TTABlog Test: Is This Word-and-Design Mark Confusable with PASION, Both for Cigars?

The USPTO refused to register the composite word-and-design mark shown below, for cigars, finding confusion likely with the registered mark PASION for, inter alia, cigars. Applicant argued on appeal that it had prior use of its mark, that it sells its cigars in two Philadelphia stores and at its website whereas the registrant's cigars are sold in New York City and on its own website, that the websites feature different color schemes, that customers will exercise care in their purchasing decisions, and that evidence of actual confusion was lacking. How do you think this appeal came out? In re Martinez Hand Rolled Cigars, Inc., Serial No. 97479082 (October 23, 2024) [not precedential] (Opinion by Judge Angela Lykos).

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The literal portion of applicant's mark comprises the word PASIÓN and the phrases HAND MADE IN NEW YORK CITY, USA and SINCE 1974 MARTINEZ HAND ROLLED CIGARS. All of the words except PASIÓN and MARTINEZ are disclaimed.

Of course, applicant's claim of prior use was irrelevant in this ex parte appeal because it amounted to a collateral attack on the cited registration. The proper vehicle for such a challenge is a petition for cancellation. As to the assertions regarding where the cigars are sold and the color schemes of the websites, those facts also were irrelevant, since it is not permissible to read real-world limitations into the identified goods in the application and/or cited registration. Moreover, since the goods are identical, they are presumed to travel in the same trade channels to the same classes of consumers.

As to purchaser care, the Board found that neither the application nor the cited registration are limited to "high-end" cigars, but rather include inexpensive cigars, and there was no evidentiary basis to conclude that all cigar purchasers are sophisticated in their purchasing. As for the lack of evidence of actual confusion, that assertion is not probative value in an ex parte proceeding where the registrant has no opportunity to be heard on the issue.

Applicant having been given the short end of the licklog with regard to the factors discussed above, the Board now came to a consideration of the marks. Since the goods overlap, the Board observed, a lesser degree of similarity is necessary to support a finding of likely confusion.

The Examining Attorney argued that the marks are similar because the applicant's mark begins with PASIÓN, which is the entirety of the cited mark PASION, and PASIÓN is the dominant portion of Applicant’s mark. The Board pooh-poohed that argument because it amounted to an improper dissection of Applicant’s mark. "Applicant’s composite mark incorporates the cited word mark, but the similarities stop there."

The Board found that the word PASIÓN in Applicant’s mark "blends harmoniously in the eagle depicted above the medallion, making it less perceptible to prospective consumers." In other words, 
the word PASIÓN is “difficult to notice” in the context of the overall commercial impression made by the design elements. The Board therefore rejected the Examining Attorney’s assertion that PASIÓN is the dominant element in Applicant’s mark.

If any literal element dominates at all, it would be the stylized surname MARTINEZ in Old English style font displayed in the medallion. Prospective consumers would be more naturally drawn to this relatively larger and prominently depicted term in the center of the design. The surname MARTINEZ sounds completely different than the cited mark PASION. As a surname, it also evokes a distinct connotation and commercial impression.

The Board concluded that the marks are dissimilar in sight, sound, appearance and connotation. "The unique multi-element design of Applicant’s composite mark contributes to these differences. This DuPont factor strongly weighs against finding a likelihood of confusion."

And so, the Board reversed the refusal.

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TTABlogger comment: How did you do? If you ordering one of applicant's cigars, what would you ask for?

Text Copyright John L. Welch 2024.