ROBINSON & WOOD,
`ATTORNEYS AT LAW
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`227 North First Street
`San Jose, CA 95113
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`(408) 298-7120 Telephone
`(408) 298-0477 Facsimile
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`www.robinsonwood.com
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`March 31, 2005
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`Commissioner for Trademarks
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`ATTN: TTAB
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`P.O. Box 145 1
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`Alexandria, VA 22313-1451
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`Robert A. Nakamae, Esq.
`(408) 792-5915
`ran@r-winc.com
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`Jonathan N. King, Esq.
`(408) 792-5918
`jnk@r-winc.com
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
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`In re Frank—Lin Distillers Products, Ltd.
`Serial Number: 76/419825
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`Mark: BEYOND VODKA
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`Class: 033
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`Filed: June 12, 2002
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`MEMORANDUM OF POINTS AND
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`AUTHORITIES IN SUPPORT OF
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`FRANK-LIN’S APPEAL OF FINAL
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`OFFICE ACTION DATED JULY 29,
`2004.
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`Mark:
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`Class:
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`Filed:
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`BEYOND VODKA
`033
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`June 12, 2002
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`To:
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`HON. COMMISSIONER OF PATENTS AND TRADEMARKS
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`Applicant, Frank—Lin Distillers Products, Ltd. (hereinafter “Frank-Lin”), respectfully
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`appeals the Examiner’s final refusal to register the trademark "BEYOND VODKA" to the
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`Trademark Trial and Appeals Board (hereinafter "TTAB"). The Examiner issued the refusal on
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`the grounds that a potential likelihood of confiision, mistake, or deception, in accordance with 15
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`U.S.C. § 1052 exists. Frank—Lin respectfully submits this brief in support of its appeal of the
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`Office Action dated July 29, 2004.
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`‘
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`"
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`”
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`1
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`03-31-2005
`U.S. Patent & TM01cITM Mail Rcpt Dt #32
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`Las Vegas Office:
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`1645 Village Center Cir., #271
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`Las Vegas, NV 89134
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`T: (702) 363-5100
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`F: (702) 363-5101
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`TABLE OF CONTENTS .
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`TABLE OF CONTENTS
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`INDEX OF CASES .
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`. 4
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`DESCRIPTION OF THE RECORD .
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`. 4
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`STATEMENT OF THE ISSUES .
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`. 4-5
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`FACTS AND PROCEDURAL HISTORY .
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`LAW AND ARGUMENT .
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`. 6
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`. 6
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`I.
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`II.
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`JURISDICTION AND STANDARD OF REVIEW .
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`BEYOND VODKA IS NOT LIKELY TO CAUSE CONFUSION WITH
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`. 6-7
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`BEYOND MERLOT .
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`1.
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`2.
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`3.
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`4.
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`The Examiner’s Comparison of the Marks was Erroneous (BEYOND
`MERLOT v. BEYOND VODKA) .
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`The Examiner’s Comparison of the Goods/Services was Erroneous
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`(i.e. Red Wine v. Distilled Spirits) .
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`The Cases and Third Party Registrations are Irrelevant to the Present
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`. 10-20
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`. 9-10
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`. 7-9
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`All Non-Elaborated Upon Factors Weigh in Favor of Frank-Lin .
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`. 20-23
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`. 23
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`CONCLUSION .
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`CERTIFICATE OF MAILING .
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`. 24
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`

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`INDEX OF CASES
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`. 8
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`Beech-Nut, Inc. v. Warner-Lambert Co., 346 F.Supp. 547 (S.D.N.Y. 1972)
`Bureau National Inter-professional Du Cognac v. International Better Drinks Corp., 6
`U.S.P.Q.2d 1610 (TTAB 1988) .
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`Canadian Imp. Bank of Comm. v. Wells Fargo Banlg Nat ’l. Assc., 811 F.2d 1490 (D.C.
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`Cir. 1987) .
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`Coca Cola Co. v. Seacrest Beverages, Inc., 162 F.2d 280 (IS‘ Cir. 1947) .
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`E & JGallo Winery v. Ben R. Goltsman & Co., 172 F. Supp. 826 (N.D. Ala. 1959) . 9, 21
`Esso Standard Oil Co. v. Sun Oil Company, 229 F.2d 37 (D.C. Cir. 1956)
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`Estate ofP.D. Beckwith, Inc. v. Commissioner ofPatents, 252 U.S. 538 (1920) .
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`Glenmore Distilleries Co. v. National Distillers Products, Inc., 101 F.2d 479 (4"‘ Cir.
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`In re Bose Corp., 772 F.2d 866 (D.C. Cir. 1985)
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`In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (CCPA 1973) .
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`In re Hennessy, 226 U.S.P.Q. 274 (TTAB 1985)
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`In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463 (D.C. Cir 1988) .
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`In re Majestic Distilling Co., 315 F.3d 1311 (D.C. Cir 2003) .
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`In re Salierbrau Franz Sailer, 23 U.S.P.Q.2d 1719 (TTAB 1992) .
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`In re Shell Oil Co., 992 F.2d 1204 (D.C. Cir. 1993) .
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`Lone Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906 (CCPA 1974)
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`McKesson & Robbins, Inc. v. American Found. for Dental Science, 150 F.3d 420 (CCPA
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`Price Candy Co. v. Gold Medal Candy Corp., 220 F.2d 759 (CCPA 1955) .
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`Schieffelin & Co. v. Molson Companies, Ltd., 9 U.S.P.Q.2d 2069 (TTAB 1989) .
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`Somerset Distilling, Inc. v. Speymalt Whiskey Dist., Ltd., 14 U.S.P.Q.2d 1539 (TTAB
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`. 12 -
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`

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`
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`DESCRIPTION OF THE RECORD
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`The record of this matter consist of all records and filings contained within the file
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`wrapper maintained by the USPTO in this matter. In accordance with Fed. R. Evid. 201, in
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`conjunction with the authority contained within 37 C.F.R. § 2.122, Frank-Lin respectfully
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`requests that the TTAB take judicial notice of said records and filings.
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`STATEMENT OF THE ISSUES
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`Whether or not the July 29, 2004 final refusal of BEYOND VODKA, based upon a
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`likelihood of confusion with BEYOND MERLOT, was correct.
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`FACTS AND PROCEDURAL HISTORY
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`On June 12, 2002, Frank-Lin filed for federal trademark protection of BEYOND
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`VODKA. (See Exhibit A). BEYOND VODKA is source-indicative of a distilled spirit,
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`specifically vodka, namely for human consumption. (See Exhibit A, supra).
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`On October 9, 2002, the USPTO Examiner, Georgia Ann Carty, issued an Office Action.
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`(See Exhibit B). The Office Action established (1) the lack of any conflicting registered marks;
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`(2) a prior pending application, specifically, Application Serial Number 76224302 (i.e.
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`BEYOND MERLOT), whose filing date preceded Frank-Lin’s filing date, and also, preliminarily
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`determining that potential confusion exists under 15 U.S.C. § 1052;‘ (3) clarification of an
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`indefinite identification/recitation of goods and/or services indicated by said mark; (4) a
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`limitation of the scope of the goods indicated by said mark; and (5) the necessity of a disclaimer
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`of VODKA. (See Exhibit B, supra).
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`On or about December 2, 2002, Frank-Lin responded to the October 9, 2002 Office
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`‘ BEYOND MERLOT’s application was filed with the USPTO on March 14, 2001.
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`4 .
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`Action by providing a preliminary response to the Examiner’s 15 U.S.C. § 1052 determination,
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`clarifying the recitation of goods and/or services; and providing a disclaimer with regard to
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`VODKA. (See Exhibit C).
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`On January 15, 2003, the Examiner issued a Notice of Suspension in light of the prior
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`pending application (Serial Number 76224302) seeking federal trademark protection for
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`BEYOND MERLOT. (See Exhibit D).
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`On December 9, 2003, BEYOND MERLOT (Application Number 76224302) matured
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`into a federally-protected trademark. (See Exhibit E).
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`On January 31, 2004, the USPTO issued a subsequent Office Abtion, given the recent-
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`approval of BEYOND MERLOT’s trademark status, based upon a likelihood of confusion
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`between BEYOND MERLOT and BEYOND VODKA. (See Exhibit F). On May 18, 2004,
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`Frank-Lin responded to the USPTO’s January 31, 2004 Office Action. (See Exhibit G).
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`On July 29, 2004, the USPTO issued a final refusal to register based upon a potential
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`likelihood of confusion. (See Exhibit H). Specifically, the Examiner refused registration based
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`upon an apparent comparison of both the BEYOND MERLOT and BEYOND VODKA marks,
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`as well as a comparison of the goods and/or services indicated by both marks. (See Exhibit H,
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`supra).
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`On January 28, 2005, Frank-Lin submitted a Notice of Appeal to the TTAB. (See
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`Exhibit 1).
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`On February 17, 2005, the TTAB deemed Frank-Lin’s brief due on April 1, 2005. (See
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`Exhibit J). Accordingly, Frank-Lin respectfiilly submits this brief in support of said appeal.
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`

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`LAW AND ARGUMENT
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`I.
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`JURISDICTION AND STANDARD OF REVIEW
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`An applicant who wishes to contest a refusal based upon a matter of substance should file
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`an appeal to the TTAB. (TMEP § 1501.01). An appeal may be taken to the TTAB from any
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`final decision of the examiner in charge of the registration of marks upon the payment of the
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`prescribed fee. (15 U.S.C. § 1070; See 37 C.F.R. § 2.141; TMEP § 1501). The TTAB, in
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`reviewing an Examiner’s refusal to register, decides whether or not, based upon the record before
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`the Examiner, the Examiner’s action was correct. (See In re Bose Corp. (D.C. Cir. 1985) 772
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`F.2d 866, 869-870). If there is any doubt as to whether there is a likelihood of confusion, that
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`doubt must be resolved in favor of the prior registrant. (See In re Shell ‘Oil Co., 992 F.2d 1204
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`(D.C. Cir. 1993); In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463 (DC. Cir. 1988); See also Lone
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`Star Mfg. Co. v. Bill Beasley, Inc., 498 F.2d 906, 909 (CCPA 1974)). Based upon the record
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`before the Examiner, Frank-Lin maintains that the action taken by the Examiner was incorrect,
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`and should be reversed.
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`II.
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`BEYOND VODKA IS NOT LIKELY TO CAUSE CONFUSION WITH BEYOND
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`MERLOT.
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`“No trademark by which the goods of the applicant may be distinguished from the goods
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`of others shall be refused registration on the principal register on account of its nature unless
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`it—...(d) Consists of or comprises a mark which so resembles a mark registered in the Patent and
`
`Trademark Office, or a mark or trade name previously used in the United States by another and
`
`not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to
`
`cause confi1sion, or to cause mistake, or to deceive.” (15 U.S.C. § 1052; See also TMEP §
`
`

`
`
`
`1207.01, et seq.). “The ultimate question of the likelihood of confusion has been termed a
`
`question of fact.” (In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973);
`
`citing Coca Cola Co. v. Seacrest Beverages, Inc., 162 F.2d 280 (1" Cir. 1947).
`
`In evaluating a trademark under 15 U.S.C. § 1052(d), the following factors, when of
`
`record, must be evaluated: “(1) The similarity or dissimilarity of the marks in their entireties as to
`
`appearance, sound, connotation, and commercial meaning; (2) The similarity or dissimilarity and
`
`nature of the goods or services as described in an application or registration or in connection with
`
`which a prior mark in use; (3) The similarity or dissimilarity of established, likely to continue
`
`trade channels; (4) The conditions under which and buyers to whom sales are made, i.e.
`
`“Impulse” vs. careful, sophisticated purchasing; (5) The fame of the prior mark (sales,
`
`advertising, length of use); (6) The number and nature of similar marks in use on similar goods;
`
`(7) The nature and extent of actual confiasion; (8) The length of time during and conditions under
`
`which there has been concurrent use without evidence of actual confusion.” (See I.E. DuPont,
`
`supra, 476 F.2d at 1361).
`
`In the present matter, the Examiner based her conclusion on the first and second factors
`
`only: similarity of the marks, and similarity of the services/goods indicated by such marks.
`
`Accordingly, Frar1k-Lin will address these two factors only in this appeal as the remaining six.
`
`factors either do not apply or were deemed resolved in favor of registering BEYOND VODKA.
`
`1.
`
`THE EXAMINER’S COMPARISON OF THE MARKS WAS
`
`ERRONEOUS (BEYOND MERLOT vs. BEYOND VODKA)
`
`In considering the question of likelihood of confusion , the only relevant application of
`
`the law to the facts is in the context of the marketplace, because that is where confusion of
`
`

`
`
`
`prospective purchasers either would or would not occur.
`
`(See Canadian Imperial Bank of
`
`Commerce v. Wells Fargo Bank, Nat ‘I. Assc., 811 F.2d 1490 (D.C. Cir. 1987)). It is the
`
`impression that the mark as a whole creates on the average reasonably prudent buyer and not the
`
`parts thereof, that is important. (Estate ofP.D. Beckwith, Inc. v. Commissioner ofPatents, 252
`
`U.S. 538, 545-546 (1920)). “The commercial nature of a trademark is derived from it as a whole,
`
`nor from its elements separated and considered in detail.” (Id.). “For this reason, [a trademark]
`
`should be considered in its entirety.” (Ibid.). The points of similarity are more important than
`
`the differences to the average buyer, (Esso Standard Oil Co. v. Sun Oil Company, 229 F.2d 37
`
`(D.C. Cir. 1956)) and must be weighed against one another to see which predominate. (See Price
`
`Candy Co. v. Gold Medal Candy Corp., 220 F.2d 759 (CCPA 1955)). In the present action, the
`
`correct inquiry is whether there is a likelihood of confusion between BEYOND VODKA vs.
`
`BEYOND MERLOT, not BEYOND (sans VODKA) vs. BEYOND (sans MERLOT).
`
`If a common portion of the two conflicting marks is a public domain generic name, the
`
`emphasis of inquiry should be upon the confusing similarity of the non-generic portion, with the
`
`ultimate issue determined by the confiising similarity of the total impression of both marks. (See
`
`Beech—Nut, Inc. v. Warner-Lambert Co., 346 F.Supp. 547 (S.D.N.Y. 1972)). Again, in the
`
`present action, the omission of VODKA and MERLOT from any consideration is erroneous in
`
`determining whether or not a likelihood of confusion exists between BEYOND VODKA and
`
`BEYOND MERLOT. The omission of the term BEYOND interfered with the Examiner’s ability
`
`to evaluate the total impression of both marks. In essence, the Examiner relied upon a
`
`comparison of BEYOND “only,” which, obviously, is the same term. Given that the wine buying
`
`public — insofar as their selection and purchase of wine is concerned — is a highly discriminating
`
`

`
`group (See E & J Gallo Winery v. Ben R. Goltsman & Co., 172 F. Supp. 826, 830, fn.2 (N.D.
`
`Ala. 1959)), there is no likelihood of confusion with the purchase of a merlot and the purchase of
`
`a distilled spirt. In essence, the final refusal incorrectly assumes that there will be confusion with
`
`the purchase of a merlot and a vodka. However, it is unreasonable to simply assume that either
`
`word in an established trademark consisting of two independent words is of such importance that
`
`its use in other combinations on the same kind of goods would constitute infringement.
`
`(See
`
`Glenmore Distilleries Co. v. National Distillers Products, Inc., 101 F.2d 479 (4"‘ Cir. 1939)).
`
`Weighing even further in favor of Frank-Lin is the fact that BEYOND VODKA and
`BEYOND MERLOT do not signify the same goods. Therefore, upon a comparison ofthe entire
`
`marks, BEYOND VODKA and BEYOND MERLOT, a likelihood of confiision does not exist.
`
`2.
`
`THE EXAMINER’S COMPARISON OF THE GOODS/SERVICES WAS
`
`ERRONEOUS (i.e. RED WINE V. DISTILLED SPIRIT).
`
`The only conceivable similarity between a vodka and merlot is that they are both
`
`alcoholic beverages. However, the similarities end there as there are many obvious differences
`
`that clearly separate these two products from each other and obviate any potential likelihood of
`
`confusion. The two products look different (clear vs. red), smell different (alcohol vs
`
`fruit/grape), are made from different products (grains vs. fruity), are made from different
`
`processes (distilled vs. ferment), have different alcohol contents (generally 80 proof vs. generally
`
`26 proof) are used differently (mixed with ice vs. straight with no ice), are served differently
`
`(cocktail glass vs. wine glass), are consumed at different times (cocktail party vs. dinner drink),
`and target different consumers (a bottle ofBeyond Vodka costs less than $20 while a similar
`
`sized bottle of merlot can cost in excess of $100). What may not be apparent to the consumer but
`
`

`
`is relevant to this discussion is that a licensed maker of vodka needs a separate license to make
`
`wines (and Vice versa).
`
`BEYOND VODKA is indicative of a distilled beverage, namely vodka, for human
`
`consumption, which is made from 100 % grain neutral spirits. BEYOND MERLOT is a red
`
`wine made from fermented grapes. An overall comparison of the characteristics of both vodka
`
`and wine provides many examples of why these products are not similar at all.
`
`Vodka is commonly classified as a “hard liquor.” It is a clear liquid substance made from
`
`100 % grain neutral spirits created via a distilling process that is usually used in conjunction with
`
`other various products in mixed alcoholic-based concoctions. However, merlot is a red liquid
`
`substance made from grapes created via a fermentation process that is sold as a stand-alone
`
`product, which can also be used for cooking purposes. Although both vodka and merlot are
`
`sometimes sold in the same stores, both products are commonly maintained within their
`
`particular genre (wines and hard liquors). Given the characteristics of both liquid substances,
`
`consumers understand the differences of both hard liquor and wine, including both vodka and
`
`merlot. Although both are alcoholic beverages, these goods are not related nor do they emanate
`
`from the same source or channels of trade.
`
`3.
`
`THE CASES AND THIRD PARTY REGISTRATIONS ARE
`
`IRRELEVANT TO THE PRESENT ACTION.
`
`For purposes of establishing the relatedness of the goods, the Examiner has relied upon
`
`numerous prior decisions of 15 U.S.C. § lO52(d) issues, as well as third party registrations.
`
`However, while third party registrations are to be considered, they are of little help and do not
`
`control a court’s determination of whether the marks are so similar that they are likely to cause
`
`10
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`

`
`confusion, mistake, or deception, (See Lone Star, supra, 498 F.2d at 908) nor are prior decisions
`
`on different marks used under different circumstances of
`
`value in deciding a specific issue of
`
`likelihood of confusion. (Id.). Clearly, the Examiner’s sole reliance upon past applications and
`
`prior irrelevant substantive determinations in order to establish a similarity of goods and/or
`
`services indicated by both marks was clearly erroneous and insufficient for the required factual
`
`finding. The resolution of this conflict must rest on the totality of its own facts as to likelihood
`
`of confusion.
`
`(See, inter alia, McKesson & Robbins, Inc. v. American Foundation for Dental
`
`Science, 150 F.3d 420 (CCPA 1945)).
`
`The Examiner relied upon numerous decisions in refusing to register BEYOND VODKA.
`
`However, these cases are non-persuasive. The Examiner’s reliance upon In re Majestic Distilling
`
`Co. (315 F.3d 1311 (D.C. Cir 2003) is erroneous. Although In re Majestic Distilling involved
`
`beer and tequila as the goods indicated by such marks, the mark at issue was exactly the
`
`same—RED BULL. Clearly, given the exact match of trademarks, as well as the close proximity
`
`of the goods, In re Majestic Distilling does not shed light on any purported similarities between a
`
`distilled product and a wine-based (fermented) product with dijferent marks.
`
`Furthermore, the following cases (relied upon by the Examiner) are not controlling as
`
`they do not compare a vodka product with a wine product (that have different marks): In re
`
`Salierbrau Franz Sailer (23 U.S.P.Q.2d 1719 (TTAB 1992)); Somerset Distilling, Inc. v.
`
`Speymalt Whiskey Distributors, Ltd. (14 U.S.P.Q.2d 1539 (TTAB 1989)); Schieffelin & Co. v.
`
`Molson Companies, Ltd. (9 U.S.P.Q.2d 2069 (TTAB 1989)); Bureau National Inter-professional
`
`Du Cognac v. International Better Drinks Corp. (6 U.S.P.Q.2d 1610 (TTAB 1988)); and In re
`
`Hennessy (226 U.S.P.Q. 274 (TTAB 1985)). Therefore, and given that none of the case law cited
`
`11
`
`

`
`by the Examiner offers any comparison of distilled beverages and fermented beverages, such case
`
`law should be afforded little, if any, weight at all.
`
`In making their determination, the Examiner also relies upon nineteen third party
`
`registrations as probative evidence that entities using their marks in connection with wine-related
`
`goods frequently use their mark in connection with vodka goods. Obviously, numerous
`
`businesses deal in both liquors and wines. However, in regards to both BEYOND MERLOT and
`
`BEYOND VODKA, there is no cross-over in products being provided to the public. BEYOND
`
`MERLOT only signifies a wine product, whereas BEYOND VODKA only signifies a distilled
`
`beverage, namely vodka for human consumption. Frank-Lin has no wine product with the
`
`BEYOND name attached, nor does the maker of BEYOND MERLOT have a vodka product with
`
`the BEYOND name attached. Third-party registrations that cover a number of different goods or
`
`services have some, probative value to the extent that they may serve to suggest that goods or
`
`services are of a type that may emanate from a single source (See TMEP § 1207.0l(d)(iii)).
`
`However, for the reasons stated below, the third party registrations should be afforded very little
`
`detenninative weight in finding a potential likelihood of confusion between BEYOND MERLOT
`
`and BEYOND VODKA.
`
`A.
`
`CHARBAY (Serial No. 78149047)
`
`CHARBAY, which is indicative of a wide array of alcoholic beverages, primarily
`
`translates into a combination of both “CHARdonnay” and “BrAndY.” The goods covered by this
`
`mark include alcoholic aperitif bitters, alcoholic beverage produced from a brewed malt base
`
`with natural flavors, alcoholic bitters, alcoholic coffee-based beverage, alcoholic malt coolers,
`
`alcoholic punch, alcoholic tea-based beverage, anisette, aperitif wines, aperitifs with a distilled
`
`12
`
`

`
`
`
`alcoholic liquor base, aperitifs with a wine base, brandy, brandy sprits, cooking wine, cordials,
`
`distilled spirits, distilled sprits made from corn, wheat, barley, millet, rye, fruits and vegetables,
`
`extracts of spirituous liquors, fruit wine, gin, hard cider, herb liqueurs, liqueurs, distilled liquor,
`
`mead, port wines, portable spirits, prepared alcoholic cocktail, prepared wine cocktails, rum,
`
`sake, saki, sangria, schnapps, sherry, tequila, Vermouth, vodka, whiskey, wine, wine coolers
`
`drinks, wine punch, and wine punches.
`
`Although CHARBAY’s goods and services are indicative of both chardonnay and vodka,
`
`it includes virtually every alcoholic beverage available to the general public — there is no
`
`limitation upon the indicated goods and services. The distinction is that the mark is not
`
`indicative of a single source as tea-based beverages are obviously made differently than extracts
`
`of spirituous liquors or fruit wines.
`
`BEYOND VODKA is limited to a distilled beverage, namely vodka, and BEYOND
`
`MERLOT is limited to “Wine.” (See Exhibits A and E, supra). Clearly, CHARBAY is not
`
`relevant or indicative as a third party registration on the issue of likelihood of confusion presently
`
`at hand.
`
`B.
`
`ROOM (with a “Star” Image imposed above the word mark) (Serial No.
`
`78167980)
`
`ROOM is indicative of a restaurant and cocktail lounge that serves both wine and vodka.
`
`However, neither BEYOND VODKA and BEYOND MERLOT are involved in the restaurant
`
`and cocktail lounge business (although both products may be provided at such establishments)?
`
`2 However, it should be noted that there is no evidence that BEYOND MERLOT'is
`actually being used in commerce. Frank-Lin respectfully submits its intemet research findings as
`Exhibit K. In the event the TTAB does not take notice of this evidence, Frank-Lin respectfully
`
`13
`
`

`
`
`
`Clearly, the activities of a restaurant and cocktail lounge have no applicability to the independent
`
`manufacturing activities of either BEYOND VODKA and BEYOND MERLOT. Therefore, the
`
`activities of ROOM have no bearing on this matter. If this were the measuring stick, no product
`
`registration would survive as many are commonly sold at the same locations (ie grocery store) or
`
`consumed at the same location (ie restaurant).
`
`C.
`
`CHANTECLAIR (Serial No. 78094422)
`
`CHANTECLAIR, which translates into “sing clearly,” is also indicative of a wide array
`
`of alcoholic beverages that includes wine, hard cider, champagne, brandy, cognac, rum, vodka,
`
`and gin. Although the mark is indicative of different alcohol beverages, the various products do
`
`not all arise from the same source (ie wine is created via a fermentation process, while vodka
`
`arises from a distillation process). Therefore, CHANTECLAIR is not indicative of emanation
`
`from a single source.
`
`D.
`
`HECTIC CUISINE (Serial No. 78091231)
`
`HECTIC CUISINE signifies, amongst other various un-related classifications and
`
`products, liquor, namely in the form of liqueurs, sparkling wine, wine, brandy, rum, vodka,
`
`Vermouth, gin, bitters and whiskey. However, and given the wide array of goods indicated by
`
`HECTIC CUISINE, the Examiner could conceivably deny registration of BEYOND
`
`ANYTHING (for example), including, but not limited to, toilet paper, paper towels, and napkins.
`
`Therefore, HECTIC CUISINE also lacks any probative value in the determination of emanation
`
`from a single source.
`
`requests the TTAB remand this matter, in accordance with TBMP 1207.02, to the Examiner for
`further consideration.
`
`14
`
`

`
`
`
`E.
`
`CELADON (Serial No. 78055430)
`
`CELADON is indicative of the following products: rice wine sake, red wine, white wine,
`
`whiskey, vodka, brandy, and gin. CELADON is indicative of alcohol-related products. Once
`
`again, these wine and vodka products do not emanate from the same source. Therefore,
`
`CELADON is not probative or indicative of the emanation from a single source of both wine and
`
`vodka.
`
`F.
`
`NATURE’S YARD (Serial No. 78036479)
`
`Similar to HECTIC CUISINE, NATURE’S YARD also signifies, amongst other various
`
`un-related classifications and products, alcoholic beverages, namely brandy, spirits, gin, cognac,
`
`vodka, whiskey, tequila, wine, hard cider, liqueurs, rum, and sherry. Clearly, and similar to
`
`HECTIC CUISINE, Supra, since NATURE’S YARD is indicative of much more than alcoholic
`
`beverages, this mark is not probative in establishing the emanation from the same source,
`
`especially, given the wide array of products signified in the market place by NATURE’S YARD.
`
`G.
`
`D (with “Twin Lions” image on both sides of word mark)(Serial No.
`
`76288012)
`
`D signifies both alcoholic beverages, namely, liqueurs, wine, and vodka, as well as
`
`business services, namely consultation, planning, importation, and exporting of such products,
`
`inter alia. However, and given the dual classifications, D is not indicative of the manufacturing
`
`of either wine or vodka, but, namely, the promotion thereof. Therefore, D is not probative in
`
`establishing emanation of both wine and vodka from the same manufacturing source.
`
`H.
`
`PREMIUM QUALITY EXCEPTIONAL VALUE (Serial No. 76178438)
`
`PREMIUM QUALITY EXCEPTIONAL VALUE is indicative of distilled spirits, namely
`
`15
`
`

`
`
`
`cordials, liqueurs, tequila, rum, Vodka, scotch, bourbon, whiskey, brandy, rum, gin, and wine.
`
`However, wine, contrary to such a disclosure, is not a distilled product, but, instead, emanates
`
`from fermented grapes. Although it would appear to indicate that both wine and vodka emanate
`
`from the same source, given the inaccuracy contained within the products and/or services
`
`disclosure, PREMIUM QUALITY EXCEPTIONAL VALUE is not probative, in fact, that both
`
`vodka and wine emanate from the same source.
`
`I.
`
`GELSON’S (Serial No. 76455374)
`
`GELSON’S is indicative of GELSON’S MARKET, a market that owns the mark, and is
`
`involved with the distribution of vodka, gin, scotch, whiskey, bourbon, rye whiskey, rum, and
`
`wine. Given that the marks involved in the present action belong to the makers not distributors,
`
`GELSON’S is not applicable. Frank-Lin makes BEYOND VODKA, and the Chalone Wine
`
`Group purportedly makes BEYOND MERLOT. GELSON’S is not probative in determining the
`
`emanation of both vodka and wine from a single source, especially given the fact that GELSON’S
`
`is a marketplace that simply sells both alcohol-related products.
`
`J.
`
`ZIPPERS THE ORIGINAL GELATIN SHOT! (Serial No. 76049319)
`
`ZIPPERS The ORIGINAL GELATIN SHOT!, which is owned by FUBAR Corporation,
`
`signifies alcohol, namely a gelatin shooter consisting of gelatin mixed with rum, vodka, wine, or
`
`brandy. However, ZIPPERS THE ORIGINAL GELATH\I SHOT! is not probative of the
`
`emanation of vodka and wine from the same source. In actuality, ZIPPERS The ORIGINAL
`
`GELATIN SHOT! only signifies numerous alcohol-related substances can be utilized, in
`
`conjunction with gelatin, to create their product. The mark simply indicates an unrelated,
`
`derivative product that may sometimes include wine and may on other occasions include vodka.
`
`16
`
`

`
`
`
`K.
`
`!FELIZHELADAS! (Serial No. 75859643)
`
`!FELIZHELADAS!, which is owned by Alternate and Innovative Marketing, signifies
`
`vodka, gin, scotch, whiskey, bourbon, rye whiskey, rum, and wine. However, given the capacity
`
`of the mark’s owner as an innovative marketing specialist, !FELIZHELADAS! is hardly
`
`probative of the emanation of both wine and vodka from the same source, especially given that a
`
`marketing professional can be involved in the promotion of many different and un-related, as
`
`well as related, products. Therefore, !FELIZHELADAS! should be afforded no evidentiary
`
`weight in determining a single source for the making of a vodka and a merlot.
`
`L.
`
`BK (Serial No. 75858402)
`
`BK signifies distilled alcoholic beverages, namely, whiskey, gin, rum, vodka, and brandy;
`
`in addition to wine and wine products, namely, flavored wines and wine based beverages.
`
`Although BK signifies the manufacturing of both distilled beverages and wine-related beverages,
`
`and both products emanate from the same manufacturer, both products do not emanate from the
`
`same source--wine-related products emanate from fermented grapes, and vodka emanates from a
`
`distillation process. Overall, BK’s recitation of goods and/or services indicate the fundamental
`and significant differences between BEYOND VODKA, a distilled beverage, and BEYOND
`
`MERLOT, a wine beverage.
`
`M.
`
`REMBRANDT (Serial No. 75824114)
`
`REMBRANDT signifies vodka, gin, scotch, rum, bourbon, wine, wine coolers, and pre-
`
`mixed cocktails containing alcohol. However, the REMBRANDT mark is only indicative of a
`
`wide array of unrelated, derivative products that may sometimes include wine or vodka — it is not
`
`indicative of wine and vodka emanating from the same source.
`
`17
`
`

`
`N.
`
`BLT (Serial No. 7521 1151)
`
`BLT signifies wine in general, brandy, spirits, champagne, distilled spirits, fruit wine, gin,
`
`rum, vodka, and whiskey. However, the BLT mark is also indicative of a wide-array of alcohol-
`
`related beverages, and, similarly, lacks probative value in establishing emanation from the same
`
`source. As with CHARBAY, the BLT mark is not relevant.
`
`O.
`
`BELLE TERRE (Serial No. 75175849)
`
`BELLE TERRE, which translates into “beautiful earth,” signifies wine, sparkling wine,
`
`brandy, and vodka. BELLE TERRE is not indicative of emanation from the same source, and,
`
`similar to other relied upon third party registrations, only indicates a similar distribution.
`
`Therefore, BELLE TERRE is not probative or indicative of the emanation of vodka and wine
`
`from the same source.
`
`P.
`
`OLD HARBOUR (Serial No. 75046436)
`
`OLD HARBOUR signifies, albeit confusingly, rum-1iqueur-wine-whiskey-scotch
`
`whiskey-gin-vodka-brandy-rye whiskey- and cordials. However, this mark indicates a mixed
`
`drink that includes several different alcohols — it is not indicat