**United States Court of Appeals for the Federal Circuit**

03-1504

(Serial No. 76/138,531)

IN RE CHATAM INTERNATIONAL INCORPORATED

[Paul M. Lewis]{.underline}, Charles Jacquin et Cie., Inc., of
Philadelphia, Pennsylvania, argued for appellant.

[James R. Hughes]{.underline}, Associate Solicitor, United States Patent
and Trademark Office of Arlington, Virginia, argued for the Director of
the United States Patent and Trademark Office. With him on the brief
were [John M. Whealan]{.underline}, Solicitor; and [Stephen
Walsh]{.underline}, Associate Solicitor.

Appealed from: United States Patent and Trademark Office

Trademark Trial and Appeal Board

**United States Court of Appeals for the Federal Circuit**

03-1504

(Serial No. 76/138,531)

IN RE CHATAM INTERNATIONAL INCORPORATED

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

DECIDED: August 3, 2004

\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_\_

Before CLEVENGER, RADER, and SCHALL, [Circuit Judges]{.underline}.

RADER, [Circuit Judge]{.underline}:

The Trademark Trial and Appeal Board (Board) of the United States Patent
and Trademark Office affirmed the examining attorney's refusal to
register Chatam International Inc.'s (Chatam's) mark JOSE GASPAR GOLD in
connection with tequila. [In re Chatam Int'l Inc.]{.underline}, Ser. No.
76/138,531 (TTAB Apr. 25, 2003). Because the Board did not err in
perceiving a likelihood of confusion with GASPAR'S ALE for beer and ale,
this court affirms.

I.

In September 2000, Chatam filed an intent-to-use application under
section 1(b) of the Lanham Act, 15 U.S.C. § 1051(b), for the mark JOSE
GASPAR GOLD on tequila. The examining attorney initially refused
registration under 15 U.S.C. § 1052(d) over two registered marks:
GASPAR'S ALE, U.S. Registration No. 2,063,790, and GASPAR'S ALE LIMITED
RELEASE YBOR PRIVATE STOCK 12 FL. OZ. ALE, U.S. Registration No.
2,088,953. With reference to the dominant feature of Chatam's proposed
mark, the examining attorney noted that JOSE GASPAR GOLD resembled the
two registered marks enough to cause a likelihood of confusion, to cause
a mistake, or to deceive. Specifically, the examining attorney stated:
"GASPAR(S) is clearly the dominant element in all the marks. In the
proposed mark, the first name JOSE and the word GOLD both simply modify
the name GASPAR. In the registered marks, the word ALE is descriptive
and disclaimed, and in U.S. Registration No. 2,088,953, the additional
wording simply modifies the word GASPAR'S." The examining attorney also
invited Chatam to declare that the mark did not contain the name of any
living person. Responding to the office action, Chatam argued that its
mark was distinctive without any likelihood of confusion between its
mark and the two registered marks. Further, Chatam challenged the
examining attorney's conclusion that GASPAR is a dominant feature.
Chatam observed that ale and tequila are different classes of goods with
different ethnic origins (ale being Germanic or English and tequila
being Mexican). Chatam also declared that JOSE GASPAR is not the name of
any known living individual.

Despite Chatam's response, the examining attorney sustained the refusal.
In addition to reasserting that GASPAR is the dominant feature, the
examining attorney pointed out that tequila or liquor and beer or ale
enjoy a close relationship, even in the face of some difference in
ethnic origin. Chatam then appealed the final refusal to the Board.

The Board affirmed the examining attorney's refusal to register JOSE
GASPAR GOLD based on a likelihood of confusion with the registered mark
GASPAR'S ALE.[^1] Applying the factors set forth in [In re E.I. DuPont
de Nemours & Co.]{.underline}, 476 F.2d 1357 (CCPA 1973), the Board
relied primarily on two key considerations: the similarities between the
marks and the similarities between the goods. Specifically, the Board
determined that the two marks in their entireties are sufficiently
similar to cause a likelihood of confusion. The Board further determined
that tequila and ale or beer are closely related in a commercial sense.
[See]{.underline} [In re Majestic Distilling Co.]{.underline}, 315 F.3d
1311, 1316 (Fed. Cir. 2003) (stating "malt liquor and tequila are
similar by virtue of the fact that both are alcoholic beverages that are
marketed in many of the same channels of trade to many of the same
consumers"). Lastly, the Board noted that it must resolve any doubt
regarding likelihood of confusion against Chatam, because Chatam, as the
newcomer, had the opportunity and obligation to avoid confusion.

II\.

Likelihood of confusion under the Lanham Act, 15 U.S.C. § 1502(d), is a
legal determination based upon factual underpinnings. [On-Line Careline,
Inc. v. Am. Online, Inc.]{.underline}, 229 F.3d 1080, 1084 (Fed. Cir.
2000). This court reviews the legal determination without deference. [In
re Int'l Flavors & Fragrances, Inc.]{.underline}, 183 F.3d 1361, 1365
(Fed. Cir. 1999). This court reviews the factual underpinnings for that
legal conclusion, that is, the [DuPont]{.underline} factors, for
substantial evidence. [Dickinson v. Zurko]{.underline}, 527 U.S. 150,
156 (1999); [Bose Corp. v. QSC Audio Prods., Inc.]{.underline}, 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]{.underline}, 229 F.3d at 1085. Moreover,
"the possibility of drawing two inconsistent conclusions from the
evidence does not prevent an administrative agency's finding from being
supported by substantial evidence." [Id.]{.underline} at 1086 (internal
quotation marks omitted).

This case primarily presents two [DuPont]{.underline} factors, the
similarities between the marks and the similarities between the goods.
[DuPont]{.underline}, 476 F.2d at 1361. At the outset, this court
considers the marks. Undoubtedly, JOSE GASPAR GOLD and GASPAR'S ALE are
not identical: JOSE and GOLD appear in the former, while ALE appears in
the latter along with GASPAR in the possessive form. Chatam asserts that
these differences establish distinct commercial impressions precluding a
likelihood of confusion even though a form of GASPAR appears in both
marks. In particular, Chatam argues that the Board improperly dissected
the two marks in violation of the anti-dissection rule, which states
that a likelihood of confusion "cannot be predicated on dissection of a
mark, that is, on only part of a mark." [In re Nat'l Data
Corp.]{.underline}, 753 F.2d 1056, 1058 (Fed. Cir. 1985). Even so, this
court has remarked that "\[o\]nce all the features of the mark are
considered . . . it is not improper to state that, for rational reasons,
more or less weight has been given to a particular feature of the mark,
provided the ultimate conclusion rests on a consideration of the marks
in their entireties." [Packard Press, Inc. v. Hewlett-Packard
Co.]{.underline}, 227 F.3d 1352, 1357 (Fed. Cir. 2000); [see
also]{.underline} [Nat'l Data]{.underline}, 753 F.2d at 1058.

In this case, the Board did not improperly discard the dissimilar
portions of the JOSE GASPAR GOLD and GASPAR'S ALE. Instead, the Board
clearly recognized and acknowledged the differences between the two
marks. Despite those differences, the Board determined that both marks
convey the commercial impression that a name, GASPAR, is the source of
related alcoholic beverages, tequila and beer or ale. In other words,
the Board discounted the commercial significance of ALE in the
registered mark and JOSE and GOLD in Chatam's mark.

With respect to ALE, the Board noted that the term is generic and that
the registrant disclaimed it in its registration. Because ALE has
nominal commercial significance, the Board properly accorded the term
less weight in assessing the similarity of the marks under
[DuPont]{.underline}. As a generic term, ALE simply delineates a class
of goods. [See]{.underline} [Nat'l Data]{.underline}, 753 F.2d at 1058
(stating "\[t\]hat a particular feature is descriptive or generic with
respect to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark").

With respect to JOSE, the Board correctly observed that the term simply
reinforces the impression that GASPAR is an individual's name. Thus, in
accord with considerable case law, the JOSE term does not alter the
commercial impression of the mark. [See]{.underline} [E & J Gallo Winery
v. Gallo Cattle Co.]{.underline}, 967 F.2d 1280, 1291-92 (9th Cir. 1992)
(affirming that GALLO and JOSEPH GALLO are similar); [Nina Ricci,
S.A.R.L. v. E.T.F. Enters., Inc.]{.underline}, 889 F.2d 1070, 1073-74
(Fed. Cir. 1989) (holding that VITTORIO RICCI and NINA RICCI are
similar); [John B. Stetson Co. v. Stephen L. Stetson Co.]{.underline},
85 F.2d 586, 587 (2d Cir. 1936) (holding that STEPHEN L. STETSON and
STETSON are similar); [but see]{.underline} [Brennan's Inc. v. Brennan's
Rest., L.L.C.]{.underline}, 360 F.3d 125, 133 (2d Cir. 2004) (explaining
that BRENNAN'S and TERRANCE BRENNAN'S are not similar because "the
addition of the first name 'Terrance' to defendant's mark is
meaningful"). In sum, the first name JOSE modifies the surname GASPAR
and serves to emphasize that GASPAR is a name.

With respect to GOLD, the Board determined that the term denotes a
premium quality, a descriptive term offering little to alter the
commercial impression of the mark. [See]{.underline} [Nat'l
Data]{.underline}, 753 F.2d at 1058 (explaining that descriptive or
generic terms are properly given less weight). Indeed, GOLD, in the
context of tequila, describes either a characteristic of the good -- its
color -- or a quality of the good commensurate with great value or
merit. [In re MBNA Am. Bank, N.A.]{.underline}, 340 F.3d 1328, 1332
(Fed. Cir. 2003) ("A mark is merely descriptive if it immediately
conveys information concerning a quality or characteristic of the
product or service."). In sum, the Board had good reason to discount
ALE, JOSE, and GOLD as significant differences between the marks.

After discounting any commercial impression of JOSE and GOLD, Chatam is
left with GASPAR as the dominant feature of its mark. In comparison, the
dominant feature of the registered mark is GASPAR'S, which is simply the
possessive form of the surname GASPAR. Viewed in their entireties with
non-dominant features appropriately discounted, the marks become nearly
identical. That is, the dominant feature of Chatam's mark, GASPAR, is
also the dominant feature of the registered mark, GASPAR'S, albeit in
possessive form. Thus, the Board correctly perceived that GASPAR and
GASPAR'S convey a similar appearance, sound, connotation, and commercial
impression. [See]{.underline} [Bose]{.underline}, 293 F.3d at 1378
(stating that "\[t\]he presence of the root element WAVE . . .
introduces a strong similarity in all three marks"); [Giant Food, Inc.
v. Nation's Foodservice, Inc.]{.underline}, 710 F.2d 1565, 1571 (Fed.
Cir. 1983) (holding that the shared term GIANT is the dominant portion
of the marks, which supports a finding that there would be a likelihood
of confusion between them); [King-Kup Candies, Inc. v. King Candy
Co.]{.underline}, 288 F.2d 944, 945 (CCPA 1961) (holding that KING'S and
KING-KUP share a dominant root and, thus, are confusingly similar).
Accordingly, even though the Chatam's mark and the registered mark are
not word-for-word copies of one another, substantial evidence supports
the Board's decision that the two marks, when considered in their
entireties, are strikingly similar. [See]{.underline} [In re Coors
Brewing Co.]{.underline}, 343 F.3d 1340, 1344 (Fed. Cir. 2003) (stating
that "the two marks are generally similar, principally because they both
use the term 'Blue Moon'" and noting that "similarity is not a binary
factor but is a matter of degree").

Seizing on the lack of identity between JOSE GASPAR GOLD and GASPAR'S
ALE, Chatam invokes [In re Hearst Corp.]{.underline}, 982 F.2d 493 (Fed.
Cir. 1992), and [Conde Nast Publications, Inc. v. Miss Quality,
Inc.]{.underline}, 507 F.2d 1404 (CCPA 1975). In [Hearst]{.underline},
this court reversed a Board decision that refused registration of VARGA
GIRL because there was a likelihood of confusion with the registered
mark VARGAS. While noting that the determination is highly
fact-specific, this court stated:

> The appearance, sound, sight, and commercial impression of VARGA GIRL
> derive significant contribution from the component "girl". By
> stressing the portion "varga" and diminishing the portion "girl", the
> Board inappropriately changed the mark. Although the weight given to
> the respective words is not entirely free of subjectivity, we believe
> that the Board erred in its diminution of the contribution of the word
> "girl". When GIRL is given fair weight, along with VARGA, confusion
> with VARGAS becomes less likely.

982 F.2d at 494 (footnote omitted). Although the registered mark and the
applicant's mark were both for calendars, this court held that "VARGA
GIRL and VARGAS are sufficiently different in sound, appearance,
connotation, and commercial impression, to negate likelihood of
confusion in terms of § 2(d) of the Lanham Act." [Id.]{.underline}

In [Conde Nast]{.underline}, this court's predecessor affirmed the
Board's decision that there was not a likelihood of confusion between
COUNTRY VOGUES for women's dresses and VOGUE for a magazine. In part,
the court's rationale hinged on the overall differences between the two
marks:

> COUNTRY VOGUES and VOGUE do not look or sound alike. The only
> similarity between them is that VOGUE is part of the mark COUNTRY
> VOGUES, and the dissimilarities between the marks, viewed in their
> entireties, outweigh this similarity sufficiently to leave no doubt.

[Conde Nast]{.underline}, 507 F.2d at 1407 (footnote omitted). The court
also emphasized the differences between the goods. [Id.]{.underline}

These cases, however, do not control the Board's determination in this
case. Rather, the Board in this case neither inappropriately changed the
marks nor erroneously determined that the marks were similar after
viewing the marks as a whole, though focusing on their dominant
features. Furthermore, the [Hearst]{.underline} court even
"illustrate\[d\] the fact-dependency" of determining whether
non-identical marks are sufficiently similar by listing cases falling on
both sides. 982 F.2d at 494 n.2. Thus, the court perceives no error in
appropriately discounting portions of JOSE GASPAR GOLD and GASPAR'S ALE
that did not change the commercial impression of the marks.

Moreover, the Board also properly considered the relatedness of the
goods -- tequila and beer or ale. [See]{.underline} [Coors
Brewing]{.underline}, 343 F.3d at 1345-47 (holding that beer and
restaurant services are not sufficiently related to support a finding of
a likelihood of confusion). While not conceding a relationship between
its goods and GASPAR'S ALE, Chatam argues that the relatedness of the
goods is irrelevant. To the contrary, a proper analysis includes this
factor in considering the likelihood of confusion. [Majestic
Distilling]{.underline}, 315 F.3d at 1316; [In re Dixie Rests.,
Inc.]{.underline}, 105 F.3d 1405, 1407-08 (Fed. Cir. 1997).

Furthermore, substantial evidence supports the Board's finding of a
close relationship between tequila and beer or ale. Indeed, the goods
often emanate from the same source because "both are alcoholic beverages
that are marketed in many of the same channels of trade to many of the
same consumers." [Majestic Distilling]{.underline}, 315 F.3d at 1316
(holding that malt liquor and tequila sold under the same mark would
cause a likelihood of confusion). In this case, as in [Majestic
Distilling]{.underline}, the Board correctly determined that tequila and
beer or ale are inexpensive commodities that consumers would be unlikely
to distinguish by manufacturer. [Id.]{.underline} at 1316-17.

Finally, the Board's methodology did not violate the anti-dissection
rule. Rather, the Board properly compared the two marks in their
entireties and gave each individual term in the respective marks more or
less weight depending on its effect on the overall commercial
impression. Moreover, this court holds that substantial evidence
supports the Board's refusal to register Chatam's mark. Like the Board,
this court "resolves doubts about the likelihood of confusion against
the newcomer because the newcomer has the opportunity and obligation to
avoid confusion with existing marks." [Hewlett-Packard Co. v. Packard
Press, Inc.]{.underline}, 281 F.3d 1261, 1265 (Fed. Cir. 2002).

COSTS

Each party shall bear its own costs.

[AFFIRMED]{.underline}

[^1]: On appeal to the Board, the examining attorney withdrew the
    refusal over GASPAR'S ALE LIMITED RELEASE YBOR PRIVATE STOCK 12 FL.
    OZ. ALE.