TTABlog Test: Is SEXTO for Alcoholic Beverages Confusable with THE SEXTON for Whiskey?

Proximo Spirits opposed the application of West Road Spirits to register the mark SEXTO for "alcoholic beverages, except beer; alcoholic beverages, namely, distilled agave liquor," alleging likelihood of confusion with its registered mark THE SEXTON for whiskey. How do you think this came out? Proximo Spirits, Inc. v. West Road Spirits LLC, Cancellation No. 92080766 (July 17, 2025) [not precedential] (Opinion by Judge Thomas W. Wellington).

The Goods: With respect to Respondent West Road's “alcoholic beverages, excluding beer,” the parties’ goods are legally identical, and so the Board must presume that those goods travel in the same trade channels to the same classes of purchasers. As to West Road's distilled agave liquor (i.e., tequila or mezcal), third-party use and registration evidence established that tequila and whiskey are "the types of alcoholic beverages that emanate from the same source."

Strength of Petitioner's Mark: The Board concluded that the mark THE SEXTON has "no demonstrated weakness, but is conceptually strong because the term is arbitrary in connection with whiskey." Moreover, the evidence showed that the mark "has enjoyed success in terms of sales in recent years as well as received considerable attention in terms of industry awards and exposure through promotions in conjunction with television programs." And so, the Board found that the fifth DuPont factor favored Petitioner Proximo Spirits.

The Marks: The Board found the marks to be dissimilar because THE SEXTON "has a specific meaning in English and may be distinguished from Respondent’s mark, SEXTO, that has no meaning in English," while in Spanish "sexto" means "sixth." Proximo acknowledged that a "sexton" is "a church officer or employee who takes care of the church property and performs related minor duties (such as ringing the bell for services and digging graves)."

As to the word THE, Proximo maintained that THE has no importance in distinguishing the marks. The Board observed that this is generally true, but, as the Federal Circuit has held, "not universally true."

Here, while consumers may not look to the word “the” in Petitioner’s mark for source-identification purposes, the word reinforces the connotation of the “sexton” occupation by conjuring a particular person holding this position. In other words, as a definite article, the “the” in Petitioner’s mark will be understood identifying a specific individual holding the occupation of sexton.

The Board recognized the "visual similarity between the marks inasmuch as Respondent’s mark SEXTO is merely one letter away from SEXTON." However, it found the omission of the letter N at the end of West Road’s mark to be "significant because consumers are unlikely to view the mark as a misspelling of SEXTON. Rather, as mentioned, consumers are likely to perceive SEXTO as an unknown term, possibly a combination of the words SEX and TO, or if consumers understand Spanish, they will understand it to mean 'sixth.'"

Conclusion: The Board found that THE SEXTON, has "such a different meaning" from the mark SEXTO, and the marks are "so different" that first DuPont factor outweighs the other relevant factors. And so, the Board dismissed the opposition.

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TTABlogger comment: A good "THE" case to remember. How did you do?

Text Copyright John L. Welch 2025.