Inre: Franciscan Vineyards, Inc. , 593 F. App'x 997 ( 2014 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE FRANCISCAN VINEYARDS, INC.
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2014-1269
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Appeal from the United States Patent and Trademark
Office, Trademark Trial and Appeal Board in Opposition
No. 91178682.
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Decided: December 9, 2014
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JOHN M. RANNELLS, Baker and Rannells, PA, of Rari-
tan, New Jersey, for appellant.
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Before LOURIE, CHEN, and HUGHES, Circuit Judges.
LOURIE, Circuit Judge.
Franciscan Vineyards, Inc. (“Franciscan”) appeals
from the decision of the United States Patent and Trade-
mark Office (“PTO”) Trademark Trial and Appeal Board
(the “Board”) dismissing its opposition to an application
filed by Domaines Pinnacle, Inc. (“Domaines Pinnacle”) to
register a DOMAINE PINNACLE mark. See Franciscan
Vineyards, Inc. v. Domaines Pinnacle, Inc., No. 91178682,
2013 WL 5820844 (T.T.A.B. Oct. 16, 2013) (“Opinion”).
Because the Board did not err in determining that Fran-
2 IN RE FRANCISCAN VINEYARDS, INC.
ciscan failed to prove a likelihood of confusion between
Franciscan’s registered marks for use with wines and
Domaines Pinnacle’s requested mark for use with “apple
juices and apple-based non-alcoholic beverages,” we
affirm.
BACKGROUND
Domaines Pinnacle, a Canadian corporation and pro-
ducer of alcoholic ice apple wines, filed an intent-to-use
application at the PTO, seeking to register a DOMAINE
PINNACLE mark for “apple juices and apple-based non-
alcoholic beverages.” Opinion at *1. Franciscan opposed
the registration, alleging that Domaines Pinnacle’s mark
would likely cause confusion with Franciscan’s previously
registered and used marks PINNACLES for “wine” and
PINNACLES RANCHES for “wines.” Id.
The Board evaluated the following DuPont factors:
(1) the similarity or dissimilarity of the marks in their
entireties (“the first DuPont factor”); (2) the similarity or
dissimilarity and nature of the goods or services as de-
scribed in an application or registration or in connection
with which a prior mark is in use (“the second DuPont
factor”); (3) the similarity or dissimilarity of established,
likely-to-continue trade channels (“the third DuPont
factor”); (4) the conditions under which and the buyers to
whom sales are made (“the fourth DuPont factor”); (5) the
fame of the prior mark (“the fifth DuPont factor”); (6) the
number and nature of similar marks in use on similar
goods (“the sixth DuPont factor”); and (7) the market
interface between the applicant and the owner of a prior
mark (“the tenth DuPont factor”). Id. at *3–8; see also In
re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361
(CCPA 1973) (listing factors relevant to likelihood of
confusion determination).
The Board found that the first, third, and fourth
DuPont factors favored a finding of likelihood of confu-
sion, Opinion at *3–4, *6, but that the fifth, sixth, and
IN RE FRANCISCAN VINEYARDS, INC. 3
tenth DuPont factors were neutral, id. at *4–5, *8. The
Board, moreover, found that the second DuPont factor
favored a finding of no likelihood of confusion. Id. at *6–
8. Franciscan submitted evidence that the parties were
competitors in Canada and that Franciscan’s parent
company wholly owned three Canadian companies that
sold wines and ciders. But the Board found Franciscan’s
evidence insufficient to show that the goods at issue, i.e.,
Franciscan’s wines and Domaines Pinnacle’s “apple juices
and apple-based non-alcoholic beverages,” were related or
that they would likely be seen by the same persons under
circumstances that could give rise to confusion. Id. at *7.
Balancing the relevant DuPont factors, the Board rea-
soned that “the lack of evidence showing a relatedness of
the goods outweigh[ed] the first, third, and fourth
[DuPont] factors.” Id. at *8. The Board therefore con-
cluded that Franciscan failed to prove its case and dis-
missed the opposition. Id. at *8–9.
Franciscan appealed to this court; we have jurisdic-
tion under 28 U.S.C. § 1295(a)(4)(B).
DISCUSSION
We review the Board’s legal conclusions without def-
erence and its factual findings for substantial evidence.
In re Pacer Tech., 338 F.3d 1348, 1349 (Fed. Cir. 2003).
Likelihood of confusion is a question of law based on
underlying findings of fact. In re Chatam Int’l, Inc., 380
F.3d 1340, 1342 (Fed. Cir. 2004). We assess a likelihood
of confusion based on the factors set forth in DuPont. 476
F.2d at 1361. “The likelihood of confusion analysis con-
siders all DuPont factors for which there is record evi-
dence but ‘may focus . . . on dispositive factors, such as
similarity of the marks and relatedness of the goods.’”
Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156,
1164–65 (Fed. Cir. 2002) (quoting Han Beauty, Inc. v.
Alberto-Culver Co., 236 F.3d 1333, 1336 (Fed. Cir. 2001)).
4 IN RE FRANCISCAN VINEYARDS, INC.
Franciscan argues that the Board overlooked evidence
relating to the second DuPont factor, namely that Fran-
ciscan’s wines and Domaines Pinnacle’s “apple juices and
apple-based non-alcoholic beverages” were related goods.
According to Franciscan, when evaluating the second
DuPont factor, the Board failed to take into account its
own findings regarding the third and fourth DuPont
factors. Franciscan also argues that the Board failed to
follow In re Jakob Demmer KG, 219 U.S.P.Q. 1199
(T.T.A.B. 1983) to generally deem wines and non-alcoholic
beverages related goods. Franciscan faults the Board for
not taking judicial notice of the dictionary definitions of
“wine” and “cider,” and urges this court to take such
judicial notice. Finally, Franciscan asserts that the Board
incorrectly evaluated the fifth DuPont factor concerning
the fame of its registered marks.
We conclude that the Board did not err in determining
that there was no likelihood of confusion between Fran-
ciscan’s previously registered marks for use with wines
and Domaines Pinnacle’s requested mark for use with
“apple juices and apple-based non-alcoholic beverages”
because Franciscan failed to present evidence to show
that the goods at issue were related.
Franciscan presented testimony to the Board that the
parties were competitors in Canada and that Franciscan’s
parent company owned three Canadian companies that
sold wines and ciders. The Board correctly noted, howev-
er, that this evidence pertains to Canadian entities and is
insufficient “to show that [Domaines Pinnacle’s] and
[Franciscan’s] identified goods are related in some man-
ner” or that the goods are marketed such that “they would
be likely to be seen by the same persons under circum-
stances which could give rise to a mistaken belief that
they originate from or are in some way associated with
the same producer or that there is an association between
the producers of each parties’ goods.” Opinion at *7.
IN RE FRANCISCAN VINEYARDS, INC. 5
Moreover, we agree with the Board that Jacob Dem-
mer does not control in this case. Id. at *6. In Jacob
Demmer, the Board affirmed the examining attorney’s
refusal to register similar marks for “wines” and “apple
cider.” Jacob Demmer, 219 U.S.P.Q. at 1200. In doing so,
the Board took judicial notice of the dictionary definitions
of “cider” and “wine” and found the goods at issue there to
be related. Id. at 1201. As the Board correctly noted
here, however, Jacob Demmer involved an ex parte ap-
peal, in which the Board generally adopts a “more per-
missive stance with respect to the admissibility and
probative value of evidence” than it does in an inter partes
proceeding, in which the burden is on the opposer to
introduce evidence that the goods are related. Id. at *7
(citing T.T.A.B. Manual of Procedure § 1208 (3d ed. rev. 2
June 2013)). The Board thus did not err in refusing to
adopt a general rule that cider and wine are per se related
or to take judicial notice of the dictionary definitions of
“wine” and “cider” in this case.
We have considered Franciscan’s remaining argu-
ments but find them unpersuasive. We therefore con-
clude that substantial evidence supports the Board’s
factual findings underlying the relevant DuPont factors
and that the Board did not err in determining, based on
the record evidence, that there was no likelihood of confu-
sion.
CONCLUSION
For the foregoing reasons, we affirm the decision of
the Board dismissing Franciscan’s opposition.
AFFIRMED