Monday, June 06, 2011

Test Your TTAB Judge-Ability: Are GRAN SOL for Tequila and GRAN VINÃ SOL for Wine Confusingly Similar?

Applicant sought to register the mark GRAN SOL & Design (shown below) for tequila, but met with a Section 2(d) opposition based on the registered mark GRAN VINÃ SOL for wines [VINÃ disclaimed]. One asks: aren't all alcoholic beverages related for Section 2(d) purposes? The marks look close enough. Q.E.D.: Opposer wins? Miguel Torres, S.A. v. Complejo Industrial RM, S.A. de C.V., Opposition No. 91188401 (May 17, 2011) [not precedential].

The Marks: The Board observed that there was no need to invoke the doctrine of foreign equivalents, since both marks contain the same Spanish words. It found the marks to be more dissimilar than similar in appearance, more similar than dissimilar in sound, similar in connotation, and more similar in commercial impression than dissimilar. [Got that? - ed.] The Board acknowledged that:

purchasers would understand from the highly descriptive word VIÑA in opposer’s mark that opposer’s goods are wines, and that no such impression is created by applicant’s mark, which lacks the word VIÑA and which is used on tequila, not wine. However, we find that this point of difference in commercial impression goes merely to purchasers’ ability to distinguish the goods, i.e., it indicates that opposer’s goods are wine, and that applicant’s goods are not. This difference in commercial impression which arises from the presence of the highly descriptive word VIÑA in opposer’s mark, while it would enable purchasers to distinguish the goods themselves ..., is unlikely to also be used by purchasers as a basis for distinguishing the source of the respective goods.

The Board concluded that the marks are "sufficiently similar that confusion is likely to result if the marks were to be used on similar goods."

The Goods: Applicant admitted that wine and tequila travel in the same channels of trade: bars, restaurants, liquor stores, and online. Moreover, the normal classes of purchasers are identical: ordinary consumers.

The CAFC and the Board have "repeatedly found that different types of alcoholic beverages are related goods." [Many cases cited]. Opposer submitted thirteen use-based registrations that include wine and tequila in their identifications of goods. Moreover, wine may often be substituted for tequila in margarita cocktails, and wine and tequila may be used together in a margarita. [A winilarita? - ed.]

Both wine and tequila may be inexpensive goods purchased on impulse. "[E]ven loyal, brand-conscious consumers of alcoholic beverages would not necessarily be immune to source confusion arising from the use of similar marks on different alcoholic beverages."

Applicant submitted substantial evidence regarding the strict regulations governing alcoholic beverages in the United States, including the requirement that the name and address of the bottler, packer, or importer appear on the label. The Board was not impressed. First, it is unlikely that restaurant and bar patrons will even see the label when they order by the glass or by the cocktail. Second, even if they see the label, they will likely note the trademark on the label, and not the informational material.

Instead, the Board found that the conditions under which the involved goods are purchased would "tend to increase" the likelihood of confusion.

And so the Board sustained the opposition.

TTABlog comment: The Board's opinion, with numerous case citations, makes it clear why it is futile to argue that one alcoholic beverage is not related to another for Section 2(d) purposes.

Text Copyright John L. Welch 2011.


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