South Beach Beverage Company, Inc.v.Stephen Schwartz

Trademark Trial and Appeal Board

May 9, 2005

No. 91121457 (T.T.A.B. May. 9, 2005)

Mailed: May 9, 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

South Beach Beverage Company, Inc.

v.

Stephen M. Schwartz
________

Opposition No. 91121457
to application Serial No. 74556860
filed on August 3, 1994
_______

Edmund J. Ferdinand, III of Grimes & Battersby, LLP for
South Beach Beverage Company, Inc.

Ava K. Doppelt of Allen, Dyer, Doppelt, Milbrath &
Gilchrist, P.A. for Stephen M. Schwartz.
_______

Before Seeherman, Quinn and Chapman, Administrative
Trademark Judges.

Opinion by Chapman, Administrative Trademark Judge:
South Beach Beverage Company, Inc. (a Connecticut
corporation)1 has opposed the application of Stephen M.

1 The opposition was originally filed by The South Beach Beverage
Company, LLC (a Connecticut limited liability corporation).
During the course of this proceeding opposer filed a motion to
substitute South Beach Beverage Company, Inc. as the party
plaintiff, which was granted by the Board in an April 29, 2004
order. Further, the record shows that opposer, South Beach
Beverage Company, Inc., was acquired by PepsiCo in January 2001;
THIS DISPOSITION IS
NOT CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91121457
2
Schwartz (a United States citizen) to register on the
Principal Register the mark shown below

for “sparkling wine” in International Class 33. The
application is based on applicant’s claimed date of first
use and first use in commerce of April 1, 1994. The words
“sparkling wine” are disclaimed. The application includes
the following description of the mark: “The mark consists
of the word ‘SoBe’ with five five[-]pointed stars in an arc
beginning from the word [sic] ‘S’ and ending above the ‘B.’”
Opposer asserts as grounds for opposition that since
January 5, 1997, it and its predecessor have “manufactured,
advertised and sold a line of soft drinks, iced teas, fruit
drinks and other non-carbonated and carbonated beverages”
under the marks SOUTH BEACH and SOBE; that opposer owns
“various federal registrations and pending
applications…including” Registration Nos. 2153152, 2256688,
2345815, and 2175195 and application Serial Nos. 74370615,

and that it is now a division of PepsiCo. References to opposer
will include South Beach Beverage Company, Inc., The South Beach
Beverage Company, LLC, and South Beach Beverage Company, Inc. as
a division of PepsiCo.
Opposition No. 91121457
3
75937834, 75937835, and 76143944; that there is no issue of
priority in view of the prior filing dates of three of
opposer’s pleaded registrations; and that applicant’s mark,
when used on his goods, so resembles opposer’s previously
used and registered marks, as to be likely to cause
confusion, mistake, or deception.
In his answer applicant denied the salient allegations
of the notice of opposition.
The Record
The record consists of the pleadings; the file of
applicant’s application; the testimony, with exhibits, of
Michael Joyce, opposer’s director of integrated marketing;
the testimony, with exhibits, of Peter Maric, publications
editor and law clerk at opposer’s attorney’s law firm;
opposer’s four notices of reliance; the parties’ stipulation
consisting of two paragraphs and a one-page attached
document; and the testimony, with exhibits, of applicant,
Stephen M. Schwartz.
Both parties filed briefs on the case. Neither party
requested an oral hearing.
Preliminarily, we will determine the evidentiary
matters. Opposer moved to strike (1) applicant’s Exhibit
Nos. 21-23 (invoices from 1999) “and all testimony related
thereto” on the ground of unfair surprise because they were
not produced during discovery; (2) applicant’s Exhibit Nos.
Opposition No. 91121457
4
7-8 (draft advertisements) to the extent applicant relies on
them to prove use of his mark on the ground of relevance;
(3) applicant’s Exhibit No. 4 (“New Package Plan”) to the
extent applicant relies on it to prove use of his mark on
the grounds of relevance and that it was prepared in the
context of settlement negotiations; and (4) portions of the
testimony of Stephen Schwartz at pages 12 (leading
question), 23 (hearsay), and 25-26 (hearsay), based on the
objections made at the deposition.
Applicant argues generally that “Opposer’s objections
to Applicant’s evidence have no factual basis.” Brief, p.
31. Applicant specifically argues that he has explained
that his lack of evidence and missing documents relate to
his brother, Barry Schwartz, being responsible for the sales
records, and his brother died in 1999; that applicant has
not purposefully withheld evidence; that the “New Package
Plan” was prepared to show future sales projections for the
reintroduction of the wine with a new label under sales
agreements with distributors, and it was only coincidentally
used in negotiations with opposer; that applicant has
provided all evidence that was available in his business
records; and that the objected-to portions of his evidence
and testimony should not be stricken.
Applicant’s statements concerning his brother’s
involvement in applicant’s business, his brother’s death in
Opposition No. 91121457
5
December 1999, and applicant’s failure to immediately remove
the business records from his brother’s home after the death
provide a plausible explanation for the lack of certain
evidence and a reason why some 1999 invoices were found
later. Opposer’s motion to strike applicant’s Exhibit Nos.
21-23 and applicant’s testimony related thereto is denied.
Inasmuch as applicant explained that his Exhibit No. 4
was not prepared in the context of settlement negotiations,
opposer’s motion to strike that exhibit is also denied.
The remainder of opposer’s motion to strike
(applicant’s Exhibit Nos. 7-8 and certain testimony by
applicant Schwartz dep., pp. 12, 23 and 25-26) is denied as
these objections relate more to the probative value of the
evidence than to the admissibility thereof.
In sum, opposer’s motion to strike is denied. All
evidence submitted by the parties has been considered for
whatever appropriate probative value it may have.
The Parties
South Beach Beverage Company, Inc., through its
predecessor in interest, first used the mark SOUTH BEACH on
a non-alcoholic beverage in 1995, but as it did not “take
off,” in 1996 opposer changed the mark to SOBE and first
used it on a black tea beverage. Due to the success
thereof, opposer introduced additional tea flavors and a
fruit juice line. Opposer now offers over 30 different
Opposition No. 91121457
6
ready-to-drink beverages. Opposer is continuously expanding
its lines of beverages (e.g., diet, energy, children’s) and
opposer has licensed the mark SOBE for use in connection
with chewing gum and chocolate bars. Opposer distributes
and sells a wide variety of merchandise (e.g., hats, t-
shirts, mouse pads, stickers, golf bags and balls, frozen
desserts, sports bottles, pillows, pens, tattoos,
snowboards, skateboards) bearing the SOBE mark.
Applicant is an individual citizen living in Florida.
After working in the beverage industry for many years (e.g.,
Seagram’s), he, his brother Barry Schwartz and his friend,
Stephen Mittleman, developed an idea for sparkling wine
containing edible gold flakes. After investigating the
possibilities, they located a winery in Chile; decided on
the mark “SoBé Sparkling Wine” after the South Beach area of
Miami, Florida; obtained all the necessary licenses; and
filed on August 3, 1994, an application claiming first use
on April 1, 1994. (According to the testimony of Stephen
Schwartz, his first sale was in November 1994. Dep., pp. 68-
71.) Sometime between 1996 and 1999 the Chilean winery
supplying applicant’s sparkling wine ceased operations and
from 1999 to 2001 applicant tried to find an alternative
supplier from France; more recently he has sought a supplier
from California or New York. According to Mr. Schwartz he
has identified a new supplier and stands ready to re-enter
Opposition No. 91121457
7
the sparkling wine market as soon as this trademark dispute
is resolved.
Standing
Applicant argued in his brief (pp. 30-31) that opposer
has not proven likelihood of confusion; that without
likelihood of confusion, there is no harm to opposer; and
that therefore opposer lacks standing.
Applicant’s view of standing is mistaken. After
explaining that a plaintiff must prove standing and a
ground, our primary reviewing Court, the Court of Appeals
for the Federal Circuit, explained standing as follows in
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000): “Standing is the more liberal
of the two elements and requires only that the party seeking
cancellation [or opposing registration] believe that it is
likely to be damaged by the registration.” See Section 13
of the Trademark Act, 15 U.S.C. §1063; and Golden Gate
Salami Co. v. Gulf States Paper Corp., 332 F.2d 184, 141
USPQ 661 (CCPA 1964). Thus, opposer need only prove a good
faith belief that it is likely to be damaged by the
registration if it issued. See also, 3 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition, §20:46 (4th
ed. 2001).
Action on three of opposer’s pending applications for
the marks SOBE (Serial Nos. 75937834 and 75937835) and SOBE
Opposition No. 91121457
8
ICE (Serial No. 76011389) for a wide variety of goods and
services has been suspended based on applicant’s prior filed
application involved herein, and the Examining Attorney has
advised opposer that if applicant’s application matures into
a registration it may be cited against opposer’s
applications under Section 2(d) of the Trademark Act. See
opposer’s notice of reliance IV. Thus, opposer demonstrated
its standing to bring this opposition. See Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185, 189 (CCPA 1982); Linville v. Rivard, 41 USPQ2d
1731, 1734 (TTAB 1996), aff’d at 133 F.3d 1446, 45 USPQ2d
1374 (Fed. Cir. 1998); and Rail-Trak Construction Co., Inc.
v. Railtrack, Inc., 218 USPQ 567, 571 (TTAB 1983).
In addition, opposer properly made of record status and
title copies of three of its four pleaded registrations,
specifically, Registration No. 2153152 for the mark SOBE for
“tea” in International Class 30 and “juice drinks containing
water” in International Class 32;2 Registration No. 2345815
for the mark SOBE for “frozen dairy products, namely, ice

2 Registration No. 2153152 issued April 21, 1998. The Board
hereby takes judicial notice that the USPTO accepted a Section 8
affidavit and acknowledged a Section 15 affidavit filed for this
registration. When a registration owned by a party has been
properly made of record in an inter partes case, and there are
changes in the status of the registration between the time it was
made of record and the time the case is decided, the Board will
take judicial notice of, and rely upon, the current status of the
registration as shown by the records of the United States Patent
and Trademark Office. See TBMP §704.03(b)(1)(A) (2d ed. rev
2004), and the cases cited therein. (footnote continued)
Opposition No. 91121457
9
cream; coffee; concentrates and solids for the preparation
of beverages, namely, coffee and tea; candies; cakes and
pastries” in International Class 30 and “concentrates and
solids for the preparation of juice drinks containing water,
sports nutritional drinks” in International Class 32;3 and
Registration No. 2256688 for the mark SOBE for “packaged tea
drinks, namely, tea, iced tea, tea flavored with fruit,
herbal tea and herbal food beverages” in International Class
30 and “packaged fruit juice drinks and packaged sports
drinks, all containing water” in International Class 32.4
Opposer has clearly established its standing in this
case.
Priority
In view of opposer’s ownership of valid and subsisting
registrations for its SOBE mark, as detailed above, the
issue of priority does not arise in this opposition
proceeding.5 See King Candy Co. v. Eunice King’s Kitchen,

However, opposer’s request in its reply brief (p. 4) that the
Board take judicial notice that this registration is now
incontestable is denied. The USPTO’s acknowledgment of a Section
15 affidavit is a ministerial act, not a legal adjudication.
Moreover, Section 15 incontestability relates to use of a mark,
not the registration thereof. Cf. Section 14 of the Trademark
Act.
3 Registration No. 2345815 issued April 25, 2000.
4 Registration No. 2256688 issued June 29, 1999.
5 Applicant did not counterclaim to cancel any of opposer’s
pleaded registrations.
Inasmuch as the issue of priority does not arise due to
opposer’s ownership of valid and subsisting registrations, and
because applicant did not file a counterclaim to cancel opposer’s
registrations, we do not consider opposer’s alternative argument
that it has priority because applicant abandoned his rights in
Opposition No. 91121457
10
Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974); Massey
Junior College, Inc. v. Fashion Institute of Technology, 492
F.2d 1399, 181 USPQ 272, at footnote 6 (CCPA 1972); and Carl
Karcher Enterprises, Inc. v. Stars Restaurants Corp., 35
USPQ2d 1125 (TTAB 1995).
Likelihood of Confusion
We turn now to consideration of the issue of likelihood
of confusion. Our determination of likelihood of confusion
is based on an analysis of all of the facts in evidence that
are relevant to the factors bearing on the issue of
likelihood of confusion.6 In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, 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). Based

his involved mark for sparkling wines by failing to use the mark
for the period 1997 – 2001. See opposer’s brief, pp. 23-24, and
opposer’s reply brief, pp. 4-5.
6 Opposer argues (brief, p. 25) that the relevant du Pont factors
in this case are the similarities of the parties’ marks; the fame
of opposer’s mark; the “competitive proximity of the parties’
goods and trade channels”; the lack of sophistication of
purchasers; the absence of third-party use of similar marks on
similar goods; and the extent to which opposer has prevented
unauthorized third-party use.
Applicant argues (brief, p. 13) that it “believes this Board
should consider all of the factors of DuPont as relevant to this
Board’s decision.”
Our primary reviewing Court has held that only those du Pont
factors shown to be material or relevant in the particular case
and which have evidence submitted thereon are to be considered.
We shall discuss each of the relevant and material du Pont
factors on which there is evidence herein.
Opposition No. 91121457
11
on the record before us in this case, we find that confusion
is likely.
We turn first to a consideration of the parties’ marks.
It is well settled that marks must be considered in their
entireties as to the similarities and dissimilarities
thereof. However, our primary reviewing Court has held that
in articulating reasons for reaching a conclusion on the
question of likelihood of confusion, there is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature or portion of
a mark. That is, one feature of a mark may have more
significance than another. See Cunningham v. Laser Golf
Corp., supra; Sweats Fashions Inc. v. Pannill Knitting Co.,
833 F.2d 1560, 4 USPQ2d 1793, 1798 (Fed. Cir. 1987); and In
re National Data Corporation, 753 F.2d 1056, 224 USPQ 749,
752 (Fed. Cir. 1985).
The word “SoBé” is the dominant portion of applicant’s
mark. The words “sparkling wine,” being the generic name of
the product, lack trademark significance. Because there is
no “correct” pronunciation of a trademark, someone who has
heard applicant’s mark and sees opposer’s SOBE mark may well
pronounce the words the same. See In re Belgrade Shoe, 411
F.2d 1352, 162 USPQ 227 (CCPA 1969); Interlego v.
Abrams/Gentile Entertainment Inc., 63 USPQ2d 1862 (TTAB
2002); and In re Lamson Oil Co., 6 USPQ2d 1041 (TTAB 1987).
Opposition No. 91121457
12
To the extent that consumers may understand SOBE or
“SoBé” to refer to the South Beach area of Miami, Florida,
they have the same connotation. People not aware of this
meaning will see both words as the same arbitrary term.
In terms of the appearance of the marks, applicant’s
arguments regarding each specific difference between the
mark shown in its application and opposer’s mark as used on
its products (including lower and upper case letters, lizard
designs, a diamond within the letter “O”) are not
persuasive. In determining registrability, we consider the
mark as it appears in applicant’s drawing and the mark as
registered by opposer.
The design (the square outline and the five stars) and
the stylized lettering of the words in applicant’s mark, do
not offer sufficient differences to create a separate and
distinct commercial impression. See In re Dixie Restaurants
Inc., supra. It is the word portion, and specifically the
term “SoBé,” not the design in applicant’s mark, that would
be used to call for applicant’s sparkling wines.
Moreover, the differences in the marks may not be
recalled by purchasers seeing the marks at separate times.
The emphasis in determining likelihood of confusion is not
on a side-by-side comparison of the marks, but rather must
be on the recollection of the average purchaser, who
normally retains a general rather than a specific impression
Opposition No. 91121457
13
of the many trademarks encountered; that is, the purchaser’s
fallibility of memory over a period of time must be kept in
mind. See Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); and
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735
(TTAB 1991), aff’d unpub’d (Fed. Cir., June 5, 1992).
When considered in their entireties, we find that the
respective marks are similar in sound, appearance,
connotation and overall commercial impression. See In re
Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB
1999).
Turning to the du Pont factor of the fame of opposer’s
mark, opposer has established that its mark SOBE is very
strong and well known in the field of tea and fruit juice
drinks. Opposer’s sales of its SOBE products are
substantial, with sales of $247.5 million in 2001 and $225
million in 2003.7 Opposer experienced tremendous success
and exponential growth of the SOBE products from its launch
in 1996.
Opposer’s advertising expenditures for 2001 and 2003
are $17 million and $19 million, respectively. Opposer’s
methods of advertising include the following: (i) radio

7 Michael Joyce testified that the sales figures were about 90%
U.S. sales and “10% if not less” are sales outside the U.S.
(Dep., p. 28.) The numbers set forth above are 90% of the sales
figures Mr. Joyce testified to.
Opposition No. 91121457
14
advertising since 1999, now done through 120 stations in the
top 35 markets (by population); (ii) television advertising
on network and cable channels (NBC, MTV, ESPN, Comedy
Central); (iii) print ads in consumer magazines such as
“Rolling Stone,” “Maxim,” “ESPN Magazine” and “Snowboarder”
and in trade magazines such as “Convenience Store News,”
Beverage Aisle” and “Supermarket News”; (iv) outdoor and
billboard advertisements; (v) opposer’s “Love Bus Tour”
which is on the road for 10 months of the year stopping at
retailers and at various events; (vi) sponsorships of events
such as the Gravity Games (e.g., skateboarding, motocross)
since 2001, which draws over 200,000 people and is televised
on NBC, and the U.S. Open Snowboarding Championships which
draws 30,000 people and is also broadcast on NBC; (vii)
sponsorship of a BMX motocross team, as well as of
individual athletes such as Travis Pastrana (motocross),
Andy McDonald (skateboarding), Biker Sherlock
(skateboarding), Kier Dillon (snowboarding) and John Daly
(golf); (viii) partnering with Microsoft Corporation on the
launch of Microsoft’s X Box gaming system, and with “Mad
Magazine” on a promotion of one of opposer’s new beverage
products, and on the re-release of the movie “Animal House”
with opposer’s coupons inside the DVDs; and (ix) hiring an
ad agency that handles opposer’s product placement in movies
Opposition No. 91121457
15
(e.g., “American Pie II”) and television shows (e.g.,
“Friends”).
Opposer has received extensive media coverage, as shown
by the several media stories dating from 1997 to 2003, most
of which are from printed publications available to the
general public such as “The Chicago Tribune,” “The St.
Petersburg Times,” “The New York Times,” “USA Today,”
“Forbes” and “Business Week,” with a few articles appearing
in the trade publications “Beverage Spectrum” and “Beverage
Industry Magazine.”
Opposer receives over 10 million hits per month on its
website, and it has a database of over 250,000 people with
whom opposer communicates about matters such as new products
and brand updates.
Opposer has won several packaging awards for its goods
(e.g., Clear Choice Award for a particular glass conatiner,
Beverage Institute Silver Award, Beverage Spectrum Award).
While opposer also asserts that in 2003 it was the
leader in the category of healthy refreshment beverages
(with approximately 15 different brands in that category
such as SNAPPLE, ARIZONA and NANTUCKET NECTARS), being the
number one selling brand in convenience stores and gas
stations and the number two selling brand in supermarkets
and grocery stores, the parameters of the IRI and Nielsen
studies on which this assertion is based were not made of
Opposition No. 91121457
16
record. Further, the field “healthy refreshment beverages”
(as characterized by opposer) is ambiguous and presumably
narrow.
Fame is relative, and even with opposer’s substantial
sales and advertising figures for two non-consecutive years,
media coverage, etc., we conclude that opposer has not
demonstrated that its SOBE mark has attained the level of
“fame” within the meaning of the du Pont factors, as such
marks as COCA-COLA or FRITO-LAY. See Sports Authority
Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782, 1796
(TTAB 2002).
However, we find that opposer’s mark SOBE is clearly
well known and a strong mark entitled to a broad scope of
protection. This factor favors opposer.
This increases the likelihood that consumers will
believe that applicant’s goods emanate from or are sponsored
by opposer. As the Court stated in Kenner Parker Toys Inc.
v. Rose Art Industries Inc. 963 F.2d 350, 22 USPQ2d 1453,
1456 (Fed. Cir. 1992):
A strong mark, on the other hand, casts
a long shadow which competitors must
avoid. See e.g., Nina Ricci, 889 F.2d
at 1074.
Thus, the Lanham Act’s tolerance for
similarity between competing marks
varies inversely with the fame of the
prior mark. As a mark’s fame increases,
the Act’s tolerance for similarities in
competing marks falls.

Opposition No. 91121457
17
The next du Pont factor is the similarity or
dissimilarity in the nature of the parties’ goods, as
identified in the application, and in opposer’s proven
registrations. It is well settled that goods need not be
identical or even competitive to support a finding of
likelihood of confusion, it being sufficient instead that
the goods are related in some manner or that the
circumstances surrounding their marketing are such that they
would likely be encountered by the same persons under
circumstances that could give rise to the mistaken belief
that they emanate from or are associated with the same
source. See In re Martin’s Famous Pastry Shoppe, Inc., 748
F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re Opus One
Inc., 60 USPQ2d 1812 (TTAB 2001); and Chemical New York
Corp. v. Conmar Form Systems Inc., 1 USPQ2d 1139 (TTAB
1986).
Applicant’s goods are identified as “sparkling wine”
and opposer’s identified goods include “tea,” “juice drinks
containing water,” “packaged tea drinks, namely, tea, iced
tea, tea flavored with fruit, herbal tea and herbal food
beverages” and “packaged fruit juice drinks and packaged
sports drinks, all containing water.”
Both parties sell beverages. Although applicant’s
product is alcoholic and opposer’s products are not, opposer
has submitted evidence showing that several companies
Opposition No. 91121457
18
manufacture and sell both alcoholic and non-alcoholic
beverages, sometimes under the same or similar marks.
Specifically, the evidence shows that the following
companies market both alcoholic and non-alcoholic beverages:
(i) Anheuser-Busch offers beer and its “180 Energy Drink”
(Maric dep., Exhibit Nos. 110-113); (ii) Seagram’s offers
gin, wine coolers and ginger ale (Maric dep., Exhibit Nos.
116-118); and (iii) Hansen’s offers sodas, juices and an
energy drink with vodka and malt liquor (Maric dep., Exhibit
Nos. 114-115). (See also, opposer’s notice of reliance II
on third-party registrations owned by Anheuser-Busch,
Seagram’s, and Hansen’s for marks separately covering
alcoholic and non-alcoholic beverages.)
In addition, opposer has submitted evidence that both
alcoholic and non-alcoholic beverages are advertised in the
same magazines (e.g., “Rolling Stone” and “Beverage Aisle” -
- Joyce dep., Exhibit Nos. 48 and 95); and that they are
both offered for sale in the same places (e.g.,
supermarkets; bevmo.com, missionliquors.com -- Maric dep.,
Exhibit Nos. 107 and 109).
Decisions of this Board and a predecessor Court to our
current primary reviewing Court have made clear that in
appropriate factual contexts, alcoholic beverages and non-
alcoholic beverages may be so related as to be likely to
cause confusion when similar marks are used thereon. See
Opposition No. 91121457
19
Pink Lady Corp. v. L.N. Renault & Sons, Inc., 265 F.2d 951,
121 USPQ 465 (CCPA 1959)(PINK LADY and design for wines held
confusingly similar to PINK LADY for, inter alia, fruit
juices for food purposes and packaged grapefruit juices for
beverage purposes); In re Modern Development Co., 225 USPQ
695 (TTAB 1985)(THE CANTEEN in stylized lettering for wine
in cans held confusingly similar to CANTEEN in stylized
lettering for, inter alia, ginger ale and root beer); and In
re Jakob Demmer KG, 219 USPQ 1199 (TTAB 1983)(GOLDEN HARVEST
and design for wines held confusingly similar to GOLDEN
HARVEST in stylized lettering for apple cider).
We find that these goods are related products within
the meaning of the Trademark Act. See Hewlett-Packard
Company v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d
1001, 1004 (Fed. Cir. 2002)(“even if the goods and services
in question are not identical, the consuming public may
perceive them as related enough to cause confusion about the
source or origin of the goods and services”); and Recot Inc.
v. M.C. Becton, 214 F.3d 1332, 54 USPQ2d 1894, 1898 (Fed.
Cir. 2000)(“even if the goods in question are different
from, and thus not related to, one another in kind, the same
goods can be related in the mind of the consuming public as
to the origin of the goods. It is this sense of relatedness
that matters in the likelihood of confusion analysis.”).
Opposition No. 91121457
20
Applicant urges that the goods are not sold in the same
trade channels, as opposer sells to the general public
primarily through supermarkets, convenience stores and mass
market retailers, whereas applicant, as required by law,
sells only to distributors who in turn sell to retailers
such as wine and liquor stores, bars, clubs, hotels and
restaurants. However, applicant’s response to opposer’s
interrogatory No. 10(b), regarding where applicant’s product
was offered for sale, stated that his distributors serviced
“wine and liquor stores, supermarkets, bars, clubs, hotels
and restaurant’s.” (Schwartz dep., Exhibit No. 27.) In his
brief (p. 20) applicant acknowledges that “supermarkets,
which sell wine, appear to be the only common channel of
trade between the two parties’ products.” Thus, we find
that the goods may travel in the same channels of trade. We
are not persuaded by applicant’s arguments that some states
do not permit the sale of wine outside of state-owned retail
liquor stores, or that, although opposer sells its products
at bars and restaurants (e.g., “Hard Rock Café,” through 56
locations in the United States), “there is very little
overlap.”
Neither applicant’s nor opposer’s identifications of
goods are limited in any way as to trade channels.
Moreover, the record is clear that there are at least some
Opposition No. 91121457
21
overlapping channels of trade, specifically, supermarkets
and bars/restaurants. This factor favors opposer.
Regarding the purchasers and the conditions of sale,
again there are no restrictions in the parties’ respective
identifications of goods with respect thereto. Therefore,
applicant’s argument that he sells his sparkling wine only
to “sophisticated” licensed distributors who in turn may
sell only to licensed retailers, is not relevant. Even
though applicant may be required by law to sell only to
licensed distributors, the ultimate potential purchasers of
applicant’s sparkling wine are those members of the general
public who are over 21 years old. Thus, the classes of
purchasers or ultimate purchasers of the parties’ goods
overlap.
Regarding the care purchasers would use in buying these
goods, there is insufficient evidence to support applicant’s
argument that the ultimate consumers of his alcoholic
beverage would be “more likely to ask for recommendations”
before purchasing wine or sparkling wine. Purchasers of
applicant’s sparkling wine, even if unsophisticated, as
applicant asserts, may well purchase wine without help from
a sales person, particularly if the purchase is made in a
supermarket. The fact that, as acknowledged by applicant,
his ultimate customers may be unsophisticated, only
increases the likelihood of confusion. Moreover, opposer’s
Opposition No. 91121457
22
tea and fruit juice beverages sell for about $1.00 to $2.50,
and applicant’s sparkling wine beverage sells for as low as
$10.00 per bottle. These are inexpensive goods that may be
purchased on impulse without the purchaser exercising any
particular care in making the purchasing decision. This
factor favors opposer.
Applicant concedes that there is no evidence of third-
party use or registration of the mark SOBE for similar
goods. In view thereof, applicant’s argument (without
evidence in support thereof) that the term SOBE “has been
applied to everything from furniture design to clothing to
hair care products” (applicant’s brief, p. 25) is not
persuasive. While opposer bears the burden of proof in
establishing its claim of priority and likelihood of
confusion, opposer is under no obligation to submit evidence
on du Pont factors which might favor applicant. If
applicant wanted evidence on this factor to be of record in
the case, he was free to present such evidence at trial in
defense of opposer’s claim. Applicant did not do so.
Neither party is aware of any instances of actual
confusion. However, as applicant’s use has, at best, been
minimal for several years, there has been no meaningful
opportunity for actual confusion to occur. Thus, the
absence of actual confusion is not surprising, and this du
Pont factor is neutral. In any event, the test is not
Opposition No. 91121457
23
actual confusion, but likelihood of confusion. See Weiss
Associates Inc. v. HRL Associates Inc., 902 F.2d 1546, 14
USPQ2d 1840 (Fed. Cir. 1990); and In re Azteca Restaurant
Enterprises Inc., supra.
Another du Pont factor to be considered in the case now
before us is “the variety of goods on which a mark is or is
not used (house mark, ‘family’ mark, product mark).” In re
E. I. du Pont de Nemours & Co., supra. Opposer has
registered the mark SOBE for teas and fruit juice drinks,
herbal food beverages, coffee, ice cream, candies, cakes,
pastries and concentrates and solids for the preparation of
tea, coffee and juice drinks. In addition, opposer sells
and distributes as promotional items a variety of general
consumer products, including hats, shorts, T-shirts,
snowboards, golf bags, golf balls, mouse pads, water
bottles, and guitars. Further, the record is clear that
opposer licenses use of its mark on gum and chocolate bars.
Purchasers aware of the variety of opposer’s goods sold
under the mark SOBE may well assume that opposer is now
offering sparkling wine under the mark SOBE. See Uncle
Ben’s Inc. v. Stubenberg International Inc., 47 USPQ2d 1310,
1313 (TTAB 1998).
In balancing the du Pont factors and giving each factor
involved herein the appropriate weight, because of the
similarity of the parties’ marks; the strength of opposer’s
Opposition No. 91121457
24
mark; the relatedness of the parties’ goods, as identified;
the same or overlapping trade channels; the same or
overlapping classes of purchasers; the inexpensive nature of
these goods and resulting “impulse” purchasing; and the
variety of goods on which opposer uses its mark; we find
that there is a likelihood that the purchasing public would
be confused by applicant’s use of his “SoBé Sparkling Wine”
and design mark for his goods.
Decision: The opposition is sustained and registration
to applicant is refused.