Wednesday, May 14, 2008

TTAB Says "No Way" to "JOSE," Finds it Confusingly Similar to "JOSE CORTEZ" for Tequila

Applicant Tequila Cuervo, owner of the mark JOSE CUERVO, was foiled in its attempt to register the mark JOSE for tequila and non-alcoholic mixes for use with tequila. The Board sustained Opposers' 2(d) opposition, finding the mark likely to cause confusion with the mark JOSE CORTEZ, registered for tequila. Chatam International Incorporated and 750 ML, LLC1 v. Tequila Cuervo La Rojena, S.A. de C.V., Opposition No. 91170109 (April 28, 2008) [not precedential].

The critical issue was, of course, the similarity or dissimilarity of the marks. Applicant argued that Opposers' mark JOSE CORTEZ is a unitary mark and that, because JOSE is a common name, the CORTEZ portion renders the mark readily distinguishable from the mark JOSE. According to Applicant, if JOSE calls to mind another mark, it will be Applicant's JOSE CUERVO mark, which, Applicant contended, is a well-known mark in this country.

Applicant further contended that multiple third-party registrations for marks containing the name JOSE in the alcoholic beverage field establish that consumers will look to the remainder of the marks, rather than the word JOSE, to distinguish the sources of the goods.

The Board found that Applicant's ownership of the JOSE CUERVO mark was of little probative value, and moreover that Applicant did not establish that JOSE CUERVO is a famous mark in connection with tequila. The third-party registrations show only that JOSE is a common term in marks for alcoholic beverages, and that additional matter in the marks serves to distinguish those marks.

"The record contains only two entities, applicant and opposers, owning registered marks for tequila that are names beginning with JOSE: JOSE CUERVO and JOSE CORTEZ, respectively. As such, the mark JOSE is equally likely to be perceived as a shortened reference to Opposers' JOSE CORTEZ tequila as it is to applicant's JOSE CUERVO tequila products."

Finally, the Board distinguished two cases cited by Applicant in which the Board found no likely confusion, one involving CRISTAL and CRYSTAL CREEK for champagne and wine, and the other involving FRIAR JOHN and LONG JOHN for whiskey. As to the first, the marks had "very different connotations," and in the second, the different first words in the marks also gave "very different connotations" to the marks.

"In our case, there is no such distinction in connotation - both marks are names, one is a first name and the other is the same first name with a surname. Applicant's mark has no additional term, such as CUERVO, to distinguish it from opposers' mark."

The Board sustained the opposition.

TTABlog comment: What if Applicant had produced evidence of the fame of its JOSE CUERVO mark, so that most, or even a large majority, of consumers would perceive JOSE as a shortened reference to JOSE CUERVO? Would that change the outcome here? What if survey evidence showed that consumers never heard of JOSE CORTEZ, and that the mark JOSE brought to mind either JOSE CUERVO or was perceived as a totally new brand of tequila?

Text Copyright John L. Welch 2008.


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