Monday, July 24, 2006

Finding Wine and Restaurant Services Related, TTAB Affirms 2(d) Refusal of "SEVEN SISTERS NAKED EYE"

In view of the strong and arbitrary nature of the cited, registered mark SEVEN SISTERS & Design (shown immediately below) for restaurant services, and the commercial relationship between restaurant services and wine, the TTAB affirmed a Section 2(d) refusal of the mark SEVEN SISTERS NAKED EYE for wine. In re Hutchinson, Serial No. 7854227 (July 7, 2006) [not citable].

Examining Attorney David Yontef relied heavily on In re Opus One Inc., 60 USPQ2d 1812 (TTAB 2001). There, in discussing the relationship between wine and restaurant services, the Board stated that there must be "'something more' than the fact that registrant uses the mark on a food or beverage item (wine) and applicant uses the mark in connection with restaurant services." It found that "something more" in "the nature of the commercial relationship between wine and restaurant services and in the arbitrary, strong nature of the registrant's mark." The Board found those same elements present here.

Third-party registrations showed that several entities have registered a single mark for both wine and restaurant services. NEXIS articles referred to "a practice in the restaurant industry to offer private-label wines."

The Board noted that Registrant's mark is entitled to a "broader scope of protection" because SEVEN SISTERS is an "arbitrary term for restaurant services, and there is no evidence of third party use. Applicant Hutchinson argued that "Seven Sisters" is not arbitrary, but rather is a reference to the Pleiades of Greek mythology and also a term used to identify a group of women's colleges. The Board responded with this fundamental point:

"Applicant has apparently confused 'arbitrary' with 'invented.' It is not required that a term have no meaning whatsoever in order to be considered a strong mark; an arbitrary mark, that is, one having no meaning with respect to the relevant good or services, is also strong."

Hutchinson pointed out that in Opus One, the registrant's wine was offered in applicant's restaurant, but the Board observed that although such a situation might increase the chances for confusion, "the relatedness of wine and restaurant services is not dependent on such evidence."

Turning to the marks, the Board concluded that "because of the manner [in which] the words are combined, the words NAKED EYE convey a separate thought from SEVEN SISTERS;" consumers "are likely to regard the SEVEN SISTERS portion of the mark in the manner of a house mark, with NAKED EYE being seen in the nature of a product mark." Therefore, consumers are likely to assume that Applicant's wine emanates from, or is sponsored by or affiliated with, the SEVEN SISTERS restaurant.

Consequently, the Board found confusion likely and it affirmed the Section 2(d) refusal.

Text Copyright John L. Welch 2006.


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