Wednesday, May 25, 2005

Heard Through The TTAB Grapevine: "WESTSIDE RED" Confusingly Similar to "WESTSIDE BLUE" For Wine

Perhaps "sour grapes" explains why Applicant Treana Winery bothered to appeal the PTO's refusal to register WESTSIDE RED for wine (RED disclaimed) on the ground of confusing similarity to the registered mark WESTSIDE BLUE for wine. The Board readily affirmed the Section 2(d) refusal in In re Treana Winery LLC, Serial No. 76532863 (May 12, 2005) [not citable].

Although the identified goods are identical, Treana asserted (without evidentiary support) that the parties' wines are different:

"applicant's mark is used on a red wine which is produced in the Napa Valley, California. The cited registrant has a single function for its wine products -- special low-alcohol served in a blue bottle for the Jewish holidays."

The Board noted that even if this were properly proven, it would be irrelevant here, since the issue of likelihood of confusion must be determined on the basis of the goods identified in the involved application and the cited registration, regardless of what the evidence actually shows the goods to be. See Canadian Imperial Bank v. Wells Fargo Bank, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).

As to the marks, the Board repeated its often-applied rule that when the goods at issue are legally identical, the degree of similarity necessary to support a Section 2(d) refusal declines. Here, the disclaimed word RED is acknowledged by Treana to be descriptive. And Treana pointed out that Registrant Royal Wine Corp.'s wine comes in a blue bottle, and so the word BLUE would be viewed as merely indicating the color of the bottle. Thus, the Board noted, "[n]ot only is WESTSIDE the only arbitrary portion of both marks, it is 'the first word' in both marks, a factor which makes 'the marks similar.'" (citing Palm Bay Imports, Inc. v. Veuve Cliquot, 73 USPQ2d 1689, 1690 (Fed. Cir. 2005)).

Moreover, the Board pointed out that, since each mark is depicted in block letters, the Board is "mandated to 'visualize what other forms the mark[s] might appear in.'" Phillips Petroleum Co. v. C.J. Webb Inc., 170 USPQ 35, 36 (CCPA 1971).

"One reasonable manner of presentation for both marks would be to depict the arbitrary portion WESTSIDE in large lettering on one line, and then depict the subsidiary elements (RED or BLUE) in decidedly smaller lettering on a second line. When so depicted, the two trademarks would be extremely similar, and their use on identical goods would result in not a mere likelihood of confusion, but rather in an extremely high probability of confusion."
TTABlog comment: Dear reader, I ask again, would you have pursued this appeal? I don't think I would have.

Text ©John L. Welch 2005. All Rights Reserved.


Post a Comment

<< Home