TTABlog Test: Is "EL BANDIDO YANKEE" for Blue Agave Liquor (Tequila) Confusable with BANDIT for Alcoholic Beverages?

Rebel Wine, owner of the registered mark BANDIT for "[a]lcoholic beverages except beers," opposed an application to register the word mark EL BANDIDO YANKEE and the word-and-design mark shown below, for "[b]lue distilled agave liquor” on the ground of likelihood of confusion under Section 2(d). Applicant ROAR argued that the involved goods are widely disparate: it uses its mark only on tequila, while Rebel uses its mark only on wine and wine-based cocktails, the packaging is different, and the process for making tequila is not the same as that for making wine. Furthermore, ROAR contended that its marks are vastly different from the single word mark BANDIT. How do you think this came out? Rebel Wine Co., LLC v. ROAR Spirits, LLC, Opposition No. 91268314 (July 18, 2023) [not precedential] (Opinion by Judge Jonathan Hudis).

The Goods: The Board turned a deaf ear to ROAR's argument about the differences in goods, packaging, and manufacturing because it must consider the goods as identified in Rebel's registration regardless of the real world facts. Since ROAR's goods are encompassed within the broad identification in Rebel's registration, the Board must presume that the overlapping goods (tequila) travel in the same trade channels to the same classes of consumers.

Strength of Opposer's Mark: The Board found the mark BANDIT to be arbitrary and conceptually strong. As to commercial strength, Rebel offered substantial sales and advertising figures, claiming that BANDIT is a strong mark, but it failed to place these figure in industry context. Applicant ROAR attempted to show weakness of the BANDIT mark due to third-party registration and use of BANDIT-containing marks, but its evidence was rather feeble: only a single registered mark for the same goods, and 14-third party uses that lacked information as to dates of use, location of the seller (foreign or domestic), or even whether "the bottles and labels thereon are actual commercial products versus mere mock-ups." The Board concluded that BANDIT enjoys "moderate commercial success." [for what? - ed.].

The Marks: The words "EL BANDIDO" and the image of a masked man dominate ROAR's word-and-design mark because they are the first words and image in the mark and stand out in size, position, and shading. The word "YANKEE" is not so prominently placed, and furthermore functions as an adjective modifying the noun "EL BANDIDO." Also, if ROAR's mark is shortened by consumers, "they will likely use the term 'EL BANDIDO,' or simply 'BANDIDO,' dropping the adjective 'YANKEE.'"

Opposer Rebel argued that the doctrine of equivalents should apply, but the Board disagreed, since the doctrine is not applied to a mark that contains words in different languages. See In re Taverna Izakaya LLC. Moreover, "the terms 'BANDIDO,' 'YANKEE,' 'TEQUILA,' 'COMPANY' and 'BLANCO' appear in an English dictionary and would be understood without any translation by the ordinary American consumer. Thus, it is inappropriate to apply the doctrine of foreign equivalents in this case, and we find that consumers will take Applicant’s composite mark as it is." The image of a masked bandit reinforces the meaning of EL BANDIDO.

In sum, the similarities between Opposer’s BANDIT mark and Applicant’s EL BANDIDO YANKEE TEQUILA COMPANY BLANCO composite mark, under the first DuPont factor, weigh in favor of a finding that confusion is likely. The marks convey the same or a very similar meaning and have very similar commercial impressions. These similarities outweigh any differences in sound or appearance of the marks.

As to the word mark EL BANDIDO YANKEE, the Board reached the same conclusion: "the similarities between Opposer’s BANDIT mark and Applicant’s EL BANDIDO YANKEE word mark, under the first DuPont factor, weigh in favor of a finding that confusion is likely. The marks convey the same or a very similar meaning and have very similar commercial impressions. These similarities outweigh any differences in sound or appearance of the marks."

Other Factors: The lack of evidence of actual confusion was not meaningful because "[t]he record does not demonstrate appreciable and continuous use by Applicant of its word or composite marks for a significant period of time in the same markets as those served by Opposer under its BANDIT mark." As to the twelfth DuPont factor - "[t]he extent of potential confusion, i.e., whether de minimis or substantial - the Board found the factor to be neutral due to the lack of sufficient evidence (e.g., a survey).

Conclusion: Balancing the relevant DuPont factors, the Board found confusion likely as to both marks, and so it sustained the opposition.

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TTABlogger comment: The strength of Rebel's mark comes from its sale of wine, in particular, and not to alcoholic beverages generally. Shouldn't the Board take that "real world condition" into account when assessing likelihood of confusion? I.e., the mark BANDIT is not commercially strong for tequila.

Text Copyright John L. Welch 2023.