IN THE UNITED STATES PATENT AND TRADEMARK O1<‘I<'l(,‘E
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`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`'6'/0
`P 3
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`# 4
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`Cancellation No. 92044883
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`In the matter of
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`Trademark Reg. No.2
`For the mark:
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`Registered:
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`2,799,507
`MEYER VINEYARD
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`December 23, 2003
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`MEIER'S WINE CELLARS, INC.,
`Petitioner,
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`v.
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`MEYER INTELLECTUAL PROPERTIES
`LIMITED,
`
`Registrant.
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`REGISTRANT'S RESPONSE
`
`TO MOTION FOR SUMMARY JUDGMENT
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`Registrant, Meyer Intellectual Properties, Ltd. ("MEYER"), owner of the "MEYER
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`VINEYARD" trademark, hereby responds to the Motion for Summary Judgment filed by
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`Petitioner, Meier's Wine Cellars, Inc. ("MEIER'S"), owner of the "MEIER'S WINE CELLARS"
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`mark, and states:
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`INTRODUCTION
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`Petitioner argues that the sole issue before the Board is the likelihood of CO1'1fl.1Si0I1
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`created by Registrant's use of the MEYER VINEYARD mark and asks the Board to reach such
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`conclusion as a matter of law (Motion, at 5). However, in July 2004 when Petitioner sought
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`registration of the MEIER'S trademark, it represented to the Examining Attorney that there is Q
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`likelihood of confusion between the MEIER'S mark and MEYER VINEYARD mark. Petitioner
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`stated:
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`MMWWWWWWWM
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`06-04-2007
`U.S. Pa1ent&TM01cITM Mail FICEKD1. #34
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`
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`

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`is no likelihood of confusion
`there [1]
`Applicant asserts that
`between MEIER'S for the goods stated in the application and
`MEYER VINEYARD. The cited MEYER VINEYARD mark [2]
`gives the impression that the wine is produced from grapes from
`a particular vineyard.
`[3] Applicant's mark on the other hand
`gives no such impression of familiarity with the owner of the
`mark. .
`.
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`(See Registrant's Request to Remove from Suspension, Exhibit A
`p. 2) (Emphasis and [bracketed numbering] added).
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`Petitioner's three statements are admissions against interest. EZ Loader Boat Trailers,
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`Inc. v. Cox Trailers, Inc., 213 USPQ 597, 599 (1982), affd, 706 F.2d 1213 (Fed. Cir. 1983) (". .
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`.
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`such statements constitute admissions and may be considered as evidence, albeit not conclusive
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`evidence, of the truth of the assertions therein"). Moreover, such admission is a stake in the heart
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`of Petitioner's present argument.
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`Notwithstanding such admissions, which are presently on file in the records of the PTO,
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`Petitioner now makes an inconsistent argument in its pursuit of summary judgment that there i_s a
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`likelihood of confusion between the above marks, and asks the Board to accept precisely the
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`opposite proposition. Moreover, Petitioner's additional
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`representations to the Examining
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`Attorney that the "MEYER VINEYARD mark gives the impression that the wine is produced
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`from grapes of a particular vineyard," but that Applicant's [Petitioner's] mark "gives no such
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`impression“ are two additional significant admissions against interest that accurately portray a
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`significant distinction between the two marks, and highlight the lack of any likelihood of
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`confusion.
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`(Id.). Petitioner's present attempt to ignore the above admissions to the PTO in its
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`desire to cancel the MEYER VINEYARD registration, and to obtain its own registration, is
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`disingenuous.
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`

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`Another point is significant in Petitioner's motion. While Petitioner argues that it is
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`seeking registration of the MEIER'S mark alone, Petitioner nevertheless has attached substantial
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`evidence that it is, and has been for a long period of time, marketing wines under the "MEIER'S
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`WINE CELLARS" name and label, according to many of the exhibits submitted by Petitioner in
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`support of its present motion. As demonstrated herein, and confirmed by Petitioner to the
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`Examining Attorney, the two marks: MEIER'S WINE CELLARS, and MEYER VINEYARD,
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`are vastly different in sight, sound and commercial meaning.
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`Moreover, Petitioner's admission, albeit a legal conclusion, that there "is no likelihood
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`of confusion" between the two marks is consistent with a consumer survey commissioned by
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`Registrant that was taken last year in four geographical locations in this country, including Ohio,
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`Petitioner's home state. The survey concluded with empirical data that there is no likelihood of
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`confusion between the two marks because consumers simply do not associate the MEYER
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`VINEYARD label with goods sold under the MEIER'S, or the MEIER'S WINE CELLARS
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`marks. Petitioner therefore cannot meet its burden of proof by a preponderance of evidence to
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`obtain summary judgment as a matter of law, as demonstrated below.
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`Finally, Petitioner has no priority over the MEYER VINEYARD mark. It has never used
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`that mark nor claimed any ownership of it.
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`ARGUMENT
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`I.
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`THE PARTIES MARKS ARE NOT CONFUSINGLY SIMILAR
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`Contrary to the arguments now made in Petitioner's motion, the parties‘ marks are not
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`identical, nor even confusingly similar. They look and sound significantly different — MEYER
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`VINEYARD v. MEIER'S WINE CELLARS -— both marks create different commercial images.
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`Further, the stylizations of the parties‘ marks on the products themselves are strikingly different,
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`

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`as
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`the products themselves demonstrate.
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`The marks also have different connotations.
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`Petitioner's mark refers to an indoor basement wine cellar, while Respondent's mark refers to
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`outdoor Vineyards. These factors militate against any likelihood of confusion between the two
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`distinctly dissimilar marks as demonstrated below.
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`A.
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`Petitioner's Mark.
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`Petitioner has historically used the MEIER's surname in
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`conjunction with the words "Wine Cellars" on the labels identifying its products as represented
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`by Petitioner's Chairman Robert Manchick (See, par. 3, and Exhibit A to Manchick Declaration).
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`Significantly, Petitioner also states that it is "currently" using the MEIER'S WINE CELLAR'S
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`mark on labels identifying its products.
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`.
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`. "labels that are currently in use" (Id., par. 3). A
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`representative sample of such labels is attached hereto as Exhibit B. In addition, Petitioner has
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`historically used the MEIER'S WINE CELLARS trade name as a "Producer of Wines" since at
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`least 1968 (See, Trade Name Renewal Certificates, Group Exhibit C). Moreover, in 1987, 1997,
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`2001, 2002, and 2003 Petitioner's bottle labels displayed the MEIER'S WINE CELLARS trade
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`name (See, Grou Exhibit D .1
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`These facts belie Petitioner's arguments that its bottle labels identify "MEIER'S" alone as
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`the source of Petitioner's goods. As a result, purchasers have associated and will associate
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`Petitioner's wines with its trade name: MEIER'S WINE CELLARS. In this light, while the word
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`MEIER'S is in script, and "Wine Cellars" in block letters on the labels,
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`the apostrophe in
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`MEIER'S is a possessive, thereby referring to the source of the product being Wine Cellars
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`owned and operated by MEIER'S, i.e., MEIER'S WINE CELLARS.
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`The powerful impression created by the words "WINE CELLARS" overshadows the
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`word "MEIER'S" so that the focus is not on "MEIER'S" alone, instead, the focus becomes
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`1 Exhibit B, and Group Exhibits C and D were produced by Petitioner during discovery in the present
`proceedings. They are Bates stamped with the prefix "PMTZ".
`
`

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`MEIER'S WINE CELLARS. It is proper for the Board to conduct such analysis. Cunningham v.
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`Laser Golf 222 F. 3d 943, 947, 55 USPQ 2d 1842, 1845 (Fed. Cir. 2000) ("Court may examine
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`each component of the mark
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`and the effect of that component on the issue of likelihood of
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`confusion as between the respective marks in their entireties"). The meaning of the entire
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`MEIER'S WINE CELLARS mark, and the commercial impression created thereby, conjures
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`images of a basement that is dark and cool containing wine bottles or barrels, in stark contrast to
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`the image created by Registrant's mark.
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`B.
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`Registrant's Mark.
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`Registrant's mark, "MEYER VINEYARD" on the other
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`hand, creates an entirely different "outdoor" feeling and impression that creates images of
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`outdoor rows of grapevines, daylight, and warmth which suggests a totally different meaning and
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`impression than the dark, cool wine cellar associated with Petitioner's mark.
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`In this regard, it is
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`significant that Petitioner itself agrees with the meaning and impression of Registrant's "MEYER
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`VINEYARD" mark. As mentioned, Petitioner previously admitted that "the cited MEYER
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`VINEYARD mark gives the impression that the wine is produced from grapes from a particular
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`vineyard" (Exhibit A, p. 5). While the sound of MEIER'S alone, and MEYER alone,
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`is
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`somewhat similar, when the entire names on the labels as used in commerce by the parties are
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`viewed and contrasted — MEIER'S WINE CELLARS, versus MEYER VINEYARD,
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`the
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`differences in sounds are immediately highlighted? Moreover, the sight of the two marks are
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`also different: one has two words, the other has three words. The impression created by the word
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`"VINEYARD" overshadows the word "MEYER" so that the focus is not on "MEYER" alone,
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`instead, the entire mark is viewed as MEYER VINEYARD.
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`
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`2 (Registrant's mark disclaims the word "VINEYARD", however, such disclaimer does not reduce the present analysis to only
`comparing "MEIER'S" and "MEYER". See, Giant Food, Inc. v. Nation's Foodservice, Inc., 710 F. 2d 1565, 1570 (Fed. Cir.
`1983) (". . .it is well settled that the disclaimed material still forms a part of the mark and cannot be ignored in determining
`likelihood of confusion. .
`. Therefore, the disclaimed portions of the mark must be considered in detennining the likelihood
`of confusion").
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`

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`C. . Both parties display their marks on their goods.
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`However, the manner of display is vastly different and supports the sight, sound and meaning
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`distinction between the two marks. Registrant's mark is visibly distinguishable from Petitioner's
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`mark through different labeling. Henri’s Food Products Co. v. Kraft, Inc., 717 F. 2d 352, 355,
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`220 USPQ 386,
`
`(7th Cir. 1983).
`
`("Comparison of labels rather than simply the trademarks is
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`appropriate in likelihood of confusion analysis", MIRACLE WHIP and YOGOWHIP). In the
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`present case, Registrant's initial labels for its 2002-2003 vintage Cabernet Sauvignon pictorially
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`emphasized the "Meyer Vineyard" outdoor theme (See, Karen Dismuke Declaration, Exhibit E,
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`par. 4). Also see, Plus Products v. Plus Discount Foods, Inc., 722 F. 2d 999, 1007, 222 USPQ
`
`373, 379 (2d Cir. 1983) (In assessing the similarity of two marks, the court should view the
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`marks in the context of the products‘ packaging).
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`Registrant's all black bottle is stylishly sleek and displays the name "MEYER
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`VINEYARD" silk screened over the glass face of the bottle in gold block letters. It also displays
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`a block "M" that is overlaid with a scrolled "V". These letters reinforce MEYER VINEYARD
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`and are placed inside a 1 1/4-inch diameter circle. The words ''Napa Valley'' in gold block letters
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`are also prominently silk screened on the bottle.
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`(See Exhibit E, par 5). The silk screened
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`words and 1 1/4 inch circle function as a label, thereby creating unique upscale packaging. This
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`packaging is in contrast to the usual paper labels customarily used by wine producers on their
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`bottles. In this regard, Petitioner's MEIER'S WINE CELLARS mark is also displayed on a paper
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`label
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`that shows "MEIER'S" in a scroll
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`typeface in conjunction with the words "WINE
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`CELLARS" in block letters (Exhibit B), or on some occasions "MEIER'S" alone.
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`Conversely, Registrant never uses the "MEYER" name alone. Instead, Registrant always
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`uses it
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`in conjunction with "VINEYARD" so that
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`the consumer always sees "MEYER
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`

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`VINEYARD" on Registrant's goods.
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`(Dean Krause Declaration, Exhibit F, par. 6). See,
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`Universal Money Centers v. American Telephone & Telegraph Co., 22 F.3d. 1527, 1531 (10th
`
`Cir. 1994) ( AT&T UNIVERSAL CARD and UNIVERSAL MONEY: Appearance of marks
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`dissimilar, convey different ideas, and stimulate different mental reaction despite dominant word
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`"UNIVERSAL"). Also see, Universal City Studios, Inc. v. Nintendo Co., 746 F.2d 112, 116, 223
`
`USPQ 1000, 1002 (2d Cir. 1984) (No confusion found, KING KONG vs. DONKEY KONG
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`video games: Court may grant summary judgment for defendant if visual comparison of marks
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`by court reveals they are not substantially similar).
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`D.
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`The "MEIER'S WINE CELLA " Mark Loses Any First Word Dominance.
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`Petitioner argues that MEHER'S is the dominant word in the MEIER'S WINE CELLARS
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`mark. (Motion, p. 9). However, use of similar dominant words such as MEIER'S and MEYER in
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`the parties‘ respective trademarks "does not always mean that the two overall marks are similar. .
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`.
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`.We must look to the overall impression created by the marks". Luz'gino's, Inc. v. Stoufler
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`Corp., 170 F. 3d 827, so USPQ 2"“ 1047 (8”‘ Cir. 1999). Indeed, this principle also applies when
`
`the two dominant words are "identical" (Id.). See, Champagne Louis Roederer, S.A. v. Delicato
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`Vineyards,
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`148 F.3d 1373 (Fed. Cir. 1998)
`
`(Finding no confusion because CRISTAL
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`CHAMPAGNE suggests a clarity of wine or glass bottle, while CRYSTAL CREEK suggests "a
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`very clear and
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`remote
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`creek or stream); Nabisco Brands, Inc. v. Quaker Oats Co., 547 F.
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`Supp. 692, 216 USPQ 770 (D.N.J. 1982) (No confusion because "CREAM OF WHEAT" v.
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`"CREAMY WHEAT" — use of the word "Creamy" in a descriptive sense to denote soft and
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`smooth product negates first word dominance).
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`The surname "MEIER'S" is also a descriptive mark and, when used in conjunction with
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`"Wine Cellars," loses any first word dominance because of the strong meaning and impression
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`

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`created by addition of the words "Wine Cellars." As mentioned above, the image of a dark, cool
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`basement containing wine bottles or barrels becomes the immediate commercial impression.
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`When contrasted with the MEYER VINEYARD trademark, there is a great dissimilarity and
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`therefore little chance of confusion between the two marks. Therefore, looking at the marks as a
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`whole, their substantial differences outweigh any similarities. "The evidence must be viewed in a
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`light most favorable to the non-movant and all justified inferences are to be drawn in its favor."
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`Lloyd's Food Products, Inc. v. Eli's, Inc., 987 F.2d 766, 767, 25 USPQ 2d 2027 (Fed. Cir. 1993).
`
`II.
`
`THE DISSIMILARITY OF MARKS FACTOR ALONE, UNDER THE DuPONT
`ANALYSIS,
`IS SUFFICIENT TO FIND THERE IS NO LIKELIHOOD OF
`CONFUSION
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`This Board has held in an opposition proceeding context that the "dissimilarity of marks"
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`DuFont factor, can be dispositive of the entire likelihood of confusion analysis.
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`In Champagne
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`Louis Roderer,
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`the Board concluded, and the Federal Circuit affirrned,
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`that the CRISTAL
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`CHAMPAGNE and CRYSTAL CREEK marks were dissimilar
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`in "appearance,
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`sound,
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`significance, and commercial
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`impression as the dispositive DuPont factor," and that "this
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`dissimilarity alone precluded any reasonable likelihood of confusion. 148 F.3d at 1375.
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`Although the Board agreed with the Opposer on three of the DuPont factors in that case,
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`i.e., s_arr;e goods (wine including champagne); sflg channels of trade; and game or similar
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`customers; it dismissed the opposition proceedings based solely upon the different commercial
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`impressions created by the marks (Id.). The Board further found that
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`the CRISTAL and
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`CRYSTAL CREEK marks "evoked very different images in the minds of relevant consumers."
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`(Id.)
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`Similarly, in the present case, the impressions created between the MEYER VINEYARD
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`and MEIER'S WINE CELLARS marks also evoke very different images in the minds of relevant
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`

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`consumers as stated above. On this factor alone, the Board can deny Petitioner's motion for
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`summary judgment. See, Kellogg Co. v. Pack’em Enters, 951 F. 2d 330, 332-333, 21 USPQ 2d
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`1142, 1144-45 (Fed. Cir. 1991) ("We know of no reason why, in a particular case, a single
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`DuPont factor may not be dispositive" since "substantial and undisputed differences" between
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`two competing marks justified a conclusion of no likelihood of confusion on summary
`
`judgment). The Board may therefore find no likelihood of confusion as a matter of law. Giant
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`Food, Inc. v. Nation's Foodservice, Inc., 710 F. 2d 1565, 1569, (Fed. Cir. 1983) ("the issue of
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`likelihood of confusion is the ultimate conclusion of law to be decided by the court").
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`III.
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`SURVEY EVIDENCE DISCLOSES NO LIKELIHOOD OF CONFUSION
`BETWEEN THE TWO MARKS
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`Should the Board conclude that the distinctly different marks preclude any likelihood of
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`confusion, as found in the Champagne Louise Roderer case, such conclusion is supported by a
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`consumer "confusion" survey conducted on behalf of Registrant. Although Petitioner argues that
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`use of the MEYER VINEYARD mark on wine creates a likelihood of confusion with MEIER'S
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`WINE CELLARS mark on identical goods, that bold, unsupported, and unsupportable argument
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`overreaches.
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`In this regard, Registrant commissioned a survey analyzing consumer reaction to
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`the MEYER VINEYARD mark, and any possible relationship of that mark to MEIER'S WINE
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`CELLARS, or any other entity.
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`A mall intercept survey was conducted by FTI Consulting, Inc., a nationwide consulting
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`and market research group, during the months of July and August, 2006 in four geographically
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`disbursed cities: Los Angeles; Washington, DC -Metro; Austin, Texas; and Cleveland, Ohio.
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`Personal, face-to-face interviews were conducted with a total of 340 men and women by
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`independent professional marketing research firms with permanent office facilities in the malls.
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`(Craig Joseph Declaration, , par. 3). A qualified respondent for the study was defined
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`as a person over 21 years of age who had purchased a bottle of wine in the previous six months.
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`Each respondent was taken into a room and shown a bottle of Petitioner's MEYER VINEYARD
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`wine for 30 seconds and, after the bottle was covered, asked several "open ended" questions
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`which sought answers in respondent's own words (Id., par 5).
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`In the first question, each respondent was asked to "describe what you saw." The survey
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`showed that 35.5% mentioned "Meyer", 68.2% mentioned ''black or dark bottle", and 39.1%
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`mentioned "gold lettering."
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`(Id., par. 6). Each respondent was then asked "Who do you think
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`puts out this wine you just saw?" The survey showed that 48.2% said "Meyer," 11.8% answered
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`"Napa Valley," and 30% said they "don't know". No respondent answered that Meier's or
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`Meier's Wine Cellars was a source of the wine, even in Petitioner's home state, Ohio. (Id.).
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`To measure any possible association between MEYER and MEIER'S, each respondent
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`was then asked whether he/she thought the company that puts out the wine bottle they saw also
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`puts out other wines, or other products. The survey showed that 68.7% answered "Yes."
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`(Id.
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`par. 7). As a follow up question to those respondents who answered "Yes," each was asked
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`"What other products?" The study fl.1I'th6I' showed that of those who answered, 25 respondents,
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`or 7.4%, said "Wine Coolers," "Sangria," and "Fruit Juices." These respondents were deemed by
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`the study to have "indirectly" referred to Petitioner, Meier's Wine Cellars, Inc. because it also
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`sells similar products.
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`(Id.). With respect to the three types of possible confiision sought to be
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`measured,
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`the survey found (i) a zero "direct source" confusion with Meier's, (ii) a 7.4%
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`"indirect source" confusion with Meier's, and (iii) zero "association confusion" with Meier's.
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`(Id.).
`
`10
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`

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`The survey report concluded that the "maximum" rate of confusion of all types using
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`reasonable assumptions was 7.4% with a plus or minus error factor of 2.8% (Id., par. 9). It also
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`states that "indirect source" confusion is the weakest of all confusion categories (Id.). The survey
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`report concluded:
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`The foregoing results indicate that there is no significant likelihood
`that consumers who are exposed to Registrant's mark, MEYER
`VINEYARD will confuse Registrant's product with those of the
`Petitioner, MEIER'S, or MEIER'S WINE CELLARS (Id.).
`
`******
`
`Based on the findings discussed above, my opinion is that
`Registrant's use of the MEYER VINEYARD mark is not "likely to
`cause confusion, to cause mistake, or to deceive to the damage and
`injury of Petitioner and the purchasing public. (Id., par. 10).
`
`A.
`
`Likelihood of Confusion Is "Unlikely" When Consumer Survey Results
`Show Confusion Under 10%
`
`"When the percentage results of a confusion survey dip below 10 percent, they can
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`become evidence which will indicate that confusion is not likely." 5 McCarthy on Trademarks
`
`and Unfair Competition, sec. 32.189 (2006). Also see, Henri is Food Products Co. v. Kraft, Inc.,
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`717 F. 2d 352, 357, 220 USPQ 386, 391 (7th Cir. 1983)
`
`(7.6% confusion reported in consumer
`
`survey is "a factor weighing against
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`infringement") Wuv’s International,
`
`Inc.
`
`v. Love's
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`Enterprises, Inc., 208 USPQ 736, 756, 1980 WL 3029 (D. Colo. 1980) (9% C0l’lfllSl0l’l in survey;
`
`no likelihood of confusion proven.); S.S. Kresge Co. v. United Factory Outlet, Inc., 598 Fed. 2d
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`694, 697 (1st Cir. 1979) (7.2% of those surveyed believed THE MART and K-Mart were owned
`
`by the same people, but "similar sounding names" was insufficient to establish likelihood of
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`confusion); G. Heileman Brewing Co. v. Anheuser-Busch, Inc., 676 F. Supp. 1436, 1495 (E.D.
`
`Wis. 1987) (95.5% of survey respondent's not confused due to seeing source name of beer
`
`ll
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`

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`producers on bottle labels); Paco Sport, Ltd. v. Paco Rabanne Parfums, 86 F. Supp. 2d 305, 321,
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`54 USPQ 2d 1205 (S.D.N.Y. 2000) (5% level of confiision "negligibly low", no likelihood of
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`confusion found ~ but, different products and other factors considered). In the present case, even
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`generously giving Petitioner the benefit of using the maximum "indirect source" confiasion rate
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`of 7.4%, that percentage still falls well below the 10% threshold rate thereby militating against
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`any likelihood of confusion.
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`B.
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`Defendant Acted In Good Faith In Adopting The "Meyer Vineyard" Mark
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`MEYER VINEYARD was derived from the name "Meyer Corporation U.S." which is a
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`gourmet cookware company related to Registrant, Meyer Intellectual Properties Limited. Meyer
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`Corporation U.S. and its affiliates have been using the name "Meyer" since at least the early
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`1950's. (Exhibit F, par. 3). This name was adopted as part of a family of marks under the
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`"Meyer" name in the house wares business. (Id.). The affiliates own 30 registrations of the
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`"Meyer" trademark in 13 countries (Id., par. 4). Registrant adopted the MEYER VINEYARD
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`name and mark after an internet search and PTO search believing that there was no risk of
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`consumer confusion between it and any other wine or beverage producer (Exhibit E, par. 2-3)
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`(Exhibit F, par. 5), and continues in that belief. Registrant never had any intent to benefit from
`
`any goodwill associated with any other tradename or trademark (Exhibit F, par. 5), and there is
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`no evidence that it has. Moreover, Petitioner has not introduced any facts or evidence to prove
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`any inference that Registrant adopted the MEYER VINEYARD mark for the purpose of trading
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`upon any recognition of the MEIER'S WINE CELLARS mark. Registrant's good faith in
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`adopting its mark is therefore not an issue for consideration in the present motion.
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`Pharmaceutical Co. v. Gillette Co., 984 F.2d 567, 575, 25 U.S.P.Q. 65 (2d Cir. 1978) (because
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`there was no evidence that defendant intended to promote confusion, no bad faith was found).
`
`
`
`

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`IV.
`
`PETITIONER'S "FAMOUS MARK" ARGUMENT IS NULLIFIED BY THE
`SIGNIFICANT DISSIMILARITIES BETWEEN THE TWO MARKS IN THE
`PRESENT CASE
`
`Petitioner argues that its mark is "famous" through its long use and that such use is a
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`principal basis for finding likelihood of confusion in the present case. (Motion, p.12). However,
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`the "famous mark" argument is negated when "there are significant differences between the mark
`
`whose fame is asserted and the mark which is alleged to be confusingly similar." See, Land
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`O’Lakes, Inc. v. Land 0’Frost, Inc., 224 USPQ 1022, 1026-7 (TTAB, 1984) (No confusion
`
`between LAND O'LAKES famous mark and LAND O'FROST for meat products because of
`
`"obvious dissimilarities in appearance and pronunciation"). Also see, Burns Philip Food, Inc., v.
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`Modern Products, Inc., 28 USPQ2d 1687, 1689 (C.A.F.C., 1993) (Although famous mark SPICE
`
`ISLANDS on spices, no confusion with SPICE GARDEN because of different connotations and
`
`commercial impressions created between the two marks). In addition, see Stoufler Corp. v.
`
`Health Valley Natural Foods, Inc.,
`
`1 USPQ2d 1900, 1906 (TTAB, 1986) (Although identical
`
`goods, channels of trade, and a famous mark, no confusion between LEAN CUISINE and LEAN
`
`LIVING due to different sound, appearance, and meaning).
`
`Petitioner's argument that its mark is famous, and therefore should be cited against
`
`Registrant's mark is without merit and, in any event, irrelevant in the present case based upon the
`
`distinctly different sight, sound, and meaning of the two marks discussed above.
`
`Conclusion
`
`For the foregoing reasons, Petitioner has failed to demonstrate that there is a likelihood of
`
`confusion between the two distinctly different marks in the present case as a matter of law.
`
`

`
`Accordingly, Petitioner's Motion for Summary Judgment should be denied, and judgment
`
`entered sua sponte in favor of Registrant as a matter of law.
`
`Respectfully Submitted,
`
`MEYER INTELLECTUAL PROPERTIES LIMITED
`
`Registrant,
`
`By:
`
`One of Its Attorneys
`
`Scott W. Petersen
`
`Donald G. Mulack
`
`HOLLAND & KNIGHT LLP
`131 s. Dearbom Street — 30”‘ Floor
`
`Chicago, IL 60603
`(312) 715-5789
`
`# 4111686_v2
`
`

`
`
`CERTIFICATE OF MAILING
`Ihereby certify that this Request to Remove from Suspension is being deposited with the United States Postal Service as first
`class mail in an envelope addressed to: Commissioner for Trademarks, 2900 Crystal Drive, Arlington, VA 22202-3514, on July
`26,2004.
`
`Ex 3; [E-. E
`' Christine A. l-Iutter
`
`TRADEMARK
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Applicant
`
`' Mark
`Serial No.
`
`Filed
`
`'
`
`Examining Attorney
`Law Office
`
`Last Office Action
`
`Attorney Docket No.
`
`I
`
`:
`
`:
`:
`
`:
`
`:
`:
`
`:
`
`2
`
`. Meier’s Wine Cellars, Inc.
`
`MEIER’S
`76/465,378
`
`November 7, 2002
`
`Tracy Whittaker-Brown
`111
`0
`
`July 14, 2003
`
`PMTZ 5 00066
`
`- Cleveland, Ohio 44114
`' July 26, 2004
`-
`
`REQUEST TO REMOVE FROM SUSPENSION
`
`Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3514
`
`Dear Commissioner:
`
`_
`
`A The Examiner suspended the subject application on July 14, 2003. The basis for the
`suspension is no longer applicable Serial No. 76/456,360, MEYER VINEYARD, issued on the
`Supplemental Register on. December 23, 2003,
`and Serial No. 76/456,361, MEYER
`
`CHARDONNAY, was abandoned effective June 12,2004.
`Ԥ\'=I
`v
`
`A
`
`REG|STRANT'S EXHIBIT A
`Meier's v. Meyer
`Cancellation No. 92044883
`
`
`
`PMTZ-00087
`
`

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`

`
`
`
`FAY, SHARPE,
`
`FAGAN,
`
`MINNICH & MCKEE, LLP
`IIOO SUPERIOR AVENUE
`
`SEVENTH FLOOR
`
`CLEVELAND. OHIO
`
`44ll4-2579
`
`.
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`D CHECK IN AMOUNT s
`[X] OTHER
`
`
`
`RECEIPT IS HEREBY ACKNOWLEDGED
`
`
`
`
`
`PMTZ-00090
`
`VIA FIRST CLASS MAIL
`'
`Applicant: Meier‘ S Wine Q6] llafis,
`Title MEIER‘ s
`Initials
`‘Attorney Docket No.
`El TRADEMARKISERVICE MARK APPLIcA11oN (
`__ Transmittal Lettgr
`__ Specimens
`D RECORDATION FORM COVER SHEET
`
`.
`
`El AMENDMENTIRESPONSE
`E] NO'I1CE OF APPEAL
`C] STATEMENT or use
`Transmittal Letter
`Specimens
`Request for Extension 01 Trrne to File Statement of Use
`E] 8 & 15 AFFIDAVIT
`Transmmal Letter
`‘
`Specimens
`'
`D 8 & 9 RENEWAL APPL|CA'I1ON '
`Transmittal Leiter
`Specimens
`D NOTICE OF opposrnou
`Reques1 for Extension of Time to Oppose
`C] COPYRIGHT APPLICA‘l1ON
`Orlglnal __ Renewal
`
`2 I IE
`
`.
`
`

`
`Applicant asserts that there is no likelihood of confusion between MEIER’S for the goods
`
`stated in the application and MEYER VINEYARD. The cited MEYER VINEYARD mark gives
`
`the impression that the wine is produced fiom grapes from a particular vineyard. Applicant’s
`
`mark on the other hand gives no such impression of familiarity with the owner of the mark
`
`(similar to EAT AT JOE’S or JOE’S CRAB SHACK or the like). Moreover, the cited mark’s
`
`status on the Supplemental Register implies that MEYER VINEYARD is descriptive and, hence,
`non-distinctive. The Section 2(d) refusal should be withdrawn.
`I
`In the July 14, 2003 Notice of Suspension, the Examiner instructed Applicant to provide.
`
`a statement in order to claim acquired distinctiveness. Applicant has already provided the
`
`Examiner with a Declaration to support its claim of distinctiveness. This Declaration was
`
`submitted on April 30, 2003. A copy of the previously submitted Declaration is enclosed for the
`
`Examiner’s convenient reference. Note that the Declaration contains the required wording and
`
`was signed by the Chairman of'A.pplicant en April 15, 2003.
`Applicant has used the MEIER’S mark in association with the goods of Class 32 since
`
`1895 and the goods of Class 33 since 1934. Applicant has very strong common-law rights in the
`
`mark that pre-date its filing. The distinctiveness of the mark is assured by this long period of_
`
`.
`
`11SC.
`
`PMTZ-00091
`
`

`
`Early notification that the Section 2(d) basis for refusal had been withdrawn and that the
`
`Section 2(f) claim of distinctiveness has been accepted is earnestly solicited. The mark is
`
`believed to be in condition for acceptance and publication. Early notice to that effect is solicited.
`
`Respectfully submitted,
`
`FAY, SHARPE, FAGAN,
`MINNICH & MCKEE, LLP
`
`
`
`Christopher B. Fagan
`Sandra M. Koenig
`1100 Superior Avenue
`Seventh Floor
`
`Cleveland, OH 44114-2579
`(216) 861-5582
`
`N:\PMTZ\500066\CAH0002791V00l.doc
`
`PMTZ-00092
`
`

`
`@
`
`V
`
`In re Application of
`
`For
`SerialNo.
`Filed
`
`A
`
`Examining Attorney
`
`4
`Law Office
`Last Office Action
`
`-
`
`H
`
`.
`
`Attorney Docket No.
`
`'
`
`:
`
`:
`:
`:
`
`:
`
`:
`:
`
`:
`
`Meier’s Wine Cellars, Inc.
`
`MEIER’S
`76/465,378_
`November 7, 2002
`
`0
`
`Tracy Whittaker.-Brown
`
`11 1
`March 24, 2003
`
`PMTZ 5 00066
`
`DECLARA'i‘ION .
`
`Box RESPONSES NO FEE
`Commissioner for Trademarks
`2900 Crystal Drive
`Arlington, VA 22202-3513
`_
`-
`Dear Commissioner:
`I am the Chairman of Meier’s Wine Cellars, Inc., and am authorized to make this declaration
`
`y
`
`on its behalf.
`
`The MEIER’S mark has become distinctive of Appl-icant’s goods by reason of the
`
`substantially exclusive and continuous use thereof as a mark by the Applicant in commerce for the
`
`five years preceding this declaration.
`
`e
`
`PMTZ-00093
`
`

`
`The undersigned hereby declares that all statements made herein of his own knowledge are
`true and that all statements made on information andbeliefare believed to be true, and further that
`these statements andthelike somadearepunishablebyfine orimprisonment; orboth,underSection
`1001 ofTitle 18 ofthe United States Code, and that such willful false statements mayjeopardize the
`
`validity of the application or any trademark registration issuing thereon.
`
`MEIER’S WINE CELLARS, me.
`
`I
`
`By:‘
`
`éobert A. Manchick, Chairman
`
`I
`
`Date:
`
`- 4 /[ 5’[ 0 §
`
`N:\PMTZ\500066\CAHO307A.wpd
`
`PMTZ-00094
`
`

`
`
`
`WINE CELLARS
`
`COCKTAIL SHERRY
`
`’
`
`'7» ";~:;.:' 17.21-rwr.-7
`
` ‘§—.———&
`
`
`
`>.-
`
`Y».
`
`‘
`
`
`
`MElER'S 44
`AHIRHAJ
`CREAM SHERRY
`
`Full—bodied and delightful-
`ly smooth with a nutty fla-
`vor. Blended in large oak
`casks,
`then placed out-
`doors for solera aging and
`weathering.
`
` RUBYPQRI
`
`MElER'S 44 ‘
`Illlltll
`
`and
`rich
`Distinctively
`semi-sweet with a smooth,
`
`velvety taste characteristic
`of
`the
`finest
`ports.
`Skillfully blended,
`then
`cellared in oak.
`
`"P'MTz.oo997
`
`
`
`mag
`WINI CILLAII
`
`52%Z
`WINI CILLAHI
`
`g~ £1,
`WINK CILLAII
`
`No.21
`
`RMERICAN
`
`COCK.T.AlL SHERRY
`
`H _
`
`NO.Z2
`AMERICAN
`e SHERRY
`
`Crisply dry and soft with a
`pale straw color. Skillfully
`blended to display a dis-
`tinctive bouquet with a
`light, elegant nutty flavor.
`
`Medium dry and golden
`amber in color with the
`perfect balance between
`sweetness
`and
`a