Tuesday, January 17, 2017

TTAB Orders Cancellation of PORTÓN Registration, Confusable with PATRON

The TTAB granted a petition for cancellation of a registration for the mark PORTÓN for "Distilled spirits; brandy; pisco," finding the mark likely to cause confusion with the registered mark PATRON for tequila and distilled spirits. The Board found that "a substantial number of non-Spanish speakers will perceive both terms, in the context of the goods that include tequila and pisco, as Spanish words, and any recognition of the English word 'patron' will not sufficiently distinguish the marks." Patron Spirits International AG v. Pisco Porton, LLC, Cancellation No. 92059527 (January 4, 2016).


The involved goods are legally identical and presumably sold through the same channels of trade to the same classes of consumers. As to conditions of purchase, since there are no pertinent limitations in the identifications of goods, the Board must consider all purchasers, even the less discerning.


As to the marks, the similarities in structure and spelling create similarity in sound. The aural similarity "is significant because both parties’ beverages are sold in the sometimes noisy atmosphere of a bar or crowded restaurant."

As to connotation, Petitioner argued that to the vast majority of Americans, the marks would have no meaning “other than as a trademark with a Spanish-language overtone” and “will leave identical commercial impressions.” Respondent asserted that Spanish-speaking customers would recognize the differences in meaning between “patron” (customer or guess) and “portόn” (gate), and others would perceive “portόn” “as a foreign looking and foreign sounding word but would not perceive it in a manner similar to how they would perceive the ordinary English word ‘patron.’” Petitioner replied that in the context of tequila, “patron” would be perceived as a Spanish word.

The Board agreed with petitioner. It found that “a substantial number of non-Spanish speakers will perceive both terms, in the context of the goods that include tequila and pisco, as Spanish words, and any recognition of the English word “patron” will not sufficiently distinguish the marks.”

The Board concluded that marks are similar in appearance, sound, meaning and overall commercial impression, and that this similarity, where the goods are legally identical, outweighs the dissimilarities.

The Board did not accept petitioner’s claim of fame but, based on media articles referring to PATRON tequila, it did find that PATRON has commercial strength for tequila and is entitled to a “broader scope of protection.”

Balancing the relevant du Pont factors, the Board found confusion likely and it granted the petition to cancel.

Read comments and post your comment here.

TTABlog comment: What if the registration had been limited to distilled spirits sold in quiet bars and restaurants?

Text Copyright John L. Welch 2017.

3 Comments:

At 8:59 AM, Anonymous Bob Klein said...

Yet another case where a simple survey would show that relevant consumers would be unlikely to be confused.

 
At 9:43 AM, Anonymous Anonymous said...

not for the first round, anyway.

 
At 4:10 PM, Blogger Misha Leister said...

I agree with the TTAB’s analysis of the marks and its decision to cancel Pisco Porton, LLC’s registration and with the TTAB’s finding of likelihood of confusion. I am confused however how non-Spanish speakers perceiving both terms as Spanish words tips the scale in either direction. Wouldn’t the similarity between the spelling of the words be enough regardless of their origin? If a majority of Americans spoke Spanish would the TTAB have come up with a different decision? I don’t think they would have, based on their analysis of the Spanish and English translations for this issue.
For the analysis of Fame, would the use of “Patron” in popular music help to bolster the Petitioner’s assertion? (Some examples being: “Shots” by LMFAO featuring Lil Jon , “Blame it” by Jamie Foxx featuring T-Pain, “Whatever you like” by T.I., “P&P” by Kendrick Lamar, and “One More Time” - Drake, not to mention the multiple songs called “Patron”). If I were the Petitioner I would have used examples of the brand being referenced in popular culture to assert that the mark is so famous it has become part of popular culture.

 

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