William Cole Vineyards, Inc.

Trademark Trial and Appeal Board

Nov 21, 2008

No. 76398982 (T.T.A.B. Nov. 21, 2008)

Mailed:
21 November 2008
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re William Cole Vineyards, LLC
________

Serial No. 76398982
_______

Montgomery G. Frankel, Esq. for William Cole Vineyards,
LLC.

T. Whittaker-Brown, Trademark Examining Attorney, Law
Office 111 (Craig D. Taylor, Managing Attorney).
_______

Before Seeherman, Drost, and Kuhlke, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On April 17, 2002, William Cole Vineyards, LLC
(applicant) filed an intent-to-use application to register
the mark WILLIAM COLE VINEYARDS in typed or standard
character form for “wine” in Class 33. Serial No.
76398982. Applicant has disclaimed the term “Vineyards”
THIS OPINION IS NOT A
PRECEDENT OF THE
TTAB
Ser. No. 76398982
2
and indicated that the name William Cole does not identify
a living individual.1
The examining attorney2 ultimately refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because she determined that there was
a likelihood of confusion in view of a registration of the
mark WILLIAM COLE in typed or standard character form for
“alcoholic beverages, namely, wines” in Class 33.3
After the examining attorney made the refusal final,
this appeal followed.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in 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 Co., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003) and Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000). In
considering the evidence of record on these factors, we
must keep in mind that “[t]he fundamental inquiry mandated
by § 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences

1 Applicant has filed a statement of use alleging January 1,
1997, as its dates of first use anywhere and in commerce.
2 The current examining attorney was not the original examining
attorney in this case.
3 Registration No. 2664416 issued December 17, 2002.
Ser. No. 76398982
3
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We begin by comparing the goods of applicant and
registrant. Registrant’s goods are alcoholic beverages,
namely, wines and applicant’s goods are wines. Therefore,
inasmuch as both applicant’s and registrant’s goods are
wine, we must treat the goods as being identical.
Applicant disagrees.
While it is true both subject products – applicant’s
and registrant’s – are wines, there the similarity
ends abruptly: Applicant’s goods are very high end,
very low volume, specialized Napa Valley Cabernet
Sauvignons, priced at $125-180 per bottle, produced in
limited quantities of less than 300 cases per year,
and directly sold only through applicant’s customer’s
list (a fact supporting the conclusion that “applicant
has limited its channels of trade”). Registrant
produces a wide variety of different wines in volumes
of well over 100,000 cases per year, priced at between
$8 and $12 per bottle, from the Casablanca Valley in
Chile. The two products would never be sold on the
same shelf, or even in the same location.

Brief at 3.

It has long been established that we must consider the
goods as they are identified in the identification of goods
in the application and registration. Octocom Systems, Inc.
v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
Ser. No. 76398982
4
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”). See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods”).
Therefore, we do not read limitations into the goods
based on applicant’s or registrant’s current use. Squirtco
v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir.
1983)(“There is no specific limitation and nothing in the
inherent nature of Squirtco’s mark or goods that restricts
the usage of SQUIRT for balloons to promotion of soft
drinks. The Board, thus, improperly read limitations into
the registration”). Because there are no limitations in
the identification of applicant’s and registrant’s wines,
we simply must conclude that both applicant and registrant
are selling wines of all types, including expensive and
inexpensive wines and wines from similar geographic
locations. In a similar case, the board held:
Applicant does not dispute the identity of the goods
but, rather, argues that its wine and the wine sold
under the cited “PETRUS” trademark are expensive,
high-quality wine sold to a small group of extremely
sophisticated wine connoisseurs through high-quality
Ser. No. 76398982
5
wine and spirits stores and that these well-informed
consumers are cognizant of the vineyard naming
conventions in France and are sensitized to the
vineyard naming practices whereby no connection
between vineyards is presumed due to the inclusion of
part of one vineyard's name in the name of another
nearby, albeit unrelated, vineyard. The problem with
this argument is that applicant is attempting to
restrict the scope of its goods in its application and
the scope of the goods covered in the cited
registration by extrinsic argument and evidence while
neither the recitation of goods in applicant's
application nor the recitation of goods in the cited
registration is so restricted. It is well settled
that in a proceeding such as this, the question of
likelihood of confusion must be determined by an
analysis of the marks as applied to the goods
identified in the application vis-a-vis the goods
recited in the registration, rather than what
extrinsic evidence shows those goods to be.

In re Bercut-Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB
1986). See also In re Opus One Inc., 60 USPQ2d 1812, 1817
(TTAB 2001) (While the applicant “offered evidence to show
that registrant's OPUS ONE wine is an expensive wine …
‘wine’ must be presumed to encompass inexpensive or
moderately-priced wine”). For purposes of our likelihood
of confusion analysis, we must assume that there are no
differences between applicant’s and registrant’s wines.
The identical nature of the goods also requires us to
conclude that the purchasers and channels of trade of
applicant’s and registrant’s wines are also identical.
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.2d 1261,
62 USPQ2d 1001, 1005 (Fed. Cir. 2002) (“[A]bsent
Ser. No. 76398982
6
restrictions in the application and registration, goods and
services are presumed to travel in the same channels of
trade to the same class of purchasers”); 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”); and 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”).
Applicant maintains that “sophisticated wine drinkers
are also by their very nature very sophisticated readers of
labels and thus very sophisticated distinguishers of winery
trademarks.” Brief at 3 (emphasis omitted). As we pointed
out above, neither applicant’s nor registrant’s goods are
limited to any particular type or price of wine. We must
also assume that the purchasers of these products would be
identical and that they would include sophisticated and
non-sophisticated purchasers. In a case involving
champagne and sparkling wines, the Federal Circuit held:
Ser. No. 76398982
7
Although some champagne can be expensive, many brands
sell for around $25 a bottle, and sparkling wines for
less than $10 a bottle. Moreover, general consumers,
not just connoisseurs, occasionally purchase champagne
or sparkling wines on celebratory occasions, with
little care or prior knowledge. And even more
sophisticated purchasers might be aware that champagne
houses offer both types of products under similar
marks, and could easily conclude that VEUVE ROYALE was
Veuve Clicquot’s sparkling wine. This market
expansion rationale undercuts Palm Bay’s argument that
because VCP has never sold a sparkling wine product or
low-priced champagne, and that it has always used its
CLICQUOT house mark in connection with its sales,
consumers would be unlikely to confuse Palm Bay’s
inexpensive sparkling wine and VCP's slightly more
expensive champagne products.

Palm Bay Imports, 73 USPQ2d at 1695.

The next factor that we consider is “the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.”
Palm Bay Imports, 73 USPQ2d at 1691 (quoting du Pont, 177
USPQ at 567). We note that when “marks would appear on
virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1701
(Fed. Cir. 1992)). The marks here are WILLIAM COLE and
WILLIAM COLE VINEYARDS. Applicant does refer to the marks’
“differing fonts” (Reply Brief at 2), but both marks are
displayed in typed form so we must assume that the marks
can be displayed identically.
Ser. No. 76398982
8
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1847 (Fed. Cir. 2000) (“Registrations with typed
drawings are not limited to any particular rendition of the
mark and, in particular, are not limited to the mark as it
is used in commerce”); and Squirtco, 216 USPQ at 939
(“[T]he argument concerning a difference in type style is
not viable where one party asserts rights in no particular
display”).
As a result, applicant’s mark includes the entire
registered mark with the only difference being the addition
of the disclaimed term “Vineyards.” Disclaimed matter is
often “less significant in creating the mark’s commercial
impression.” In re Code Consultants, Inc., 60 USPQ2d 1699,
1702 (TTAB 2001). Here, the term “Vineyards” would be at
least descriptive for wines. “Regarding descriptive terms,
this court has noted that the ‘descriptive component of a
mark may be given little weight in reaching a conclusion on
the likelihood of confusion.’” Cunningham, 55 USPQ2d at
1846, quoting, In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 752 (Fed. Cir. 1985). A vineyard is defined
as “a plantation of grapevines, esp., one producing grapes
for winemaking.” The Random House Dictionary of the
Ser. No. 76398982
9
English Language (unabridged) (2d ed. 1987).4 Because both
goods are wines that could originate from a vineyard, it is
unlikely that purchasers would rely on this term in
applicant’s mark to distinguish the marks. Thus, the marks
WILLIAM COLE and WILLIAM COLE VINEYARDS are very similar.
Wella Corp. v. California Concept Corp., 558 F.2d 1019, 194
USPQ 419, 422 (CCPA 1977)(CALIFORNIA CONCEPT and design
held likely to be confused with CONCEPT for hair care
products).
Applicant also argues that the there has been no
actual confusion, but this factor is not significant here
where we have little evidence of the actual use of
applicant and registrant.
With regard to the seventh DuPont factor, we agree
with the Board that Majestic’s uncorroborated
statements of no known instances of actual confusion
are of little evidentiary value. See In re Bissett-
Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529
(CCPA 1973) (stating that self-serving testimony of
appellant's corporate president’s unawareness of
instances of actual confusion was not conclusive that
actual confusion did not exist or that there was no
likelihood of confusion). A showing of actual
confusion would of course be highly probative, if not
conclusive, of a high likelihood of confusion. The
opposite is not true, however. The lack of evidence
of actual confusion carries little weight, J.C. Hall
Co. v. Hallmark Cards, Inc., 52 C.C.P.A. 981, 340 F.2d

4 We take judicial notice of this definition. 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).

Ser. No. 76398982
10
960, 964, 144 USPQ 435, 438 (CCPA 1965), especially in
an ex parte context.

Majestic Distilling, 65 USPQ2d at 1205.5

Finally, applicant points out that the original
examining attorney did not cite the ‘416 registration, and
the next examining attorney did not cite the mark until
after applicant’s mark was allowed.6 Certainly, the fact
that the ‘416 registration was not cited in the first
Office action is regrettable, but this fact does not
circumscribe the protection to which the cited registration
is entitled. Accord In re J.M. Originals Inc., 6 USPQ2d
1393, 1394 (TTAB 1987) (“[T]hird party registrations relied
upon by applicant cannot justify the registration of
another confusingly similar mark”), quoting Plus Products
v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983).
In this case, when we consider that the goods (wine),
channels of trade, and purchasers are legally identical,
and the marks are very similar (WILLIAM COLE VINEYARDS and
WILLIAM COLE), we conclude that there is a likelihood of
confusion.

5 While applicant also argues that it is “the senior user,”
(Brief at 5), “[p]riority of use is not an issue in this ex-parte
Section 2(d) case.” In re Kent-Gamebore Corp., 59 USPQ2d 1373,
1374 n.3 (TTAB 2001).
6 The examining attorney reported that because “the application
was abandoned, the Office records have been searched again.”
Final Office Action at 2.
Ser. No. 76398982
11
Decision: The refusal to register applicant’s mark
WILLIAM COLE VINEYARDS under Section 2(d) of the Trademark
Act is affirmed.