Tuesday, June 11, 2013

MERLO'S MERLOT for Wine is Primarily a Surname, Confusable with LAGO DI MERLO, Says TTAB

Applicant Perry David Merlo tripped over two hurdles in his quest for registration of the mark MERLO'S MERLOT for "grape wine; red wine": Sections 2(e)(4) and 2(d) of the Trademark Act. The Board agreed with Examining Attorney Robert J. Struck that the applied-for mark is primarily merely a surname, and further is confusingly similar to the registered mark LAGO DI MERLO for wines. In re Perry David Merlo, Serial No. 85510114 (May 23, 2013) [not precedential].

Section 2(e)(4): The Board did not find MERLO to be "a particularly rare surname." It appeared 866 times in a national directory of surnames, and 2,697 times in the 2000 census. Of course, Applicant's own name was further evidence that MERLO has surname significance. Negative dictionary evidence showed that MERLO has no other meaning in English. [Applicant belatedly submitted evidence that the Italian word "merlo" means "blackbird" in English, but the Board gave that evidence no consideration.]

Finally, MERLO has the "look and feel" of a surname, as evidenced by the fact that the Merlo family of California produces the wine sold under the cited mark LAGO DI MERLO. Use of the possessive MERLO'S by Applicant reinforced the surname significance.

Applicant argued that MERLO’S MERLOT "has a unique meaning above an[d] beyond merely a surname and a generic term” and "constitutes “a play on two similarly sounding words which sound the same and are interchangeable." The Board, however, was unimpressed by this homophonicity, finding that it did not displace or diminish the surname significance of the phrase "in designating a type of good (merlot wine) offered by applicant (Mr. Merlo)."

Section 2(d): The goods of the application and cited registration are legally identical, and the Board must presume (absent any express limitations) that they travel through the same, normal channels of trade to the usual classes of consumers. These factors strongly support the refusal to register. Moreover, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

The cited mark LAGO DI MERLO translates into English as “Lake of Merlo.” Because there was no dispute regarding this translation, the Board "must therefore assume that the ordinary U.S. consumer familiar with Italian would 'stop and translate' the foreign wording in registrant’s mark to 'Lake of Merlo.' See Palm Bay Imps. Inc., 73 USPQ2d at 1696."

The Board found MERLO and its possessive form, MERLO’S, to be the dominant portions of the respective marks, and further that consumers are likely to view the subject marks as "creating similar commercial impressions." In the cited mark, the Board concluded,  the phrase "LAGO DI" modifies "MERLO." [Seems more like a unitary phrase to me - ed.]  "Given the structure of applicant’s mark, consumers who are familiar with registrant’s LAGO DI MERLO goods would view the term MERLO’S MERLOT, when used in association with applicant’s goods, as designating a particular varietal of registrant’s wines."

Balancing the relevant duPont factors, the Board found confusion likely and it affirmed the Section 2(d) refusal.

Read comments and post your comments here.

TTABlog comment: I disagree with the 2(d) ruling. I don't think the marks are sufficiently similar. The cited mark identifies a lake. The applied-for mark attaches a name to a type of wine.

Text Copyright John L. Welch 2013.


At 1:59 AM, Anonymous Anonymous said...

TTAB's affirmation of a double refusal = capital offense?

At 10:17 AM, Anonymous Mark L. Donahey said...

John, it's a good thing this wasn't one of your "Test Your TTAB-Judge Ability" posts, because I would have gone the other way on both issues.

"Primarily merely" is synonymous with "fundamentally only." In re I. Lewis Cigar Mfg. Co., 205 F.2d 204, 98 USPQ 265, 267 (CCPA 1953). In my view, a mark like MERLO'S MERLOT that is an unmistakable play on words is not "merely" or "only" a surname. MERLO'S CHARDONNAY certainly is primarily merely a surname, but MERLO'S MERLOT obviously has more to it, which I believe ought to be enough.

As for likelihood of confusion, the doctrine of foreign equivalents continues to frustrate me. Just last week you blogged about In re Lettuce Entertain You Enterprises, Inc., Serial No. 85291663 (May 17, 2013)[not precedential], which did not find a likelihood of confusion between the STELLA ROSSA PIZZA BAR and RED STAR TAVERN & Design. In both Lettuce and Merlo, the foreign wording was in Italian, and the relevant marks identified legally identical goods and services.

Yet, Lettuce found the STELLA ROSSA and RED STAR marks to be "rather dissimilar," cautioning that even though the two phrases are direct translations of one another "the doctrine of foreign equivalents is not unlimited, and it is not an absolute rule."

In contrast, Merlo holds that MERLOT'S MERLOT and LAGO DI MERLO create similar commercial impressions, even though the former is primarily merely a surname and the latter means "Lake of Merlo."

Like I said, I would have expected it to come out the other way. I thought the Lettuce decision was a step in the right direction on the doctrine of foreign equivalents.

At 10:53 AM, Anonymous Caole Barrett said...

I agree with Mark.

At 3:30 PM, Anonymous Anonymous said...

In these cases it is harder to argue not primarily merely a surname when it is your own surname.

At 8:19 PM, Anonymous Paul Reidl said...

This one is a head-scratcher, IMHO. I would have gone the other way on both issues.

At 8:52 AM, Blogger Robert said...

This case does provide prosecution practice tips.

1) When confronted with a surname refusal, do search for translations. If there is one, make it part of the record. Here the applicant could not claim MERLO has a meaning other than a surname because he waited until the appeal brief to introduce this evidence.

2) If you are trying to claim your mark is a double entendre, say so and articulate how. When spoken, MERLO'S MERLOT could be a pun similar to "a man's man."

With that said, the Board did not give the applicant any break.


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