CAFC Upholds TTAB's Judgment on the Pleadings Based on Dissimilarity of Marks in VERITÉ Opposition

The CAFC affirmed the TTAB's decision [TTABlogged here] granting a motion for judgment on the pleadings (FRCP 12(c)) on the ground that Applicant Grands Domaines' word-and-design mark shown below, for "wines made from grapes from Côtes de Provence in accordance with adapted standards," is not confusingly similar to Opposer Jackson Family Farms' common law mark VERITÉ for wine and its registered mark VERITÉ for "alcoholic beverages except beers." Jackson Family Farms, LLC v. Grands Domaines Du Littoral, Appeal No. 2023-1675 (Fed. Cir. December 5, 2023) [not precedential].

The Board concluded there was "no genuine dispute of material fact that the marks at issue are distinct in appearance," and so "a likelihood of confusion cannot exist as a matter of law," even when considering all other DuPont factors to weigh in favor of Jackson Family Farms.

On this appeal, Jackson argued that the marks are similar because the "VÉRITÉ mark appears as the first term of [a]pplicant’s three-word mark VÉRITÉ DU TERROIR" and therefore VÉRITÉ is the dominant portion of applicant’s mark. It further argued that sixteen of the twenty-two words on applicant's label were disclaimed and thus entitled to less weight in the likelihood of confusion analysis. The CAFC, however, agreed with the Board that Jackson’s focus on the word “VÉRITÉ” ignored other, more prominent portions of applicant’s mark and did not consider the mark as a whole.

The Board did not err in determining that CHATEAU LA GORDONNE, not VÉRITÉ, is the dominant part of applicant’s mark. As the Board explained, CHATEAU LA GORDONNE is displayed in a larger font and different coloring relative to other elements of the label. Therefore, the Board did not err in attributing greater weight to the dominant CHATEAU LA GORDONNE portion of applicant’s mark when analyzing the similarities of the two marks.

Jackson contended that CHATEAU LA GORDONNE is a house mark and VÉRITÉ DU TERROIR is "its own unitary composite product name," and therefore the presence of the CHATEAU LA GORDONNE portion does not avoid confusion as a matter of law because both marks contain the term VÉRITÉ. The court, however, pointed out that there was no support for the assertion that CHATEAU LA GORDONNE is a house mark that "can be stripped out for likelihood of confusion purposes." "The Board was correct to consider the presence of CHATEAU LA GORDONNE and the fact that it is the dominant portion of the mark."

Jackson cited several cases finding similarity between marks when one mark entirely encompasses the other, but the court pointed out that those cases "involved situations in which the only differences between the marks was the addition of a few words to the dominant portion of the mark." [E.g., “STONE LION CAPITAL” and “LION CAPITAL”; JOSE GASPAR GOLD and GASPAR's ALE. Here, the differences in marks "includes the addition of over twenty words, some of which are more prominently displayed than VÉRITÉ." "The Board’s conclusion that the marks are dissimilar was not erroneous."

Finally, Jackson argued that the disclaimed words in applicant's mark should be given no consideration, but the court pointed out that, although those elements may receive less weight in considering the similarity of the marks, they cannot be ignored. Moreover, the word GORDONNE was not disclaimed.

The CAFC found "nothing inherently improper about making a likelihood of confusion determination solely based on dissimilarity of the marks at the pleading stage." It agreed with the Board's conclusion that "a likelihood of confusion between the marks could not exist as a matter of law, even when taking all of the other DuPont factors to weigh in favor of opposer."

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Text Copyright John L. Welch 2023.