Wednesday, August 22, 2012

Test Your TTAB Judge-Ability: Are Wine and Sauces Related Goods?

The PTO issued a Section 2(d) refusal to register the mark ISLAND GROVE WINE COMPANY for wine [WINE COMPANY disclaimed], finding it likely to cause confusion with the registered mark ISLAND GROVE for "dipping sauces, hot sauce, marinades, salsa, sauces." Applicant argued that these goods differ in functionality, are not complementary, and travel in different trade channels. How do you think this appeal came out? In re Island Grove Winery, LLC, Serial No. 85036344 (August 10, 2010) [not precedential].

Not surprisingly, the Board found the applied-for mark to be dominated by the ISLAND GROVE portion, and concluded that the marks are similar in sound appearance and meaning.

As to the goods, Examining Attorney Katherine S. Chang submitted several use-based third-party registrations, each showing a single mark registered for the both types of goods involved here. She also submitted printouts from several third-party websites demonstrating that the same retailers (mostly wineries) sell both wine and sauces under the same mark. The Board, citing Mucky Duck and Albert Trostel, was persuaded that the goods are sufficiently related.

The Board noted that the involved goods would be purchased by the same classes of purchasers, including ordinary consumers. The fact that wine and sauces are relatively inexpensive and may be subject to impulse purchase increased the likelihood of confusion.

Applicant claimed that its customers are sophisticated, but even if that were true, "even sophisticated purchasers are not immune from source confusion, especially in cases such as the instant one involving similar marks and related goods." [In light of that statement, you might as well kiss the "sophisticated purchaser" argument good-bye. -ed.]

Finally, Applicant claimed that there has been no actual confusion, but the Board pointed out that the lack of actual confusion carries little evidentiary weight. Moreover, the record was devoid of evidence regarding the extent of use of the involved marks and thus whether there has been a reasonable opportunity for confusion to occur. The fact that both Applicant and the registrant have headquarters in the same state (i.e., Florida) does not prove anything in this regard.

Resolving any doubt in favor of the prior registrant, the Board affirmed the refusal to register.

TTABlog comment: Well, how did you do? Were you surprised by the outcome? Convinced of its correctness?

Text Copyright John L. Welch 2012.


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