Wednesday, June 14, 2017

MIROSA for Beer Confusable with MIRASSOU, a Strong Mark for Wine, Says TTAB

The Board granted a petition for cancellation of a registration for the mark MIROSA for "beer, ale, lager, stout, porter, shandy," finding a likelihood of confusion with the registered mark MIRASSOU for wine. Noting Professor McCarthy's observation that only the CAFC uses the term "fame" instead of "strength" for the 5th du Pont factor (See the CAFC's the recent INSIGNIA decision [TTABlogged here]), the Board found MIRASSOU to be a very well-known mark of considerable strength. E. & J. Gallo Winery v. Wade, Cancellation No. 92063116 (June 7, 2017) [not precedential] (Opinion by Judge Quinn).

The Goods: The Board observed that it has found beer and wine to be related in prior decisions. In fact, the parties did not cite a single precedential decision holding beer and wine to be unrelated for likelihood of confusion purposes. Website evidence and third-party registrations confirmed the relatedness of these products.

The Board presumed that the goods travel in the same trade channels, including restaurants, bars, liquor stores, and convenience stores. In any case, the evidence confirmed that presumption. The goods are also sold to the same classes of purchasers, namely, ordinary consumers. The identifications of goods encompass inexpensive beer and wine subject to impulse purchases.

The Marks: The marks are "somewhat similar" in appearance. As to sound, as suggested by Petitioner, the marks may be similarly pronounced as “MË-RÖ-SÁ and MË-RÖ-SOO,” respectively. Moreover, any minor differences in sound may not be noticed when the beer and wine are ordered by name in a noisy bar or restaurant. Moreover, the consumer may never see the label for the beer if it is served in a glass from a keg, or the wine label if the wine is served from a bottle at the bar. Neither mark has any recognized meaning. Given the similarities in sound and appearance, the Board found that the marks engender overall commercial impressions that are similar.

In sum, the Board found the similarity of the marks to be a factor in petitioner's favor.

Strength of Opposer's Mark: The Board gave a nod to the CAFC's INSIGNIA decision, Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, Appeal No. 2016-1089 (Fed. Cir. May 24, 2017) [precedential], which stated that fame under Section 2(d) is not "an all-or-nothing" measure but rather "varies along a spectrum from very strong to very weak." The Board quickly turned to discuss the "strength" of the mark (not the "fame" of the mark), since that's what the courts (other than the CAFC) consider. "The Federal Circuit uses the term 'fame' instead of 'strength.'" McCarthy on Trademarks and Unfair Competition, Sections 11:73 and 24:49 (4th ed. June 2017). [In my view, "fame" is an all-or-nothing proposition, but strength varies along a spectrum, with fame at one end - ed.]

Petitioner provided evidence that the mark MIRASSOU is very well known in the wine market. The mark has been in continuous use since 1940, and MIRASSOU brand wine is one of the top sellers in this country. Tens of millions of bottle have been sold since 2009, with annual sales in the eight figures. Since 2010, advertising expenditures have been in the tens of millions of dollars.

There was no evidence of third-party use of similar marks for similar goods. "In sum, ... .the record established that Petitioner's mark MIRRASOU for wine is very well known, and is a mark of considerable strength. This factor 'warrants reasonable weight, among the totality of circumstances' in favor of a finding of likelihood of confusion." (quoting the INSIGNIA case).

Conclusion: Confusion is likely, and so the Board ruled in favor of petitioner.

Read comments and post your comment here.

TTABlog comment: Read Professor McCarthy's comment on the CAFC's INSIGNIA ruling here. Personally, I don't think the marks are that close.

Text Copyright John L. Welch 2017.


At 9:35 AM, Anonymous Anonymous said...

Seems unfair for the Board to routinely say "no per se rule beer & wine are related," but then criticize not citing to cases finding goods unrelated.

At 11:37 AM, Anonymous Anonymous said...

What was Gallo thinking? I do a lot of work in the alcohol beverage sector and my clients are constantly bedeviled by the beer-wine relatedness argument. I have even had consents rejected. The Examining Attorneys trot out a handful of microbreweries in remote locations that also make wine and assert that this is substantial evidence that this happens all over the country. No one in the industry believes this because they treat beer and wine differently. This just can't be reconciled with In re Coors. So what does Gallo do? It makes the argument that the industry is fighting! And over a mark that is of dubious similarity for one of their minor brands. Gallo used to be known for their strategic thinking, but this will come back to bite them as a self-inflicted wound. Incredible and unnecessary.

At 12:32 PM, Anonymous Anonymous said...

Interesting that the heading of the TTAB decision erroneously says "Opposition No. 92063116." The case is actually a cancellation action, as the body of the decision makes clear.


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