Monday, August 20, 2012

TTAB Affirms 2(d) Refusal: "MY BIG FAT GREEK WINE" Confusingly Similar to "MY BIG FAT GREEK RESTAURANT"

The Board affirmed a refusal to register the mark MY BIG FAT GREEK WINE for wine [GREEK WINE disclaimed], finding it likely to cause confusion with the registered mark MY BIG FAT GREEK RESTAURANT & Design for restaurant services [GREEK RESTAURANT disclaimed]. Third-party registration and Internet evidence were the key ingredients of the PTO's case. In re Nikolaos Mastorogiannakis, Serial No. 77858375 (August 1, 2012) [not precedential].

The Board not only found the marks to be substantially identical in sound, appearance, meaning, and commercial impression, but it also found the registered mark to be, "by its nature ... strong and distinctive." There was no record evidence that "anyone other than registrant has used or registered a similar mark." Therefore, the registered mark is entitled to a broad scope of protection.

Moreover, "where the marks are nearly identical, as they are in this case, there need be only a viable relationship between the respective goods and services in order to find that a likelihood of confusion exists." We also know that there is no per se rule requiring a finding of likely confusion whenever food or beverages and restaurant services are offered under similar marks. See Jacobs v. International Multifoods Corp., 212 USPQ 641, 642 (CCPA 1982). Under Jacobs, "something more" must be shown.

Examining Attorney Janet H. Lee, in addressing the "something more" requirement, proffered 20 use-based, third-party registrations each showing that a single entity has adopted the same registered mark for both wines and restaurant services. She also provided printouts from the websites of 14 wineries demonstrating that wines are offered under the same or similar marks as restaurants located at the wineries.

The Board concluded that "wine and restaurant services clearly are complementary goods and services which may be encountered together by the same purchasers." Moreover, an article from Bloomberg Business Week states that "between 60% and 75% of Greek wine sold in the U.S. is through restaurants." [Isn't that merely hearsay? - ed.].

The Board noted that the "something more" requirement has been met when the applicant and registrant specialize in the same cuisine [for example, AZTECA MEXICAN RESTAURANT and AZTECA for tortillas], and when the registered mark is "particularly unique" [MUCKY DUCK for mustard and restaurant services].

The Board found the evidence here to be sufficient to meet the "something more" requirement of Jacobs.

Applicant Mastorogiannakis feebly argued that the goods and services will never be encountered together, since its wine is produced in Massachusetts and registrant's restaurants are in Arizona. Putting aside the lack of evidence to support his argument, the Board noted that there are no geographical restrictions in the involved application or the cited registration, and the Board must presume that these goods and services could be provided in the same geographical area.

And so the Board affirmed the refusal.

Text Copyright John L. Welch 2012.


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