Champagne Louis Roederer, S.A. v. Delicato Vineyards

• Citation: 148 F.3d 1373
• Decision Date: 16 July 1998
• Docket Number: No. 98-1032,98-1032
• Parties: CHAMPAGNE LOUIS ROEDERER, S.A., Appellant, v. DELICATO VINEYARDS, Appellee.
• Court: United States Courts of Appeals. United States Court of Appeals for the Federal Circuit

Page 1373

148 F.3d 1373

47 U.S.P.Q.2d 1459

CHAMPAGNE LOUIS ROEDERER, S.A., Appellant, v. DELICATO VINEYARDS, Appellee.

No. 98-1032.

United States Court of Appeals Federal Circuit.

July 16, 1998.

Rehearing Denied Sept. 11, 1998.

Julius Rabinowitz, Hughes Hubbard & Reed LLP, of New York City, argued for appellant. With him on the brief was Perla M. Kuhn.

Michael A. Grow, Arent Fox Kinter Plotkin & Kahn, of Washington, DC, argued for appellee. With him on the brief was I. Steven Siglin, Jr. of Costa Mesa, California. Of counsel was Cristina A. Carvalho, Arent Fox Kinter Plotkin & Kahn, of Washington, DC.

Before MAYER, Chief Judge, MICHEL and LOURIE, Circuit Judges.

Concurring opinion filed by Circuit Judge MICHEL.

PER CURIAM.

DECISION

Champagne Louis Roederer, S.A. ("Roederer") appeals from a decision in an opposition proceeding by the Trademark Trial and Appeal Board of the Patent and Trademark Office (the "Board"). See Champagne Louis Roederer, S.A. v. Delicato Vineyards, Opposition No. 80,932 (TTAB June 25, 1997). Delicato Vineyards' ("Delicato") predecessor in interest filed application serial no. 73/701,485 to register the word mark "CRYSTAL CREEK" for wine. Roederer filed an opposition to the registration based on its two marks--the word mark "CRISTAL," and the mark "CRISTAL CHAMPAGNE" with accompanying graphic design. The Board dismissed Roederer's opposition after determining that the application mark was not confusingly similar to either of Roederer's marks. Because we conclude that Roederer failed to demonstrate any error in the Board's legal analysis or ultimate legal conclusion regarding likelihood of confusion, or clear error with respect to any of its findings on the individual DuPont factors, we must affirm.

DISCUSSION

We evaluate for correctness the Board's ultimate legal conclusion as to the likelihood of confusion between the application and opposer's marks, but we review the underlying factual findings of the Board for clear error. See Kenner Parker Toys v. Rose Art Indus., 963 F.2d 350, 352, 22 U.S.P.Q.2d 1453, 1455 (Fed.Cir.1992); Weiss Assocs. v. HRL Assocs., 902 F.2d 1546, 1547-48, 14 U.S.P.Q.2d 1840, 1841 (Fed.Cir.1990).

Although the opposition proceeding, and thus the record, was characterized by a lack of evidence on many of the DuPont factors, the Board did, to the extent it was presented with evidence, assess the thirteen factors enumerated by one of our predecessor courts as constituting the test for likelihood of confusion. See Application of E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361, 177 U.S.P.Q. 563, 567 (CCPA 1973). Specifically, the Board found or presumed that the class of goods for which the marks were used were the same (wine, including champagne), that those goods traveled in the same trade channels, and that the goods were purchased by the same or similar customers. See Champagne Louis Roederer, slip op. at 8-9. Certainly there were no restrictions in the application that would support any contrary findings. The Board also found that Roederer's marks had "come to serve as a very strong indication of origin for [its] champagne." Id. at 9. The Board, however, treated the dissimilarity of the marks with respect to appearance, sound, significance, and commercial impression as the dispositive DuPont factor, concluding that this dissimilarity alone precluded any reasonable likelihood of confusion. See id. at 11. Specifically, as to significance, the Board found that the word marks "CRISTAL" and "CRYSTAL CREEK" evoked very different images in the minds of relevant consumers: while the former suggested the clarity of the wine within the bottle or the glass of which the bottle itself was made, the latter suggested "a very clear (and hence probably remote from civilization) creek or stream." Id. at 12. The Board then found that the appearance and sound of the competing marks were also dissimilar. See id. at 13. Based on these three underlying findings on this single DuPont factor, the Board dismissed the opposition because of the difference in commercial impressions it found were created by the marks.

We must affirm, for Roederer on appeal merely restates its arguments from the opposition, which primarily concern the appropriate weight to be given the various findings on the several DuPont factors considered by the Board, and has failed to demonstrate any reversible error in the Board's decision or foundational factual findings.

Roederer suggests, first, that it was an error of law for the Board to rely solely on the dissimilarity of the marks in evaluating the likelihood of confusion and to fail to give surpassing weight to the other DuPont factors, all of which were found to favor Roederer. We note, however, that we have previously upheld Board determinations that one DuPont factor may be dispositive in a likelihood of confusion analysis, especially when that single factor is the dissimilarity of the marks. See, e.g., Kellogg Co. v. Pack'em Enters., 951 F.2d 330, 332-33, 21 USPQ2d 1142, 1144-45 (Fed.Cir.1991) (stating that "[w]e know of no reason why, in a particular case, a single DuPont factor may not be dispositive" and holding that "substantial and undisputed differences" between two competing marks justified a conclusion of no likelihood of confusion on summary judgment); Keebler Co. v. Murray Bakery Prods., 866 F.2d 1386, 1388, 9 U.S.P.Q.2d 1736, 1739 (Fed.Cir.1989) (agreeing with the Board that the "more important fact for resolving the issue of likelihood of confusion ... is the dissimilarity in commercial impression between the marks"). We have not been persuaded that, on this record, the Board erred in concluding that the marks' dissimilarities were dispositive, notwithstanding due weight being accorded to the DuPont factors found in Roederer's favor.

Second, Roederer has failed to demonstrate any instance of clear error in the Board's factual findings with respect to the dissimilarities of the marks in appearance, sound, significance, or overall commercial impression. Although Roederer disagrees, chiefly, with the Board's interpretation of the commercial impression of the marks, even reasoned disagreement with such a finding does not, without more, establish that it is clearly erroneous. Although this opposition may have presented to the Board a close question with respect to the dissimilarities of the marks in sound, appearance, significance, and commercial impression, we remain unpersuaded that the Board made any clear error in its factual findings and thus we decline to disturb the Board's decision on this basis either.

Thus, because Roederer has failed to demonstrate any reversible factual or legal error, we must

AFFIRM.

MICHEL, Circuit Judge, concurring.

Although I agree with the outcome and rationale and thus join the opinion, I write separately to express my concern with the absence of analysis and resulting potential for uncorrectable legal error in the otherwise well-written Board opinion on the underlying question in this case: why the dissimilarity in the commercial impressions conveyed by the competing marks outweighs the Board's findings in favor of Roederer with respect to all other relevant DuPont factors, including the strength of Roederer's "very strong" senior mark and the similarity of Delicato's and Roederer's goods, customers, and channels of trade, between which the Board could "draw no distinctions." Not only do these factors support the opposer but they diminish what he must prove in order to prevail.

I believe that, in general, the Board's expertise warrants great respect for its legal conclusion on likelihood of confusion even though clear error deference is limited to its underlying fact-findings. However, in the rare instances such as this in which the Board fails to provide adequate explanation of the reasoning on which it relied to reach its result, especially in the face of sharply conflicting findings, I question whether such respect is justified. To date, our court has said little on the subject of critical omissions in such opinions. The United States Court of Appeals for the District of Columbia Circuit, however, has made frequent reference to similar problems of analytical opacity in opinions in the context of the judicial review it is mandated to conduct of decisions by certain regulatory agencies. Most recently, for example, in American Lung Association v. Environmental Protection Agency, 134 F.3d 388 (D.C.Cir.1998), the court was asked to review an agency decision declining to strengthen existing air quality standards for sulfur dioxide. The court remanded the decision to the agency "to permit the Administrator to explain her conclusions more fully." Id. at 393. In reaching this outcome, the court first noted that "[j]udicial deference to decisions of administrative agencies ... rests on the fundamental premise that agencies engage in reasoned decision-making." Id. at 392 (emphasis added). It went on to explain, however, that "[w]ith its delicate balance of thorough record scrutiny and deference to agency expertise, judicial review can occur only when agencies explain their decisions with precision, for '[i]t will not do for a court to be compelled to guess at the theory underlying the agency's action ....' " Id. (quoting SEC v. Chenery Corp., 332 U.S. 194, 196-96, 67 S.Ct. 1575, 91 L.Ed. 1995 (1947)) (emphasis added).

Like regulatory agencies or other executive tribunals in their subject areas, the Trademark Trial and Appeal Board has acquired a high level of expertise in evaluating the DuPont factors and counter-weighing these factors to reach its ultimate conclusion--the likelihood vel non of confusion between competing marks. Nonetheless, the Board too should explain with reasonable "precision" not only its factual findings but the "theory underlying" its final conclusion. We need to be told and not be "compelled to guess at the theory" the Board applied to compare its conflicting findings and...