TTABlog Test: Is "1849 BOURBON" for Distilled Spirits Confusable With "1849" for Wine?

The USPTO refused to register the mark 1849 BOURBON for “distilled spirits" [BOURBON disclaimed], finding confusion likely with the registered mark 1849 for "alcoholic beverages, namely, wine and sparkling wine." Applicant Trinity River Distillery pointed to statements made by the registrant during prosecution of the application that yielded the cited registration: that marks incorporating 1849 can co-exist for "different forms of adult beverages," and that confusion was unlikely with 1849 for "beer." How do you think this appeal came out? In re Trinity River Distillery, LLC, Serial No. 98170756 (October 10, 2025) [not precedential] (Opinion by Judge Wendy B. Cohen).

The Board began by addressing the impact of the prior statement by the registrant. "Applicant is essentially asserting that Registrant’s statements are file wrapper estoppel; however, file wrapper estoppel is not applicable in trademark cases nor are the statements about a third-party registration not at issue here an admission against interest." See, e.g., Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 929 (CCPA 1978).

The Goods: There is no per se rule that all alcoholic beverages are related. [It just turns out that way - ed.]. Examining Attorney Christian Martin submitted evidence of ten third-party websites that offer both distilled spirits and wine under the same or very similar marks, as well as more than 35 third-party use-based registrations for both distilled spirits and wine under the same mark. "The third-party websites and registrations demonstrate that distilled spirits and wines are . . . related."

Trinity attempted to distinguish its trade channels and consumers by arguing that "while both distilled spirits and wine may end up in the same store, the trade channels are distinct as the manufacture and sale of alcoholic beverages are regulated by law" and "based on the intrinsic nature of alcoholic beverages wherein products are always delineated by sections and not sold side-by-side (e.g., wine sections are separate from distilled spirit sections)." The Board was unimpressed. "Because the identifications of goods contain no limitations, Applicant’s and Registrant’s goods are presumed to move in all ordinary channels of trade and would be available to all classes of purchasers." The evidence showed that distilled spirits and registrant’s wines are advertised on the same third-party websites to the same consumers, and furthermore they may be available in other channels of trade such as bars and restaurants.

Strength of the Cited Mark: Trinity provided no evidence of third-party use of "1849" for the relevant goods, and offered a mere two registrations, for vastly different marks: OLD FITZGERALD’S 1849 and COINTREAU NOIR A BLEND OF ORANGE LIQUEUR & COGNAC IMPORTER LIQUEUR PRODUCT OF FRANCE ANGERS-FRANCE E. COINTREAU 1849. Trinity thus failed to prove that the cited mark is conceptually or commercial weak, and the Board concluded that the sixth DuPont factor was neutral.

The Marks: Trinity primarily contended that its mark is distinct from the 1849 mark because its use of "'1849' is [in] reference to the year of Texas independence and the establishment of Fort Worth, Texas (Applicant’s home location); the owner of the 1849 Registration is based in California 'and is inspired by the ‘Gold Rush’ of 1849 which was pervasive in California.'" Further, it argued that use of the involved marks is distinct as evidenced by their bottle labels: "every use of ‘1849’ by [Registrant] is accompanied by ‘Wine’ which connotes a single product and no cross-use for different products." The Board was unmoved.

The Board noted that it is "equally as likely that consumers would consider 1849 as the date when the goods were first offered or when the company was founded or that if consumers attribute Applicant’s suggested meaning of 1849 to its goods that consumers would attribute the same meaning to Registrant’s goods." As to the product labels, that argument was simply irrelevant, since the Board considers only the marks and goods as presented in the involved application and registration, regardless of real-world usage.

Not surprisingly, the Board found that "1849" is the dominant element of Trinity's mark: "lead words are their dominant portion and are likely to make the greatest impression on consumers." "The non-source identifying nature of BOURBON and the disclaimer thereof constitutes a rational reason for giving the term less weight in our analysis." The Board observed that "[c]onsumers familiar with Registrant’s mark, 1849, who encounter Applicant’s mark, 1849 BOURBON, could perceive it as indicating that the makers of 1849 have added a distilled spirit or bourbon to their product line."

Other Factors: The Board rejected Trinity's "sophisticated consumers" argument, both for lack of evidentiary support and because the subject application and cited registration contain no limitations as to price or classes of consumers. As to lack of evidence of actual confusion, the Board noted that such an argument carries little weight in an ex parte context since the registrant has no opportunity to be heard. Moreover, there was no evidence that a reasonable opportunity for confusion had occurred.

Conclusion: The Board affirmed the refusal.

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TTABlogger comment: This seems like a good case for applying file wrapper estoppel. Why not?

Text Copyright John L. Welch 2025.