Friday, November 16, 2007

Finding Cheese and Olives Related, TTAB Affirms 2(d) Refusal of "NAPOLEON BRIE"

The mark NAPOLEON BRIE for cheese [BRIE disclaimed] met its Waterloo not in Iowa or Illinois, but at the TTAB. The Board, relying primarily on third-party registration evidence to show the relatedness of the goods, affirmed a Section 2(d) refusal in view of the registered mark NAPOLEON for "edible oils, namely, salad oil, olive oil processed vegetables, namely, cocktail onions, baby corn, stir-fry vegetables, hearts of palm, artichokes; processed seafood, namely, anchovies, oysters, mussels and sardines; and processed olives, vinegar, capers and pasta." In re, Inc., Serial Nos. 78711311 and 78730624 (October 29, 2007) [not precedential].

Applicant sought to register the mark NAPOLEON BRIE in both standard character form and in the design form shown immediately above. Examining Attorney Tasneem Hussain argued that the word NAPOLEON dominates all of the marks since the word "BRIE" is disclaimed, and that the depiction of Napoleon on a horse reinforces that dominance. As to the goods, the Examining Attorney submitted ten third-party registrations "for marks for goods that include cheese and many or all of the registrant’s identified goods," as well as two websites that provide recipes using cheese and one or more of Registrant's goods, and a third website offering "gift tins, with the featured tin including 'brie cheese' and 'gourmet olives.'"

Applicant feebly argued that purchasers of brie are "sophisticated" [although it failed to prove such sophistication, and furthermore ignored that its application is not limited to brie], that the goods would not be sold in proximity even if sold in the same store, and that the word BRIE distinguishes the marks.

The Board agreed with the Examining Attorney, finding the word marks to be substantially similar, and the word mark NAPOLEON and the applied-for design mark to be "more similar than dissimilar." As to the goods, the third-party registrations "have some probative value to the extent that they may serve to suggest that such goods or services are of a type which may emanate from a single source. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988)."

"Additionally, the recipes in evidence show that several of the goods in the cited registrations are ingredients which can be used together with cheese in cooking; and the website offering gift tins shows that brie cheese and olives are sold together and we assume they may be served together."

Finally, the Board found that the involved goods are likely to be purchased in the same retail outlets "by purchasers encompassing all levels of sophistication."

Weighing all the relevant du Pont factors, the Board found confusion likely, and therefore affirmed the refusal to register.

TTABlog comment: Ok, I have many times railed against the use of third-party registration evidence to prove relatedness of goods. Couldn't the Examining Attorney have found a few websites showing the relevant goods actually being offered under the same mark? And what's the value of recipes? Eggs and peanut butter may be used in the same recipe (for peanut butter cookies?), so does that make them related for Section 2(d) purposes? And so what if cheese and olives are found in the same "gift tin?" The Board even noted that it was unclear that the cheese and the olives in the tin bore the same mark. No wonder Napoleon is depicted rearing up on his high horse. I don't blame him.

Query: what if the design mark had depicted Napoleon Dynamite instead of Napoleon Bonaparte?

Text Copyright John L. Welch 2007.


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