TTABlog Test: Are Flavored Gelatins Related to Wine-Based Aperitifs?

The USPTO refused registration of the mark GEL-SHOTZ in the stylized form immediately below, for "flavored and sweetened gelatins,” finding confusion likely with the registered mark GEL SHOTS for "aperitifs with a wine base." The Board wasted little time in finding the marks to be similar, but what about the goods? Are they related for Section 2(d) purposes? How do you think this came out? In re Gel Shotz, Inc., Serial No. 87387430 (January 15, 2020) [not precedential] (Opinion by Judge Angela Lykos).

Applicant argued that the marks are "sufficiently distinct" because of the hyphen between GEL and SHOTZ, the spelling of "shotz" with the letter "z' instead of the letter "s,' and the stylized lettering. The Board disagreed, noting that the cited mark is registered in standard character format and could be displayed in a font identical to applicant's font, that the hyphen does not change the meaning of applicant's mark, and the pronunciation of the marks is presumably the same.

Applicant maintained that the goods are unrelated because its “[f]lavored and sweetened gelatins” are “boxes of gelatin-style desserts that can be used to mix with alcohol or without, and can be used in baking for flavoring pies, cupcakes and fondant” whereas Registrant’s goods consist of “one-liter bottles or gallon size jugs of wine based alcohol.”

The evidence submitted by Examining Attorney Jared M. Mason, however, showed that gelatins and wine-based aperitifs are "complementary products designed to be mixed together in the same recipes to make alcohol infused gelatin in a shot-sized serving." Applicant’s own website and packaging provides recipes for making flavored gelatin shots. "[I]t is foreseeable that consumers of these types of goods may substitute other types of alcoholic beverages such as Registrant’s 'aperitifs with a wine base.'"

The Board concluded that the goods at issue are complementary products that could be purchased and used together to make shot-sized alcohol infused gelatin.

As for channels of trade, the Board observed that in some states, "wine and wine products are sold in grocery stores where gelatin is also sold." Thus the channels of trade and classes of consumers overlap.

Finally, the fact that applicant's predecessor owned a now-defunct registration for a "substantially similar" mark was of no moment, since "a cancelled or expired registration has no probative value other than to show that it once issued and it is not entitled to any of the statutory presumptions of Section 7(b) of the Trademark Act."

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the Section 2(d) refusal.

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TTABlog comment: I suspect that you got this one right. Is this a WYHA?

Text Copyright John L. Welch 2020.