Thursday, June 25, 2020

TTABlog Test: Are These Two "IMMORTAL" Marks for Wine Confusable?

The USPTO refused to register the mark IMMORTAL & Design, shown below, finding a likelihood of confusion with the registered mark THE IMMORTAL ZIN [ZIN disclaimed], both for wine. Applicant argued that the examining attorney “erred by finding that the allegedly dominant portion of Applicant’s Mark is the word ‘IMMORTAL,’ not the jellyfish.” How do you think this came out? Hidden Ridge Vineyard, LLC, Serial No. 87868652 (June 24, 2020)[not precedential] (Opinion by Judge Christopher Larkin).

In its 45-page opinion, the Board informatively marched through the DuPont factors. Since the involved goods are identical, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. Moreover, the Board must presume that the goods travel through the same, normal channels of trade to same classes of consumers. With no limitations in the application or cited registration, the Board must consider the perception of the least sophisticated consumer of wine.

The Marks: Applicant Hidden Ridge strenuously argued that the jellyfish design in its mark suffices to distinguish the mark. The Board acknowledged that there are decisions finding the design to be dominant in a word-plus-design mark, but distinguished those cases and chose to follow In re Viterra: "the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.”

The Board found this case most similar to the recent Information Builders decision [TTABlogged here], where the design element was considered to be dominant in the applicant's mark (on the left) because "information" and "builders" were merely descriptive. Here, in contrast, the word IMMORTAL in applicant's mark is not descriptive.

Moreover, the evidence submitted by Examining Attorneys Laura Golden and Raymond Harmon, including applicant's own use of “Immortal” by itself, and references in the media, convinced the Board that consumers will use “Immortal,” not “Immortal Jellyfish” or “Jellyfish,” to refer to Applicant or its wines.

The nature of the applied-for mark and the involved goods, and the uses of “Immortal” by Applicant and others to refer to Applicant’s wines, including Applicant’s use of the word “IMMORTAL” on the same bottle of wine on which the applied-for mark appears, provide rational reasons to find that the word IMMORTAL formed by the letters and design in Applicant’s mark, and not the jellyfish design itself, is the dominant portion of the mark.

The Board did agree with applicant that, when comparing a standard character mark to a word + design mark for Section 2(d) purposes, it will consider variations of the depictions of the standard character mark only with regard to ‘font style, size, or color’ of the ‘words, letters, numbers, or any combination thereof,” Aquitaine Wine, 126 USPQ2d at 1187, but that was a hollow victory for applicant.

Strength of the cited mark: Applicant failed in its attempt to show that IMMORTAL is a weak formative.

We agree with the Examining Attorney that the handful of registrations, augmented by specimens of use of the registered marks and one additional third party use, are insufficient to show that the cited mark is weak Moreover, none of the third-party “marks is as close to the cited mark as . . . Applicant’s mark." Information Builders, 2020 USPQ2d 10444 at *8.

Conclusion: The Board found the that the first, second, and third DuPont factors support a finding of a likelihood of confusion. The goods, channels of trade, and classes of consumers are identical, while the fourth, fifth, sixth, eighth, tenth, and twelfth factors are neutral. And so it affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: A good discussion of the DuPont factors here. Is this a WYHA?

Text Copyright John L. Welch 2020.


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