TTAB Test: Are BARTON FAMILY WINERY and THOMAS BARTON Confusable for Wine?

Joseph Barton applied to register BARTON FAMILY WINERY for "wine" [WINERY disclaimed], but the USPTO refused registration under Section 2(d) on the ground of likelihood of confusion with the registered mark THOMAS BARTON for "alcoholic beverages, namely, wines." Applicant avoided a Section 2(e)(4) refusal by seeking registration under Section 2(f), but what about the 2(d) refusal? How would you rule? In re Barton, Serial No. 85554813 (November 7, 2014) [not precedential].

Because the goods are identical, the Board must presume that they travel through the same distribution channels to the same classes of consumers. Moreover, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.

Because both marks include the the designation BARTON, the marks are similar in appearance and pronunciation. In each mark, BARTON will be perceived as a surname, "perhaps identifying the same wine-producing family."

[C]onsumers familiar with Registrant’s wines are likely to believe that Registrant is now producing a line of wines bearing only its surname, and that Registrant is designating its own 'Barton family' as the maker of the wines produced under the mark BARTON FAMILY WINERY. The fact that the cited mark also includes the name THOMAS does not sufficiently distinguish it from Applicant’s mark.

Moreover, BARTON is the first word in applicant's mark, and it is not improper to give more weight to the name BARTON since it is not uncommon for wine producers to use the phrase FAMILY WINERY. "Here, the mark BARTON FAMILY WINERY could well be interpreted as a broad reference to wines emanating from THOMAS BARTON as part of the Registrant’s Barton family wine business."

Applicant submitted six third-party registrations for marks containing the word BARTON, but only two were based on use. The other four were registered under Section 66(a) with no use requirement, and they had no probative value. As to the two used-based registrations, owned by the same entity (one for whiskey and the other for whiskey and distilled spirits, excluding wine), "they are not evidence that the marks are in use on a commercial scale or that the public has become familiar with them." In short, these prior registration do not the show "a crowded field or that Registrant’s mark is weak."

The Board concluded that confusion is likely and it affirmed the refusal.

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Text Copyright John L. Welch 2014.