Thursday, October 15, 2020

TTABlog Test: Is Beer Related to "Alcoholic Beverages Except Beer" for Section 2(d) Purposes?

We often scoff at the TTAB's pronouncements that there is no per se rule that all alcoholic beverages are related, but put your cynicism aside while you read this case. The Board sustained in part an opposition to registration of the mark EIDOLON for "spirits, excluding distilled blue agave liquor and mezcal; wine," finding confusion likely with Campari's registered mark ESPOLON for "alcoholic beverages except beers." However, the Board dismissed Campari's Section 2(d) claim against EIDOLON for "beer." Campari Mexico, S.A. de C.V. v. Grant Toland, Alexander Prenta and Russ Bennett, Opposition No. 91250805 (August 31, 2020) [not precedential] (Opinion by Judge Peter W. Cataldo).

The Marks: The parties and the Board all agreed that "both marks are not English word[s] and are therefore not immediately likely to be translated in the minds of English speakers.” To the extent the meaning of the marks are known to consumers, they are dissimilar. [ESPOLON is a Spanish word meaning "spur." EIDOLON is an obscure term derived from Greek literature]. The Board concluded that the marks are "more similar than dissimilar in appearance and sound, somewhat different in connotation and, overall, convey commercial impressions that are more similar than dissimilar." The first du Pont factor favored Campari.

Strength of the ESPOLON Mark: The Board found the mark ESPOLON to be arbitrary and inherently distinctive, and as to commercial strength, Campari had enjoyed "some commercial success and media recognition for its goods under the ESPOLON mark." Applicants stipulated that “Opposer’s ESPOLON brand is commercially strong and entitled to a broad scope of protection.”  The Board concluded that ESPOLON is a strong mark for alcoholic beverages and is entitled to a "broad scope of protection on the spectrum of 'very strong to very weak.'"

The Goods:
As to Applicants' "spirits, excluding distilled blue agave liquor and mezcal; wine," the Board found these goods to be legally identical to Campari's "alcoholic beverages except beer." Applicants admitted same in their Answer to the Notice of Opposition.

As to Applicant's "beer," however, the Board was "not concerned that Opposer's goods specifically exclude beer."

To support a finding of likelihood of confusion, it is not necessary that the goods be identical or even competitive. The goods need only be “related in some manner or … the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.” *** The “question is whether, under all the circumstances, consumers encountering the goods sold under these marks would mistakenly believe that they share or are affiliated with or sponsored by a common source.”

Campari submitted evidence that two beverage retailers offer distribution and delivery of various beers, wines and spirits, including tequila and mescal. Applicants, on their Facebook page, discuss the production of various alcoholic beverages and explain how the same ingredients can be used to create wine, spirits and beer. On social media, Applicants publish educational posts on various distilled spirits and reviews of beers. Various articles suggest and review drinking establishments offering beer and wine as well as distilled spirits.

The Board, however, found that "the record evidence is tenuous with regard to establishing the relatedness of Opposer’s alcoholic beverages and Applicant’s beer." Campari relied heavily on decisions of the Board and its reviewing courts that found beer related to other alcoholic beverages.

Those decisions clearly were grounded in the evidentiary records presented therein, which appear to be more extensive than the record in the case presently before us. Certainly there is no per se rule that different types of alcoholic beverages are related, and reliance upon prior decisional law is not a substitute for presenting an evidentiary record to support the relatedness of beer and alcoholic beverages.

The Board concluded that "[t]he evidentiary showing in this case falls somewhat short of establishing that consumers are likely to believe that beer and other alcoholic beverages emanate from a common source." Therefore, it found that Campari had failed to establish that Applicants’ "beer" is related to Campari's "alcoholic beverages except beers."

Conclusion: Alas, Campari's glass was half full.

Read comments and post your comment here.

TTABlogger comment: Do you think Campari will seek review by way of civil action, where it could submit additional evidence?

Text Copyright John L. Welch 2020.


At 11:23 AM, Blogger Eddie said...

Bad call. Beer is sold right next to hard liquor and wine. Same stuff.

At 2:19 PM, Blogger Valerie N said...

Yeah this one surprises me. In my experience the alcoholic beverages have pretty much been sufficiently related to support a 2(d) challenge.

At 12:48 PM, Anonymous Cliff Kuehn said...

It appears that the Board, with "the record evidence is tenuous with regard to establishing the relatedness of Opposer’s alcoholic beverages and Applicant’s beer", is conflating LIKELIHOOD of confusion with ACTUAL confusion.

I would certainly seek a civil action if I were representing them. I would not want this decision uncontested and whittling away at future enforcement efforts.


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