Wednesday, May 13, 2020

TTABlog Test: Is LORD LION WINERY for Wine Confusable With LORD LYON for Beer?

The USPTO refused to register the mark LORD LION WINERY, in standard character form, for "wine" [WINERY disclaimed] on the ground of likelihood of confusion with the registered mark LORD LYON for "beer." Applicant argued that "lion" and "Lyon" have different meanings and are distinguishable, and it pointed to various data and evidence in maintaining that "it is unusual for wine and beer to be produced by the same source under the same mark," How do you thing this came out? In re Lord Lion Winery LLC, Serial No. 87808799 (April 11, 2020) [not precedential] (Opinion by Judge Michael B. Adlin).

The Marks: The Board observed that the marks are almost identical in sound because LORD LION and LORD LYON would be pronounced the same. The disclaimed word WINERY in applicant’s mark "is relatively insignificant in our analysis because LORD LION comes first." As Examining Attorney Lakeisha S. Munn Lewis pointed out, the close similarity in sound is particularly important because wine and beer "are often offered and requested orally, such as in a bar or restaurant." Moreover, since consumers often shorten marks for convenience, "servers or customers are at least as likely to refer to one of Applicant’s specific wines as LORD LION, which sounds identical to LORD LYON."

Applicant argued that "Lyon" is "unmistakably a surname" that “most consumers would associate [it] with Scotland,” perhaps specifically with “the Court of Lord Lyon,” a “standing court in Scotland that regulates coats of arms and heraldry.” In contrast, "lion" means "the apex predator whose natural habitat is almost exclusively the grasslands and savannahs of Africa." The Board did not disagree that the two words may have different meanings.

The Board observerd, however, that "this difference in meaning is only part of the story," noting that the evidence showed that "Lion" may also be a surname in the United States. Moreover, LION is preceded by LORD, it invokes the commercial impression of a person, not an animal as the applicant suggests. "Some consumers, especially those hearing the marks or not perceiving their slight difference in appearance, would believe the marks have the exact same meaning."

The Board concluded that the marks are "quite similar." "To the extent they convey different meanings or commercial impressions, these differences could only be understood by those viewing the marks closely and carefully."

The Goods: Internet evidence showed that many third parties use the same mark for wine and beer. A Vine Pair article entitled "Grape and Grain: Nine Winemakers That Are Also Brewing Craft Beer” states this as a trend: increasingly "lines are being crossed, and so too are loyalties to any one beverage." Furthermore, a large number of use-based third-party registrations demonstrate that the same marks are registered in connection with both beer and wine. The Board found that this evidence proves that beer and wine are related, a finding "consistent with the records developed in other cases." The evidence also showed that beer and wine travel in the same trade channels to the same consumers.

The Board was unmoved by applicant's attacks on the evidence. Applicant claimed that "it is unusual for wine and beer to be produced by the same source under the same mark," noting that the examining attorney provided only 32 third-party registrations for marks covering both beer and wine, even though there are (allegedly) 51,716 registrations in Class 33 (which covers wine). The Board pointed out that, "even if Applicant’s evidence accurately reflects the state of the register, it may reveal nothing more than the repeated and consistent refusal of applications covering beer based on existing registrations of similar marks for wine."

Similarly, Applicant also relie on evidence that there are more than 8,702 wineries in the United States, and claimed that the Office's evidence of "only" 29 wineries/breweries shows that only a small percentage of wineries produce both wine and beer. The Board, however, found that "the relatively voluminous evidence of third-party use of the same marks for both wine and beer is enough to establish a relationship between the goods, even if only a relatively small percentage of wineries also produce beer and a relatively small percentage of breweries also produce wine."

Finally, Applicant reliee on 13 "pairs" of registrations for identical or similar marks owned by different owners, in which one mark is registered for beer and the other for wine. The Board observed that "[p]roving that marks coexisted on the Register 'does not prove that they coexisted during that time without confusion in the marketplace." In re Thomas, 79 USPQ2d 1021, 1028 (TTAB 2006). Furthermore, we do not know whether there are licenses or coexistence agreements, much less the terms thereof, which could explain the coexistence of these registrations."

In any case, the Board observed once again that each application for registration must be considered on its own merits. In re Nett Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).

Conclusion: The Board affirmed the Section 2(d) refusal.

Read comments and post your comment here.

TTABlogger comment: You knew this would be the result, didn't you?

Text Copyright John L. Welch 2020.


At 9:51 AM, Blogger Sylvia Mulholland said...

Yup. That's a WYHA (no) for sure!

At 10:30 AM, Anonymous Anonymous said...

One of my favorite aspects of TM law is that one man's "only" is another man's "relatively voluminous."

At 11:42 AM, Blogger TMAttorneyHeller said...

Yes I got it right!!!

At 12:50 PM, Anonymous Paul Reidl said...

Yes, the result was inevitable. In my experience, Examining Attorneys are not putting a lot of work into their initial office action refusal on beer vs. wine marks. They only do the heavy lifting is the Applicant pushes back.


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