Test Your TTAB Judge-Ability: Is JOTS for Gelatin Shots Confusingly Similar to TOTT'S for Sparkling Wine?

Well, with four new Administrative Trademark Judges added to the Board recently, I suppose there's not much chance of your being appointed any time soon. Meanwhile, however, you should stay sharp in case the call comes. Take a shot at this Section 2(d) opposition, in which Gallo Winery opposed an application to register JOTS for "alcoholic beverages, namely, flavored gelatin shot consisting of gelatin mixed with distilled spirits and wine - wine and distilled spirits not combined in a single shot." [Wouldn't "distilled spirits or wine" have been simpler? - ed.]. Gallo claimed likely confusion with its registered mark TOTT'S for sparkling wine. How do you think this came out. E.J. Gallo Winery v. Christopher M. Malek, Opposition No. 91199089 (September 14, 2012) [not precedential].

The parties filed cross-motions for summary judgment, and when the Interlocutory Attorney informed them that both motions would likely be denied, they sipulated to the Board's resolving the case on the summary judgment papers.

The Board found the marks to be similar in sound and appearance, and each lacking in any established meaning. Considered in their entireties, the marks are substantially similar. The differences in the marks "are not so great as to overcome the marks' similarities, particularly when hastily viewed, quickly spoken, or poorly remembered." [Or slurred - ed.].

As to the goods, the Board agreed with Applicant Malek that there is no per se rule that all alcoholic beverages are related. [It just works out that way at the TTAB - ed.]. The relationship of the goods must be decided on a case-by-case basis, and this is particularly significant when the goods are "out of the ordinary," like those of the opposed application.

Malek's goods are not beverages in the normal sense (i.e., liquid), but single portions of flavored gelatin prepared with alcohol; thus the goods are semi-solids or gels. Whereas a typical alcoholic beverage is consumed by drinking it, applicant's goods "would presumably be ingested by eating (although depending on consistency, chewing may be optional)." However, Malek's goods share at least one important characteristic with Gallo's product: both are means of ingesting alcohol by "anyone seeking the pleasures of intoxication (safely, and in moderation, we hope)."

There was no evidence that any entity produces both sparkling wine and gelatin shots, and no evidence of any trademark registrations covering both products. Gallo argued that the goods are related because both comprise or contain wine. The Board concluded that, although it is not clear that Malek's customers would know or care whether the gelatin shots contained wine or some other alcoholic beverage, the goods are related "to the extent that both contain wine and they are both sources of alcohol for human consumption."

As to channels of trade, Malek's business plan states that his "general marketplace is that of alcoholic beverages," with the product to be sold at a relatively low-price to a target demographic of 21-30  year olds. The Board found that the involved goods would be marketed to the same potential customers, and may be purchased by relatively unsophisticated customers with little care or prior experience, and in venues that do not afford an opportunity for close inspection of the goods.

Finally, Gallo argued that its mark is famous, but its proofs fell short. Nonetheless, the evidence showed some renown which, when coupled with the arbitrary nature of the TOTT'S mark, "makes it somewhat more likely that applicant's mark will cause confusion."

Balancing the relevant du Pont factors, the Board found confusion likely. To the extent that there remained any doubt, that doubt must be decided in favor of the prior registrant.

TTABlog note: Well, how did you do? Do you agree with the decision? Could you use a good, stiff gelatin shot after this exercise?

Text Copyright John L. Welch 2012.