White Rock Distilleries, Inc.

THIS OPINION IS A CITABLE

PRECEDENT OF THE TTAB

Hearing: Mailed: October 5, 2009

August 11, 2009 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE

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Trademark Trial and Appeal Board

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In re White Rock Distilleries, Inc.

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Serial No. 77093221

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Daniel I. Schloss of Greenberg Traurig, LLP for White Rock

Distilleries, Inc.

Renee Servance, Trademark Examining Attorney, Law Office

111 (Craig D. Taylor, Managing Attorney).

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Before Quinn, Hairston and Bergsman, Administrative

Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

An application was filed by White Rock Distilleries,

Inc. to register the mark VOLTA (standard character format)

for goods ultimately identified as “energy vodka infused

with caffeine” in International Class 33.1

Registration was refused by the trademark examining

attorney under Section 2(d) of the Trademark Act on the

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Serial No. 77093221, filed January 29, 2007, alleging a date of

first use anywhere and a date of first use in commerce of August

20, 2007.

Ser No. 77093221

ground that applicant’s mark, when used on applicant’s

goods, so resembles the previously registered mark shown

below

for “sparkling fruit wine; sparkling grape wine; sparkling

wine; wines,”2 as to be likely to cause confusion.

When the refusal was made final, applicant appealed.

Applicant and the examining attorney filed briefs.

Our determination of the issue of likelihood of

confusion is based on analysis of all of the probative

2

Registration No. 3247456, issued May 29, 2007. The

registration contains the following statements: (1) The mark

consists of the drawing of a vine shoot in various shades of

brown and black, below of which appears the word TERZA in capital

black letters and below it the word VOLTA in smaller capital

yellow letters. The color brown appears in the vine shoot

drawing. The color black appears in the vine shoot drawing as

well as in the word TERZA. The color yellow appears in the word

VOLTA. (2) The color(s) Black, Brown and Yellow is/are claimed

as a feature of the mark. (3) The foreign wording in the mark

translates into English as third party.

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Ser No. 77093221

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,

however, two key considerations are the similarities

between the marks and the similarities between the goods.

See Federated Foods, Inc. v. Fort Howard Paper Co., 544

F.2d 1098, 192 USPQ 24 (CCPA 1976).

We first turn to compare the marks. In determining

the similarity or dissimilarity of the marks, we must

compare the marks in their entireties as to appearance,

sound, connotation and commercial impression. Palm Bay

Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En

1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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 their overall

commercial impression that confusion as to the source of

the goods offered under the respective marks is likely to

result. The focus is on the recollection of the average

purchaser, who normally retains a general rather than

specific impression of trademarks. Sealed Air Corp. v.

Scott Paper Co., 119 USPQ 106 (TTAB 1975).

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Ser No. 77093221

As to appearance, we find that the prominent design

feature and the term TERZA in the registered mark serve to

distinguish the registered mark visually from applicant’s

mark. The term TERZA clearly dominates over the term VOLTA

in the registered mark as TERZA appears in large bold

letters above VOLTA. The examining attorney contends that

the respective marks are similar because applicant may

display its VOLTA mark in the same lettering as the literal

portion of registrant’s mark and with a similar design.

When a word is registered in standard character format, the

Board must consider all reasonable manners of display that

could be represented, including the same stylized lettering

as that in which a registrant’s mark appears. See Phillips

Petroleum Co. v. C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ

35 (CCPA 1971). See also, In re Data Packaging Corp., 453

F.2d 1300, 1302 (CCPA 1972) [“It seems to be well

established that a single registration of a word mark may

cover all of its different appearances, potential as well

as actual”]. In this case, however, the literal portion of

registrant’s mark does not appear in stylized lettering.

Rather, it appears in a plain block style of lettering

under the more prominent design. Furthermore, rights

associated with a word mark in standard character (or

typed) form reside in the wording and not in any particular

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Ser No. 77093221

display of the word. See Trademark Manual of Examining

Procedure (TMEP) §1207.01(c)(iii)(5th ed. 2007). Generally,

rights in the word would not be extended to include

protection for that word combined with, for example, other

words or a design element. See Fossil, Inc. v. The Fossil

Group, 49 USPQ2d 1451, 1454 (TTAB 1998) [“[O]pposer’s typed

drawing registrations of FOSSIL afford opposer a scope of

protection which encompasses all reasonable manners in

which the word FOSSIL could be depicted including, simply

by way of example, all lower case block letters, all upper

case block letters, a mixture of lower case and upper case

block letters and various script forms. However, opposer’s

registrations of the word FOSSIL in typed drawing form do

not afford opposer rights in the word FOSSIL combined with

other wording or with designs”]. In this case, it would

not be reasonable to assume that applicant’s VOLTA mark

would be presented with the design element appearing in

registrant’s mark. In sum, we find that the respective

marks are not similar in appearance.

As to sound, because the literal portion of the

registered mark begins with the term TERZA, this mark

sounds somewhat different from applicant’s mark.

With respect to connotation, the examining attorney

has offered several different meanings of the individual

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Ser No. 77093221

terms “terza” and “volta” in Italian. Regardless of the

various meanings, we find that the marks, as applied to the

respective goods, are arbitrary. In other words, neither

mark has any meaning as applied to the respective goods.

At best, applicant’s VOLTA mark may be considered a “play”

on the word “volt,” and suggest a “rush,” when applied to

applicant’s energy vodka infused with caffeine.

Registrant’s TERZA VOLTA and design mark, however, makes no

such suggestion when applied to registrant’s wines. In

short, we find that the respective marks do not have

similar connotations.

Finally, when we consider the marks in their

entireties, we find that they engender different commercial

impressions. The du Pont factor of the similarity of the

marks, therefore, favors applicant.

We next consider the goods, trade channels, and

purchasers. It is not necessary that the respective goods

be identical or even competitive in order to support a

finding of likelihood of confusion. Rather, it is

sufficient that the goods are related in some manner, or

that the circumstances surrounding their marketing are such

that they would be likely to be encountered by the same

persons in situations that would give rise, because of the

marks used thereon, to a mistaken belief that they

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Ser No. 77093221

originate from or are in some way associated with the same

source or that there is an association or connection

between the sources of the respective goods. In re

Melville Corp., 18 USPQ2d 1386 (TTAB 1991); In re

International Telephone & Telegraph Corp., 197 USPQ2d 910

(TTAB 1978).

We find that the examining attorney has failed to

establish on this record that applicant’s goods and

registrant’s goods are related. There is no per se rule

that holds that all alcoholic beverages are related. See

G. H. Mumm & Cie v. Desnoes & Geddes Ltd., 917 F.2d 1292,

16 USPQ2d 1635 (Fed. Cir. 1990)[RED STRIPE and design for

beer was not confusingly similar to a design of a red

stripe for wines and sparkling wines]; National Distillers

and Chemical Corp. v. William Grant & Sons, Inc., 505 F.2d

719, 184 USPQ 34 (CCPA 1974) [DUET for prepared alcoholic

cocktails, some of which contained brandy, and DUVET for

French brandy and liqueurs not confusingly similar]. See

also, TMEP §1207.01(a)(iv) [“there can be no rule that

certain goods or services are per se related, such that

there must be a likelihood of confusion from the use of

similar marks in relation thereto”].

The examining attorney submitted excerpts from

several Internet websites showing that (1) vodka and wine

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Ser No. 77093221

are offered on the same website to the same consumers, and

(2) there are several vodkas which are made with wine

grapes. This evidence, however, is hardly sufficient to

convince us that applicant’s energy vodka infused with

caffeine and registrant’s wines are related. There is no

evidence that vodka, much less applicant’s specific type of

vodka, and wine emanate from a single source under a single

mark. Also, there is no evidence that energy vodka infused

with caffeine and wine are ingredients for any particular

cocktails such that we could consider them complementary

products that would be bought and used together. Although

vodka and wine may both be described generally as

“alcoholic beverages,” this is insufficient to establish

that applicant’s and registrant’s goods are related. See

General Electric Company v. Graham Magnetics Inc., 197 USPQ

690 (TTAB 1977) [It is not enough to find one term that may

generically describe the goods]. Furthermore, although we

may assume that vodka and wine are sold to the same class

of purchasers, namely persons of legal drinking age, this

is not a sufficient basis on which we may conclude that

such goods are related. In this case, the examining

attorney has failed to present evidence which establishes

that applicant’s energy vodka infused with caffeine and

registrant’s wines are related goods. The du Pont factor

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Ser No. 77093221

of the similarity of the goods, therefore, favors

applicant.

Balancing the du Pont factors in this case, we find

that notwithstanding that the respective goods travel in

the same channels of trade to the same class of purchasers,

confusion is unlikely because the marks are too dissimilar

and the goods have not been shown to be related.

Decision: The refusal to register under Section 2(d)

is reversed.

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