Tuesday, December 30, 2014

TTAB Test: Is BACCARA for Bottled Water Confusable With BACCARAT for Glassware?

Baccarat opposed an application to register the mark BACCARA in the Stylized form shown below, for "bottled water," claiming likelihood of confusion with the registered mark BACCARAT, in both standard character form and in the stylized form shown second below, for crystal and glassware. The Board found the BACCARAT mark to be famous, for likelihood of confusion purposes, for crystal and glassware. But what about the goods? Are they too close? Baccarat v. Northeast Distributors Inc., Opposition No. 91194574 (December 22, 2014) [not precedential]. 

Fame: Opposer began producing products in 1764 when King Louis XV authorized the Bishop of Metz to create a glassworks in the town of Baccarat, France. Opposer’s crystal wares have won numerous national and international awards and have garnered significant unsolicited media attention. Opposer’s products account for about 13% of the U.S. market. Its sales have amounted to $20-30 million per annum in the last decade, and advertising expenditures were about $3 million per year. The word BACCARAT is listed in some dictionaries as a trademark for fine crystal made in France. The Board concluded that BACCARAT is famous for crystal and glassware.

The marks: The Board found applicant’s mark to be similar in appearance to both of opposer’s marks. Neither applicant’s mark nor opposer’s stylized mark “is so highly stylized that, when considering the fame of Opposer’s marks, the special form displays do not serve to distinguish the overall visual similarities of the marks.” The Board must focus on the recollection of the average purchaser, who retains only a general impression of the marks. “This is especially true in this case where Opposer’s marks are famous and they are accorded a greater scope of protection or exclusivity of use.” A consumer may exercise less care in purchasing products under a famous mark.

“In reality … [w]hat happens is that a purchaser is less likely to perceive differences from a famous mark. All that is needed is a suggestion of such mark to trigger a mental perception that it is the famous mark. Purchasers simply do not take the time to study the marks and see the differences. Nor are they expected to.” B.V.D. Licensing Corp. v. Body Action Design, Inc., 6 USPQ2d at1722 (Nies, J., dissenting), quoted in Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 22 USPQ2d at 1456 (emphasis in the original).

With regard to sound, since the involved marks are not common words, there is no correct way to pronounce them. However, the marks are likely to have similar pronunciations. The connotations of the marks are the same. BACCARAT is a card game played in European casinos.The game is also spelled "baccara." In short, the marks have similar meanings and engender similar commercial impressions.

The goods: seven third-party registrations suggested that a single mark may be used as a source identifier for glassware and bottled water (e.g., SESAME STREET, SEATTLE'S BEST COFFEE). In addition, the evidence showed that Baccarat has extended its product line to include trophies, candlesticks, jewelry, light fixtures, bottles for perfume manufactures, and bottles for cognac sellers. It has collaborated with Evian in producing limited edition bottles of water. "In light of the fame of Opposer’s mark and the above-noted expansion of its product line, the use of a similar mark in connection with bottle water could be perceived as another of opposer’s commercial activities capitalizing on its BACCARAT mark."

In view of the common knowledge that the "licensing of commercial trademarks on ‘collateral products’ has become a part of everyday life,” and in view of the use of the BACCARAT mark in a growing line of collateral products, the Board found the goods of the parties to be related.

Because there are no limitations as to channels of trade or classes of customers in the involved applications or registrations, the Board presumed that the goods move in all normal trade channels for those goods, all classes of purchasers. And, as discussed above, the fame of the BACCARAT mark may make consumers less careful in their purchases.

Balancing the relevant du Pont factors, the Board found confusion likely and it sustained the opposition.

Read comments and post your comment here

TTABlog note: The sales and advertising figures for BACCARAT glassware are not astronomical, but could you argue that it's not a famous mark, at least in the Section 2(d) realm? But why would anyone think that Baccarat has expanded into bottled water?

Text Copyright John L. Welch 2014.


At 9:43 AM, Anonymous Anonymous said...

As I've never heard of "baccarat" apart from the card game, I have trouble believing that BACCARAT is famous for ANY purpose.

At 1:07 PM, Anonymous Michael Hughes said...

Alas, as usual, I look at the marks and the goods and apply common sense. This means that I come down on the opposite side of the TTAB. Also, as usual, the identity of the partie3s seems to be the deciding factor (which is almost never acknowledged in the opinions).


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