Wednesday, January 21, 2015

TTAB Test: Is Wine Related to Alcohol/Fruit Juice Beverages?

Here we go again. Vini, Vidi, non Vici. The USPTO refused registration of the mark MASQUERADE for "sparkling wines; wines," finding the mark confusingly similar to the registered mark MASCARADE for "mixed beverage containing alcohol and fruit juice." Applicant appealed. Examining Attorney Rebecca Smith relied on a number of third-party registrations the covered wine and other alcoholic beverages, but applicant pointed out the none of the registrations included the specific goods identified in the cited registration. How do you think this came out? In re 8 Vini, Inc., Serial No. 85857391 (January 16, 2015) [not precedential].

Applicant urged that MASCARADE is a French word that translates into English as "farce," while MASQUERADE is an English word meaning, roughly, a party where people where masks. The Board, however, refused to apply the doctrine of foreign equivalents because the relevant consumers were not likely to translate MASCARADE, and also because it was not sufficiently clear that the word would be translated as applicant contended.

Instead, the Board applied its "traditional" approach to consideration of the marks. It found that the marks have similar spellings, that the first portion of the marks sounds the same, that the meanings will be perceived as the same since consumers will see MASCARADE as a variant of MASQUERADE, and therefore that the marks are similar in overall commercial impression.

But what about the goods? The USPTO's evidence included 14 use-based registrations that included both wine and alcoholic beverages containing fruit, although none of the registrations included the specific goods of the cited registration. Applicant argued that "mixed beverages" or mixed drinks are beverages that are typically prepared by a bartender and sold on the premise: i.e., they are "mixed," and not just a combination of alcohol and fruit juice. The Board pointed out, however, that nothing in the cited registration required that the beverages be mixed by a bartender, nor did any record evidence support such an implication.

Several websites and a Wikipedia entry indicated that cocktails may be mixed with wine, and therefore the beverages of the registration, containing "alcohol and fruit juice," may include wine and fruit or fruit juice. And the Board noted that various alcoholic beverages have been found to be related for the purposes of the likelihood of confusion analysis. [E.g., beer and ale, tequila and malt liquor, beer and wine, scotch whiskey and gin and vodka, brandy and beer, cola flavored liqueur and brandy, fruit juice and wine].

Based on the nature of the goods, the third-party registrations and Internet evidence before us, we conclude that Applicant’s wines are related to Registrant’s mixed beverage containing alcohol and fruit juice, such goods being alcoholic beverages that may emanate, as shown by the evidence, from the same source and under the same mark. Further, the evidence shows that wine, as an alcoholic beverage, may be combined with fruit and/or fruit juice to make cocktails.

The Board presumed that the respective goods would travel in all normal channels of trade, including the same liquor stores, bars, or restaurants, to the same ordinary consumers.

The Board therefore concluded that confusion is likely, and it affirmed the refusal.

Read comments and post your comment here

TTABlog note: Well, do you agree with the Board? Are you convinced by the opinion?

Text Copyright John L. Welch 2015.


At 1:03 PM, Anonymous Michael Hughes said...

This is just another of the TTAB decisions which shows a strong bias against registering trademarks which are even very remotely likely to cause confusion. Why there is a tendency to be refusal biased is unclear, but the trend is obvious.

At 2:11 PM, Anonymous Anonymous said...

I was about to go about as nuts about this case as beer v. wine.

I thought this was "fruit juice" in Class 32 and "wine" in 33.

However, upon reading decision these were both in Class 33 for "alcoholic beverage" related goods.

I can live with that as being related.

At 3:07 PM, Blogger Bill & Jennifer Kimmerly said...

I own Masquerade Wine Company in Bellingham, WA, founded in 2004. In 2006 we filed for the same trademark and were turned down for the same reason. If at any point the agency softens its stance, we fully intend to exert our first mover status to claim the mark. Additionally I will note that we issued 'cease & desist' instructions to 8Vini for using Masquerade on their wines when we had previously been using it since 2004, demonstrating a decade of first mover status, and will pursue further if they do not comply.


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