Wednesday, January 03, 2018

TTAB Dismisses "DONQ" Opposition, Finding Applicant's Goods and Services Unrelated to "DON Q" Rum

The Board dismissed this opposition to registration of the mark DONQ for a variety of food and non-alcoholic beverages in Classes 29, 30 and 32, and for food and beverage services, finding that opposer failed to prove the relatedness of applicant's goods and services to the registered marks DON Q and DONQ COCO for rum [COCO disclaimed] for Section 2(d) purposes, and failed to prove fame for dilution purposes. Destileria Serralles, Inc. v. Kabushiki Kaisha Donq d/b/a Donq Co., Ltd., Opposition No. 91204129 (December 28, 2017) [not precedential] (Opinion by Judge George C. Pologeorgis)

Likelihood of Confusion: The Board found that opposer's DON Q mark and Applicant's DONQ mark are, at a minimum, similar in appearance, connotation, and commercial impression, regardless of how a consumer may pronounce the marks. It also found that opposer's DONQ COCO mark similar to applicant's mark in appearance, sound, commercial impression, and connotation.

Fame of Don Q: DONQ rum is the number one selling spirit in Puerto Rico and one of the top ten rums sold nationally. Opposer generated significant nationwide sales, advertised nationally, and spent significant amounts on advertising. However, opposer failed to submit any evidence as to how its sales and advertising figures compare to others in the field, or to provide any context for its market share. The Board concluded that the evidence fell short of establishing that the DON Q mark resides on the "very strong" end of the spectrum for likelihood of confusion purposes. The mark has achieved a "marginal degree of fame," and therefore the 5th du Pont factor was deemed neutral. [I think this is an incorrect application of the 5th factor, which should measure "strength," not "fame." If a mark has achieved a moderate degree of fame, doesn't that mean it has some strength? - ed.].

The Goods and Services: Opposer relied on third-party registrations to show the relatedness of the involved goods and services. However, the Board noted that most of the third-party registrations are owned by "well-recognized distillers of alcohol" (e.g., Captain Morgan, Jack Daniels, Jim Beam).

The fact that distillers of major alcohol brands have lent their well-recognized marks to a wide range of products does not mean that all of the products they sell are related. We further note that an overwhelming majority of the third-party registrations are for goods and services unrelated to those identified in Applicant’s involved application.

Therefore, the third-party registrations are entitled to "diminished probative value." Similarly, Internet evidence of third-party use by these well-known distillers has limited probative value.

Moreover, opposer failed to show that lesser known distillers in a more limited alcoholic beverage field would normally expand to the goods and services identified by applicant.

In sum, the Board concluded, consumers are not likely to perceive a common source for the involved goods and services, and so the Board dismissed the Section 2(d) claim.

As to opposer's dilution, claim, since opposer failed to prove fame for Section 2(d) purposes, it perforce could not meet the higher standard for dilution fame.

Read comments and post your comment here.

TTABlog comment: The 5th du Pont factor should be "strength" of the mark, not "fame" of the mark. It seems to me that the Board here treated likelihood-of-confusion fame as an all-or-nothing proposition. The recent CAFC decision in Joseph Phelps said that was improper.

Text Copyright John L. Welch 2018.


At 7:38 AM, Anonymous Bob Frank said...

Since at least the passage of the TDRA the TTAB (and the courts) have consistently required sales and advertising statistics to be presented in CONTEXT to competitors. Failing to do so almost always results in the statistics being discounted. Yes, your client may spend $1 million a year on advertising but if the #1 competitor spends $10 million annually and 40 competitors spend more than your client on advertising then your client's advertising expenditures are not that great. CONTEXT folks. It is important.

At 6:10 PM, Anonymous Anonymous said...

Can examiner's take note?

- not all products are related to each other.

At 5:24 PM, Anonymous John Egbert said...

I have never had any luck with presenting sales and advertising stats to the Board. In just about every case, the Board has disregarded or discounted this information. "Context" is very difficult to prove. We seldom are privy to the sales figures of a competitor or the market in general.

John Egbert

At 9:05 PM, Anonymous Paul Reidl said...

This decision give me great hope. As someone who has a lot of alcohol beverage clients, I cannot tell you how many times I have argued with Examining Attorneys who cite 5 small wineries/breweries/whatever in remote places who use their mark on all kinds of crap to argue that consumers, generally throughout the USA, will see the goods as emanating from the same source. If the TTAB says that the Big Guys using their marks on other goods does not establish relatedness, then surely a handful of gnats would not establish that also.


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