Thursday, November 13, 2008

TTAB Reverses 2(d) Refusal, Finds "PORTIA SUMMA" and "SUMMA VINEYARDS" Not Confusingly Similar for Wine

The Board reversed a Section 2(d) refusal to register the mark PORTIA SUMMA & Design (shown below) for "alcoholic beverages, namely, wines," finding it not likely to cause confusion with the registered mark SUMMA VINEYARD for wine [VINEYARD disclaimed]. In re Bodegas Portia, S.L., Serial No. 79032493 (November 7, 2008) [not precedential].

Not surprisingly, the Board found the goods to be "virtually identical." [TTABlog comment: I would be so bold as to say that they are identical!] Applicant lamely argued that its wine originates in Spain while Registrant's comes from California, and that consumers would distinguish between the wines based on labeling, etc. The Board pointed out, however, that there are no restrictions in Applicant's or Registrant's identification of goods, and so it must be presumed that the goods travel in the same, normal channels of trade, to the same classes of customers.

Surprisingly, the Board did not drag out the black letter rule that, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Perhaps that's because the Board was heading in the other direction.

It found the word PORTIA to be the dominant portion of Applicant's mark and, coupled with the distinctive design element, this "renders applicant's mark notably dissimilar from that of registrant in appearance." Obviously the marks differ in sound. As to overall impression, the Board noted that Applicant's mark suggests "the notion that Portia is the highest, whereas registrant mark connotes the highest vineyard." [TTABlog suggestion: Or maybe that Portia is the highest she's every been?]

Applicant supplied website evidence showing a few uses of the term SUMMA in the context of wine: e.g., Summa Quies Vineyard, Summa Cum Laude Old Vine Zinfandel. Although noting that the probative value of this evidence is limited since there is no proof of the extent of use of these terms, the Board nonetheless found that the evidence suggests that "SUMMA is not unique to registrant in the field of wine, and is used by others to identify their wineries, wines, and wine tasting events." [TTABlog complaint: I think this evidence should have no probative value, given the lack of proof regarding use of these third-party marks].

Based in part on the "relative weakness" of SUMMA, and on various differences between the marks, the Board found them sufficiently dissimilar that confusion is not likely.

TTABlog observation: An argument could be made that consumers might think that "Portia" is a sub-brand from the Summa Vineyard. That's why the word "Summa" is in a subordinate position. In short, I think this case was a bit closer than the Board made it out to be. But I'm not going to wine about it.

Text Copyright John L. Welch 2008.


Post a Comment

<< Home