Tuesday, December 10, 2013

WYHA? TTAB Finds WINERY DOGS Confusable With WINE DOGS for Books About Dogs

Barbara Whatley sought to register the mark WINE DOGS for printed matter, including "booklets featuring dogs found on wineries," but she was barking up the wrong grapevine. Examining Attorney Ingrid C. Eulin refused registration on the ground of likelihood of confusion with the registered mark WINE DOGS for printed matter, including "booklets ... featuring dogs that live on wineries" [DOGS disclaimed]. Would You Have Appealed? In re Whatley, Serial No. 85299521 (November 29, 2013) [not precedential].

The Board, in an opinion that barely reached seven pages, found the goods to be, in part, identical. Those goods are presumed to travel in the same channels of trade to the same classes of consumers. Applicant Whatley argued that the products offered by registrant, an Australian company, "are primarily available online," but that dog would not hunt, since there is no such restriction in the cited registration. It must be presumed that registrant's goods are sold through all normal channels, including "book stores throughout the Pacific Northwest," where applicant primarily markets her goods.

Turning to the marks, the Board observed once again that when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. Applicant Whatley contended that the marks are distinguishable because the "word 'winery' brings to mind vineyards, tasting rooms and wine barrels” while "the word 'wine' connotes
the alcohol beverage itself." The Board squashed that argument: "To the contrary, images of vineyards, tasting rooms and wine barrels, are evocative of images of wine." In short, "[b]oth marks
suggest that the subject matter of a WINE(RY) DOGS book involves dogs that are symbolized by their connection to a winery."

Continuing her futile romp through the duPont factors, Applicant asserted that there were no instances of actual confusion. The Board reined in that argument by pointing out that there was no evidence of the nature and extent of the use of the involved marks, that actual confusion evidence is unnecessary to a finding of likely confusion, and that applicant's assertion is of little probative value in an ex parte context, where the registrant has no opportunity to weigh in on the issue.

With dogged determination, applicant Whately contended that purchasers of her book would exercise care, because the cost of the book is “about $38 due to the fact that it is a hardcover, coffee table book." The Board muzzled that argument by pointing out that there are no limitations in the application or cited registration as to the price of the goods, that the goods may be purchased by less sophisticated buyers who will exercise only ordinary care, that registrant's goods apparently are offered at similar price points, and that in any case even sophisticated consumers may be confused when encountering substantially similar marks for identical goods.

And so the Board affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog note: Is WINE DOGS generic for a certain type of book?

Text Copyright John L. Welch 2013.


At 9:49 AM, Anonymous Anonymous said...

This is a WYHA for sure. I'm curious why in the WINE DOGS application, applicant had to disclaim WINE but not DOGS. Seems to me that DOGS is more descriptive of the goods than WINE.

At 12:31 PM, Anonymous Roberto Ledesma said...

No dog in this fight ... maintenance docs due on cited registration ... should just re-file


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