Wednesday, December 12, 2012

ATELIER for Tequila Confusable with ATELIER WINERY for Wine, Says TTAB

Once again, the TTAB proclaimed that there is no per se rule that all alcoholic beverages are related. [It just works out that way - ed.]. The Board affirmed a refusal to register the mark ATELIER for tequila, finding it likely to cause confusion with the registered mark ATELIER WINERY for wine [WINERY disclaimed]. Internet website evidence and third-party registrations for marks covering both tequila and wine convinced the Board that Examining Attorney Heather D. Thompson appropriately refused registration under Section 2(d). In re Maestro Tequilero, S.A. de C.V., Serial No. 77904774 (November 29, 2012) [not precedential].

Not surprisingly, the Board found the marks to be confusingly similar. ATELIER is the dominant word in the cited mark, given its position as the first word in the mark, and the disclaimer of WINERY. "Atelier" (French for "workshop") is an arbitrary term when used in connection with both tequila and wine. Those who know French will give it the same meaning in both marks; those who don't will, in their ignorance, just think the marks look and sound alike.

Applicant argued that the word WINERY in the registered mark will alert consumers that Registrant's goods are wine, thereby reducing the likelihood of confusion, since consumers will not believe that tequila comes from a winery. The Board, however, pointed out that this approach focuses too much on a side-by-side comparison of the marks, rather than on the recollection of the average consumer,  who retains only a general impression of the marks.

Applicant also argued that ATELIER is a weak formative for wine, pointing to registrations for ATELIER DE MAITRE ALBERT and L'ATELIER DE JOEL ROBUCHON. The Board observed that these two marks are quite different from the marks at issue, and that there is no evidence that these two marks are in use at all. Consequently, they have minimal probative value.

As to the goods, Applicant maintained that tequila and wine are appreciably different products, and that wineries "are not known for their tequilas."

The Board noted that in many cases the TTAB and the appellate courts have found different types of alcoholic beverages to be related for Section 2(d) purposes. The Board has specifically found wine and distilled spirits to be related. [Depends on the record evidence in each case - ed.].

The evidence here included Internet webpages showing that wine and tequila may be used together in drink recipes, that restaurants and bars offer wine and tequila pairings, and that some entities produce, distribute, and sell both wine and tequila. The Examining Attorney also submitted ten third-party registrations covering wine and tequila.

This evidence persuaded the Board that wine and tequila move in the same trade channels and are "sufficiently complementary or related that source confusion is likely."

Balancing the relevant du Pont factors, the Board affirmed the refusal the refusal to register.

Post your comment here.

Text Copyright John L. Welch 2012.


Post a Comment

<< Home