Wednesday, July 17, 2019

TTABlog Test: Are Packaged Sprits and Rum Related to Restaurant Services Under Section 2(d)?

The USPTO refused registration of the mark MAUNA KEA RUM COMPANY for "packaged spirits; packaged rum" [RUM COMPANY disclaimed], finding a likelihood of confusion with the registered word+design mark shown immediately below for restaurant services. Applicant contended on appeal that, as to the marks, the common term "Mauna Kea" has geographical significance and therefore is weak, and as to the goods/services, that restaurants do not serve bottled spirits to patrons. How do you think this came out? In re Mauna Kea Rum Company, LLC, Serial No. 87475384 (June 27, 2019) [not precedential] (Opinion by Judge Jonathan Hudis).

The Marks: The Board found the term MAUNA KEA to be the dominant element of the applied-for mark and the cited mark. It is the first term in applicant's mark and therefore the most prominent, particularly in light of the disclaimer of RUM COMPANY, and it is the term used in calling for registrant's services. The flower design in the cited mark is of little relevance since applicant is seeking a standard character registration

The Board recognized that MAUNA KEA has geographical significance, referring to a mountain in Hawaii, but even weak marks are entitled to protection against registration of a similar mark for related goods or services.

The first du Pont factor weighed in favor a finding of likely confusion.

The Goods and Services: Applicant contended that, because the relatedness of the involved goods and services is not evident, the examining attorney must show "something more" than the mere fact that the goods and services may be used together. The Board observed that the CAFC has held that "something more" must be shown to prove the relatedness of alcoholic beverages and restaurant services, In re Coors Brewing Co., 68 USPQ2d 1059, 1063 (Fed. Cir. 2003), and it "stands to reason" that the "something more" standard should also apply to packaged rum and spirits vis-a-vis restaurants services.

Examining Attorney Jacquelyn A. Jones submitted four articles noting the growing trend of restaurant-distilleries selling packaged spirits under the same name or brand as the restaurant portion of the business. She also provided website excerpts from 12 restaurant-distilleries that sell packaged spirits. The Board found this evidence sufficient to satisfy the "something more" requirement.

Thus the record evidence belied applicant's assertion that "even distillery restaurants do not serve bottled spirits to patrons." The evidence showed that at least one trade channel for applicant's products is through restaurants. And so the Board concluded that the second and third du Pont factors weighed against applicant.

Third-Party Marks: Applicant argued that MAUNA KEA is registered for bakery goods, which are items sold in restaurants, and so there is no reason to give the cited mark a broad scope of protection beyond restaurant services. The Board, however, noted the lack of evidence that the bakery goods mark is actually in use, and further that a single registration for goods unrelated to those at issue does not weaken the cited mark. Moreover, prior decisions by examining attorneys in other cases do not bind the Board. The Board concluded that this sixth du Pont factor was neutral.

Customer Sophistication: Applicant contended that customers for the involved goods and services are "sophisticated and discriminating" and make careful purchasing decisions. No evidence supported that argument, however, and in any event the Board must consider both the discriminating and the ordinary customers for the involved goods and services.

Conclusion: Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlog comment: So if you are trying to clear a mark for packaged liquor, be sure to check restaurant names.

Text Copyright John L. Welch 2019.


At 2:38 PM, Blogger Gene Bolmarcich, Esq. said...

What happened to the 'something more' test? In Coors it was not enough to show that a few restaurants brewed their own beer. Evidence that 12 restaurants sold spirits was enough something more? Why even call it by a special name when it's just the test for relatedness and the same burden on the examining attorney as with any other goods?


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