Friday, April 25, 2008

PTO Proves Wine and Restaurant Services Related, TTAB Affirms 2(d) Refusal of "BRICKSTONE CELLARS"

The Board affirmed a Section 2(d) refusal to register the mark BRICKSTONE CELLARS for wine, finding the mark confusingly similar to the registered mark BRICKSTONES for restaurant services. The key issue, of course, was the relatedness of the involved goods and services, and the PTO's evidence won over the Board on that point. In re Constellation Wines U.S., Serial No. 78803750 (April 17, 2008) [not precedential].

The Board began its du Pont analysis by finding that "the relevant, dominant portions of the marks are effectively identical in appearance and sound." Consequently, this factor weighs "heavily" in favor of finding confusion likely.

As to the goods and services, the Board observed that, under applicable precedent, "[t]o establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and for restaurant services." Jacobs v. Int’l Multifoods Corp., 212 USPQ 641, 642 (C.C.P.A. 1982). Here, Examining Attorney Priscilla Milton provided that "something more."

"In particular, the examining attorney offered four types of evidence to show the close relationship between registrant’s restaurant services on the one hand, and applicant’s wine on the other: (1) Third-party registrations for both identifications under the same mark; (2) Internet articles about restaurants offering 'private label' wines; (3) Advertisements for customized 'private label' wines; and (4) Direct evidence of restaurants that offer 'private label' wines under the name and mark of the restaurant."

Applicant submitted declarations from five individuals, the "thrust" of which was that "none of the declarants has heard of a restaurant that sells 'private label' wine under its own mark, except that one of the individual declarants apparently has." In any case, the declarations were controverted by the PTO's evidence.

Applicant also pointed to In re Coors Brewing Co., 68 USPQ2d 1059 (Fed. Cir. 2003), involving beer and restaurant services, in which the appellate court reversed a 2(d) refusal to register. However, the Board pointed out that in Coors there were significant design differences between the marks, there was widespread third-party use of the same mark for similar services, and the record lacked evidence of a very clear connection between beer and restaurant services.

Here, the Board found the required “something more” in "the strong, arbitrary nature of registrant’s mark; the high degree of similarity between applicant’s proposed BRICKSTONE CELLARS mark and registrant’s BRICKSTONES mark; and the solid evidence on the record showing the close relatedness of wine to restaurant services, including via 'private label' wines offered by some restaurants under their own marks."

Considering all the evidence, the Board found confusion likely and therefore it affirmed the refusal.

Text Copyright John L. Welch 2008.


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