Thursday, June 23, 2005

Third-Party Uses Lead TTAB To Find "TORRE MUGA" And "TORRES" For Wine Not Confusingly Similar

A thorough review of the du Pont factors, with particular emphasis on Factor No. 6 (third-party use), led the Board to dismiss a Section 2(d) opposition to registration of the mark TORRE MUGA & tower design (illustrated below) for wine. Opposer Miguel Torres, S.A. relied on nine registrations for marks that include the word TORRES for wine, brandy, and liqueur. Miguel Torres, S.A. v. Bodegas Muga S.A., Opposition No. 91112586 (June 10, 2005) [not citable].

Third-Party Use (Factor 6): Applicant Bodegas Muga argued that TORRES is a "very weak mark" due to extensive third party use and registration. The Board noted that "[n]ormally, this type of evidence is easily dismissed because there is no evidence of use or the evidence of use is limited." Here, however, Applicant submitted proof that was "quantitatively and qualitatively different from what is normally encountered in likelihood of confusion cases." The evidence showing third-party use included menus from various restaurants listing wines with TORRE in their names, bottles of wine, and website pages for online wine stores offering various wines with names including "Torre." In addition, Opposer's witness acknowledged that he was aware of wines with "Torre" in their names, and Applicant submitted several trademark registrations for marks including the word "Torre" for wine. The Board found this to be "substantial evidence that weighs in applicant's favor."

Lack of actual confusion (Factor 8): The Board observed that a lack of actual confusion does not necessarily mean the absence of a likelihood of confusion. Here, however, "there is evidence that applicant's and opposer's marks are encountered by identical customers at the identical time." The parties have marketed their wines in the United States since 1997, in the same types of wine stores and restaurants, and they have been reviewed and listed in the same publications. Therefore, the lack of confusion is a factor favoring Applicant.


Strength of Opposer's marks (Factor 5): Opposer argued that its marks are famous, noting that its wines have won numerous awards and have been very favorably reviewed. It also claimed that it has successfully policed its mark. However, Opposer did not offer any direct evidence of public recognition of its marks, other than its awards (which are "not uncommon"). The Board concluded that Opposer's marks are not famous, but have "acquired some recognition," a factor that "does not weigh heavily in opposer's favor."

Similarity or dissimilarity of the marks (Factor 1): The Board noted that the term "torre" means "tower" in Spanish, but because "Torres" is a common surname in the United States, for many purchasers of Opposer's goods the word "Torres" is likely to be viewed as a surname. Applicant's Opposer's mark is likely to be understood as meaning "Muga tower," Muga also being a surname. Thus the connotations and the commercial impressions of the marks are different. Compared in their entireties, "despite the similarities in the mark[s], there are significant differences as well. Thus, this factor is not dispositive."

Balancing the factors: On balance, the du Pont factors led the Board to conclude that "there is at best a possibility of confusion and not a likelihood of confusion."

TTABlog quiz: Can you name the two Torre(s) pictured here? Answers below.

Text Copyright 2005 John L. Welch. All Rights Reserved
(Quiz Answer: Johnny Torres, Milwaukee Wave; Joe Torre, New York Yankees)


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