Tuesday, February 06, 2018

TTAB Test: Are Cigars Related to Alcoholic Beverages for Section 2(d) Purposes?

The USPTO refused registration of the mark TERNURA for cigars, finding it likely to cause confusion with the identical mark registered for "liquor; tequila; vodka; wines."Applicant contended that, under applicable precedent, tobacco and alcohol are not considered "related" unless the prior registered mark is well-known or famous and the applicant is seeking to exploit the registered mark. Since the cited mark is not well-known, applicant asserted, confusion is not likely. How do you think this came out? In re El Galan, Inc., Serial No. 86961428 (February 1, 2018) [not precedential] (Opinion by Judge George C. Pologeorgis).

Not surprisingly, the Board found the marks to be identical in sound, appearance, meaning (Spanish for "kindness" or "tenderness"), and commercial impression.

As to the goods, Internet evidence submitted by Examining Attorney Clare Cahill showed that third parties produce and offer for sale cigars and alcoholic beverages under the same mark. The examining attorney also provided evidence that cigars and alcoholic beverages are complementary in that they are consumed together. Prior Board decisions found JOHNNY WALKER for cigars confusable with the same mark for whiskey, and CASCADE for whiskey confusable with the same mark for cigarettes.

Applicant relied on Schenley Distillers, Inc. v. Gen. Cigar, 166  USPQ 142, 143 (CCPA 1970), for the proposition that, because the cited mark is not well-known or famous and is not marketed in a way to gain recognition, confusion is not likely here. The Board first noted that the fame of a prior mark is generally considered only in an inter partes context. Moreover, here the evidence suggests that "alcohol industry practice has evolved since the issuance of the Schenley decision . . . to the extents that in the current marketplace it is not an uncommon industry practice for distillers and  vintners, and not just those with 'a famous name or trademark,' . . . to produce and offer both cigars and alcoholic beverages under the same mark."

To be clear, we are not finding that cigars and alcoholic beverages in general are related based upon some abstract similarity between alcohol and tobacco. The record in this case establishes that cigars and alcoholic beverages are not only produced and offered for sale by third parties under the identical mark, but they are also complementary products that are marketed together for simultaneous consumption. As such, when both products are offered under the identical, arbitrary trademark, consumers are likely to believe that the goods originate from the same source.

The evidence further established that alcoholic beverages and cigars travel in the same channels of trade, such as liquor stores and online marketplace retailers. In fact they are complementary products that are marketed together for simultaneous consumption.

As to the conditions of purchase, the items identified in the application and cited registration include inexpensive products purchased by the public at large. Even assuming that the prospective purchasers are knowledgeable and sophisticated, they are not immune from source confusion. In any case, likelihood of confusion must be assessed from the standpoint of the least sophisticated consumer.

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

Read comments and post your comment here.

TTABlog comment: So all alcoholic beverages are related to each other, and also to all tobacco products?

Text Copyright John L. Welch 2018.


At 11:50 AM, Anonymous Anonymous said...

This is the type of case that really should be precedential.

At 1:05 PM, Anonymous Paul Reidl said...

I guess the applicant's case went up in smoke. Seriously, alcohol beverage suppliers also make cigars? Ridiculous.

At 1:41 PM, Anonymous Anonymous said...

Interesting, considering that the Board found that cigars and wine "are sold in the same channels of trade to the same purchasers but [this] does not establish a relationship between the goods" in Joseph Phelps Vineyards v. Fairmont Holdings, decided on July 6, 2015. The concurrence in the CAFC decision vacating that decision on other grounds takes issue with the Board's relatedness analysis. Judge Newman takes note of use together, complementarity, and simultaneous consumption as arguments for relatedness.

Are alcoholic beverages related to cigars? Before the TTAB, sometimes.

At 2:06 PM, Anonymous Anonymous said...

It seems like the Board is overruling or at least ignoring precedent, so why isn't this precedential?

At 3:10 PM, Anonymous Anonymous said...

There wasn't much evidence on this particular issue, but the online marketplaces point should have been discounted. Many online retailers have been operating illegally since their existence by shipping alcohol in interstate commerce without the proper permits. IL and NY cracked down on wineries doing this a few years ago. Mississippi just got a bunch of online retailers to illegally ship them alcohol and they may be pursuing an enforcement action as a result. An illegal trade channel shouldn't count for these purposes.

At 10:34 AM, Anonymous Frank Herrera said...

This was my case. It's maddening. Worse still if I advise client to appeal and he loses, we must pay attorneys fees to USPTO.


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