Thursday, November 05, 2015

TTAB Test: Is "MONTERO & Design" Confusable With "MONTECRISTO" for Cigars?

In this Section 2(d) opposition, Altadis claimed that the mark shown immediately below, for "cigar boxes, cigars," is likely to cause confusion with its famous mark MONTECRISTO, and its fleur de lis design mark and triangular crossed-swords designs marks (shown next below), all for cigars. What do you think was the outcome? Altadis U.S.A. Inc. v. Global Services 1939 LLC, Opposition No. 91213902 (November 3, 2015) [not precedential].

Applicant conceded that the mark MONTECRISTO is famous in the tobacco/cigar industry. Opposer Altadis failed to prove that its design marks are famous, but the Board deemed them to be strong marks entitled to a broad scope of protection.

The Board found that applicant's mark "incorporates the entirety of one of Opposer's marks." [i.e., the fleur de lis]. Moreover, the central portion of Applicant's mark "evokes a triangle." [Really? - ed.]. And the word mark MONTERO is "similar to Opposer's famous mark MONTECRISTO in that they share the first five letters (MONTE), they include the letter 'R,' and they end with the letter 'O.'"

In addition, "[t]o the extent the letter 'M' in the central portion of Applicant's mark resembles two mountains, it reinforces the MONTE portion of Applicant's mark, which Opposer's mark also shares." [What mountains? - ed]. MONTECRISTO is translated as "Mountain of Christ," and thus Applicant's mark and Opposer's mark "have very similar meanings." [Huh? - ed.].

Given the strength of Opposer’s fleur de lis mark, and the fame of the MONTECRISTO mark for cigars, we find that it is more likely than not that purchasers of cigars will view Opposer as the source of a mark that contains six fleur de lis in the center of the cigar band, and that the letter “M” identifies Opposer, whose name begins with that letter.

The Board concluded that the similarities in the marks outweigh their differences, and it sustained the opposition.

Read comments and post your comment here.

TTABlog comment: Wow! I would not have found the marks confusingly similar. How about you?

Text Copyright John L. Welch 2015.


At 6:47 AM, Anonymous Joe Dreitler said...

Assume there is some connection or it is a small cigar from owner of famous brand.

At 7:24 AM, Anonymous Anonymous said...

To JD...any evidence that consumers would expect a company to dilute their own famous brand that way?

At 7:27 AM, Anonymous Frank Herrera said...

Welcome to the world of cigar brand opposition and cancellation proceeding TTAB opinions. Haven't found one in 14 years that mirrors the reality of the cigar marketplace.

At 10:30 AM, Blogger John L. Welch said...

It has been suggested to me that the "M" in applicant's mark looks like a pair of legs spread apart, with a diaper in the middle. I did not see that at first. Perhaps applicant should have made that argument. Perhaps not.


Post a Comment

<< Home