Moscow Distillery Cristallv.Simex Aussen-handels-gesellschaft Savelberg KG

Trademark Trial and Appeal Board

Aug 3, 2001

No. 91099405 (T.T.A.B. Aug. 3, 2001)

8/3/01 Paper No. 46
CEW

UNITED STATES PATENT AND TRADEMARK OFFICE
_______

Trademark Trial and Appeal Board
_______

Moscow Distillery Cristall
v.
Simex, Aussenhandelsgesellschaft Savelsberg KG
____

Opposition No. 99,405
to Application No. 74/132,262
filed on January 22, 1991
_______

Philip J. Moy, Jr. of Fay, Sharpe, Fagan, Minnich & McKee
and David L. Garrison of Garrison and Evans for Moscow
Distillery Cristall.

Jonathan E. Moskin and Charlotta C. Meder of Pennie &
Edmonds for Simex, Aussenhandelsgesellschaft Savelsberg KG.
_______

Before Simms, Seeherman and Walters, Administrative
Trademark Judges.

Opinion by Walters, Administrative Trademark Judge:

Moscow Distillery Cristall (“opposer”) has opposed the
application of Simex, Aussenhandelsgesellschaft Savelsberg
KG (“applicant”) to register MOSKOVSKAYA CRISTALL and
design, depicted below, for “vodka originating in
Russia.”1[1]

1[1] Application Serial No. 74/132,262, filed January 22, 1991, based on
a bona fide intention to use the mark in commerce, pursuant to Section
1(b) of the Trademark Act, and asserting a claim of priority, pursuant
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.

2[2]

The Pleadings
In its amended notice of opposition, opposer makes
various allegations, asserting various purported grounds
under the Paris Convention. Opposer also refers to “false
assertions” regarding ownership of its mark made by
applicant in its application. However, as applicant points
out, the only ground argued by opposer in its brief is
likelihood of confusion, under Section 2(d) of the
Trademark Act. Considering the record, likelihood of
confusion is clearly the only ground of opposition that has
been tried in this case. Thus, we find that any other
possible grounds that opposer may have asserted in its

to Section 44(d) of the Trademark Act, based on the filing of an
application in the Federal Republic of Germany on August 11, 1990. The
drawing is lined for the colors gold, green and orange. The English
translation of MOSKOVSKAYA CRISTALL is “Crystal of Moscow.” The
application includes a disclaimer of MOSKOVSKAYA.

2[2] All of the wording except MOSKOVSKAYA CRISTALL has been deleted from
the mark by applicant’s amendment. The Examining Attorney should
ensure that the USPTO records correctly reflect this amendment to the
drawing of the mark.
amended notice of opposition have been waived and we
determine this opposition only on the ground of likelihood
of confusion.3[3]
Regarding likelihood of confusion, opposer makes,
inter alia, the following allegations in its amended notice
of opposition:
• • opposer is the manufacturer and bottler of
Russian vodka in Russia and, formerly, in the Soviet
Union;

• • opposer is the manufacturer of high-quality
Russian vodka that has been sold in the United
States under marks including STOLICHNAYA,
STOLICHNAYA CRISTALL, CRISTALL, and MOSCOW CRISTALL
SIGNATURE SERIES;4[4]

• • opposer “has assigned its United States trademark
rights in the trademarks CRISTALL and MOSCOW

3[3] With respect to both opposer’s Paris Convention claims and its
likelihood of confusion claim, opposer submitted no support for its
assertion that opposer’s alleged STOLICHNAYA CRISTALL mark is well
known in connection with vodka.

4[4] With regard to the mark STOLICHNAYA CRISTALL, opposer makes the
following allegations: that “sale of STOLICHNAYA CRISTALL manufactured
by [opposer] began in 1989 and continues to this day through PepsiCo
and its distributors subject to a recent injunction preventing sale of
STOLICHNAYA CRISTALL vodka by PepsiCo after the current inventory is
depleted”; that “from 1988 to 1995, STOLICHNAYA CRISTALL brand Russian
vodka manufactured by [opposer] has been imported into the United
States under the control of PepsiCo, Inc. (“PepsiCo”) under an
agreement between PepsiCo and Sojuplodoimport (“SPI”)”; that SPI
formerly was the Soviet state entity through which STOLICHNAYA CRISTALL
brand Russian vodka was exported from the Soviet Union; that subsequent
to the break up of the Soviet Union, opposer became a private joint
stock company that succeeded to the rights of its governmental
predecessor, including the relationship with PepsiCo; and that “all
Russian vodka sold under the mark STOLICHNAYA CRISTALL until 1994 was
manufactured by [opposer]” and “[a]fter 1994, PepsiCo began importing
vodka falsely marked with the trademark STOLICHNAYA CRISTALL
manufactured by Liviz Distillery in St. Petersburg Russia without
authorization of [opposer].”
CRISTALL SIGNATURE SERIES to Cristall, U.S.A., Inc.,
a corporation of the state of Florida”;

• • “MOSKOVSKAYA CRISTALL vodka has been advertised
by opposer in international publications indicating
Moscow Distillery Cristall as the distiller and
bottler thereof, but no sales have yet occurred in
the United States”;

• • on August 8, 1995, opposer filed an application
in the United States to register the mark
MOSKOVSKAYA CRISTALL based on Russian Federation
Trademark Registration No. 118,137;

• • “[I]n its activities in the manufacture, bottling
and sale of premium Russian vodka, [opposer] has
used the trade name CRISTALL since at least as early
as 1989 and currently uses that trade name in its
activities in various areas of the world, including
the Russian Federation, Europe and the United
States”;

• • no Russian distillery or entity other than
opposer is authorized by the Russian Federation to
distill and sell MOSKOVSKAYA CRISTALL vodka; and

• • “use by [opposer] of its various CRISTALL
trademarks since at least as early as 1989
throughout the world is well known.”

Regarding applicant, opposer makes the following
allegations:
• • since about 1990 applicant has been a German
distributor of MOSKOVSKAYA CRISTALL vodka produced
by opposer and applicant is “fully aware of the
international rights of [opposer] in the trademark
MOSKOVSKAYA CRISTALL”; and

• • applicant was not, and knew that it was not, the
owner of the mark MOSKOVSKAYA CRISTALL when it
filed the application which is the subject of this
opposition.

In its answer to the notice of opposition, applicant
denies the salient allegations therein and asserts, as
affirmative defenses, that the notice of opposition is
barred under the principles of abandonment, territoriality
of trademarks, estoppel, acquiescence and unclean hands.
The Record
The record consists, in part, of the pleadings and the
file of the involved application. In an April 18, 2000
decision, the Board struck some of the evidence submitted
by opposer during its testimony period and concluded that
opposer’s acceptable evidence consists of a photocopy of a
certified copy of opposer’s Russian registration of a mark
including the word CRISTALL for vodka5[5]; and the decision
of the Ninth Circuit Court of Appeals (appeal Nos. 96-
36,217, 96-36,249 and 96-36,250) affirming the decision in
Civil Action No. C95-0226WD in the Western District of
Washington, of which the Board took judicial notice.
During its testimony period, applicant submitted by
notice of reliance certified copies, with translations, of
eight German trademark registrations owned by applicant for

5[5] The mark is not identified in the translation of the certificate.
However, the translation includes the statement “[a]ll letters, numbers
and words, except for CRISTALL, are not subject to independent legal
protection.” Thus, we can conclude only that the mark includes the
word CRISTALL. Further, this photocopy of a registration certificate
and incomplete translation is insufficient, alone, to establish
various marks incorporating the words MOSKOVSKAYA or
MOSKOVSKAYA CRISTALL, all for, inter alia, vodka.6[6] The
oldest of these registrations issued on July 22, 1971.
Applicant also submitted by notice of reliance opposer’s
response to applicant’s interrogatory no. 27, wherein
opposer states that opposer has not yet begun sales in the
United States of MOSKOVSKAYA CRISTALL vodka; a dictionary
definition of “crystal”; and copies of third-party
registrations and applications for marks including the word
“crystal” for various beverages, both alcoholic and non-
alcoholic.
During its rebuttal testimony period, opposer
submitted copies of newspaper articles7[7]; a printout from
the USPTO database indicating the abandonment of the
application, owned by PepsiCo, Inc., that was the subject
of the civil action noted herein; and certified status and
title copies of registrations originally owned by opposer,
but assigned to a third party, Cristall U.S.A. Inc.8[8]

opposer’s ownership of a CRISTALL mark for vodka in Russia, or to
support any Paris Convention claim in relation thereto.

6[6] Applicant also submitted proof of renewal of one of the German
registrations.

7[7] Opposer states that the purpose of this evidence is to establish
opposer’s use of the marks STOLICHNAYA CRISTALL and CRISTALL.

8[8] Registration No. 2,336,937 for the mark CRISTALL for vodka
(application filed February 7, 1995 and mark registered April 4, 2000);
and Registration No. 2,301,166 for the mark CRISTALL and design for
Applicant has objected to opposer’s rebuttal evidence
as impermissible rebuttal, adding that the newspaper
articles are hearsay with respect to any use by opposer of
the mark STOLICHNAYA CRISTALL or of the registered marks
owned by Cristall U.S.A. Inc. We sustain applicant’s
objection and strike the evidence submitted by opposer on
rebuttal. Opposer provides no indication of the particular
points raised by applicant that opposer intends to rebut
with this evidence. We find no clear connection between
the evidence submitted and applicant’s evidence submitted
during its testimony period. Opposer did argue that it
submitted the newspaper articles to establish opposer’s
priority. However, even if we were to consider these
articles properly of record, we agree with applicant that
the newspaper articles are hearsay with respect to any use
by opposer of the marks referenced therein, and, thus, of
no probative value for that purpose. Furthermore, the
articles make no reference to the named opposer and predate
the break-up of the Soviet Union and, thus, could not
possibly be probative, alone, of the present ownership of
the mark in Russia, the United States or anywhere else in
the world.

vodka (application filed February 22, 1995 and mark registered December
21, 1999).
Both parties filed briefs on the case but a hearing
was not requested.
Analysis
While it appears that opposer has been determined in
its pursuit of this opposition, opposer has failed to
submit evidence establishing any rights in a trademark upon
which it can rely to establish its case. We note that,
even if we had considered the registrations submitted by
opposer on rebuttal, these registrations clearly establish
that Cristall U.S.A. Inc., not opposer, owns the two
proffered CRISTALL registrations in the United States; and
the record is absolutely silent on the nature, if any, of a
relationship between opposer and this corporation.
Likewise, as the Board previously stated in its decision of
February 2, 1997, the decision in the civil action
involving opposer herein and PepsiCo, a third party
relative to this opposition, establishes ownership in the
marks CRISTALL and STOLICHNAYA CRISTALL only between the
parties to that proceeding.9[9]

9[9] The Court of Appeals for the Ninth Circuit affirmed the District
Court’s decision in an unpublished opinion. In that unpublished
opinion the Court stated that, in an ownership contest between a
manufacturer and distributor, a manufacturer owns a mark presumptively
in the absence of a controlling contractual agreement; that there was
substantial evidence in the record to support the jury’s conclusion
that PepsiCo failed to rebut the presumption that Moscow Distillery
Cristall owned the CRISTALL mark; but that “[b]alancing the relevant
factors, the jury could reasonably have found that either party owned
In view thereof, it is unnecessary, as well as not
possible, to consider the question of likelihood of
confusion. In conclusion, opposer has failed to meet its
burden of proof in this opposition.
Decision: The opposition is dismissed.

the CRISTALL mark [however] we may not substitute our view of which
party should prevail for the jury’s view.”