Friday, October 12, 2007

Opposer Fails to Prove Water and Wine Related; TTAB Dismisses 2(d) Opposition

The Board dismissed a Section 2(d) opposition to registration of the mark CIELO for "drinking water," finding the mark not likely to cause confusion with the identical mark, registered for "wine." ["Cielo" means sky or heaven]. The mere fact that both products are consumable liquids sold through some of the same retail outlets was insufficient to support the conclusion that the goods are related. Cielo S.p.A v. Austin House of Prayer, Opposition No. 91166590 (September 14, 2007) [not precedential].

Applicant admitted that the marks are identical, that the products are sold through the same retail outlets in some jurisdictions, that consumers who purchase bottled water may also purchase wine, and that bottled water and wine may be served together.

Applicant feebly argued that the additional Italian wording on Opposer's label will suggest the Italian pronunciation of CIELO to consumers, while the references to Austin, Texas on Applicant's label will suggest the Spanish pronunciation. The Board found that argument, even if true, to be legally insignificant. There is no correct pronunciation of a trademark, and the Board found it likely that consumers "will use either the Spanish or Italian pronunciation ... in equal measure." In sum, the identity of the marks weighed "heavily" in Opposer's favor.

As to the goods, however, Applicant's prayer was answered. The Board agreed with Applicant that there is no per se rule that alcoholic and non-alcoholic beverages are related. Applicant's admissions, however, warranted a finding that the trade channels for wine and water are at least overlapping, and this factor also weighed in Applicant's favor.

Nonetheless, the Board found "little evidence" from which to reach a conclusion as to whether the goods are related.

"There is no evidence that, in the marketplace, wine and drinking water ever emanate from the same source, or that they are marketed under the same marks, or that the circumstances surrounding the sales of wine and drinking water are such that consumers would believe that they come from the same source."

Although water and wine may be consumed at the same meal, there was no evidence that the products are complementary. Nor was there evidence that the products are sold in proximity to each other in retail stores.

In short, "the factual circumstances surrounding the marketing and sale of the respective products are insufficiently developed." Therefore, the Board ruled against Opposer.

Text Copyright John L. Welch 2007.


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