Thursday, August 21, 2014

Test Your TTAB Judge-Ability on this Section 2(d) Refusal of WINSTON CHURCHILL LANCASTER for Cigars

Applicant Randolph Leonard Spencer Churchill sought to register the mark shown below left, for cigarillos and cigars, but was refused registration in view of the registered mark shown below right, for chewing tobacco. On appeal, Applicant Churchill argued that the cited mark would be seen as referring to a place, whereas his mark refers to the famous British Prime Minister. How do you think this came out? In re Randolph Leonard Spencer Churchill, Serial No. 85446588 (August 19, 2014) [not precedential].

(click on drawings for larger picture)

Examining Attorney Anne Madden submitted numerous third-party registrations that each included both cigars and chewing tobacco, which registrations served to suggest that these goods are of a type that may emanate from a single source. Because there were no limitations on channels of trade in the application or cited registration,the Board presumed that the goods travel through the same, normal channels of trade to the same classes of consumers. Moreover, third-party website evidence demonstrated that chewing tobacco and cigars are frequently marketed together.

Turning to the marks, the cited mark contains the phrase LIMITED-RESERVE CHEWING TOBACCO in a small font. [LIMITED RESERVE CHEWING TOBACCO was disclaimed in the registration]. Applicant's mark includes a crest containing Latin and Spanish wording in so small a font "as to be illegible to the extent it would be noticed at all by consumers." Both marks include the word LANCASTER, but in the cited registration it is plainly the dominant term.

Considered in their entireties, "the marks do not look or sound much alike." However, the Board must also consider their connotations and overall commercial impressions.

Applicant asserted that LANCASTER gives the connotation and commercial impression of a place, while his mark would be understood to refer to British Prime Minister Winston Churchill.

The Board acknowledged that LANCASTER "may be understood by some as referring to a place." But LANCASTER may engender the same understanding in applicant's mark, despite being preceded by WINSTON CHURCHILL. In such a situation, it has been found that consumers are likely to believe that "applicant is offering a new line of cigars under its LANCASTER mark." [Or perhaps that registrant is offering a new line under its LANCASTER mark - ed.].

The design element in the cited mark does little to change its commercial impression, which is dominated by the word LANCASTER. In applicant's mark, the words WINSTON CHURCHILL LANCASTER dominate.

The Board therefore concluded that the similarities in connotation and commercial impression outweigh the differences and sound and appearance between the two marks.

Finally, Applicant Churchill asserted that he has enjoyed "some degree of success" with his products, but the Board pointed out that commercial success does not negate a likelihood of confusion, and may even cause reverse confusion.

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  So how did you do?

Text Copyright John L. Welch 2014.


At 9:13 AM, Anonymous Anonymous said...

Just like I never liked the term "reverse racism", I don't like the term "reverse confusion". Confusion is confusion.....

At 11:07 AM, Anonymous Frank Herrera said...

What if the following was introduced into the case:

CHURCHILL is descriptive of a cigar size. Nearly every modern day cigar manufacturer offers a churchill size. Further, Lancaster, PA is widely known to cigar aficionado's as the source of Pennsylvania broadleaf tobacco which is used in some of today's most innovative premium cigars.


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