Thursday, August 23, 2007

Finding Vinegar and Olive Oil Unrelated to Cigars, TTAB Dismisses "MONTECRISTO" Opposition

The Board dismissed an opposition to registration of the mark MONTECRISTO for olive oil and vinegar, finding the mark not likely to cause confusion with the mark MONTECRISTO registered in several forms for cigars and various other goods and services. The Board also dismissed Opposer's dilution claim because of lack of proof of the fame of the mark. Cuban Cigar Brands, N.V. v. Valle Grande Limitada, Opposition No. 91165277 (August 9, 2007) [not precedential].

Opposer not only sells MONTECRISTO brand cigars, but licenses the mark for use in connection with coffee, alcoholic beverages, and a variety of ancillary items, like mugs, ashtrays, hats, rum, and credit cards. Opposer claimed that MONTECRISTO is "among the best-known and top-selling brands in the country," but the record contained no sales or advertising dollar amounts.

Applicant sells its goods only in Chile. It admitted awareness of MONTECRISTO cigars and conceded that MONTECRISTO is a well-known mark for cigars, but it asserted that it chose its mark based on a Bible passage and not in an attempt to trade on Opposer's goodwill.

The Board found that Opposer established "a certain degree of renown" for its mark, but not fame. The similarity of the marks strongly favored Opposer, and the fact that purchasers are general consumers also favored Opposer.

As to the goods and services, however, the Board found "no evidence that cigars and olive oil and vinegar are related items or items that may be perceived by consumers as coming from the same source." Opposer asserted that its cigars are available at some restaurants, and Applicant indicated that it will sell its products to restaurants, but even so there was no evidence that "consumers encountering these products would believe that these disparate items come from the same source."

As to the additional items/services identified in Opposer's registrations (e.g., cologne, golf balls, restaurant services), there was no evidence that they have any relationship to olive oil and/or vinegar. Many of the products, as well as credit card services, "are logical ancillary items which [serve] to promote opposer's primary product under its mark - cigars." There was no evidence that olive oil or vinegar fall into that ancillary product category.

Therefore, in view of the "wide differences" between the goods and services, and despite the identity of the marks, the Board found no likelihood of confusion.

As to Opposer's dilution claim, lack of proof of fame proved fatal.

TTABlog comment: Compare this case to the VIRGIN decision blogged here on Monday. When a 2(d) Opposer proves fame, it hits the jackpot. When it doesn't? No cigar.

Text Copyright John L. Welch 2007.


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