 330,
21 USPQ2d 1142, 1145 (Fed. Cir. 1991) (“We know of no reason
why, in a particular case, a single duPont factor may not be
dispositive. … ‘each [of the thirteen elements] may from
case to case play a dominant role.’”). Accordingly, we find
that applicant’s ADMIRAL RODNEY marks for rum are not likely
to cause confusion with opposers’ ADMIRAL NELSON’S marks for
rum.
In reaching this conclusion, we have carefully
considered all of the evidence pertaining to the relevant
du Pont factors, as well as all of the parties’ arguments
with respect thereto (including any evidence and arguments
not specifically discussed in this opinion).
Decision: The opposition is dismissed and applicant’s
applications will be forwarded for the issuance of notices
of allowance in due course.