Friday, February 03, 2006

"WILD GEESE" Runs Afowl of Famous "WILD TURKEY" Mark in TTAB 2(d) Opposition

Applicant Stichting Lodestar was a dead duck when Austin, Nichols opposed its application to register WILD GEESE for beer and alcoholic beverages, including whiskey. The Board found the mark likely to cause confusion with Opposer's mark WILD TURKEY registered (in word and design form) for various alcoholic beverages (including whiskey). Austin, Nichols & Co. v. Stichting Lodestar, Opposition No. 91155165 (January 17, 2006) [not citable].

After disposing of several evidentiary and procedural issues, the Board turned to its du Pont analysis, and specifically to the fifth factor: the fame of Opposer's mark. Based on Opposer's extensive sales, advertising, and media coverage, sixty years of use of the mark, and wide distribution of collateral merchandise, the Board deemed WILD TURKEY to be a famous mark entitled to a broad scope of protection.

Turning to the second, third, and fourth du Pont factors, the Board found Applicant's beer and other alcoholic products to be related or identical to Opposer's goods. Given the absence of any restrictions on channels of trade, the Board presumed that the goods travel in the same trade channels to the same classes of purchasers (and the record showed that the goods do in fact travel in the same channels). As to the sophistication of customers, the Board concluded that the parties' goods would be purchased by ordinary consumers without a great deal of care. [TTABlog note: after consumption of the goods, the purchasers would care even less].

Finally, as to the first du Pont factor, the Board found that, given the broad scope of protection to be accorded Opposer's mark, the similarities in the marks outweigh their differences. "[D]espite the difference[s] ... the commercial impression and general connotation of wild game birds, creates a confusingly similar mark."

Applicant argued that the term WILD is weak in view of "numerous third-party registrations and uses of the word WILD in connection with various alcoholic and non-alcoholic beverages." It also contended that TURKEY should be accorded narrow protection in view of the "numerous registrations and uses of bird names" in connection with the involved goods. However, the Board found that those third-party uses and registrations (for, e.g., DR. WILD, WILD RIVER, THE WILD BUNCH, WILD THING) did not show that the term WILD has some "ordinary significance" in the field of beverages. The third-party registrations and uses of bird names "have even less probative value," because "they present a variety of names, do not point to ordinary usage of a particular term, and do not show that the words in issue here, TURKEY and GEESE, are so widely used that consumers are able 'to discern between several competing products having similar, but not identical, product names and bird images.'"

Noting that any doubt on the 2(d) issue must be resolved in favor of the prior registrant, the Board sustained the opposition.

Text Copyright John L. Welch 2006.


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