TTABlog Test: Is BLACK SWAN for Vodka Confusable with BLACK SWAN for Wine?

[This is a guest blog post authored by Karen Gover, an associate in the litigation department at Wolf Greenfield]. The USPTO refused to register the proposed mark BLACK SWAN in standard characters and in the word-and-design form shown below [VODKA disclaimed], both for “vodka.” It found confusion likely with the registered mark BLACK SWAN (in standard characters), for “wines” because the word marks are identical, and vodka and wine are closely related, being commonly sold in the same trade channels under the same mark. Examining Attorney Linda Lavache also noted that vodka is sometimes made from wine grapes, and that vodka and wine are mixed in some cocktails. Applicant Robert Sulic pointed out that just because tomato juice and celery are essential ingredients in a Bloody Mary, and vodka and milk are mixed in a White Russian, does not make those ingredients intrinsically related. Applicant argued that the Board’s precedential decision in In re White Rock Distilleries Inc., 92 USPQ2d 1282 (TTAB 2009), in which it found that vodka and wine were unrelated, should govern. How do you think this came out? In re Robert Sulic, Serial Nos. 79375327 & 79375609 (January 7, 2025) [not precedential] (Opinion by Judge Thomas L. Casagrande).

The Board first compared the marks in their entireties. As to the standard character marks, because they are identical and both are arbitrary, “the first Dupont factor weighs heavily against the applicant.” The Board disagreed with Applicant’s argument that the commercial impression of the word-and-design mark is dominated by the design, and pointed out that the image of a black swan simply strengthened the impact of the literal terms BLACK SWAN, and that the remaining elements (the castle and landscape) do little, “serving simply as a backdrop to the swan.”

Next, the Board conducted an analysis of the similarity or dissimilarity of the goods: vodka and wine. While it noted that both are alcoholic beverages, that is not itself dispositive because the category “alcoholic beverages” is a broad one. However, the Board pointed to the evidence that the Examining Attorney placed into the record that wines and vodka are used in several mixed drinks. It batted away Applicant’s reductio ad absurdum argument regarding the non-related ingredients of Bloody Marys and White Russians as merely “rhetorical.”

The Board also considered the Examining Attorney’s evidence that over a dozen companies sell both wine and vodka under one mark, and the eighteen third-party registrations to use the same mark for both types of goods, as indicative that consumers are likely to perceive vodka and wine as related. The Board found that the third-party evidence alone “is more than sufficient to show that vodka and wine are related in a manner that bears on source identification.” Third-party evidence showing that consumers can buy vodka and wine via the websites of companies that make both also contributed to the Board’s finding that “the trade channels overlap at least to that extent.”

The Applicant urged the Board to follow its prior decision in White Rock Distilleries, but to no avail. The Board agreed with the Examining Attorney that its prior finding as to the unrelatedness of vodka and wine does not control:

Market circumstances are not static. They change and evolve over time. In addition, the USPTO “is required to examine all trademark applications for compliance with each and every eligibility requirement ….” In re Cordua Rests., Inc., 823 F.3d 594, 600 (Fed. Cir. 2016). Together these two principles mean that no prior decision’s factfinding controls a case with different facts and evidence.

Taking all of the relevant factors together—identity of the word marks; the word-and-design mark being “very similar”; the consumer view of vodka and wine as related; and the overlapping trade channels, the Board had “no difficulty” concluding that confusion was likely, and affirmed both refusals.

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TTABlogger comment: Is this a WYHA?

Text Copyright Karen Gover 2026.