Tuesday, November 19, 2019

Fame Plays Dominant Role in OLD NAVY and BACCARAT Section 2(d) Opposition Victories

In two recent section 2(d) oppositions, the fame of the opposer's marked played a dominant role in the Board's Section 2(d) analysis. "Famous marks are accorded more protection precisely because they are more likely to be remembered and associated in the public mind that a weaker mark." Recot Inc. v. Becton, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000). In one of the two oppositions the involved marks were identical (BACCARAT), and in the other the goods were overlapping (clothing).

Baccarat S.A. v. Stefan H. Laux, Opposition No. 91227407 (November 8, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman). The Board sustained this opposition to registration of the mark BACCARAT for vodka, finding a likelihood of confusion with the identical mark for crystal and glassware.

The evidence established that opposer's predecessors began producing product in 1764 in the French town of Baccarat. Opposer established an import agency in New York in 1892. Its wares have been exhibited in numerous competitions, including World Fairs, and have won many awards. They are celebrated for their artistry, design, and historical value in art, fashion, and museum exhibits. Unsolicited media publicity demonstrated the renown of these products. Some dictionaries list BACCARAT as a trademark, and several encyclopedias include entries for BACCARAT glass.

Based on the combination of Opposer’s long use of the BACCARAT mark in the United States, commercial success, including a 13% market share, extensive licensing and partnerships with other products, and very favorable publicity (e.g., “one of the oldest and most preeminent luxury brands,” “eponymous crystal brand,” “the world’s finest crystal works,” etc.), we find that Opposer’s BACCARAT mark is famous for crystal glass products for purposes of the likelihood of confusion analysis.

Applicant Laux submitted the results of a survey purporting to rebut opposer's evidence, but the survey did not restrict the participants to purchasers of crystal products. In short, the survey "was testing for dilution fame rather than for likelihood of confusion." "T]he proper legal standard for evaluating the fame of a mark under the fifth DuPont factor is the class of customers and potential customers of a service or product, not the general public." Palm Bay Imports, Inc v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 73 USPQ2d 1689, 1695 (Fed. Cir. 2005). The choice of an overly-broad universe skewed the survey results and rendered them non-probative.

As for the involved goods, the Board observed that opposer has produced "hundreds" of different decanters, bottles, pitchers, and glasses for wine and spirits, including crystal vodka shot glasses and service sets. Moreover, it expanded its product line over the years to include light fixtures, candelabras, lamps, and jewelry. It has produced lines of glass bottles for brand name perfumes (e.g., Christian Dior) and bottles and decanters for such liquor products as Remy Martin, Courvoisier, and Grey Goose (vodka), and also for Evian bottled water.

In light of the fame of Opposer's mark and the expansion of its product line, the use of the identical mark in connection with vodka may well be perceived as another of Opposer’s commercial activities capitalizing on its BACCARAT mark. See Harley-Davidson Motor Co. v. Pierce Foods Corp., 231 USPQ 857, 862 (TTAB 1986). This leads us to consider what, in our view, is the crux of the likelihood of confusion issue in this case, namely, whether persons having knowledge of the long used and extensively promoted BACCARAT mark for crystal products, and having encountered the expansion of Opposer’s commercial activities as noted above, are apt to assume, erroneously, that BACCARAT vodka emanates from the same source.

The Board therefore found that the involved goods are related.

Finally, the Board noted that Applicant Laux's identification of goods includes no limitation as to channels of trade. Since opposer's products are sold on Amazon.com and through major retail stores such as Macys and Neiman Marcus, the Board found that Laux's vodka and opposer's crystal products are sold to some of the same classes of customers.

Concluding that confusion is likely as to the source of Applicant Laux's vodka, the Board sustained the opposition under Section 2(d), declining to reach opposer's Section 43(c) dilution and Section 2(a) false association claims.

Old Navy (Apparel), LLC v. Gregory C. Blissman, Opposition No. 91234507 (November 14, 2019) [not precedential] (Opinion by Judge Cynthia C. Lynch). The Board sustained this opposition to registration of the mark OLD IVY for various clothing items, finding a likelihood of confusion with the mark OLD NAVY, registered for overlapping clothing items.

Because the involved goods are in part identical, the Board presumed that those items travel in the same channels of trade to the same classes of consumers. Applicant Blissman admitted that the OLD NAVY mark is famous, and in any case opposer provided evidence of its sales in the billions of dollars, widespread advertising and promotion of the brand, and its status among the leading apparel retailers. Blissman's evidence of two third-party registrations for marks containing the word "OLD" in the clothing field (OLD COUNTRY and OLD GLORY), without evidence of use, was too minimal to prove that opposer's mark is weak. And so the Board found that OLD NAVY is famous for likelihood of confusion purposes.

Turning to the marks, the Board noted that when the involved goods are identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. Here, both marks begin with the word OLD and include a second two-syllable word ending in "VY." These common elements create a visual and aural similarity that outweigh the differences between the marks.

As to meaning or connotation, Applicant Blissman provided some limited evidence that, in the context of clothing and unlike the mark OLD NAVY, "old ivy" may point to a particular style, calling to mind the Ivy League, where one's wardrobe represents the affiliation with an elite university but at the same time involves "dressing down when the authority figure such as your father would normally dress up." Nonetheless, the Board found that "given the renown of OLD NAVY and the partially identical wording and similar overall structure of the marks . . . consumers likely could view OLD IVY as a variation of OLD NAVY, perhaps used to promote clothing with a more traditional style." The Board concluded that this first du Pont factor "weighs somewhat in favor of a likelihood of confusion."

In light of the fame of opposer's mark and the overlap in goods, the Board found the marks sufficiently similar under Section 2(d) and it sustained the opposition. It again declined to reach the opposer's dilution claim.

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TTABlog comment: How about OLD AIR FORCE or OLD MERCHANT MARINE for clothing? or BACKGAMMON for vodka?

Text Copyright John L. Welch 2019.


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