Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA253026
`ESTTA Tracking number:
`12/04/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91181755
`Plaintiff
`Franciscan Vineyards
`Stephen L. Baker
`Baker & Rannells, PA
`575 Route 28, Suite 102
`Raritan, NJ 08869
`UNITED STATES
`officeactions@br-tmlaw.com,k.hnasko@br-tmlaw.com
`Motion for Summary Judgment
`Stephen L. Baker
`officeactions@br-tmlaw.com,l.kurth@br-tmlaw.com,k.hnasko@br-tmlaw.com
`/Stephen L. Baker/
`12/04/2008
`Motion for Summary Judgment.pdf ( 23 pages )(578056 bytes )
`Peterson Declaration w Exhibits.pdf ( 167 pages )(16549818 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`ESTTA253026
`ESTTA Tracking number:
`12/04/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91181755
`Plaintiff
`Franciscan Vineyards
`Stephen L. Baker
`Baker & Rannells, PA
`575 Route 28, Suite 102
`Raritan, NJ 08869
`UNITED STATES
`officeactions@br-tmlaw.com,k.hnasko@br-tmlaw.com
`Motion for Summary Judgment
`Stephen L. Baker
`officeactions@br-tmlaw.com,l.kurth@br-tmlaw.com,k.hnasko@br-tmlaw.com
`/Stephen L. Baker/
`12/04/2008
`Motion for Summary Judgment.pdf ( 23 pages )(578056 bytes )
`Peterson Declaration w Exhibits.pdf ( 167 pages )(16549818 bytes )
`
`Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`FRANCISCAN VINEYARDS, lNC.,
`
`Opposition No. 91181755
`
`Opposer,
`
`Mark:
`
`BLACK RAVEN BREWING
`COMPANY
`
`V.
`
`BEAUXKAT ENTERPRISES, LLC
`
`Appiicant.
`
`Serial No.
`
`77223446
`
`Filed:
`
`_
`January 8, 2008
`
`OPPOSER’S MOTION FOR SUMMARY JUDGMENT
`
`AND BRIEF IN SUPPORT THEREOF
`
`Opposer, by its attorneys, moves pursuant to Federal Rule of Civil Procedure 56,
`
`for Summary Judgment, denying registration of Applicant's application Ser. No.
`
`77/223,446 for the mark BLACK RAVEN BREWING COMPANY for beer on the basis of
`
`priority and likelihood of confusion. Opposer requests suspension of this matter
`
`pending disposition of this Motion.
`
`I.
`
`INTRODUCTION AND BACKGROUND
`
`Opposer, Franciscan Vineyards,
`
`inc. ("Opposer") owns the marks and names
`
`RAVENS, RAVENSWOOD and variations, as well as various logos of a single black
`
`raven and three black ravens on which it uses on and in association with wine and
`
`related goods and services. This is a case involving confusingly similar marks used on
`
`and in association with highly related products, namely, "wine" on the one hand and
`
`“beer" on the other hand.
`
`
`
`A. Opgoser:
`
`FVI
`
`is located in Sonoma County, California at 1178 Galleron Road, St. Helena,
`
`California, 94574. FVI is a wholly owned subsidiary of Constellation Brands, Inc. of 116
`
`Buffalo St., Canandaigua, New York (See Declaration of Joel Peterson (hereinafter
`
`"Peterson Dec|.")).1
`
`Opposefls Marks: Opposer
`
`is the owner of
`
`the Marks RAVENSWOOD,
`
`RAVENS, and variations thereof as a trademark, trade name, and as a service mark, as
`
`well as various logos of a raven and/or ravens, as applied to wines, sauces, clothes and
`
`related and complementary goods and services.
`
`Opposer’s owns the following marks of the graphic logos of a raven and/or
`
`ravens that it uses on its website2 and in its advertisingsz
`
`
`
`1 See Declaration of Joel Peterson. (hereinafter "Dec|. Peterson") ‘ll 1.
`2 See Decl. Peterson. Exh. 3 containing prints of web pages using singular raven marks.
`3 See Decl. Peterson Exh. 4 for representative advertisement using singular raven mark.
`
`Page 2
`
`
`
`
`
`Opposer is also the owner of, and is relying upon, the following registrations in
`
`support of the opposition proceeding:
`
`
`
`RAVENSWOOD
`
`211s152*
`
`12/2/97
`
`25
`
`
`
`
`
`
`Mark Consists of the
`
`design of 3 Black
`Ravens
`.
`In a Clrcle
`
`’
`
`Mark Consists of the
`
`design of 3 Black
`Ravens
`
`inaCirole
`
`2118153,,
`
`1/20/98
`
`33
`
`
`
`
`
`2130653*
`
`1/20/98
`
`33
`
`ine
`
`
`
`
`
`
`
`
`
`Clothing, namely,
`aprons, bandanas,
`F3PS= .9V”‘ S“°”51 “a"5~
`eans jackets, polo
`shirts, tank tops, T-
`shirts, and sweatshirts
`
`.
`Clothing, namely,
`aprons, bandanas,
`caps, gym shorts, hats,
`'ear1s jackets, polo
`hirts, tank tops, T—
`hirts, and sweatshirts
`
`RAVENSWOOD
`Rm/ENS
`RAVENS
`
`1/27/98 %
`2132719:
`9/28/04
`2sasees*
`8/29/06
`
`prons, Shirts, T—shirts,
`
`25,33
`
`Page 3
`
`
`
`
`
`
`
`""3“833 —
`
`
`
`RAG|N' RAVEN
`
`‘ID/10/O6
`
`RAG|N' RAVEN
`
`3153731
`
`3336587
`
`‘l1/13/O7
`
`RAVENS WOOD
`
`3457923
`
`O7/01/O8
`
`
`
`*denotes incontestable status
`
`
`
`
`
`Barbecue sauce;
`Picante sauce; Ready-
`made sauces; Sauces;
`Sauces for barbecued
`
`
`
`meat
`
`
`Said registrations are in full force and effect on the Principal Register and four of
`
`them have become incontestablef’ Opposer’s marks (i.e., the marks disclosed in the
`
`above registrations as well as Opposer’s common law rights in the above Marks and
`
`variations thereof) are referred to hereinafter collectively as the “RAVENS Marks".
`
`Oggoser’s Goods And Services:
`
`FVI sells a variety of wines under the RAVENS Marks,
`
`including Zinfandel,
`
`Merlot, Chardonnay, Cabernet Franc, Cabernetrsauvignon, Petite Sirah, Muscat,
`
`Carignane, and Gewurztraminer (the “RAVENS wines"). The RAVENS wines are sold
`
`throughout the United States and throughout the world, through all legal channels of
`
`trade, including wine and liquor stores, grocery stores, restaurants, bars, and taverns.
`
`The Ravenswood winery has been known as Ravenswood Winery since 1976.
`
`Ravenswood has been selling wines under its Marks since ‘I978 (the first crush being
`
`‘ Copies of said registrations are annexed to the accompanying declaration of Linda Kurth as Exhibit "1"
`thereto (hereinafter, “Decl. Kurthf’).
`
`Page 4
`
`
`
`Caps,Jackets, Wines
`
`Barbecue sauce;
`Picante sauce; Ready-
`made sauces; Sauces;
`Sauces for barbecued
`
`meat
`
`
`
`
`
`in 1976) and continuously to the present date.5 (See Declaration of Joel Peterson
`
`(hereinafter “Peterson Decl.")).
`
`Beginning in 1981, FVl has also sold a large variety of gift items under the
`
`RAVENS Marks,
`
`including without iimitation, various articles of clothing apparel and
`
`accessories, glassware,
`
`carafes,
`
`corkscrews, coasters, pepper grinders,
`
`crumb
`
`scrapers, BBQ sauce, olive oil, picnic bags, watches, bumper stickers, Christmas tree
`
`ornaments,
`
`totes, aprons, hand towels, and pendants.5 Opposer also sells food
`
`products at its Visitor Center,
`
`including without
`
`limitation, nuts, olive oil, barbeque
`
`sauces, and tomato sauces.7
`
`Opposer has offered wine tastings at the winery since at least as early as 1991
`
`and continuously to the present date.
`
`Opposer has offered tours of the winery for
`
`many years. Visitors come from throughout the United States and throughout the world.
`
`Ravenswcod Winery is located in the well—known Sonoma County wine region in
`
`California. Opposer’s wine tours and wine tastings are advertised and promoted
`
`through tourist/convention centers and chambers of commerce, advertisements in trade
`
`publications, brochures, and notices in northern California hostelries.B
`
`Opposer maintains a picnic area on the winery grounds which is open tolthe
`
`public and available to visitors. Additionally, Opposer has, since ‘I992 offered weekend
`
`barbecues at the winery. Typically, each BBQ is attended by somewhere between 50-
`
`100 people, depending on the weekend.9
`
`Elm‘--lfl’ILl'I
`
`Decl. Petersonfl 5.
`Decl. Peterscnfl El.
`Decl. Petersonfl 8.
`Decl. Peterson ‘ll 9.
`Decl. Peterson 1] ‘ID.
`
`Page 5
`
`
`
`Opposer has always held hospitality events at the winery, such as dinners,
`
`distributor tastings and meals, wine writer events and club or group events. These
`
`various events are either catered or tied into the Ravens BBQ theme using the
`
`Ravenswood Winery on-site chef. Since 1995, there have been an average of 40-50
`
`such events per year ranging in size from 10-300 peop|e.1°
`
`Opposer is a longtime donor and supporter of community and charitable events
`
`and programs, contributing financial support and gifts of wine. Attached to the
`
`accompanying Declaration of Joel Peterson as Exhibit 2 are certain representative
`
`business data base records detailing some of the thousands of donations or wine and
`
`wine pouring.”
`
`Opposer's goods and services described in the above paragraphs are sometimes
`
`hereinafter referred to collectively as "Raven's Goods and Services".
`
`B. Aggiicant
`
`Applicant, Beauxkat Enterprises, LLC (“Applicant”),
`
`filed an intent
`
`to use
`
`application to register the mark BLACK RAVEN BREWING COMPANY for beer.”
`
`Applicant intends to open a brewpub for the sale of, among other things, the goods
`
`under Applicants Mark and has a corporate address of 14687 NE 95"‘ Street, Redmond
`
`Washington, 98052.”
`
`1” Decl. Peterson 11 11.
`“ Deci. Peterson 1112.
`*2 Dec|.Kurth Exh.
`*3 Decl.Kurth Exh. "4."
`
`Page 6
`
`
`
`C. Procedural Histogy and Discovefl
`
`On January 8, 2008, Opposer filed a Notice of Opposition requesting that the
`
`Trademark Trial and Appeal Board deny registration of Applicant's Application Serial
`
`No. 77/223,446 for the mark BLACK RAVEN BREWING COMPANY for beer on the
`
`grounds of priority and likelihood of confusion.” On February 15, 2008, Applicant filed
`
`its Answer to the Notice. On April 29, 2008, Opposer served its first set of document
`
`requests, interrogatories and requests for admission to Applicant. On June 4, 2008,
`
`Applicant filed its responses.” On July 23, 2008, Opposer served its second set of
`
`document requests, interrogatories and requests for admssion to Applicant. On August
`
`22, 2008, Applicant served Opposer with interrogatories and document requests. That
`
`same day, Applicant filed its responses to Opposer‘s second set of discovery.”
`
`Discovery in the present case reveals that Applicant intends to sell and to serve
`
`beer under its Mark at its own brewpub in addition to related goods similar to those of
`
`Opposer. in response to Opposer's lnterrogatory No. 1 asking Applicant to describe, by
`
`common commercial name, each product that is intended to be sold or offered for sale
`
`in the United States under Applicant's Mark, Applicant listed the following”:
`
`Core beer products:
`
`Biack Raven IPA
`Biack Raven Morrighan's Stout
`Black Raven Pale Ale
`
`Black Raven Second Sight Scotch
`
`Seasonal products to be determined
`General merchandise/promotional items to be determined
`Glassware
`
`T—Shirts
`
`“‘ Kurth Decl. Exhibit
`1"’ Kurth Dec], Applicant's Responses to interrogatories and Supplements, Exhibit “4."
`‘E’ Kurth Dec], Applicant's Responses to Second interrogatories and Requests for Admission, Exhibit
`17 Kurth Decl. Exhibit "4."
`
`Page 7
`
`
`
`Coasters
`
`In response to lnterrogatory No. 2 asking Applicant to identify all of Appiicant‘s
`
`intended distributors, suppliers, sellers, and iicensees of each product identified in
`
`response to interrogatory No. 1, Applicant responded,
`
`Black Raven beers to be sold on premises retail (brewpub).
`Black Raven beers sold wholesale through self distribution.”
`
`Discovery also reveals that Applicant intends to setl wine at said brewpub.
`
`in
`
`response to Opposer’s Requests for Admission No. 19, Applicant admitted that
`
`it
`
`intends to sell wine at the brewpub identified by Applicant in its response to Opposer's
`
`lnterrogatory #2.” In response to Request for Admission No. 16, Applicant admitted
`
`that it plans to use its Mark on its brewpub.” Applicant further admitted that it was
`
`aware of one wine that incorporated the term RAVEN in its name and logo, and goods
`
`sold under Opposer’s RAVEN Marks were available at retail stores in general and at
`
`retail stores in the Redmond Washington area, in the vicinity where Applicant intends to
`
`open its brewpub, at the time that Applicant filed its application.”
`
`in response to Opposer's Request for Production of Documents No. 4, asking
`
`Applicant to produce a specimen of each logo, label, packaging or other printed material
`
`bearing Applicant's Mark which Applicant planned to use in the United States in related
`
`to its goods, Applicant produced the following
`
`copy of a graphic design of a raven
`
`bearing Applicant's Mark:22
`
`*5 Kurth Decl. Exhibit "4."
`‘Q Kurth Dec]. Exhibit “5," Applicant's Response to Request for Admission #19-
`2” Kurth Deol. Exhibit
`Applicant's Response to Request for Admission #15.
`2‘ Kurth Decl. Exhibit “4"_ Supplemental Responses # 2 and 6 to Request for Admission.
`29 Kurth Decl. Exhibit "6."
`
`Page 8
`
`
`
`
`
`ll. ARGUMENT
`
`The “determinative" issue on a motion for summary judgment is whether the
`
`moving party has demonstrated the lack of any genuine issues of fact, with all
`
`ambiguities and inferences resolved against the movant. See, Adickes V. S.H. Kress &
`
`Co., 398 U.S. 144, 157 (1970). Here, there is no genuine issue offact that Opposer has
`
`priority and the Marks are confusingly similar as applied to the related goods of the
`
`parties.
`
`A. Oggoser Has Priority
`
`Priority is not an issue in this proceeding. Opposer has proved ownership of a
`
`incontestable registration for RAVENSWOOD for wine, an incontestable registration for
`
`RAVENS for wine and an incontestable registration for the design mark of three ravens
`
`in a circle for wine, making priority a moot point. E Oxford Pendaflex Corp. v. Anixter
`
`Bros.
`
`|nc., 201 USPQ 851, 853 (Tl'AB 1978); and Black & Decker Mfg. Co., v. Bright
`
`Star Industries, 220 USPQ 891 (TTAB 1983).
`
`Further, Opposer has demonstrated
`
`actual priority, having sold wine under the RAVENS and RAVENSWOOD marks as well
`
`since 1978. Opposer has also used its ravens design marks and it singular raven logos
`
`Page 9
`
`
`
`well before Applicant's filing date. The earliest date of use that Applicant could allege is
`
`September 2007 (the date of first use alleged in its application).
`
`Opposer has demonstrated long prior and continuous use of the RAVENS Marks
`
`on wine since at least as early as 1978; and on a variety of merchandise sold at the
`
`winery visitor center since at least as early as I981.”
`
`B. Summagg Judgment ls Appropriate
`
`As stated in Section 528.01 of the TBMP, "the summary judgment procedure is
`
`regarded as ‘a salutary method of disposition,’ and the Board does not hesitate to
`
`dispose of cases on summary judgment when appropriate" [citing cases]. The purpose
`
`of a summary judgment motion is “judicial economy, that is, to avoid the unnecessary
`
`triai where there is no genuine issue of material fact and more evidence than is already
`
`available in connection with the summary judgment motion could not reasonably be
`
`expected to change the result in the case".
`
`_l_<_:l_.
`
`The present case is particularly suited to summary judgment procedure as
`
`analysis of the duPont factors demonstrates that confusion is likely, the governing facts
`
`described herein are not in dispute; summary judgment has been granted by the Board
`
`and the Courts in instances similar to the present proceeding; and the discovery period
`
`in this case is closed. Summary judgment is timely, this motion having been filed prior
`
`to the opening of Opposer's testimony period.
`
`C. Analysis Of The DuPont Factors Demonstrates That Confusion Is Likely
`To Result From The Simultaneous Use By The Parties Of Their Respective Marks
`
`23 Decl. Peterson 111] 5 and 8.
`
`Page 10
`
`
`
`ln in re E.l. duPont de Nemours & Co., 177 USPQ 563, 567 (CCPA 1973), the
`
`CCPA established a decisional process for determining likelihood of confusion in
`
`trademark cases. Thirteen (13) factors were propounded which are to be considered
`
`when there is sufficient evidence of record and where the same are relevant. Any one
`
`or more of the factors may control a particular case. See in re Dixie Restaurants inc,
`
`41 USPQ2d 1531, 1533 (CAFC 1997).
`
`In this case the primary, controlling factors of record are (1) that the marks in
`
`issue are similar (i.e., Opposer’s RAVENS, RAVENSWOOD, RAGlN' RAVEN, design
`
`marks of three ravens in a circle, and Opposer’s singular black raven logo and
`
`Applicant's BLACK RAVEN BREWING COMPANY); (2) the parties’ respective goods
`
`are highly related (i.e., the goods may be generally described as wine and beer); and
`(3) for purposes of this proceeding, the parties’ respective goods are considered sold to
`
`and through many of the same channels of trade to the same ultimate consumers.
`
`These
`
`primary factors,
`
`as well
`
`as
`
`the
`
`remaining factors
`
`of
`
`record
`
`ovenrvhelmingly favor Opposer to such a degree that there must be a finding of
`
`likeiihood of confusion.
`
`1. The Similarity Or Dissimilarity Of The Marks In Their Entire.-ties
`As To Appearance, Sound, Connotation And Commercial lmgression.
`
`The parties’ respective marks are confusingly similar in look, sound, meaning,
`
`and commercial
`
`impression — Opposer's RAVENS, RAVENSWOOD, and its raven
`
`design marks and logos, and BLACK RAVEN BREWING COMPANY. The dominant
`
`portion of each of the parties’ respective marks is the word RAVEN. This dominant
`
`portion is
`
`identical
`
`in sight, sound, meaning and commercial
`
`impression.
`
`The
`
`Page 11
`
`
`
`differences between the marks are the addition of BREWING COMPANY to Applicant's
`
`Mark. BREWING COMPANY is a generic term, disclaimed by Applicant for registration
`
`purposes. The term BLACK in Applicants Mark does not result in a distinguishing
`
`difference between Applicant's Mark and the RAVENS Marks as all raven birds are
`
`black in color.“
`
`Applicant provided documents showing that it intends to use its Mark on a label
`
`with the drawing of a raven.25 When compared with Opposer’s design mark of three
`
`ravens in a circle in Registration No. 2130653 as well as Opposer's single raven logos,
`
`the similarity in commercial
`
`impressions is further emphasized.
`
`It
`
`is fundamental
`
`trademark law that a pictorial representation is the legal equivalent of words which
`
`
`describe that pictorial representation. §e_e_ in re Duofold 184 USPQ 638 (TFAB 1974)
`
`and In re Eight Ball, Inc, 217 USPQ ‘E183 (TTAB 1983). Purchasers often do not have _
`
`an opportunity for side-by-side comparison of marks but must rely on their memories of
`
`past experiences in which case a pictorial representation might spark a recollection of
`
`the word or vice versa. See Spaulding Bakeries, Inc. v. Interstate Brands Corg, 209
`
`USPQ 355 (TTAB 1980). Here, Opposer owns and uses pictorial representations of
`
`both singular and multiple ravens, and Applicant intends to use its mark in conjunction
`
`with its drawing of a raven. The result is an even stronger likelihood of confusion
`
`between Opposer's many marks and Applicant's mark.
`
`Applicant has also provided documents admitting that it intends to use its mark
`
`not only on beer but on seasonal products, general merchandise, glassware, t-shirts
`
`2*‘ Kurth Decl. Exhibit "3."
`25 Kurth Decl. Exhibit "6."
`
`Page 12
`
`
`
`and coasters.” Among Opposer’s registrations are RAVENSWOOD and RAVEN for
`
`clothes including t—shirts. Applicant's intended use of its Mark on clothing and other
`
`merchandise will cause even further confusion.
`
`Because the dominant portion of Applicant's Mark, namely RAVEN, is identical to
`
`Opposer's Mark, this primary factor ovenrvhelmingly favors Opposer.
`
`2. The Similarity Or Dissimilarity And Nature Of The Goods
`Or Services As Described in An Application Or Registration
`Or In Connection With Which A Prior Mark is In Use
`
`The following proposition is well established: When "the marks [of the parties]
`
`are the same or almost so,
`
`it
`
`is only necessary that there be a viable relationship
`
`between the goods or services in order to support a holding of likelihood of confusion."
`
`In re Concordia International Fon/varding Corp., 222 USPQ 355, 356 (TTAB 1983).
`
`it is
`
`not even necessary that the goods or services are competitive-
`
`In re Peebles Inc., 23
`
`USPQ2d 1795 (TTAB 1992). See also, Warnaco Inc. v. Adventure Knits Inc., 210
`
`USPQ 307 (TTAB 1981). There is no genuine issue of material fact with regard to the
`
`similarity of the goods of the parties here.
`
`The Board must assess this factor [i.e., the similarity of the goodslservices] by
`
`comparing Applicant's goods as recited in the application in issue (beer) with Opposer’s
`
`goods as (1) recited in Opposer's registrations of record and (2) as used by Opposer
`
`(the primary product being wine). See Warnaco, flpfl, at 210 USPQ 314-315. E
`
`s; Oxford Pendaflex Corp. v. Anixter Bros.
`
`|nc., 201 USPQ 851, 855 (TTAB 1978);
`
`and Octocom Systems Inc. v. Houston Computers Services Inc, 16 USPQ2d 1783,
`
`1787-1788 (CAFC 1990).
`
`25 Kurth Decl. Exhibit "4."
`
`Page 13
`
`
`
`It
`
`is also the established rule that where goods are broadly described in an
`
`application/registration, without any restriction as to classes of purchasers or trade
`
`channels,
`
`it creates the following legal presumptions:
`
`(1)
`
`that
`
`the description
`
`encompasses all goods or types of goods embraced by the broad terminology; (2) that
`
`the goods move through all of the channels oftrade suitable for goods of that type; and
`
`(3) that they reach all potential users or customers for such goods. See Warnaco,
`
`supra, at 210 USPQ 314; and Guardian Products Co.,
`
`Inc. v. Scott Paper Co., 200
`
`USPQ 738, 741 (TFAB 1978).
`
`Applicant describes its goods as "beer" in its application, without any restriction
`
`as to classes of purchasers or trade channels. As such, the legal presumptions apply
`
`that Applicant's goods will move through the same trade channels as those of other
`
`beer makers, namely, retail liquor stores and restaurants. Also, the presumption applies
`
`that Applicant's beer will reach all potential customers of beer, which include customers
`
`that purchase beer in retail
`
`liquor stores and restaurants.
`
`These presumptions
`
`demonstrate that Opposer's goods, namely wines, will overlap with those of Applicant
`
`especially in the context of Applicant’s intended use, namely a pub selling both beer and
`
`wine, not to mention because both Applicant and Opposer's goods are available to the
`
`relevant, consuming public through retail liquor stores and restaurants.
`
`As demonstrated below, wine and beer are highly related.
`
`In fact, it is common
`
`knowledge, and the Board may take judicial notice of the fact that wine and beer are
`
`generally offered for sale to the same ultimate consumers in the same type
`
`establishments and are served together at gatherings and parties.
`
`in fact, here,
`
`Applicant intends to offer both wine and beer for sale at its establishment.
`
`Page 14
`
`
`
`Annexed to the Kurth declaration as Exhibit 8 are copies of U.S.
`
`trademark
`
`applications and registrations (whose status is listed as “!ive") downloaded from the
`
`U.S.F’.T.O.'s TESS database and a listing of the search results for applications and
`
`registrations whose identification of goods includes both beer and wine." The exhibit
`
`demonstrates that numerous entities own singular applications and/or registrations for
`
`wine and for beer.
`
`In fact, there are ‘I82 such appiications and 184 such registrations
`
`that recite both wine and beer in the recitation of goods. As stated in In re Albert Trostel
`
`& Sons Co., 29 USPQ2d 1783
`
`(TTAB 1993),
`
`(a case where five (5)
`
`third—party
`
`registrations were made of record to evidence the relatedness of the differing goods
`
`involved therein): "although third—party registrations are not evidence that the marks
`
`shown therein are in commercial use, or
`
`that
`
`the public is familiar with them,
`
`nevertheless third—party registrations which individually cover a number of different
`
`items and which are based on use in commerce may have some probative value to the
`
`extent that they serve to suggest that the listed goods and/or services are of a type
`
`which may emanate from a singie source". Id_., at 1785-86.
`
`Opposer has demonstrated that the goods in issue in this proceeding are related
`
`and complementary. This primary factor oven/vheimingiy favors Opposer.
`
`3. The Similarity Or Dissimilarity Of Established
`Likely-To-Continue Trade Channels
`
`There is ample evidence that wine and beer are all sold through the same
`
`channels of trade,
`
`in the same estabiishments, and to the same ultimate consumer.
`
`Annexed as Exhibit “8" to the accompanying Declaration of Joei F’eterson,Senior Vice
`
`President of CBI, the parent company to Opposer, is a print-out of the front cover and
`
`27 Dec|.Kurth 1111, and exhibit 8 thereto.
`
`Page 15
`
`
`
`pages 14-27 from the Adams Business Media Fact Book 2005, Beverage Alcohol State
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`Facts and Regulations reference book. CBI uses and relies upon the information
`
`contained in the Adams reference books as references for state regulations regarding
`
`the sale and distribution of alcoholic beverages, including wine, beer, spirits, and related
`
`products by CBI and its subsidiaries, including the Opposer.”
`
`According to the Adams reference books, and as verified by Mr. Peterson,
`
`currently wine and beer may both be sold in grocery stores and/or supermarkets in
`
`thirty—five states plus the District of Columbia; in drug stores in thirty~five states; and in
`
`liquor stores in forty—four states. The foregoing demonstrates beer and wine may be and
`
`are sold together in the same establishments to the same ultimate consumers.
`
`The Board should be able to take judicial notice that wine and beer are in fact
`
`served to consumers in restaurants and that often they are served to the same table,
`
`certain patrons choosing wine and certain patrons chossing beer.
`
`In
`
`that
`
`regard, annexed to the Kurth declaration as Exhibit 10 are a
`
`representative sampling of restaurant menus downloaded from the internet wherein
`
`beer on tap and wine by the bottle and/or by the glass are offered. All of the exhibit
`
`menus include a listing of Opposer's RAVENS wines, including menus from various
`
`breweries and brewpub restaurants.”
`
`As to the relationship between the goods involved herein, we note that this Office
`
`has held confusion to be likely where the same marks were being used on beer and
`
`wine. See Fruit Industries, Ltd. v. Ph. Schneider Brewing Co., 146 F.2d 310, 46 USPQ
`
`487 (Commr. of Patents 1940) (La Fiesta for beer likely to cause confusion with La
`
`2“ Decl. Peterson 1111 1 and 20.
`29 Decl. Kurth 1112, Exh.
`
`Page 16
`
`
`
`Fiesta for wine);
`
`In re Sailerbrau Franz Sailer, 23 USPQ2d 1719
`
`(TTAB 1992)
`
`(confusion is likely between "Christopher Coiumbus," for beer, and "Cristobal Colon,"
`
`for sweet wine); and Krantz Brewing Corporation v. Henry Kelly Importing 8. Distributing
`
`Co.
`
`|nc., 215 F.2d 284, 96 USPQ 219 (Patent Oflice Examiner in Chief 1953) (Old
`
`Dutch for wine likely to cause confusion with Old Dutch for beer).
`
`The Board has more recently affirmed the relationship between beer and wine in
`
`the unpublished opinion in
`
`in re Savia Rose Wine[y, LLC, 2006 TTAB LEXIS 319
`
`(TTAB 2006).
`
`In that matter, the Board held that a likelihood of confusion existed
`
`between applicant's mark BIG SKY CUVEE for wines and the registered mark BIG SKY
`
`BREWING COMPANY for beer. ifi
`
`at *15. The Board disagreed with applicant's
`
`‘ argument that the Sailerbrau "holding was outdated in light of the Board’s decision in _I_I_1_
`re Coors Brewing ‘Co.
`, Serial No. 65599304, July 31, 2002),
`in which the Board
`
`declined to find for the record that wine and beer are related. Q at *12. The Board
`
`stated that the Sailerbrau precedent was not diminished either by the fact that the
`
`Federal Circuit
`
`in its decision on appeal, In re Coors*Brewing C0,, 343 F. 3d 1340, 68
`
`USPQ 1059 (2003) stated in dicta that beer and wine are unrelated. Q The Board
`
`stated, “|ndeed, precedential authority of the Board specifically holds that beer and wine
`
`are related products." Id.
`
`(_c_it_igg_
`
`In re Sailerbrau Franz Sailer).
`
`Applicant admits that it intends to sell wine at its brewpub along with its beer
`
`under its Mark.3°
`
`It is possible, that Applicant might, in fact, sell Opposer's wines on its
`
`premises as do myriad other restaurants and pubs. A patron at the Black Raven
`
`Brewing Company brewpub who sees Opposer's wines on the menu would certainly
`
`believe that this wine emanates from Applicant. The fact that Applicant intends to seil
`
`3” Dec|.Kurth Exh_ "5,“ Applicant's Response to Request for Admission #19.
`
`Page 17
`
`
`
`and serve wines at all, leads to the conclusion that a consumer who has either been a
`
`patron of Applicant’s brewpub or become aware of it, would be confused on seeing
`
`Opposer's wines at a retail liquor store into thinking the Opposer's wines are those of
`
`Applicant. The likelihood of confusion is further emphasized because Applicant admits
`
`that it intends to use its Mark underneath the drawing of a raven on its label and
`
`Opposer has a registration using the design mark of three ravens.
`
`There is a likelihood of confusion between the marks here involved as applied to
`
`beer and to wine. Beer and wine may be found in the same outlets, whether they be
`
`liquor stores or supermarkets. Applicant admits that it intends to sell wines along with
`
`its beer at its brewpub and using a confusingly similar bird logo.
`
`To quote Guardian Products Co., Inc. v. Scott Paper Co., 200 USPQ 738, at 741
`
`(TTAB 1978):
`
`Thus, the situation that we see before us reveais conditions
`and circumstances which could lead purchasers to encounter
`these products in an environment that could cause confusion in
`trade when sold under confusingly similar marks.
`
`This primary factor ovenivhelmingly favors Opposer.
`
`3. The Fame Of The Prior Marks
`
`FV|'s Ravenswood Winery is located in the well—known Sonoma County wine
`
`region in California. The winery has been in existence for over twenty-five years and
`
`FVl has sold wine under the marks RAVENS and RAVENSWOOD for twenty-five years.
`
`Wines sold under FVl's Raven's Marks are sold world-wide and are and have been
`
`advertised, promoted and written about throughout the U.S. Average wholesale sales
`
`Page 18
`
`
`
`of wines under the Ravens Marks over the last six (6) years are in excess of $65
`
`million.“
`
`Annexed to the Kurth declaration as Exhibit 12 are copies of downloaded web
`
`pages showing numerous representative unsolicited references from many years and
`
`from throughout the United States to Opposer and/or Opposer’s wines.
`
`Exhibit 13 to the Kurth declaration is comprised of prints of downloaded pages
`
`from the Internet showing rankings of the RAVENS and RAVENSWOOD wines by Food
`
`and l/Vine Magazine online and winejudgingcom. For example, for the years 2005-
`
`2007, winejudging.com listed the RAVENSWOOD wines for various awards, including a
`
`2005 Bronze award for RAVENSWOOD's 2002 zinfandels for Best of Class, in 2006 it
`
`awarded a 2003 RAVENSWOOD Zinfandel as a Best of Class, and in 2007 it gave a
`
`Gold award to RAVENSWOOD 2004 Teldeschi wine, and a bronze award to
`
`RAVENSWOOD 2004 Barricia wine. Likewise, Food 8. Wine online listed the RAVENS
`
`wines among its American Wine Award winners in 2000 and 2002, as well as naming it
`
`as one of the “15 Great Bottles for a Party" and "50 Wines You Can Always Trust" in
`
`2008.
`
`Exhibit 6 to the Peterson declaration is comprised of a compilation of awards and
`
`accolades received by wines owned by Constellation Brands, inc.
`
`in the year 2008 so
`
`far,
`
`including the RAVENS wines, owned by Opposer, a subsidiary of Consteliation
`
`Brands, Inc.
`
`3‘ Peterson Dec. 1] T.
`
`Page 19
`
`
`
`As discussed above, FVI has been a longtime supporter of community and
`
`charitable events and programs, contributing financial support and gifts of wine, as well
`
`as establishing an annual scholarship at a local high school.
`
`FVI maintains a web site at www.ravenswood.com that describes the winery, its
`
`vineyards, its wines, and various services and activities of the winery. Annexed to the
`
`Peterson declaration as Exhibit 3 is a downloaded copy of the web pages from the site.
`
`Ravenswood wines have been advertised in trade publications such as the Wine
`
`Spectator and tourist publications such as the California Visitor Review and AAA tour
`
`guide. SIMI wines are promoted at trade events/shows, community charitable functions,
`
`wine pouring and tasting competitions and through POS retail materials. Opposer
`
`advertises and promotes its products and services through trade pubiications, consumer
`
`publications,
`
`in—store promotional material
`
`(P08),
`
`through Opposer's web site
`
`(www.ravneswood-wine.com), trade organizations, and through cooperative advertising.
`
`According to FVl’s
`
`records, over the past three (3) years, FVl’s advertising and
`
`promotional costs and expenses have been well in excess of $400,000 per year.”
`
`As evidenced above, Opposer enjoys a remarkable reputation and prestige.
`
`This factor clearly favors Opposer.
`
`5. The Conditions Under Which And Buyers
`To Whom Sales Are Made, i.e., Impulse vs.
`Careful, Sophisticated Purchasing
`
`Again, there are no limitations in the recitation of Applicant's goods as to specific
`
`classes Of consumers.
`
`32 Dec]. Peterson 1115.
`
`Page 20
`
`
`
`The Board must find that Applicant's goods and Opposer's goods are provided
`
`by all classes of providers, under all marketing conditions, and are provided to and
`
`purchased by all classes of consumers appropriate to the goods identified. See Miles
`
`Laboratories V. Naturally Vitamin Supplements,
`
`1 USPQ2d 1445, 1450 (footnote 23
`
`thereto) (TTAB 1987).
`
`The evidence before the Board demonstrates that wine and beer are purchased
`
`together, imbibed together, advertised together, sold together, and enjoyed together.
`
`This factor favors Opposer
`
`6. The Extent To Which Opposer
`Has a Right To Exclude Others
`From Use Of Its Mark On its Goods
`
`The marks of the parties are confusingly similar. Further, Opposer is the owner
`
`of
`
`incontes
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