Wednesday, March 18, 2015

TTAB Test: Are Tequila and Wine Related for Section 2(d) Purposes?

Proximo Spirits applied to register the mark COCOMO for "tequila; tequila based prepared cocktails," but Examining Attorney Tamara Hudson refused registration under Section 2(d), deeming the mark likely to cause confusion with the registered mark KOKOMO for wine. Applicant contended that its mark suggests coconuts,  while the cited mark references Kokomo, Indiana. As to the goods, applicant pointed out that registrant is a winery, and that wineries produce only wine. How do you think this came out? In re Proximo Spirits, Inc., Serial No. 85865962 (March 16, 2015) [not precedential].

The Board found the marks similar in appearance and pronunciation, the latter factor being particularly important because the goods may be requested verbally without prior reference to a menu. As to meaning, there was nothing in the record to suggest that consumers would associate registrant's KOKOMO wine with Kokomo, Indiana, nor was there any evidence to show that applicant's mark, when used with tequila, has anything to do with coconut.

As to the goods, the Board acknowledged that not even an unsophisticated purchaser would mistakenly buy wine expecting tequila, or vice versa. [At least while sober - ed.]. But the issue is not whether consumers would confuse the goods, but whether they would be confused as to the source of the goods.

The Board presumed that the involved goods would be sold in all normal channels and to all normal classes of purchasers for such goods. The trade channels for both would include liquor stores, bars and restaurants, and the alcoholic beverages sections of retail outlets. Thus the channels of trade are the same, and the customers include unsophisticated purchasers.

The Board observed that the CAFC and the Board "have repeatedly held spirits and wine to be related."

"[a] typical consumer of alcoholic beverages may drink more than one type of beverage and may shop for different alcoholic beverages in the same liquor store. Moreover, a person may serve more than one kind of alcoholic beverage before or during a meal or at a party."

Applicant argued that it is "common knowledge" that wineries sell only wine, but the Board concluded that, even if true, that does not rebut the examining attorney's showing that consumers would assume a connection between wine and tequila sold under very similar trademarks. The examining attorney submitted third-party registrations covering both wine and tequila, and Internet evidence that some entities distribute and sell both wine and tequila. Moreover, restaurants and bars offer wine and tequila pairings, and wine may be mixed with tequila in drink recipes.

This evidence corroborated the Board's finding that wine and tequila are related. It also showed that the goods are complementary products (like the pepper sauce and agave in In re Davia, 110 USPQ2d 1810 (TTAB 2014) [precedential]).

The Board therefore found confusion likely and it affirmed the refusal to register.


Read comments and post your comment here

TTABlog note: It seems likely that every alcoholic beverage would be found related to every other one, because they can be purchased in the same stores, etc., appear together in some third-party registrations, and may be mixed together. In other words, there is a de facto per se rule that all alcoholic beverages are related. Right?

Text Copyright John L. Welch 2015.

12 Comments:

At 8:13 AM, Anonymous Anonymous said...

Absolutely right. I won't take any more alcoholic beverage/alcoholic beverage office actions

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

I have gone so far as to argue to the Board that they should stop this silliness and just say that there is a de facto rule that restaurants and alcohol beverages are related, and all alcohol beverages are related. It is a big waste of everyone's time to continue this charade.

 
At 9:08 AM, Anonymous Rob Tyler said...

I wish the TTAB would just come out and say "we consider all alcoholic beverages related." It would be a silly rule but at least it would be clear. Then we'd either learn to live with it or, better yet, the CAFC would overturn it and tell the PTO to drop its broad brush. When I explain to clients why PTO World isn't at all like the real world, I always use alcoholic beverage marks as an example.

 
At 10:03 AM, Anonymous Roberto Ledesma said...

I think it still depends on the facts of each case and the distinctions that can be drawn and supported in the record. The alcoholic beverage industry is highly regulated. In certain states, wine/spirits/beer are sold in separate stores. Some alcoholic beverages are very expensive, requiring a highly sophisticated consumer. There are numerous 3rd party registrations and TTAB opinions (see most recently, e.g. In re Congregation Ale House) to support a no likelihood of confusion position. That being said, an Applicant's best shot with these types of cases is usually at the examination stage and not on appeal (based on the particular facts and evidence of record). If an Applicant is going to allege that its mark suggests coconuts (like here) or that the Cited Registration would be associated with Kokomo, Indiana (like here), then it needs to back up these assertions (it did not here); otherwise, don't appeal the decision and rely solely on the hope of the "no per se rule." That won't work.

 
At 10:14 AM, Blogger John L. Welch said...

In the Congregation Ale House case, the Board found the marks at issue (DARK OF THE COVENANT for beer and COVENANT for wine) to be substantially different. The PTO did a poor job regarding the evidence of relatedness: "[E]vidence is lacking to indicate whether they may emanate from a single source; and, given the dissimilarity in the marks, this level of relatedness is
not sufficient to weigh in favor of finding likely confusion."

 
At 11:08 AM, Anonymous Alex Butterman said...

I think the problem here is that the marks are phonetically identical. Greater differences in these marks could have yielded a different result.

That said, assuming the applicant has resources, I'm wondering if perhaps this case is intended as a test case and will be appealed to the CAFC to see if the CAFC can state for once and for all if there is a per se relatedness rule for alcoholic beverages.

 
At 11:09 AM, Anonymous joe dreitler said...

Agree with the other posters on this issue. There IS a per se rule that all alcoholic beverages are related and it does waste time and money to say that there is no such rule but then find them related in 99 and 44/100% of cases.
As a Midwesterner who is actually familiar with Kokomo, Indiana and have been for too many years, I would never look at a brand called Kokomo without thinking of the town. Given that the 2 marks are clearly not identical, this is a per se rule. Let's just acknowledge that and move on as another poster said.

 
At 12:41 PM, Anonymous Anonymous said...

The section re mixed drinks both having wine and tequila is an embarrassment to the USPTO.

If that's evidence of relatedness, then ice, fruit, plastic stirring swords, straws, etc. are also potentially related to each other.

 
At 3:27 PM, Anonymous Anonymous said...

What happens when the description is "alcoholic beverages, except beers" in Class 33.

Then you file for "beer" in Class 32 for a similar mark?

Can the USPTO argue that other people sell wine and beer and therefore this could be confusing too?

The brush is way too broad.

It is just an excuse at this point to be lazy and avoid having to review the real facts on a case by case basis.

Everything is now related to everything.

What if one shows numerous instances where different parties own the same mark for various alcoholic beverages/wine/beer?

That would seem to counter the PTO evidence, but it is merely tossed aside as an anomoly and ignored.

 
At 4:33 PM, Anonymous Anonymous said...

There is a KOKOMO is in Indiana, but the Beach Boys found "Off the Florida Keys
there's a place called Kokomo
That's where you wanna go
to get away from it all
Bodies in the sand,
tropical drink melting in your hand
We'll be falling in love
to the rhythm of a steel drum band
Down in Kokomo". I'm surprised the Examiner didn't argue that a wine has a name that might remind people of a place that might have COCONUTS.

 
At 4:23 PM, Anonymous Cassidy Merriam said...

What I find ironic about all of these alcoholic beverage decisions is that, in practicality, the beverage industry is, in large part, dominated by a few major companies. In that respect, the Board may be right--alcoholic beverages really are all related.

In practicality, however, these massive companies almost always keep their brands discrete and most consumers have no idea that these different brands originate from the same company. I would bet that the majority of the public doesn't know that Guinness and Ketel One are both from Diageo, Perrier-Jouet and Jameson are both from Pernod Ricard, or that Dom Perignon and Grand Marnier are both from Moet Hennessay. As such, I would venture that they are not making their purchasing decisions based on brand names in other categories.

It seems like the practical reality makes it even more important to keep the likelihood of confusion analysis limited to a very narrow set of goods where purchasers actually risk confusion.

 
At 5:24 PM, Blogger Scott Gerien said...

Agree that we are seeing a de facto rule and that any client should be advised that differences in alcoholic beverages will not carry the day in the PTO when the marks are similar. I have also believed this to be mostly unique to the PTO until a decision last week out of the Central District of California issuing a pretty strong preliminary injunction for a winery against a vodka producer. Word marks were virtually identical, but other differences in presentation did not seem to deter the court. Worth a read, see following link for opinion: http://www.dpf-law.com/wp-content/uploads/2015/03/031120751530.pdf

 

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