TTABlog Test: Is KOKOMO for Fresh Fruits Confusable With KOKOMO for Wine?
The USPTO refused to register the mark KOKOMO for "Fresh fruits and vegetables; live plants, namely, live table grape vines; live plant material, namely, live table grape vine plant material; all of the foregoing excluding tomatoes and field corn, rye grass and perennial rye grass" in Class 31, finding confusion likely with the identical mark registered for "wine." We know that when the marks are identical, a lesser degree of similarity between the involved goods is needed to support a likelihood of confusion refusal. How do you think this one came out? In re International Fruit Genetics, LLC, Serial No. 88711163 (June 15, 2023) [not precedential] (Opinion by Judge Cynthia C. Lynch).
The Board first observed that "[i]t is sufficient for a finding of likelihood of confusion as to a class of goods if relatedness is established for any one of the recited goods within the class." Also, applicant's identification of goods must be interpreted to include fruits used in the production of wine, such as grapes and berries.
Examining Attorney Beniam Biftu introduced two types of proof regarding the relatedness of fresh fruits and wine: marketplace evidence and third-party registrations. The former consisted of seven websites offering wine and grapes under the same mark. The latter comprised "a few use-based third-party registrations that cover both wine and fruits or vegetables under the same mark."
Moreover, wine is "[a] beverage made of the fermented juice of any of various kinds of grapes, usually containing from 10 to 15 percent alcohol by volume," and "[a] beverage made of the fermented juice of any of various other fruits or plants." "Thus, Registrant’s goods are made from 'fresh fruit' such as Applicant has identified, making them commercially related."
Applicant argued that its "table grapes" are distinguishable from "wine grapes," contending that “[t]he cited registrant would not use Applicant’s table grapes to make its wine," and further that in the website references the grapes are sold in bulk to winemakers. "However, these arguments overlook that the application lists 'fresh fruit,' and because we must 'give full sweep' to Applicant’s identification, we cannot limit it to any particular type of fruit, much less any specific type of grapes."
As to channels of trade, the record evidence showed that "vineyards and wineries sell their wines, as well as fruits, at the same establishments, to some of the same consumers." Applicant's attempt to read limitations into the cited registrations was, of course, improper.
Applicant argued that it sells “table grapes,” whereas wineries sell “wine grapes” in bulk to winemakers. However, there were no such limitations in the application or the cited registrations: “these arguments overlook that the application lists ‘fresh fruit,’ and because we must ‘give full sweep’ to Applicant’s identification, we cannot limit it to any particular type of fruit, much less any specific type of grapes.”
And so, the Board affirmed the refusal to register.
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Text Copyright John L. Welch 2023.
posted by John L. Welch @ 6/21/2023
9 comments
9 Comments:
The breadth with which the TTAB "give[s] full sweep" to words in a registration has gotten out of hand. Common sense be damned. How can "table grapes" be construed to include wine grapes sold to winemakers. One cannot use the AIGS any more lest one risks getting snagged on some totally irrelevant ID that is deemed to have goods that are encompassed by a good that was never intended to include said encompassed good when added to the AIGS. An applicant must now amend every submitted application to be sure to add restrictions that make it very clear that every consumer good is in fact a consumer good of a certain type that is sold to consumers at normal channels of trade for those consumer goods. Same with technical goods and services, where one must specifically exclude all possible broad descriptions that can conceivably be deemed to encompass an applications very narrowly drafted services ID. A recent example comes to mind where my clients application was refused based on a registration's 'business management' description encompassing 'Business consulting services in the field of real estate wholesaling and real estate brokerage'. Why the heck would the' business management' ID even be allowed? The scope that this is given literally includes any and all types of business consulting services, however narrowly drafted (I'm not even addressing the fact that managing a business is NOT the same thing as providing consulting services...much less in a very narrow field). There is literally no limit to 'full sweep'. Don't even get me going on 'providing of food and drink' (not my grammatical error, but the AIGS') and how far I've seen that one taken!
This is absolutely ridiculous! And yesterday's reported decision on coffee and wine was equally out of bounds too, although the applicant did not argue that case properly, because they did not follow Juice Generation. I think the Board is completely out of control and apparently never ventures into the real world!
I completely agree with Gene. It seems the TTAB has left common sense behind and prefers to operate from ridiculously dogmatic rules that have no connection to likelihood of confusion in the real world or real markets. It's one thing to read a registration expansively in order to prevent overlap. It's another thing to read it so expansively that it eats up markets well beyond what is present in the filing. Trademark law works best when it is connected to reality. If confusion is highly unlikely on the face of the documents, why go to such lengths to prevent registration of the junior mark? Let's hope enough of these cases are appealed to the Federal Circuit and reversed. It's time the TTAB is checked and comes back to the real world the rest of us live in, where fresh fruit and wine are not likely to be confused despite the same name. Seriously, folks. Fresh fruit in America in 2023 is not typically sold at vineyards, it's sold at produce stores and grocery stores, in a separate section from wine. I'm not going to go looking for fruit sold by my favorite winery. And I'm certainly not going to look for or expect to see wine by my favorite fruit brands. It's preposterous on its face.
This is yet another terrible decision. Maybe not quite as egregious as yesterday's BLACK INK coffee/wine decision, but still pretty close. The Examining Attorney's evidence here consisted of seven third party website, and "a few use-based third-party registrations" containing the relevant goods. That is paltry to put it mildly.
Even worse, what is this nonsense talking about the the types of grapes and that wine is made from fresh fruit? Who cares? That is so irrelevant to the discussion. It seems as though the TTAB has completely forgotten the underlying concept of what a trademark is. Instead, the question is whether the goods are sufficiently related such that a consumer would believe that wine being marketed under a particular name would be confused as to the source of fresh produce being sold under the same name. The fact that wine is made from grapes couldn't be more irrelevant to the analysis. That would be like arguing that metal bolts and locomotive engines are related because metal bolts are used to make locomotive engines. Give me a break...
Next time I have a client get hosed by the TTAB on something like this, I might just take up the appeal for them on a pro bono basis. That's how Erik Brunetti made it to the Supreme Court with his "FUCT" mark.
Since wine is made from grapes, a consumer would assume that grapes sold under the same trademark as the wine would be grapes used to make the wine. Therefore the classification of "Fresh fruits and vegetables" would indicate that the grapes are sold to consumers.
Silliness. If the applicant had amended the id to include, "all of the foregoing to exclude fruits used in the production of wine," would it have solved the Board's issue, since the decision is made based on the recited G&S and obviously this would prevent any confusion?
I just realized that my last comment was a bit off...what I meant to say is that the only way to avoid this problem is if the prior registrant amends their goods/services to specify the exact nature of them (e.g. "table grapes, not for making wine"), but that's never going to happen so this will continue to be a problem for applicant's who sell/provide very specialized goods/services that are not reasonably within the scope of a prior registrant's goods, but are within the scope as per the "full sweep" rule. Obviously, an applicant can not do anything to avoid the problem as I mistakenly stated in my prior comment.
As to Gene's last comment, under the new trademark fees proposed, amendment's to narrow ID's will almost certainly be even less likely -- because there will be a fee for choosing wording that is not in the ID manual, and I presume that "table grapes, not for making wine" is not in the manual (or alternatively, the ID manual will grow to have hundreds of thousands of specific entries and not be nearly as useful - especially for pro se filers).
Ah, good point Erik. More new rules to make my life more a living hell ;)
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