TTABlog Test: Are Wine and Restaurant Services Related for Section 2(d) Purposes?

The USPTO refused to register the mark RAO'S for "Wine produced from grapes grown in a single designated vineyard in the Atlas Peak American Viticultural Area, labeled and advertised in compliance with U.S. laws for the Atlas Peak American Viticultural Area appellation of origin; all of the foregoing sold at the vineyard, wine specialty stores, and direct to consumers; none of the foregoing sold in restaurants," finding confusion likely with the identical mark registered for "bar services; restaurant services." The marks are identical, but are the goods and services related? And what about consumer sophistication? In re 1729 Investments LLC, Serial No. 90694523 (April 24, 2023) [not precedential] (Opinion by Cheryl S. Goodman).

The Board first considered the strength of the cited mark, noting that it was registered under Section 2(f) - a concession that that RAO'S is not inherently distinctive - and further observing that surnames "are considered to have some inherent weakness as marks." The Board therefore concluded that the cited mark is conceptually weak. Nonetheless, even weak marks are entitled to protection against registration of similar marks, especially identical ones, for related goods and services.

Turning to the goods and services, "[i]t is common knowledge that restaurants often serve alcoholic beverages such as wine and beer. However, it does not necessarily follow that consumers commonly expect wine to emanate from the same source as restaurants." In other words, there is no per se rule that food and beverage products and restaurant services are related. The UPSTO must show "something more than that similar or even identical marks are used for food products and for restaurant services."

The Board has found the required "something more" when applicant's mark itself made clear that its restaurant specialized in registrant’s type of goods (e.g., GOLDEN GRIDDLE PANCACKE HOUSE), or when the registrant's mark was “a very unique, strong mark” and there was a commercial relationship between the goods and restaurants.(MUCKY DUCK).

The Examining Attorney’s burden in this case is to show that restaurants operating under a particular mark also sell wines, branded with the same mark as the restaurant, and that the sale of wine is not merely an aspect of the service of providing food and drink to patrons in a restaurant. The Examining Attorney must show that there is “a substantial overlap” between restaurants and wine as to source such that “consumers are likely to conclude that [wine] and restaurant services with similar marks emanate from the same source.”

The examining attorney submitted 31 use-based registrations covering both wine and restaurant services. However, third-party registrations alone are not sufficient to meet the "something more" requirement. The examining attorney also submitted website evidence of 13 wineries having on-site restaurants "with purportedly the same name as the winery, and by implication, the same name as the wine produced by the winery." Reviewing that evidence, the Board found that "the internet evidence overall does not support the Examining Attorney’s position that it is common for regular restaurants to offer house-branded wine under the same name as its restaurant, or, for that matter, even wineries to offer on-site restaurants with the same name as the winery-branded wine."

In light of the large number of restaurants in the United States (1 million), the facts that a single mark is sometimes used to identify wine and restaurant services as shown by the third-party registrations, that some wineries have on-site restaurants and a small number of them show on-site restaurants having the same name as the wine produced at the winery, and that restaurants serve wine, is not sufficient to establish that it is generally recognized by consumers that wine and restaurant services have a common source of origin for purposes of likelihood of confusion.

Furthermore, the Board noted the restricted trade channels in the subject application, and found that "the evidence of record does not show any meaningful trade channel overlap for restaurants in general with Applicant’s wine that is not served in restaurants." In addition, applicant’s "wine goods are not an impulse purchase but a planned one and that purchasers of Applicant’s wine are highly discriminating and aware of the geographic viticultural appellation, as reflected by, and consistent with, the restrictions in the identification of goods."

Notwithstanding the similarity of the marks, we find that relatedness of the goods and services, the trade channels and sophistication of the purchasers weighs against a finding of likelihood of confusion making confusion unlikely.

And so, the Board reversed the refusal to register.

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TTABlogger comment: The classes of consumers overlap, but apparently only the "sophisticated" would be purchasers of applicant's wine.

Text Copyright John L. Welch 2023.