In In re White Rock Distilleries, Inc., the Trademark Trial and Appeal Board ("TTAB") reversed an examining attorney's decision refusing registration of the mark VOLTA (Ser. No. 77093221) under section 2(d) of the Trademark Act [15 U.S.C. § 1052(d)] based on likely confusion with the registered mark TERZA VOLTA (Reg. No. 3247456). The TTAB considered the similarity of the marks as well as the similarity of the goods and conluded they were not so similar as to cause confusion.

White Rock Distilleries applied to register the mark VOLTA for vodka infused with caffeine. An existing mark for sparkling wine consisted of a drawing of a vine shoot and the words TERZA and VOLTA. The examining attorney refused the White Rock's registration under section 2(d), citing confusion. White Rock appealed to the TTAB. The TTAB's decision reversing the refusal was based on a finding that the marks were not sufficiently similar, and that the examining attorney had not provided enough evidence to show that the goods were related.

In determining whether the new mark was likely to cause confusion, the TTAB focused on the similarities between the marks and the similarities between the goods. The marks were considered in their entirety for similarity on four fronts: appearance, sound, connotation, and commercial impression. With regard to appearance, the TTAB found that both the vine shoot design and the additional word TERZA in the registrant's existing mark were was sufficient to distinguish it from the applicant's. Similarly, when considering the sound of the marks, the additional word TERZA begins the registrant's mark, distinguishing it from applicant's mark of the sole word VOLTA. The analysis of the marks' connotations and commercial impressions hinged on the arbitrary nature of the term VOLTA and TERZA VOLTA when considered with the goods. Because the terms were arbitrary with respect to vodka and wine, they could not have engendered the same connotation for different goods. The TTAB found that, on all four factors, the marks were distinguishable.

Upon completing an analysis of the similarity of the marks, the TTAB considered the similarity of the goods. The TTAB noted several precedential decisions confirming that although one descriptive term might describe both classes of goods, this does not mean those goods are related. The examining attorney submitted evidence in favor of his conclusion that the goods were, in fact, related. This evidence included excerpts from several websites showing vodka and wine being offered on the same site to the same consumers. The examiner's evidence also showed that there are several vodka brands that are made with wine grapes. The TTAB felt that, even though both products are alcoholic beverages, there still was not sufficient evidence to show that the goods were related.

The TTAB found that neither the marks nor the goods were sufficiently similar as to be likely to cause confusion. Thus, the examining attorney's registration refusal under section 2(d) was reversed.