Palm Bay Imports v. Veuve Clicquot Ponsardin, 04-1042.

• Citation: 396 F.3d 1369
• Decision Date: 09 February 2005
• Docket Number: No. 04-1042.,04-1042.
• Parties: PALM BAY IMPORTS, INC., Appellant, v. VEUVE CLICQUOT PONSARDIN MAISON FONDEE EN 1772, Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

Page 1369

396 F.3d 1369

PALM BAY IMPORTS, INC., Appellant, v. VEUVE CLICQUOT PONSARDIN MAISON FONDEE EN 1772, Appellee.

No. 04-1042.

United States Court of Appeals, Federal Circuit.

February 9, 2005.

Edmund J. Ferdinand, III, Grimes & Battersby, LLP, of Norwalk, Connecticut, argued for appellant. With him on the brief was Gregory J. Battersby.

Marie V. Driscoll, Fross Zelnick Lehrman & Zissu, P.C., of New York, New York, argued for appellee. With him on the brief was John Margiotta.

Before MICHEL, Chief Judge,¹ RADER, and PROST, Circuit Judges.

RADER, Circuit Judge.

Palm Bay Imports, Inc. (Palm Bay) appeals from the decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board (Board) refusing registration of the mark VEUVE ROYALE for sparkling wine on the ground of likelihood of confusion with three of opposer Veuve Clicquot Ponsardin's (VCP's) marks. Veuve Clicquot Ponsardin v. Palm Bay Imports, Inc., Opp'n No. 115,438, 2003 WL 21953664 (T.T.A.B. Aug. 4, 2003). This court concludes that the Board did not err in finding a likelihood of confusion, but substantial evidence does not support such a finding for one of the marks. Even though this court reverses the Board's conclusion as to one of the marks, the Board's refusal to register Palm Bay's VEUVE ROYALE mark is affirmed.

I.

In April 1998, Palm Bay filed an intent-to-use trademark application under Section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b), for the mark VEUVE ROYALE for "alcoholic beverages, namely, sparkling wine." Veuve Clicquot Ponsardin, slip op. at 1. The examining attorney found no evidence of a similar mark that would bar registration on the ground of likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). In response to the June 22, 1999 Official Gazette publication of Palm Bay's application, VCP filed an opposition with the Board, alleging a likelihood of confusion between VEUVE ROYALE and five of its own marks. Specifically, VCP asserted a likelihood of confusion based on the following

marks: (1) VEUVE CLICQUOT PONSARDIN; (2) VEUVE CLICQUOT; (3) VEUVE CLICQUOT PONSARDIN Design; (4) THE WIDOW; and (5) LA VIUDA.

On August 4, 2003, the Board refused registration of VEUVE ROYALE, finding a likelihood of confusion with (1) VEUVE CLICQUOT PONSARDIN, (2) VEUVE CLICQUOT, and (3) THE WIDOW. The Board dismissed VCP's Section 2(d) claim for LA VIUDA finding the doctrine of foreign equivalents inapplicable to marks in two different foreign languages, i.e., Spanish and French. Palm Bay appeals.

II.

Likelihood of confusion under the Lanham Act, 15 U.S.C. § 1052(d), is a legal determination based upon factual underpinnings. On-Line Careline, Inc. v. Am. Online, Inc., 229 F.3d 1080, 1084 (Fed.Cir.2000). This court determines the question on a case-specific basis, applying the thirteen factors set forth in In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (C.C.P.A.1973), without deference. In re Int'l Flavors & Fragrances, Inc., 183 F.3d 1361, 1365 (Fed.Cir.1999). At the same time, this court reviews factual underpinnings for that legal conclusion, namely the DuPont factors, for substantial evidence. Dickinson v. Zurko, 527 U.S. 150, 156, 119 S.Ct. 1816, 144 L.Ed.2d 143 (1999); Bose Corp. v. QSC Audio Prods., 293 F.3d 1367, 1370 (Fed.Cir.2002). Evidence is substantial if "a reasonable person might find that the evidentiary record supports the agency's conclusion." On-Line Careline, 229 F.3d at 1085.

III. The VEUVE Marks

Palm Bay asserts that the Board erred in its findings on four DuPont factors during analysis of VEUVE CLICQUOT and VEUVE CLICQUOT PONSARDIN: (1) the similarity of the marks; (2) third-party use of the term VEUVE; and (3) the fame of VCP's marks; and (4) purchaser sophistication (corresponding to the first, sixth, fifth and fourth DuPont factors, respectively).

A.

The first DuPont factor requires examination of "the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." DuPont, 476 F.2d at 1361. Palm Bay contends that the Board made two errors in finding that VEUVE ROYALE was confusingly similar to VCP's marks. First, it claims that the Board misstated the legal test of similarity by treating "commercial impression" as the ultimate conclusion rather than as a separate factor. Second, Palm Bay claims the Board erred in finding that VEUVE was the "prominent feature" of VCP's marks. Instead, argues Palm Bay, CLICQUOT is the dominant feature.

1. Test for Similarity

The Board phrased the legal test for similarity as whether the marks "when compared in their entireties in terms of appearance, sound and connotation, are similar or dissimilar in their overall commercial impressions." Veuve Clicquot Ponsardin, slip op. at 26-27. After conducting a thorough analysis of the appearance, sound, meaning, and commercial impression of the marks, the Board concluded that they were "more similar than dissimilar in their overall commercial impression for purposes of the first DuPont factor." Id. at 29. In both instances, the Board treated "commercial impression" as the ultimate conclusion under this prong rather than as a separate factor along with appearance, sound, and meaning. Palm Bay contends that the Board's inaccurate paraphrase of the legal standard infected its analysis and constitutes reversible error.

This court declines to find reversible error merely because the Board, in two instances, made a minor misstatement of the similarity test in an otherwise proper analysis. Moreover, this court's precedent counsels that the phrase "commercial impression" is occasionally used as a proxy for the ultimate conclusion of similarity or dissimilarity of marks resulting from a comparison of their appearance, sound, and meaning. Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1266-67 (Fed.Cir.2002) (holding that PACKARD TECHNOLOGIES and HEWLETT PACKARD differ in appearance and sound, but the marks convey a similar commercial impression because consumers would be aware of Hewlett-Packard's heavy involvement in technology-based goods, and therefore the marks are similar in their entireties); Kenner Parker Toys, Inc. v. Rose Art Indus., Inc., 963 F.2d 350, 355 (Fed.Cir.1992) (holding that in light of the appearance, sound and meaning of the marks PLAY-DOH and FUNDOUGH, consumers may receive the "same commercial impression" from the marks); Morton-Norwich Prods., Inc. v. S.C. Johnson & Son, Inc., 531 F.2d 561, 562 (C.C.P.A.1976) (holding that RAINFRESH is confusingly similar to RAIN BARREL given the close relationship of the goods and "similarity of commercial impressions").

2. Significance of CLICQUOT

Palm Bay next asserts that the Board gave insufficient weight to the relative dominance of CLICQUOT, while placing too much emphasis on the weaker VEUVE portion of VCP's marks. Palm Bay notes that VCP admitted that CLICQUOT was the most distinctive portion of its marks in a World Intellectual Property Organization (WIPO) Internet domain name proceeding, and that VCP has used CLICQUOT in its marketing materials, including radio spots, promotional products, and as the URL of its website (www.clicquot.com). Moreover, Palm Bay argues, VCP has no enforceable trademark rights in the term VEUVE, and has never used the term, standing alone, on its champagne bottles or in its marketing efforts.

The Board correctly weighed the relative importance of VEUVE and CLICQUOT. VEUVE is an arbitrary term as applied to champagne and sparkling wine, and thus conceptually strong as a trademark. See, e.g., Nautilus Group, Inc. v. Icon Health & Fitness, Inc., 372 F.3d 1330, 1340 (Fed.Cir.2004) (defining an arbitrary mark as "a known word used in an unexpected or uncommon way" and observing that such marks are typically strong). Indeed, VCP has made VEUVE a theme of its marketing efforts because of the history, and the widow Clicquot herself, connected with the origins of the company. To be sure, CLICQUOT is an important term in the mark, but VEUVE nevertheless remains a "prominent feature" as the first word in the mark and the first word to appear on the label. Not only is VEUVE prominent in the commercial impression created by VCP's marks, it also constitutes "the dominant feature" in the commercial impression created by Palm Bay's mark. Veuve Clicquot Ponsardin, slip op. at 31-32 (VEUVE is first word in mark; significance of ROYALE is more laudatory and less source-indicating than VEUVE or "widow"; arbitrary term VEUVE contributes more to commercial impression of product than ROYALE). The presence of this strong distinctive term as the first word in both parties' marks renders the marks similar, especially in light of the largely laudatory (and hence non-source identifying) significance of the word ROYALE.

This case is distinguishable from cases upon which Palm Bay relies where this court found no likely confusion between marks involving a common term. See, e.g., Kellogg Co. v. Pack `em Enters., Inc., 951 F.2d 330 (Fed.Cir.1991) (FROOTEE ICE for flavored ice bars not likely to cause confusion with FROOT LOOPS for breakfast cereal and related products); Keebler Co. v. Murray Bakery Prods. Inc., 866 F.2d 1386 (Fed.Cir.1989) (PECAN SHORTIES not likely to cause confusion with PECAN SANDIES for cookies). In these cases, the common term is a generic or non-distinctive term. Here, the common term — VEUVE — is distinctive, and as such its presence in both parties' marks enhances the likelihood of confusion. Substantial evidence therefore supports the Board's finding that the marks are similar under the first DuPont factor.

B.

Palm Bay next contends that the Board erred in rejecting evidence of third-party use of at least five different alcoholic beverages that use the term VEUVE (or a foreign equivalent). This assertion requires analysis of the sixth DuPont factor, which considers "the number and nature of similar marks in use...