Thursday, March 12, 2015

TTAB Test: Is APOTHEOSIS Confusable With APOTHIC for Wine?

E. & J. Gallo Winery opposed an application to register the mark APOTHEOSIS for wine on the ground of likelihood of confusion with its mark APOTHIC, also for wine. Of course, it all came down to the similarity or dissimilarity of the marks. How do you think this came out? E. & J. Gallo Winery v. Kinney Family Vintners LLC d/b/a Occasio Winery, Opposition No. 91207656 (March 10, 2015) [not precedential].

It was uncontested that Gallo had used the mark APOTHIC since 2010, and so standing and priority were established. Because the goods are identical, the Board must presume that they travel through the same, normal channels of trade to the same classes of consumers. Applicant's evidence of its "membership" system, the price of its wine, and the sophistication of customers was irrelevant, since there were no corresponding limitations in the opposed application.

As we know, because the involved goods are identical, a lesser degree of similarity between the marks is required to support a finding of likely confusion.

Gallo argued that its APOTHIC mark is famous, but it failed to prove fame by the required clear evidence. The wine enjoyed significant sales and Gallo spent liberally on advertising, but Gallo did not provide sufficient context for that data: i.e., how they compared with other brands of wine. The Board did find, however, that the mark is "fairly strong" and entitled to a "concomitant broad scope of protection."

As to the marks, the Board noted that they begin with the same first five letters [Can you name them? - ed.], and that consumers are prone to focus on the first part of a mark. The involved marks look and sound similar because of their sharing these five letters. As to connotation, "apotheosis" means "the perfect form or example of something," "the highest or best part of something." Gallo's mark is derived from the word "Apotheca," a place where "[m]ore than 800 years ago, vintners blended and stored their most coveted concoctions." [I believe its just outside Cleveland - ed.]. Gallo blended "Apotheca" with "epic" to produce APOTHIC. However, there was no evidence that consumers would understand APOTHIC to include or this meaning. [Could you say consumers would be apathetic about the meaning? - ed]. The Board agreed with Gallo that "apotheosis" is not a commonly-used word [What was the evidence for that? ed.] and to many consumers would not connote anything. Therefore, the Board could not conclude that involved marks have similar meanings.

The Board took note of Gallo's expanded us of APOTHIC to several different types of wine, including APOTHIC RED, APOTHIC WHITE, APOTHIC ROSE, and APOTHIC DARK. Those consumers who are familiar with this expansion may assume that APOTHEOSIS is another expansion or variation of APOTHIC.

Considering the marks in their entireties, the Board found them to be more similar than dissimilar, especially since they both begin with the same five letters and consumers "are familiar with Gallo's expanding use of its mark."

And so the Board sustained the opposition.

Read comments and post your comment here

TTABlog note: So, do you agree with this decision? Wine not?

Text Copyright John L. Welch 2015.


At 7:02 AM, Blogger Nathan Chaney said...

Good post, although I think the editor may have been drinking...

At 9:11 AM, Anonymous E.K. Meltzer said...

John - another fascinating article. Thank you! Until your post, I didn't realize how Gallo created its mark. Based on the labeling, particularly for their "Apothic Dark," I presumed they were trying to rhyme with "gothic" to take advantage of popular interest in all things vampire. The apotheosis of a fanciful mark?

At 1:52 PM, Anonymous Anne Gilson LaLonde said...

What about APOTHECARY?

At 4:06 PM, Anonymous Anonymous said...

When it comes to alcoholic beverages, I think taste should be added to the likelihood of confusion factors. While the opinion would be more difficult to write, the decision might be easier (or the parties might settle sooner).


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