Monday, July 08, 2013

Precedential No. 26: FInding Wine and Water Related, TTAB Sustains 2(d) Opposition

The Board sustained a Section 2(d) opposition to registration of the word-and-design mark shown below [LIGHT disclaimed], for bottled water (and other related goods), finding a likelihood of confusion with the registered marks GOTT and JOEL GOTT for wine. Marketplace evidence and third-party registrations demonstrated that wine and water are of the type of goods that may emanate from a single source. Along the way, the Board granted opposer's motion to strike applicant's supplemental disclosures submitted during its testimony period. Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., 107 USPQ2d 1424 (TTAB 2013) [precedential].

Evidentiary issues: Applicant submitted a declaration with accompanying exhibits during its testimony period, but the Board observed that a declaration cannot be submitted in lieu of testimony unless the parties so stipulate. See Rule 2.123(b) and TBMP Section 703.01(b). Even if the declaration could be viewed as operating like a notice of reliance, the exhibits to the declaration were not the type of documents that would be admissible by that route: they were advertising materials generated by applicant. In short, neither the declaration nor the exhibits were admissible.

Moreover, that fact that applicant was required to supplement its discovery responses does not mean that the responses were thereby made of record in the proceeding. And in any case, the advertising materials were apparently available only in Peru and therefore had no probative value.

Likelihood of Confusion: The Board viewed the design elements of applicant's mark as "insignificant background elements," concluding that "applicant has essentially appropriated registrant's mark GOTT without adding any other distinguishing features."  The word LIGHT, disclaimed in the application, provides descriptive information regarding applicant's products. The wave design "merely reinforces the connection to applicant's goods as water beverages and related goods."

The Board found  applicant's mark and the mark GOTT to be similar in sight, sound, meaning, and commercial impression. Likewise, applicant's mark is similar to the registered mark JOEL GOTT. The inclusion of the first name JOEL in opposer's mark merely underscores the fact that GOTT connotes a person's name.

As to the goods, opposer's evidence showed that wine and water are related goods. Opposer's witness testified that she purchased or obtained bottled water at several wineries, the water being sold under the same brand name as the wine. Use-based third party registrations also suggested that these goods may emanate from a single source under a single mark. This evidence "strongly favors a finding of likelihood of confusion."

As to channels of trade, opposer proved that the involved goods will be marketed in similar venues, like grocery stores and "big box" stores. Opposer sells to Safeway, Wal-Mart, and Costco; applicant's witness testified that  it intends to sell its water in supermarkets.

The fact that the goods will be sold in the same large store does not necessarily support a Section 2(d) claim, but here there was testimony that both water and wine are sold at wineries, and further Mr. Gott himself testified that he has seen water and wine sold in the same section of stores. [I guess you've Gott to believe him - ed.]. Menus from restaurants included water and wine in the same menu section. Website printouts described mixing wine and water to make wine spritzers and other popular drinks, as well as the pairing of wine and water. Thus opposer established that the involved goods are related products sold through the same trade channels to the same classes of consumers.

Balancing the duPont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Why is this case precedential? Seem rather straightforward to me. As I've said before, although there is no per se rule that all beverages are related for Section 2(d) purposes, it does seem to work out that way.

Text Copyright John L. Welch 2013.


At 9:15 AM, Anonymous Anonymous said...

Compare Cielo S.p.A. v. Austin House of Prayer, Opposition No. 91166590, where the Board found no likelihood of confusion between the identical marks CIELO, one for drinking water and the other for wine:

“However, there is little evidence in the record from which the Board can draw conclusions about whether, or the extent to which, there is a relationship between the identified goods. The mere fact that both products are consumable liquids that are sold to some of the same purchasers through some of the same retail outlets is insufficient to reach the conclusion that the goods are sufficiently related such that, as identified by identical marks, confusion as to source is likely. There is no evidence that, in the marketplace, wine and drinking water ever emanate from the same source, or that they are marketed under the same marks, or that the circumstances surrounding the sales of wine and drinking water are such that consumers would believe that they come from the same source. While both wine and water may be consumed at a meal, there is no evidence that they are complementary products. Nor is there evidence that these products are sold in proximity to each other in retail outlets.”

At 9:43 AM, Blogger John L. Welch said...

One huge difference from CIELO case. Opposer put in evidence that the goods were related.

At 1:01 PM, Anonymous Mark L. Donahey said...

Yep. John hit the nail on the head. It only seems like wine is per se related to, well, everything because Examining Attorneys (and the opposer in this case) consistently offer unrebutted evidence in support of relatedness. The Board reaches a different conclusion when either (i) there isn't any evidence of relatedness or (ii) the evidence is rebutted.


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