Wednesday, October 13, 2010

Parties Go ACR: TTAB finds "FREDERICK WILLIAM" and "FREDERICK WILDMAN logo" Not Confusingly Similar for Wine

The parties opted for the Board's Accelerated Case Resolution (ACR) process in this Section 2(d) opposition to the mark FREDERICK WILLIAM for various types of wine. Opposer Frederick Wildman claimed likely confusion with its registered logo mark shown below, for "wines." Applicant, appearing pro se, conceded priority and similarity of goods, but the Board agreed with him that the marks are so different as to warrant dismissal of the opposition. Frederick Wildman & Sons, Limited v. Frederick William Scherrer, Opposition No. 91191369 (September 30, 2010) [not precedential].

The Board applauded the parties for choosing ACR, "as this appears to be an ideal set of facts for the selection of the streamlined process." The parties agreed to ACR at the discovery conference of October 5, 2009, had a bit of discovery, skipped testimony and notices of reliance, submitted their evidence as attachments to their briefs filed in March and April 2010, skipped oral argument, and received their decision in September 2010.

Applicant contended that Opposer is an importer and distributor of branded wines, which are marked with Opposer's "oval of quality" mark, whereas Applicant is an blender/producer who will use his mark in the name of the wine. This, however, "is a marketplace distinction without a legal difference." The respective identification of goods are legally equivalent.

Opposer's mark has been in use for decades, and sales of its products bearing the mark exceed one million cases per year. However, Opposer did not provide information as to household penetration or market share, or information to show that it has achieved "strong brand awareness and national recognition that would entitle it to be considered a famous mark."

As to the marks, Opposer contended that the design portion of its marks is of little significance and that the word portion is nearly identical to Applicant's mark. The Board, however, found that "Wildman" and "William" have very different sounds, connotations, and commercial impressions."

"Wildman" in this context appears to be a surname (i.e., preceded by a given name and followed by the phrase "and Sons"). By contrast, the name "William," when used with the name "Frederick," sounds like the joining of two given names, as indeed, appears to be the case for applicant. In fact, we find these two marks are so different that the du Pont factor of the dissimilarities of the marks outweighs the other relevant du Pont factors ....

The Board therefore concluded that Opposer had failed to prove its Section 2(d) case, and it dismissed the opposition.

TTABlog note: For all the information you need about ACR, go to the TTAB home page (here).

Text Copyright John L. Welch 2010.


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