Thursday, August 05, 2021

TTABlog Test: Is KING'S RANSOM for Scotch Whiskey Sold by Invitation Confusable With the Identical Mark for Wines?

The USPTO refused to register the mark KING'S RANSOM for "spirits, namely, aged luxury Scotch whisky for private sale only by invitation," finding a likelihood of confustion with the identical mark registered for "wines." Applicant Signatory argued that its restricted identification of goods "sets its whiskey apart from the ordinary retail channels of trade or whiskey, and limiting sales as private and invitation-only weighs heavily against a likelihood of confusion." How do you think this appeal turned out? In re Signatory Vintage Scotch Whisky Company Limited, Serial No. 79261464 (August 3, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch).

The examining attorney relied on website evidence that purportedly showed whiskey and wine being offered in the same trade channels to the same classes of consumers, and also on third-party, use-based registrations covering wine and whiskey. 

Signatory introduced evidence of high-end whiskey being sold for tens of thousands of dollars per bottle. The Board granted Signatory's request that it take judicial notice of the definition of "luxury" as "something expensive which is not necessary but which gives you pleasure." Signatory emphasized that its identified goods are not sold in the ordinary channels of trade for whiskey, since its sales are private and by invitation-only. 

The Board observed that only two of the pieces of evidence showed the same mark being used for whiskey and wine. One involved Costco's Kirkland house brand, which covers an unusually broad range of goods, and the other was a foreign website. The Board deemed this evidence "minimally probative."

Moreover, the evidence of online retail stores selling whiskey and wine under various marks "does not establish relatedness or common trade channels for wine and whisky 'for private sale only by invitation,' because the latter on its face would not be available on an Internet retail site generally available to the public." Likewise, the third-party registrations were insufficient to establish that wine is related to "aged luxury Scotch whisky for private sale only by invitation."

The Board agreed with Signatory that, on the face of its identification of goods, its whiskey would involve relatively careful purchasing decisions and more sophisticated purchasers.

Balancing the relevant DuPont factors, the Board concluded that confusion is unlikely, and so it reversed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Whisky? Whiskey? Wiskie? How did you do?

Text Copyright John L. Welch 2021.


At 7:59 AM, Blogger Gene Bolmarcich, Esq. said...

Brilliant move by the applicant. I'd love to see more applicant's playing with the description to avoid refusals. There's so much one can do with it...for example, why can't one state "...sold with applicant's house mark XYZ"? or "sold [only] to the most sophisticated buyers in the world"? [I'd prefer to not use the word 'only'] If the words matter so much as we're always told by the USPTO, then use that to your advantage. After all, they have to accept the limitations at face value, and when it doesn't have the word 'only', then even if it's true for one sophisticated buyer (for example) then would it really limit the protection of the mark to just that single person in federal court? I'd like to think that a judge would understand the game and ignore such silly limitations ('silly', effective in the USPTO nonetheless).

At 9:35 AM, Blogger Morris T. said...

This decision doesn't make a lot of sense to me. Since the "wines" in the cited registration weren't restricted, wasn't the Board obligated to consider that the wines could also be for private sale only by invitation?

At 10:42 AM, Anonymous Anonymous said...

Had there been better evidence by the examiner, this might have come out differently. For example, if there was strong evidence of wine and whiskey being sold under the same mark, it could have been argued that the applicant's limitation on the trade channel of its whiskey doesn't mean that the average purchaser seeing an identical mark on wine in a liquor store wouldn't think that the goods come from the same source. If the evidence showed that it is common for wine and whiskey to be offered by the same entity, then it could be argued that the applicant makes a wine available for general purchase but limits its "luxury" whiskey availability only to those it invites to purchase. I can think of many brands that offer general merchandise available to the public but also offer extremely high-end and expensive goods that the average person wouldn't have access to (clothing is one such example). So, based on the record, I think this was a good decision but is it a slam-dunk for avoiding a similar refusal for similar goods in the future? As with previous decisions, probably not (each case is decided on its own facts, remember!)

At 11:06 AM, Blogger Eddie said...

You got to be kidding me. Identical names in whiskey and wine. Should have been a no brainer confusion.

And the weird thing is if I were selling $10 wine and some guy wanted to use my name on $10,000 whiskey--how's that hurt me? I would have never filed an opposition.

At 1:58 PM, Blogger Unknown said...

Rather surprised at this one as it seems prior decisions concerning alcoholic beverages, even non-alcoholic beverages, are seen as in the identical or cross-over market, regardless of consumer sophistication or other factors. Perhaps the board is comprised of Scotch connoisseurs?

At 4:34 PM, Anonymous Anonymous said...

For some reason the examining attorney did not understand, even after the applicant pointed it out, that the brackets in the cited registration denoted goods that had been deleted from the registration in 2011. The examining attorney thus based her refusal on goods no longer covered by the cited registration, which the Board had to explain:

“Although the Examining Attorney has continued to refer to the original identification of goods in the registration, ‘Brandy; Grape wine; Sparkling grape wine; Wine; Wines,’ Registrant amended the registration in 2011 to delete everything except ‘wines’ from the identification of goods. That is why the USPTO database displays the other now-deleted goods in brackets.”

How does this happen?!


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