Thursday, October 31, 2013

TTAB Dismisses 2(d) Opposition Due to Lack of Proof That Wine and Apple Beverages Are Related

In many, if not most, cases involving wine and other beverages [See TTABlog collection here], the Board finds the goods to be related for purposes of its likelihood of confusion analysis. Not here. Opposer Franciscan's proofs fell short. Franciscan Vineyards, Inc. v. Domaines Pinnacle, Inc., Opposition No. 91178682 (October 16, 2013) [not precedential].


Applicant sought to register the mark DOMAINE PINNACLE & Design (shown above) for "apple juices and apple-based non-alcoholic beverages" [DOMAINE disclaimed]. Franciscan claimed likelihood of confusion with its registered marks PINNACLES and PINNACLE RANCHES for wine [RANCHES disclaimed]. Applicant, appearing pro se, neither submitted evidence nor filed a brief.

As to the marks, the Board noted the disclaimer of DOMAINE (meaning "estate") and the large size of the word PINNACLE in applicant's mark, leading it to concluded that the word PINNACLE is the dominant term in the applied-for mark. Consequently the Board found the marks to be "highly similar in sound and appearance." Moreover, the Board concluded, the marks are similar are similar in connotation and commercial impression.

Opposer Franciscan maintained that its mark PINNACLES is famous in light of 40 years of use, worldwide sales revenues, and accolades in print publications. Not enough, said the Board. U.S. sales figures were not broken out, and the unsolicited media recognition was sparse. And so this du Pont factor was neutral.

There was no evidence of third-party use of the mark PINNACLE, but the Board refused to conclude that the mark was therefore commercially strong, since applicant did not provide any evidence at all on the issue. The Board pointed out that evidence of third-party use is typically submitted by the defendant, and "the absence in the record of third-party uses cannot lead us to the factual determination that either of opposer's marks are strong and therefore deserving of a wide scope of protection." Moreover, opposer's marks are not conceptually strong in view of the laudatory connotation of PINNACLE.


The ordinary channels of trade for the involved goods overlap in that both wine and apple beverages are sold through wholesalers as well as retail store outlets such as grocery and convenience stores. The classes of consumers are the same. Therefore the third and fourth du Pont factors favored Opposer.

Turning to the goods, Franciscan cited several Board decisions finding wine related to apple cider, soft drinks, and powered apple-flavored drinks. But the Board observed that each case must be decided no its own factual record, and here opposer has the burden to show by a preponderance of the evidence that the goods are related for Section 2(d) purposes.

Franciscan pointed to several websites in arguing that the parties are competitors in Canada with respect to wine and ice wine. However, "[t]he probative value, if any, of foreign information sources must be evaluated on a case-by-case basis." There was no evidence regarding exposure of US consumers to these websites. Nor was there evidence that these goods were sold in Canada under the same brand name.

Opposer did not introduce evidence that the same entities produce and sell both wine and “[a]pple juices” or “apple-based non-alcoholic beverages,” or that they market said products under the same mark in the United States. We have no evidence before us that wine and apple juice or “apple-based non-alcoholic beverages” are complementary products (for example, consumed together at the same meal) or that these products are sold in proximity to each other in retail outlets such as grocery stores.

The Board concluded that this third du Pont factor did not favor a finding of likely confusion. Moreover, the lack of evidence regarding relatedness of the goods outweighed the first, third, and fourth factors, which favored opposer.

Therefore, the Board concluded that opposer Franciscan had failed to prove likelihood of confusion by a preponderance of the evidence, and it dismissed the opposition.

Read comments and post your comment here.

TTABlog note: The rope-a-dope technique employed by applicant was successful. In fact due to applicant's failure to put in any evidence on the issue of third-party use, the Board strangely refused to find that the lack of third-party usage bolstered the commercial strength of opposer's marks. This seems wrong to me. If there is no evidence of third-party use, why should a defendant who does nothing be shielded from the probative effect of that lack of evidence? Was it up to opposer to prove the negative?

Text Copyright John L. Welch 2013.

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