Tuesday, September 06, 2005

TTAB Finds "BEYOND VODKA" Confusingly Similar to "BEYOND MERLOT"

Once again, third-party registrations played a major role in the Board's affirmance of a Section 2(d) refusal to register. It ruled that the mark BEYOND VODKA for vodka ("VODKA" disclaimed) is likely to cause confusion with the registered mark BEYOND MERLOT for wine ("MERLOT" disclaimed). In re Frank-Lin Distillers Prods., Ltd., Serial No. 76419825 (August 24, 2005) [not citable].

In view of the disclaimers, the Board understandably found the word BEYOND to be the dominant part of each mark. In fact, the word BEYOND is emphasized on Applicant's specimen label, a fact which is "probative of the significance which the mark is likely to project to purchasers." In both marks, the term BEYOND "would seem to suggest that the goods are something more than ordinary 'Vodka' or 'Merlot.'" The Board concluded that the marks are similar in their entireties in sound, appearance, meaning, and commercial impression.

As to the goods, the Board noted that the identifications of goods in the application and the registration are unrestricted as to price or quality and thus encompass "relatively inexpensive wine and vodka that would be purchased on impulse by purchasers who were not very discriminating or sophisticated purchasers."

Examining Attorney Georgia Ann Carty Ellis submitted "numerous trademark registrations to show that the same entities have registered a common mark for vodka and wine."

"We have held that although third-party registrations 'are not evidence that the marks shown therein are in use on a commercial scale or that the public is familiar with them, [they] may have some probative value to the extent that they may serve to suggest that such goods or services are the type which may emanate from a single source.' In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)."

Moreover, shifting into litotes, the Board observed that TTAB case law "suggests that wine and vodka are not unrelated goods."

Applicant Frank-Lin Distillers uncorked several worthless arguments that the Board found completely unpalatable: that wine buyers are a "highly sophisticated group;" that evidence of the fame of the registered mark is lacking; that there is no evidence of actual confusion; and that there are no similar marks for similar goods in the PTO records. The last argument was a particularly sour once, since the absence of other registrations "would ordinarily be a fact that would indicate that there is a likelihood of confusion and not, as applicant suggests, a fact that favors its position."

The Board therefore affirmed the refusal to register under Section 2(d)

Text Copyright John L. Welch 2005.


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