Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA246798
`ESTTA Tracking number:
`11/04/2008
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`91183753
`Plaintiff
`Heaven Hill Distilleries, Inc.
`Matthew A. Williams
`Wyatt, Tarrant & Combs, LLP
`500 W. Jefferson Street, Suite 2800
`Louisville, KY 40202
`UNITED STATES
`mwilliams@wyattfirm.com, mcapiro@wyattfirm.com
`Motion for Summary Judgment
`Matthew A. Williams
`mwilliams@wyattfirm.com, mcapiro@wyattfirm.com
`/Matthew A. Williams/
`11/04/2008
`HYPNOTIZER - Motion for Summary Judgment.pdf ( 2 pages )(10812 bytes )
`HYPNOTIZER - Memo in Support of Motion.pdf ( 22 pages )(61712 bytes )
`HYPNOTIZER - Opposition Exhibit A.PDF ( 104 pages )(9184326 bytes )
`HYPNOTIZER - Opposition Exhibits B-G.PDF ( 28 pages )(812762 bytes )
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`Proceeding
`Party
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`Correspondence
`Address
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`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
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`

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`Certificate of Electronic Filing
`
`I hereby certify that this document is being electronically filed as of
`November 4th, 2008, with the United States Patent and Trademark
`Office, Trademark Trial and Appeal Board.
`
`/Matthew A. Williams/
`Matthew A. Williams
`November 4th, 2008
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`91183753
`
`
`Serial No.
`Mark:
`Intl Class:
`
`
`
`
`
`77/266,196
`HYPNOTIZER
`033
`
`HEAVEN HILL DISTILLERIES, INC.,
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`
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`Opposer,
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`v.
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`DIALLO YASSINN PATRICE,
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`Respondent.
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`OPPOSER'S MOTION FOR SUMMARY JUDGMENT AND MOTION TO SUSPEND
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`Pursuant to Rule 56 of the Federal Rules of Civil Procedure and Section 528.01 of
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`the TTAB Manual of Procedure, Opposer Heaven Hill Distilleries, Inc. ("Heaven Hill") hereby
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`moves for summary judgment sustaining its opposition, Opposition Number 91183753, to
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`Respondent Diallo Yassinn Patrice’s application to register the HYPNOTIZER mark for liqueur
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`on the grounds Patrice’s use of the HYPNOTIZER mark on liqueur is likely to cause confusion,
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`mistake, or deception as to source, sponsorship, or affiliation with Heaven Hill’s HPNOTIQ
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`mark for liqueur and Patrice’s use of the HYPNOTIZER mark on liqueur will dilute the
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`distinctive quality of Heaven Hill’s HPNOTIQ mark.
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`Opposer Heaven Hill additionally moves the TTAB, pursuant to 37 C.F.R. §
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`2.127(d) and Section 528.03 of the TTAB Manual of Procedure, to suspend this proceeding
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`pending the TTAB’s determination of Heaven Hill’s Motion for Summary Judgment.
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`1
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`The attached Memorandum in Support of Opposer’s Motion for Summary
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`Judgment and Motion to Suspend sets forth the undisputed facts and arguments in support of this
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`Respectfully submitted,
`
`
`
`/Matthew A. Williams /
`David A. Calhoun
`Matthew A. Williams
`Michael A. Capiro
`WYATT, TARRANT & COMBS, LLP
`500 West Jefferson Street, Suite 2800
`Louisville, Kentucky 40202-2898
`(502) 589-5235
`
`Counsel for Opposer, Heaven Hill
`Distilleries, Inc.
`
`
`Motion.
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`CERTIFICATE OF SERVICE
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`The undersigned hereby certifies that a true and complete copy of the foregoing Opposer's Brief
`has been served upon
`
`Diallo Yassinn Patrice
`2 Square Tribord
`Courcouronnes 91080
`France
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`via overnight courier (Federal Express Tracking No. 7919 8366 8442), this 4th day of
`November, 2008.
`
`
`
` /Matthew A. Williams/
`One of Counsel for Opposer, Heaven Hill
`Distilleries, Inc.
`
`
`
`20306074.1
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`2
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`Certificate of Electronic Filing
`
`I hereby certify that this document is being electronically filed as of
`November 4th, 2008, with the United States Patent and Trademark
`Office, Trademark Trial and Appeal Board.
`
`/ Matthew A. Williams/
`Matthew A. Williams
`November 4th, 2008
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Opposition No.
`
`91183753
`
`
`Serial No.
`Mark:
`Intl Class:
`
`
`
`
`
`77/266,196
`HYPNOTIZER
`033
`
`HEAVEN HILL DISTILLERIES, INC.,
`
`
`
`
`
`
`
`
`Opposer,
`
`
`
`
`
`
`
`
`
`v.
`
`
`
`
`
`
`
`
`
`
`DIALLO YASSINN PATRICE,
`
`
`
`
`
`
`
`
`
`Respondent.
`
`
`
`)
`)
`)
`)
`)
`)
`)
`)
`)
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`MEMORANDUM IN SUPPORT OF OPPOSER'S MOTION FOR SUMMARY
`JUDGMENT AND MOTION TO SUSPEND
`
`INTRODUCTION
`
`Opposer Heaven Hill Distilleries, Inc. ("Heaven Hill") owns all right, title, and
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`interest in and to the HPNOTIQ mark. Heaven Hill has used, and continues to use, the
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`HPNOTIQ mark extensively in connection with liqueur as well as other goods and services and
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`owns federal trademark registrations for use of the HPNOTIQ mark with candles, beverage and
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`glassware, clothing, and most importantly liqueur.
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`Despite
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`repeated
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`failed attempts
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`to
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`register
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`the confusingly
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`similar
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`HYPNOTIZER mark, Diallo Yassinn Patrice (“Diallo”) filed Application Serial Number
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`77/266,196 on August 28, 2007 to register HYPNOTIZER for use in connection with a variety of
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`alcoholic beverages in international class 033.
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`1
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`The material facts in this case are not in dispute. The evidence and well-
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`established legal precedent indisputably show that Diallo's use of HYPNOTIZER for alcoholic
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`beverages in international class 033 would create a likelihood of confusion in the marketplace.
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`Therefore, as a matter of law, the TTAB should grant Heaven Hill's Motion for Summary
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`Judgment and deny Diallo’s application to register the HYPNOTIZER mark.
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`A. HEAVEN HILL'S RIGHTS IN THE HPNOTIQ MARK
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`STATEMENT OF FACTS
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`In 2003, Heaven Hill acquired the rights to HPNOTIQ from Global Perspectives, Inc.
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`(“Global Perspectives”) and embarked on an aggressive marketing campaign to grow the brand’s
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`recognition both in the United States and abroad. See Affidavit of Justin Ames, Heaven Hill’s
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`Senior Brand Manager for HPNOTIQ liqueur at ¶ 5, attached hereto as Ex. A. As a result of this
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`extensive, multi-faceted marketing campaign, which included, among other investments, more
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`than $15 million dollars in direct marketing investments, HPNOTIQ has experienced spectacular
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`growth in the marketplace. Ames Aff. ¶¶ 6 & 12. In fact, from 2003-2005 HPNOTIQ was the
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`seventh largest brand of cordial or liqueur in the United States and the number one fruit-based
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`liqueur sold in the United States. Ames Aff. ¶ 7.
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`The strength of the HPNOTIQ mark is further evidenced by the brand’s sales
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`figures. In 2002, the year before Heaven Hill acquired the mark, HPNOTIQ liqueur had a
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`volume of 85,000 nine-liter cases with an approximate retail value of $24,489,000 at the
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`suggested retail price of $24.99 for a 750 ml bottle. Ames Aff. ¶ 5. By 2005, Heaven Hill’s
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`efforts had grown HPNOTIQ sales to a volume of 600,000 nine-liter cases with an approximate
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`retail value of $179,928,000—an increase of 605%. Id. Remarkably, the growth of Heaven
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`Hill’s HPNOTIQ liqueur accounted for more than 19% of the overall growth in the cordial and
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`liqueur market during this period. Id. ¶ 6. Clearly, these sales figures reflect the distinctive
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`appeal and phenomenal strength that the HPNOTIQ mark has attained due to Heaven Hill’s
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`marketing efforts.
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`The fame and notoriety of the HPNOTIQ mark has also transcended the realm of
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`industry insiders and marketing campaigns. For example, unsolicited articles about the
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`popularity, success, and versatility of Heaven Hill’s HPNOTIQ liqueur have appeared in
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`numerous publications including The Dallas Morning News, Gotham, Penthouse, People, Star,
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`Cosmopolitan, InStyle, and Wine Enthusiast. Id. ¶ 9. And between January and October of
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`2004, references to or images of HPNOTIQ liqueur appeared in more than 240 articles in
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`newspapers from Florida to Alaska, industry publications, CBS MarketWatch, and magazines.
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`Id.
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`The fame and recognition of the HPNOTIQ mark in today’s pop culture is further
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`demonstrated by the unsolicited references to HPNOTIQ liqueur in popular music. HPNOTIQ
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`liqueur is orally referenced in the lyrics of at least twenty-seven songs from artists such as R.
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`Kelly, Ice Cube, Lil Kim, Usher, & David Banner. Id. ¶ 11. Unsolicited oral or visual
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`references to HPNOTIQ liqueur have also appear in at least thirteen different music videos,
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`including videos from R. Kelly, Fabolus featuring P. Diddy, Nick Cannon, and Lloyd Banks. Id.
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`It is clear that the mark has infiltrated today’s pop culture and is widely recognized and
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`embraced by today’s consumers.
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`In addition to traditional advertising efforts, Heaven Hill has also invested heavily
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`in developing a grassroots advertising campaign using word-of-mouth advertising to build the
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`strength and recognition of the HPNOTIQ brand. Id. ¶¶ 10, 12, 14-17. These efforts have
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`included “celebrity seeding,” the HPNOTIQ Ambassador program, and "Shout Outs" in
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`nightclubs. Id. An innovative music marketing partnership with INgrooves, a digital music label,
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`has also been used to establish consumer association of the HPNOTIQ brand of liqueur with the
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`cutting-edge music culture. Id. ¶ 10.
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`“Celebrity seeding” refers to a variety of marketing efforts designed to get
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`HPNOTIQ liqueur into the hands of celebrities in an effort to encourage the celebrity to try the
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`product and endorse it to their friends and other celebrities. Id. ¶ 17. For HPNOTIQ, these
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`“seeding” activities have ranged from buying a bottle of HPNOTIQ liqueur for a celebrity dining
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`at a restaurant, sending a gift basket with a bottle of HPNOTIQ liqueur to a celebrity, serving
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`samples of HPNOTIQ liqueur at celebrity events, sponsoring film festival or award ceremonies,
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`and making HPNOTIQ liqueur available to celebrities at festivals and parties. Id. Some
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`examples of festivals and parties where HPNOTIQ liqueur has been made available include: the
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`33rd Annual American Music Awards; Jessica Simpson’s 25th Birthday Party; the Make-A-
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`Wish Foundation Gala; and the Motown Remixed Album Release Party. Id.
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`To further market the product, the Ambassador Program utilizes of a number of
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`independent contractors (“Ambassadors”) located throughout the United States. Id. ¶ 15. These
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`Ambassadors engage in on-premise marketing at nightclubs and other venues where HPNOTIQ
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`liqueur can be purchased by the drink (known in the industry as “on-premise sales”). Id. This
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`on-premise marketing includes activities such as orally announcing HPNOTIQ drink specials,
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`handing out samples of HPNOTIQ to club patrons, and handing out promotional materials such
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`as T-shirts, towels, and hats. Id. In cities where Heaven Hill has no Ambassadors, it coordinates
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`with independent promoters to conduct similar activities. Id.
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`“Shout Outs” refer to a specific form of grassroots advertising which involves
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`club “disk jockeys” (“DJs”) who are “spinning” music. A DJ, compensated directly or indirectly
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`by Heaven Hill, is engaged to mention (i.e. Shout Out) HPNOTIQ orally over the club’s sound
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`4
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`system while spinning music for the club’s patrons. Id. ¶ 16. This results in increased sales of
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`HPNOTIQ drinks and increased aural name recognition of HPNOTIQ liqueur. Id.
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`The success of this array of grassroots marketing efforts is reflected not only in
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`HPNOTIQ liqueur’s position as the seventh largest liqueur and cordial brand in the United States
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`but also in industry publications such as Market Watch. In the October 2004 issue, Market
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`Watch noted the success of Heaven Hill’s unique grassroots marketing campaign for HPNOTIQ
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`and specifically highlighted its use of Shout Outs by club DJs. Id. ¶ 10.
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`The widespread availability of HPNOTIQ liqueur further demonstrates Heaven
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`Hill's success in establishing HPNOTIQ as a renowned brand of liqueur. HPNOTIQ is available
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`by the bottle in more than five-thousand off-premise (package) retail outlets nationwide. Id. ¶
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`18. It is also available by the drink in more than one thousand on-premise venues such as
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`restaurants, bars, and nightclubs, including 100 national accounts that have multiple units in
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`different locations such as T.G.I. Fridays and Applebee's. Id. ¶ 19.
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`Widespread availability has also made aural recognition of the HPNOTIQ mark
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`particularly important to sales in both off-premise locations and on-premise venues. In off-
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`premise locations, bottles of HPNOTIQ liqueur and other alcoholic beverages are often kept
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`behind the counter, requiring the consumer to orally request a brand by its name (i.e. its mark)
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`from a sales clerk. Id. ¶ 18. In virtually all of the on-premise locations, orders for alcoholic
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`beverages like HPNOTIQ liqueur are placed almost exclusively through oral requests by the
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`beverage’s name (i.e. its mark). Id. ¶ 20. Consequently, aural name recognition of a mark is
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`extremely important to the owner of a mark for an alcoholic beverage like HPNOTIQ.
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`Further stressing the importance of proper aural recognition of the mark,
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`HPNOTIQ is a fanciful mark which is not descriptive of the product. Instead it is a coined term
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`5
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`that has three syllables and is frequently pronounced “hip-no-teek.” Id. ¶ 22. It does not
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`describe the liqueur nor does it describe or any other product sold under the HPNOTIQ mark.
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`Id. ¶ 24. In fact, Heaven Hill owns two United States trademark registrations on the Principal
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`Register for use of the HPNOTIQ mark with liqueur—U.S. Trademark Registration Numbers
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`2,642,855 ("the '855 registration") and 2,282,475 ("the '475 registration"), and two registrations
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`for use with non-liqueur goods.
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`The '855 registration for the use of the HPNOTIQ mark with liqueur was issued
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`on October 29, 2002, to Heaven Hill's predecessor-in-interest, Global Perspectives, based on use
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`in commerce that began in September 2001. This registration was subsequently assigned to
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`Heaven Hill in 2003, and a copy of the assignment was recorded with the USPTO on January 7,
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`2003. The '475 registration for the mark HPNOTIQ & HQOPN design for use with liqueur
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`issued on March 16, 2004 from an application filed by Global Perspectives on October 31, 2002
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`and assigned to Heaven Hill in 2003. Current printouts of information from the electronic
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`database records of the USPTO showing the current status and title of these registrations are
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`attached to this Memorandum as Exhibits C and D respectively. Neither of these registrations
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`for the use of the HPNOTIQ mark with liqueur restricts the channels of trade that liqueur bearing
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`the HPNOTIQ mark will travel through, the territory in which the liqueur bearing the HPNOTIQ
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`mark will be sold, or the classes of customers or consumers to which liqueur bearing the
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`HPNOTIQ mark will be marketed. See Exs. C & D.
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` Heaven Hill additionally owns U.S. Trademark Registration Number 2,834,130
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`for the use of HPNOTIQ with clothing, namely shirts, and U.S. Trademark Registration Number
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`2,834,133 for the use of HPNOTIQ with candles and beverage glassware. These registrations
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`originally issued on April 20, 2004. Current printouts of information from the electronic
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`database records of the USPTO showing the current status and title of these registrations are
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`attached to this Memorandum as Exhibits E and F respectively.
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`B. DIALLO'S APPLICATION FOR THE HYPNOTIZER MARK
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`On August 28, 2007, Diallo filed Application Serial No. 77/266,196 (the ‘196
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`application) to register the mark HYPNOTIZER for alcoholic beverages in international class
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`033. On April 8, 2008, the application was subsequently published for opposition and Heaven
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`Hill timely filed the current opposition, Opposition No. 91183753, to protect its HPNOTIQ mark
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`against Diallo’s confusingly similar HYPNOTIZER mark.
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`The ‘196 application, however, is simply the latest chapter in a long history of
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`Diallo attempting to trade on the goodwill and recognition of Heaven Hill's HPNOTIQ mark in
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`the U.S. and elsewhere. On February 18, 2005, Diallo originally applied for a French trademark
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`registration to use the HYPNOTIZER mark in connection with “beers; mineral waters; alcoholic
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`beverages; wines; and spirits” See Affidavit of Matthew Williams, at ¶ 4, attached hereto as Ex.
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`B. On May 25, 2005, Heaven Hill timely opposed Diallo’s application on the ground that the use
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`of the HYPNOTIZER mark in conjunction with the listed goods would likely cause confusion
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`with its HPNOTIQ mark, French trademark registration number 023143392. Id. ¶ 5. Despite
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`Heaven Hill’s pending opposition, Diallo managed to obtain a registration for HYPNOTIZER,
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`French trademark registration number 053342166, under a provision of French law that allows
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`one to obtain a provisional registration in order to gain international rights in a mark. Id. ¶ 4.
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`Diallo then proceeded to use this initial French registration to obtain an
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`international registration, 873089, under the provisions of the Madrid Protocol. Id. ¶ 6. This
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`registration, granted by the International Bureau (“IB”) on July 10, 2005, designated the United
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`States as one of the countries in which Diallo desired protection. Id. The international
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`registration subsequently entered the U.S. as a Section 66(a) application, Serial No. 79/019547
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`(the ‘547 application), and Heaven Hill timely opposed, Opposition No. 91173767. As part of its
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`opposition, Heaven Hill requested and was granted a motion to suspend the proceeding before
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`the TTAB, pending the outcome of the French opposition.
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`On November 25, 2005, the French NIPO found Diallo’s HYPNOTIZER mark
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`confusingly similar to Heaven Hill’s HPNOTIQ mark and cancelled Diallo’s registration for use
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`with any type of alcoholic beverage, including beer. Id. ¶ 7. Diallo then appealed the NIPO's
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`decision to the Court of Appeals of Paris, which on May 10, 2006, concluded there was a risk of
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`confusion in allowing Diallo’s registration of the HYPNOTIZER mark insofar as it pertained to
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`alcoholic beverages and denied Diallo’s appeal. Id. ¶ 8, Ex. 2. Following expiration of the
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`period during which Diallo was able to appeal to France’s Supreme Court, the IB cancelled
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`Diallo's international registration to the extent that it extended to alcoholic beverages. Id. ¶ 9.
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`Finally, after Diallo failed to transform the '547 application into a U.S. national application, it too
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`was cancelled. Id. ¶ 10.
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`Recently, Heaven Hill was again placed in the position of having to defend its
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`HPNOTIQ mark against yet another attempt by Diallo to register the confusing similar
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`HYPNOTIZER mark. As with the prior application, the ‘196 application seeks to register the
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`HYPNOTIZER mark for use in connection with alcoholic beverages in international class 033 in
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`order to trade on the goodwill Heaven Hill has built in its HPNOTIQ mark. In fact, the only
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`relevant difference between the two applications is the fact that the ‘547 application was based
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`on an international registration while the ‘196 application was filed directly with the USPTO.
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`On September 24, 2007, Heaven Hill took the first steps to oppose Diallo once
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`again. Before examination was complete, Heaven Hill informed the Trademark Administrator in
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`a Letter of Protest, a copy of which is attached as Exhibit G, of Diallo’s previous failed attempt
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`to register the mark, including the Paris court’s finding of similarity between the marks. Heaven
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`Hill also informed the Administrator of the Examiner’s failure to identify Heaven Hill’s marks
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`due to an inadequate search performed during examination. The Administrator denied this
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`protest and allowed publication of the mark on April 8, 2008. On April 25, 2008, Heaven Hill
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`instituted the current action before the Trademark Trial and Appeal Board to again oppose the
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`registration of the mark HYPNOTIZER.
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`ARGUMENT
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`The law in this case is clear: The USPTO may not register a mark when it is
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`confusingly similar to a previously registered mark. The facts in this case are also clear: The
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`HYPNOTIZER mark is confusingly similar to Heaven Hill’s HPNOTIQ mark when applied to
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`the goods listed in the ‘196 application. Therefore, since Heaven Hill's registrations predate
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`Diallo's application for HYPNOTIZER, the TTAB should deny Diallo's application.
`
`1.
`
`HEAVEN HILL HAS MET THE REQUIRED BURDEN TO
`ESTABLISH ITS ENTITLEMENT TO SUMMARY JUDGMENT.
`
`Under Rule 56 of the Federal Rules of Civil Procedure and Section 528.01 of the
`
`TTAB Manual of Procedure, the TTAB should enter summary judgment when the moving party
`
`demonstrates that there “is no genuine issue as to any material fact and that the moving party is
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`entitled to judgment as a matter of law.”
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`Here, there is no genuine issues of material fact regarding the following issues:
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`the investment Heaven Hill has made in the HPNOTIQ mark for liqueur; the priority of Heaven
`
`Hill’s HPNOTIQ mark; the similarity of the marks; the similarity of the goods for which Heaven
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`Hill’s HPNOTIQ mark is registered and the goods for which Diallo seeks registration of his
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`HYPNOTIZER mark; the identical channels of trade through which the parties’ respective goods
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`
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`will travel; and the identical classes of customers and consumers to which the parties’ respective
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`goods will be marketed.
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`Applying the law to these undisputed facts leads to the inescapable conclusion
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`that the TTAB should grant summary judgment to Heaven Hill and reject Diallo’s application to
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`register HYPNOTIZER for goods in international class 033.
`
`2.
`
`HEAVEN HILL'S PRIOR USE AND REGISTRATION OF
`HPNOTIQ PRECLUDES DIALLO’S REGISTRATION OF
`HYPNOTIZER.
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`
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`Under the Lanham Act, the USPTO may not register a mark when it is likely to
`
`cause confusion, mistake, or deception with a registered or common-law mark. 15 U.S.C.
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`§ 1052(d); see also id. § 1063 (citing dilution as grounds for opposition). Here, the record shows
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`that Heaven Hill currently owns four federal registrations for HPNOTIQ, including two for use
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`with liqueur, and that all four of the registrations were issued before Diallo filed the ‘196
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`application. Exs. A-D. Additionally, the record also shows that Heaven Hill has made extensive
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`and widespread use of its HPNOTIQ mark in the sale of HPNOTIQ branded liqueur since
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`acquiring the mark from Global Perspectives in early 2003. Heaven Hill’s continued use of the
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`mark has built on Global Perspective’s prior use of the mark. Thus, priority is not an issue.
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`Because, as demonstrated below, Diallo's intended use of HYPNOTIZER in connection with
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`alcoholic beverages is likely to cause confusion, to cause mistake, or to deceive, his application
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`to register HYPNOTIZER must be denied.
`
`3.
`
`DIALLO’S USE OF HYPNOTIZER FOR ALCOHOLIC
`BEVERAGES WILL LIKELY CAUSE CONFUSION WITH
`
`HEAVEN HILL'S PRIOR USE OF HPNOTIQ FOR LIQUEUR.
`
`The factors commonly used in analyzing marks for a likelihood of confusion are
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`as follow: “(1) strength of the senior mark; (2) relatedness of the goods or services;
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`(3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used;
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`10
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`(6) likely degree of purchaser care; (7) the intent of defendant in selecting the mark; and
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`(8) likelihood of expansion of the product lines.” Daddy’s Junky Music Stores, Inc. v. Big
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`Daddy’s Family Music Center, 109 F.3d 275, 280, 42 U.S.P.Q.2d 1173 (6th Cir. 1997); accord
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`In re E. I. duPont de Nemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q 563 (C.C.P.A 1973)
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`(listing similar factors). But Heaven Hill "need not show that all, or even most, of the factors
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`listed are present in any particular case to be successful.” Champions Golf Club, Inc. v. The
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`Champions Golf Club, Inc., 78 F.3d 1111, 1116 (6th Cir. 1996). Rather, the factors “are simply
`
`a guide to help determine whether confusion is likely,” and “[t]he ultimate question remains
`
`whether relevant consumers are likely to believe that the products or services offered by the
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`parties are affiliated in some way.” Daddy’s Junky Music Stores, 109 F.3d at 280. After
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`consideration of these eight factors, there can be no doubt that Diallo’s attempt to register
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`HYPNOTIZER will cause confusion and should be denied.
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`A.
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`STRENGTH OF HEAVEN HILL'S HPNOTIQ MARK.
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`The strength of Heaven Hill's HPNOTIQ mark is properly evaluated by looking at
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`its inherent strength and its acquired strength. TCPIP Holding Co. v. Haar Communications,
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`244 F.3d 88, 100, 57 U.S.P.Q.2d 1969 (2d Cir. 2001). The inherent strength of a mark is found
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`in its "degree of inherent distinctiveness," with an arbitrary and fanciful mark, such as
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`HPNOTIQ, enjoying the broadest protection. See id. Alternatively, the acquired strength of a
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`mark relates to the consumer recognition of the mark in the marketplace, with more protection
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`being provided to marks that have broad recognition in the marketplace. See Virgin Enters. Ltd.
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`v. Nawab, 335 F.3d 141, 147, 67 U.S.P.Q.2d 1420 (2d Cir. 2003). Therefore, an inherently
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`distinctive mark that has also attained widespread recognition in the marketplace should receive
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`the broadest scope of protection. Id. at 148.
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`Here, Heaven Hill’s HPNOTIQ mark is an arbitrary and fanciful mark that does
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`not describe the product. Ames Aff. ¶¶ 22, 24. Any association between the product marketed
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`by Heaven Hill and the HPNOTIQ mark is the direct result of Heaven Hill’s efforts. Thus, it is
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`by definition an inherently strong mark that is deserving of “broad, muscular protection” under
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`the law. Virgin Enters. Ltd., 335 F.3d at 147.
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`The HPNOTIQ mark also enjoys widespread recognition in the marketplace,
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`demonstrating a high degree of acquired strength. HPNOTIQ liqueur is the seventh largest
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`liqueur in terms of sales volume in the United States and has been riding a wave of explosive
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`growth since 2003. Ames Aff. ¶¶ 5-9. It is not only available in every state but is sold in a
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`variety of locations including more than five thousand off-premise (package) retail outlets, a
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`thousand on-premise venues, and approximately 100 national on-premise chains. Id. ¶¶ 18-19.
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`Heaven Hill’s obvious success in building recognition for HPNOTIQ liqueur has
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`been recognized by the numerous awards it has received for the brand’s success. HPNOTIQ
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`liqueur was named a ‘Hot Brand’ by IMPACT in 2004 and 2006, received the Adams Growth
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`Brand ‘Rising Star’ award in 2003 and 2004, and was even named one of Drinks International’s
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`‘DI Dozen’ in 2003.” Id. ¶ 8. Unsolicited references to Heaven Hill’s HPNOTIQ liqueur have
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`also appeared in at least twenty-seven songs since the products introduction. These songs by a
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`variety of artists including R. Kelly, Ice Cube, Lil Kim, Usher, & David Banner have also lead to
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`unsolicited oral and visual references in over thirteen music videos from artists such as R. Kelly,
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`Fabolus featuring P. Diddy, Nick Cannon, and Lloyd Banks. Id. ¶ 11.
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`Thus, the undisputed evidence shows that Heaven Hill’s HPNOTIQ mark is a
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`strong and inherently distinctive mark that enjoys widespread recognition in the marketplace. A
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`mark like HPNOTIQ is clearly deserving of the “broad, muscular protection” reserved for
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`inherently distinct yet widely recognized marks.
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`B.
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`RELATEDNESS OF THE GOODS.
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`To find a likelihood of confusion, the goods only need to be “related in some
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`manner.” Time Warner Entertainment Co., L.P. v. Jones, 65 U.S.P.Q.2d 1650, 1661 (T.T.A.B.
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`2002). Here, the products listed in Diallo’s application and Heaven Hill’s registrations are more
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`than just related, they are identical goods: alcoholic beverages. In fact, when considering this
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`issue, the Court of Appeals of Paris concluded that Diallo’s attempt to register the mark for
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`alcoholic beverages necessarily included the class of beverages known as liqueur. Williams Aff.
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`Ex. 2, p.2 Moreover, the court also found that both goods were so inherently related in the minds
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`of consumers that use of overlapping marks would clearly be confusing to the general public. Id.
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`Ex. 2, p.3.
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`Even though the goods are clearly identical, the TTAB must also evaluate any
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`restrictions as to the channels of trade and classes of purchasers. Both Heaven Hill’s HPNOTIQ
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`registrations and Diallo’s ‘196 application fail to place any restrictions on either the channels of
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`trade or classes of purchasers. In such situations, the TTAB must assume that “the identified
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`goods move in all channels of trade that would be normal for such goods, and that the goods
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`would be purchased by all potential customers.” In re Elbaum, 211 U.S.P.Q. 639, 640 (T.T.A.B.
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`1981). If Diallo’s application were granted, the same consumers would, therefore, be exposed to
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`both HPNOTIQ and HYPNOTIZER brand alcoholic beverages and would be confused as to
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`their source. Facing a similar situation involving similar marks for alcoholic beverages,
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`KAHLUA and CHULA, the TTAB recognized that, when the products are identical “and move
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`in the same trade channels to the same classes of purchasers, the degree of similarity required
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`between the words to sustain a claim of likelihood of confusion is less than that otherwise needed
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`in situations involving dissimilar, non-competing products.” Jules Berman & Assocs., Inc. v.
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`Consol. Distilled Prods., Inc., 202 U.S.P.Q. 67, 70 (T.T.A.B. 1979). Thus, this factor weighs
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`heavily in Heaven Hill's favor.
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`C.
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`SIMILARITY OF THE MARKS.
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`When analyzing the similarity of marks, courts look at “the general impression
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`conveyed to the purchasing public by the respective marks.” Educational Testing Serv. v.
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`Touchstone Applied Science, 739 F. Supp. 847, 850, 16 U.S.P.Q.2d 1865 (S.D.N.Y. 1990)
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`(citation omitted). When the product is frequently ordered via an oral request, the phonetic
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`similarity of the mark often guides the decisions, especially with respect to alcoholic beverages.
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`See, e.g., David Sherman Corp. v. Heublein, Inc., 340 F.2d 377 (8th Cir. 1965) (finding
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`SARNOFF for vodka to be confusingly similar to SMIRNOFF also for vodka); Brown-Forman
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`Distillery Co. v. Arthur M. Bloch Liquor Importers, Inc., 99 F.2d 708 (7th Cir. 1938) (finding
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`OLD FOSTER for whiskey to be confusingly similar to OLD FORESTER also for whiskey);
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`Jules Berman, 202 U.S.P.Q. 67 (T.T.A.B. 1979) (finding CHULA for coffee-flavored liqueur to
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`be confusingly similar to KAHLUA also for coffee-flavored liqueur) ; Beck & Co. v. Package
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`Distibs. of America, Inc., 198 U.S.P.Q. 573 (T.T.A.B. 1978) (finding EX BIER for beer to be
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`confusingly similar to BECK’S BEER also for beer).
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`In each of the cited cases, the finder-of-fact recognized that the marks were not
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`identical in sight, meaning, or sound, but concluded that the aural similarity of the marks was
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`sufficient to support a finding that the junior mark would create a likelihood of confusion in the
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`marketplace. For example, in Beck & Co., the TTAB stated that “similarity in sound alone can
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`lead to likelihood of confusion, particularly where the goods involved may be purchased by
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`verbal order.” 198 U.S.P.Q. at 576. The TTAB further concluded that, even though it believed
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`there would be no confusion if the products were encountered side-by-side in a supermarket,
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`there was a likelihood of confusion resulting from the aural similarity of the junior user’s EX
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`BIER mark for beer and the senior user’s BECK’S BEER mark beer. Id. The TTAB also
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`stressed this similarity because both products were sold in “restaurants and clubs, where they
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`would be ordered orally.” Id.
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`The other cited cases reach similar conclusions. In Jules Berman, the TTAB
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`concluded that since CHULA was “virtually identical” in sound to Kahlua, there existed a
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`“viable likelihood of confusion and/or mistake . . . in crowded bars or restaurant where a
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`bartender could serve ‘CHULA’ liqueur when ‘KAHLUA’ was ordered.” 202 U.S.P.Q. at 70-
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`71. In Brown-Forman, the court concluded that the marked auditory similarity between OLD
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`FORESTER and OLD FOSTER would lead to a “probability of confusion” between the marks
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`“when sales are made by the drink.” 99 F.2d at 710. Finally, in David Sherman the court
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`recognized that it is “well known that liquor is ordered by the spoken word” leading the court to
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`conclude that SARNOFF for vodka was likely to cause confusion with SMIRNOFF for vodka.
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`340 F.2d at 382.
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`Here, since the first two syllables of Diallo’s junior HYPNOTIZER mark are
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`