Wednesday, January 28, 2009

"MERCURY" for Vodka and Distilled Spirits Likely to Confuse: TTAB Affirms 2(d) Refusal

It's time for another WYHA? case. Suppose your application to register MERCURY for vodka is refused registration under Section 2(d) in view of the identical mark registered for distilled spirits. Would You Have Appealed? Applicant Mercury-2 LTD did, and the result must have been dispiriting. In re Mercury-2 LTD, Serial No. 78729582 (January 12, 2009) [not precedential].

Examining Attorney Christina M. Sobral stirred the PTO's drink, submitting evidence that vokda is a type of distilled spirit: e.g., a dictionary definition of "vodka" as "an unaged, colorless, distilled spirit, originally made in Russia." Thus facing marks that are identical and goods that overlap, Applicant was left with little to argue.

Nonetheless, it came up with a few lame attacks on the refusal. First, it argued that "the differences in trade dress will avoid confusion, because the bottle it uses is different from the bottle registrant uses." Of course, in its 2(d) analysis, the Board must look at the applied-for mark and the registered mark, not on what the current trade dress may be.

Next, Applicant asserted that the registrant is actually selling gin, not vodka. [See photo above - ed.] That real-world argument loses every time:

Section 7(b) of the Statute provides, in part, that a certificate of registration of a mark is prima facie evidence of the registrant’s exclusive right to use the mark on the goods specified in the registration. Thus, the question of likelihood of confusion must be determined based on an analysis of the mark as applied to the goods and/or services recited in applicant’s application vis-à-vis the goods and/or services recited in the cited registration, rather than what the evidence shows the goods and/or services to be.

Finally, Applicant amusingly claimed that "the term MERCURY is diluted for alcoholic beverages," but the Board found no properly-submitted evidence in support of that contention.

Therefore, with the marks literally identical and the goods legally identical, the Board affirmed the 2(d) refusal.

Text Copyright John L. Welch 2009.


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