Mount Felix Holdings, LLC

Trademark Trial and Appeal BoardAug 23, 2016

No. 86060930 (T.T.A.B. Aug. 23, 2016)

This Opinion is not a Precedent of the TTAB Mailed: August 23, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Mount Felix Holdings, LLC _____ Serial No. 86060930 Theodore A. Breiner of Breiner & Breiner, L.L.C. for Mount Felix Holdings, LLC. Deirdre G. Robertson, Trademark Examining Attorney, Law Office 111, Robert L. Lorenzo, Managing Attorney. _____ Before Cataldo, Mermelstein, and Gorowitz, Administrative Trademark Judges. Opinion by Gorowitz, Administrative Trademark Judge: Mount Felix Holdings, LLC (“Applicant”) seeks registration on the Principal Register of the mark IRIS NEBULA (in standard characters) for wines in International Class 33.1 The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the registered mark NEBULA (in standard 1 Application Serial No. 86060930 was filed on September 10, 2013, based upon Applicant’s allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark Act. Serial No. 86060930 - 2 - characters) for “red wine; wines” in International Class 33 as to be likely to cause confusion, mistake or deception.2 After the Trademark Examining Attorney made the refusal final, Applicant appealed and filed a request for reconsideration. When the request for reconsider was denied, the appeal was instituted. We affirm the refusal to register. I. Likelihood of confusion. Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). A. Similarity of goods, channels of trade and class of customers. We start our analysis with the second and third du Pont factors, the similarity of the goods, the channels of trade, and the class of customers. When determining the relationship between the goods, [i]t is well settled that the issue of likelihood of confusion between applied-for and registered marks must be 2 Registration No. 3719175 registered on December 1, 2009, Section 8 accepted and Section 15, acknowledged on December 30, 2014. Serial No. 86060930 - 3 - determined on the basis of the goods as they are identified in the involved application and cited registration, rather than on what any evidence may show as to the actual nature of the goods, their channels of trade and/or classes of purchasers. In re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999). See also Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-1162 (Fed. Cir. 2014). The goods in both the application and the registration include “wines.”3 As such, the goods are identical. It is well established that absent restrictions in the application and registration, identical goods and legally identical goods are presumed to travel in the same channels of trade to the same class of purchasers. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d, 1905, 1908 (Fed. Cir. 2012). Here, because the goods are identical, they are presumed to travel in the same channels of trade to the same classes of purchasers. Accordingly, the second and third du Pont factors strongly favor a finding of likelihood of confusion. B. Sophistication of purchasers. Applicant argues that there is no likelihood of confusion because wines are “not an impulse purchase” and “[c]onsumers exercise a reasonable degree of care in purchasing wines.” Appeal Brief 15 TTABVUE 10. Initially, we note that neither party’s goods are restricted to “high-end wines for wine connoisseurs” and while we 3 We acknowledge that the cited registration also includes “red wines,” however since “red wines” are a subset of “wines,” they are legally identical to the goods in Applicant’s application. Serial No. 86060930 - 4 - are cognizant that some purchasers of wine may be connoisseurs who exercise a high degree of purchasing care, the relevant purchasing public also may include ordinary wine drinkers who are less discriminating consumers. In circumstances where the relevant consumers have differing levels of purchasing discrimination, the likelihood of confusion analysis should center on the less discriminating purchaser. See In re Sailerbrau Franz Sailer, 23 USPQ2d 1719, 1729 (TTAB 1992) (finding that all purchasers of wine and beer may not be discriminating because while some may have preferred brands, “there are just as likely to be purchasers who delight in trying new taste treats … they are not expensive items requiring one to exercise careful thought and/or expertise in their purchase. More often than not they are shelf items which are purchased on a somewhat casual basis.”). Accordingly, we find that the sixth du Pont factor does not support Applicant’s argument and is neutral. C. Similarity or dissimilarity of the marks. We next determine the similarity or dissimilarity of the marks in their entireties, keeping in mind that “[w]hen marks appear on virtually identical goods or services, the degree of similarity necessary to support a conclusion of likelihood of confusion declines.” Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). In comparing the marks we must consider the appearance, sound, connotation and commercial impression of the marks at issue. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. Serial No. 86060930 - 5 - 2005). 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., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted). Moreover, the emphasis must be on the recollection of the average purchaser who normally retains a general, rather than specific, impression of trademarks. In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009), citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). In this case, Applicant has adopted the Registrant’s entire mark NEBULA combining it with the word IRIS. A “nebula” is “a very large cloud of dust and gas that exists in outer space.”4 One type of “nebula” is an “iris nebula.”5 As such, the commercial impressions conveyed by the marks are similar. The primary impression of both marks is that of a NEBULA or a cloud, which is arbitrary as used in connection with wine. Applicant’s addition of the subordinate word IRIS, conveys the impression of a particular nebula, the IRIS NEBULA. Applicant argues that the commercial impressions of the marks are different since word IRIS in its mark, refers to an “eye.” Applicant references its label in 4 Definition from McMillan Dictionary, (www.macmillandictionary.com/dictionary/ american/nebula), Exhibit to Office Action dated July 11, 2014, TSDR p. 5. 5 “The Iris Nebula, also NGC 7023 and Caldwell 4, is a bright reflection nebula and Caldwell object in the constellation Cepheus. NGC 7023 is actually the cluster within the nebula, LBN 487, and the nebula is lit by a magnitude 7 star, SAO 19158.” Wikipedia article located at http://en.wikipedia.org/wiki/Iris Nebula, Id., at p. 7. Serial No. 86060930 - 6 - support of this position. However, since both marks are standard character marks, we cannot consider the depictions on either Applicant’s or Registrant’s labels in our analysis. See, McDonald's Corp. v. McSweet, LLC, 112 USPQ2d 1268, 1281 (TTAB 2014) (quoting Kimberly-Clark Corp. v. H. Douglas Enters., Ltd., 774 F.2d 1144, 1147, 227 USPQ 541, 543 (Fed. Cir. 1985) (“It is settled, however, that a distinction in trade dress cannot weigh against likelihood of confusion with respect to the registration of a simple word mark … . The reason is that such dress might well be changed at any time; only the word mark itself is to be registered.”)). Applicant also relies on three third party registrations, each owned by a different entity, for marks consisting of or containing the word IRIS for wines to distinguish its mark from the cited mark: , ARCO IRIS, and WILD IRIS. Since the common word in Applicant’s mark and the cited registration is NEBULA, this reliance is misplaced and contradicts Applicant’s argument that its mark and the mark in the cited registration are not similar. “Third party registrations are relevant to prove that some segment of the composite marks which both contesting parties use has a normally understood and well recognized descriptive or suggestive meaning, leading to the conclusion that that segment is relatively weak.” Juice Generation, Inc. v. GS Enters. LLC, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015) (citing 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:90 (4th ed. 2015)). Thus, if as Applicant argues, the term IRIS in Serial No. 86060930 - 7 - Applicant’s mark is weak when used in connection with wine, it is the subordinate element of Applicant’s mark. In any event, the third-party registrations cited by Applicant do nothing to rebut the Examining Attorney’s argument that there is a likelihood of confusion despite the appearance of the term IRIS in Applicant’s mark. Applicant cannot avoid likelihood of confusion by adopting Registrant’s entire mark and adding subordinate matter thereto. See Giant Food, Inc. v. Nation's Foodservice, Inc., 218 USPQ 390, 395 (Fed. Cir. 1983); see also: Hewlett-Packard Co. v. Packard Press Inc., 62 USPQ2d 1001, 1003 (Fed. Circ. 2002); In re Jump Designs LLC, 80 USPQ2d 1370, 1375 (TTAB 2006). Accordingly, we find that the first du Pont element also favors a finding of likelihood of confusion. D. Conclusion. Having considered all the evidence and argument on the relevant du Pont factors, whether discussed herein or not, regarding likelihood of confusion between Applicant’s mark IRIS NEBULA (in standard characters) for “wines,” we find that Applicant’s mark is likely to cause confusion with the mark NEBULA (in standard characters) for “red wines and wines,” in the cited registration. Decision: The refusal to register Applicant’s mark IRIS NEBULA is affirmed.