Monday, March 24, 2008

TTAB Grants 2(d) Summary Judgment: "MEIER'S" and "MEYER VINEYARD" for Wine Confusingly Similar

For a plaintiff to win a TTAB summary judgment on the ground of likelihood of confusion, the involved marks have to be nearly identical and the goods virtually the same. That was the case in Meier's Wine Cellars, Inc. v. Meyer Intellectual Properties Ltd., Cancellation No. 92044883 (March 4, 2008) [not precedential]. The Board canceled a Supplemental Registration for the mark MEYER VINEYARD for wine, in view of the previously-used mark MEIER'S for wines, despite Respondent's effort to raise a genuine issue of material fact via survey evidence.

The Board first observed that since the involved marks are surnames, they are not inherently distinctive. It ruled that Petitioner Meier's Wine Cellars established its priority by proving that it had established trademark rights in the surname MEIER'S prior to 2002: i.e., prior to Respondent's filing date for the application to register its surname mark. By amending its application to seek registration on the Supplemental Register, Respondent had acknowledged that its mark was not distinctive as of its filing date in 2002.

As to the issue of likely confusion, Respondent pointed to statements made by the Petitioner to the USPTO in its own application to register the mark MEIER'S, and claimed that these statements constituted admissions against interest. Petitioner had argued unsuccessfully that the subject marks are not confusingly similar. The Board, however, disagreed with Respondent:

Statements made by an applicant in the context of prosecution may be viewed as 'illuminative of shade and tone in the total picture confronting the decision maker.' Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151, 154 (CCPA 1978). Here, the statements by petitioner are in the nature of inconsistent pleadings, with petitioner trying to avoid the need for a cancellation action if it could overcome the Examining Attorney's refusal of registration. They do not raise a genuine [issue] of fact.

Respondent also argued that the marks are "significantly different," relying heavily on the results of a shopping mall intercept survey. The Board, however, found the survey to be "so seriously flawed that it fails to raise a genuine issue" regarding the likelihood of confusion. It declined to discuss all the flaws it found in the survey, but it did discuss a few.

First, "there is a problem with the stimulus, in that the survey respondents were shown respondent's entire wine bottle, including the full label, rather than just the mark." Second, the label included the words "Napa Valley" -- because Petitioner's wine is made in Ohio, "survey respondents may have ruled out petitioner as the source of the wine." Third, the survey failed to account for the highly similar spelling of the two marks. And because the survey did not include a "control feature" and "probing questions" -- e.g., "What makes you think so?" -- the Board could not tell whether interviewees "saw respondent's mark as being separate from petitioner or, instead, as being petitioner's mark."

The Board found no issue of fact as to petitioner's claims of priority and likelihood of confusion, and it entered summary judgment in favor of Petitioner.

TTABlog note: Respondent's survey report may be found as part of paper no. 16 in the TTAB file (here),

Text Copyright John L. Welch 2008.


Post a Comment

<< Home