Friday, May 06, 2011

Another Test of Your TTAB Judge-Ability: Are CLOUDBANKS and FOGBANK Confusingly Similar for Wine?

Let's see how you weather this TTAB storm: Fast Forward opposed Houdini's application to register the mark CLOUDBANKS for wine, on the ground of likelihood of confusion with the registered mark FOGBANK for wine. Keep in mind that, when the goods are identical, a lesser degree of similarity in the marks is needed to support a finding of likely confusion. How would you rule? Fast Forward Brands, LLC v. Houdini, Inc., Opposition No. 91188001 (April 22, 2011) [not precedential].

The record included dictionary definitions of "fog," "cloud," and "bank." Applicant Houdini submitted so-called "negative" dictionary evidence: i.e., pages from two dictionaries in which the term "cloudbanks" is not listed. Opposer offered twelve excerpts from printed publications, showing that "fog" and "cloud" and "fogbank" and "cloudbank" are sometimes used interchangeably and have similar or the same connotations and commercial impressions.

The Board acknowledged that FOGBANK and CLOUDBANKS "are somewhat different in appearance and sound." It noted that the meaning of the words "fog" and "cloud" forms the "heart" of opposer's case, and recognized that there is a difference in "technical meaning" between the words.

"However, we are primarily concerned with the meaning of the marks to the prospective purchasing public (in this case, ordinary consumers of wine), and not to meteorologists. ***[W]e believe that the popular or ordinary meanings of the words 'fog' and 'cloud' (and 'fogbank' and 'cloudbanks') are very similar, although there are technical distinctions between the two words. The ordinary meaning and usage of the two words are so close as to render the marks similar in the minds of ordinary consumers, who are not likely to be experts in meteorological terms."

And so the Board ruled that "the substantially similar meaning between 'fog' and 'cloud,' and 'fogbank' and 'cloudbanks,' outweighs any differences in appearance and sound."

Giving the prior registrant the benefit of any doubt, the Board sustained the opposition.

TTABlog query: In the photographs below, which is the fogbank and which is the cloudbank? Or are they both both?

Text Copyright John L. Welch 2011; Photographs Copyright John L. Welch 2010.


At 7:50 AM, Blogger Michael said...

These similar meaning cases really leave me a bit uneasy.

Someone rich and who likes me should hire a survey expert and see if there really would be a likelihood of confusion as between these two marks.

Personally, I just don't see it. Perhaps I'm giving the American public too much credit, but I just don't see John or Jane Q public hitting the supermarket (I'm assuming a lower level of wine consuming sophistication for argument's sake) and thinking:

Wow, I really liked that Fog Banks Chardonnay, I think I'll try THEIR Cloud Banks Chardonnay.

Chateau Granite confusingly similar to Chateau Rock for wine? I just must not be the consumer that they are concerned about.

At 12:09 PM, Anonymous Joshua Jarvis said...

I take issue with the Board's assertion that the differences in meaning between "fog" and "cloud" are merely "technical," and that it takes an "expert in meteorological terms" to discern "fog" and "cloud," and thus CLOUDBANKS and FOGBANK. To the contrary, I would suggest that the differences between clouds and fog, to the ordinary consumer, are quite stark, while a meteorologist would understand the words to refer to the same natural phenomenon at different altitudes. I think the Board gets it backwards, here.

Of course, once again we have an applicant submitting limited and weak evidence supporting its there you have it.

At 2:07 PM, Anonymous Amanda Mooney said...

The CLOUDBANK mark and the label of that wine immediately made me think of my favorite NZ Sauv Blanc, the excellent Cloudy Bay.

It's inimitable, people. Step off!

At 2:17 PM, Anonymous Keith Toms said...

Seems like Applicant's best argument is that FOGBANKS are moody, dark, and foreboding, whereas CLOUDBANKS are light, happy, and inspiring.

Maybe the applicant would have been better served by ditching the dictionaries and submitting excerpts from ghost stories and noir detective novels.

At 5:09 PM, Anonymous Anonymous said...

Yes, by this analysis, the consuming public would clearly confuse a Sea Breeze and a Bay Breeze, because they are both wind over water.

And, I disagree with the holding.

It is my own pet theory that the Board marks as "not precedential"
those decisions that are based on an 'uneven' record.


At 10:33 AM, Anonymous Anonymous said...

I agree that the Board's decision based on similarity between "fog" and "cloud" is a stretch. Anyone living in SF or driving through tule fog knows the difference b/t fog banks and cloud banks without technical expertise!


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