*1 THIS DISPOSITION IS NOT CITABLE AS PRECEDENT OF THE T.T.A.B.
Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
IN RE FONTE SOLE HOLDING AG
Serial No. 74/246,176
September 13, 1996
Hearing: February 15, 1996
Robert M. Skolnik of Weingram & Zall for Fonte Sole Holding AG.
Kenneth D. Battle
Trademark Examining Attorney
Law Office 14
(R. Ellsworth Williams, Managing Attorney).
Before Cissel, Seeherman and Hanak
Opinion by Cissel
Administrative Trademark Judge:
On February 12, 1992, applicant, a Swiss corporation, applied to register the mark shown below
on the Principal Register for "mineral water, spring water, aerated water, natural fruit flavored mineral and spring water," in Class 32. The application was based on applicant's assertion that it possessed a bona fide intention to use the mark in commerce in connection with the specified goods. At the request of the Examining Attorney, applicant submitted a translation of the Italian word "Sole" as meaning "SUN," and a statement that the lining on the drawing does not indicate color.
Registration was refused under Section 2(d) of the Act on the ground that applicant's mark, as applied to the goods set forth in the application, so resembles the mark "SOLE," which is registered [FN1] in typed form for "wine," that confusion is likely. The refusal was unsupported by any evidence, but the Examining Attorney first argued that the marks "are essentially phonetic equivalents," and then that "[i]n fact, it appears that the marks are identical." (Office Action 01, p.2). Additionally, he characterized the goods as related because "both are beverages."
Applicant's response asserted that confusion is not likely in view of specified differences between the marks and specified differences between the goods.
The next Office Action, issued November 20, 1992, made the refusal final. It referred to attached information retrieved from the Nexis computer database as support for the proposition that applicant's goods are related to the goods set forth in the cited registration, but no reasoning was provided and no such information was in fact attached.
When applicant brought this fact to the attention of the Examining Attorney, on October 8, 1993 he issued another Office Action and included copies of twenty-seven pages of computer print-outs. No further comment or explanation of this evidence was made, however.
The evidence consists of copies of excerpts from articles from various printed publications. The articles show that wine, bottled water and fruit drinks are beverages sold to the consuming public in restaurants and stores, and that some business sell combinations of these products.
Applicant responded to receipt of this evidence with a detailed analysis of it, concluding that it does not establish that similar marks are used to identify the sources of these different types of beverages. Applicant argued that a clear distinction as to source exists between alcoholic and non-alcoholic beverages, even between different types of alcoholic beverages, and that reasonable buyers of applicant's water products have no reason to expect such products to emanate from the same source as registrant's wine.
*2 On March 15, 1994, the Examining Attorney made the refusal to register final, but did not address the arguments made by applicant concerning the Nexis evidence.
Applicant filed a notice of appeal. Applicant and the Examining Attorney filed briefs. Applicant filed a supplemental brief, attached to which were copies of dictionary entries indicating that the acute accent over the final letter in applicant's mark could result in a different pronunciation and a different connotation from that of the registered mark, which consists of the same letters without the accent.
At applicant's request, an oral hearing before the Board was conducted on February 15, 1996.
Based on a careful consideration of the evidence and the authorities argued by both applicant and the Examining Attorney, we find that the Examining Attorney has failed to meet his burden of establishing that confusion is likely in this case. Confusion is not likely in view of the differences in the marks and the differences in the goods on which they are used.
Contrary to the claim of the Examining Attorney, these marks are not identical, and contrary to the Examining Attorney's contention in his appeal brief, applicant has never acknowledged that the marks are identical. We agree with applicant that the acute accent over the letter "E" in the word "SOLE" results in the word having a different character in applicant's mark than it does without the accent in the registered mark. In applicant's mark, particularly in view of the graphic representation of the sun, which the Examining Attorney never mentions in his analysis, the word "SOLE" clearly refers to the sun. The registered mark, which does not show the word "SOLE" with any accent mark, and which has no design component of any kind, could just as easily be understood as a reference to "only," or even to fish. Thus, distinctions between the marks can be made in terms of overall commercial impression because of the design element and the accent in applicant's mark. The Examining Attorney has not demonstrated that these marks, considered in their entireties, are so similar that they are likely to be perceived as the marks of a single entity, especially in view of the differences in the goods on which they are used.
The Examining Attorney has not established that the goods of applicant are closely related to the goods set forth in the cited registration. At best, the evidence shows that applicant's products and the products set forth in the registration are beverages. This does not demonstrate that consumers expect both the water beverages specified in the application and wine to bear similar trademarks as indications that they emanate from common sources. That these products move in the same channels of trade to the same ordinary consumers is not enough. So do deodorants, soft drinks and magazines, but we do not ordinarily expect them all to emanate from the same source. We simply have no evidence that even one company markets both types of beverages under the same trademark or even trademarks which are similar.
*3 The Examining Attorney cites a number of cases in support of the proposition that the contemporaneous use of similar marks on complementary food products is likely to cause confusion or mistake as to source. The goods involved there include, for example, bread and cheese; sausage and cheese; chicken and seasoning for chicken; and meat and bread. In the instant case, however, we have no evidence that the waters specified in the application and wine are complementary products in the same sense as the goods in these third-party registrations. While wine and water can be consumed during the course of a single meal, so can many different food and beberage items. This fact alone does not establish that these goods are related in such a way that consumers would expect them to emanate from the same source.
In summary, the Examining Attorney has failed to show that confusion is likely. In view of obvious differences in these marks as they are considered in their entireties, as well as the lack of proof that the goods of applicant are commercially related to the goods set forth in the registration, we hold that confusion is not likely. Accordingly, the refusal to register is reversed.
R. F. Cissel
E. J. Seeherman
E. W. Hanak
Administrative Trademark Judges, Trademark Trial and Appeal Board
FN1. Reg. No. 1,664,317 issued to D'Aquino Italian Importing Co., a California corporation, on November 12, 1991. The registration claims use since May 23, 1990.