TTABlog Test: Are Cigarettes and Cigars Related to Alcoholic Beverages Under Section 2(d)?

Opposer Nemiroff IP opposed an application to register the mark NEMIROFF for cigars cigarettes, and various other tobacco-related products and accessories, claiming likelihood of confusion with its identical mark NEMIROFF for "alcoholic beverages, namely, brandy, vodka, liqueurs and distilled spirits featuring honey." Are the goods sufficiently related? How do you think this came out? Nemiroff Intellectual Property Establishment v. RAM Development Associates LLC, Opposition No. 91244891 (April 11, 2024) [not precedential] (Opinion by Judge Thomas W. Wellington).

Oddly, Opposer pleaded 35 registrations, 27 of which have been cancelled. It also argued that applicant's proposed mark violates the false connection provision of Section 2(a), but the Board refused to consider that unpleaded claim. Applicant submitted no evidence or testimony and did not file a brief, leaving opposer with the burden to prove its case.

The Board focused on one of the pleaded, live registrations, as noted above. Because the involved marks are identical, the first DuPont factor "weighs heavily in favor of a likelihood of confusion."

Turning to the second DuPont factor, the similarity of the goods, opposer argued that the involved goods are related because tobacco products and alcohol are "complementary" in that they are marketed together for "simultaneous consumption." It submitted website evidencing same, as well as four third-party registrations covering both types of products. Furthermore, the evidence showed that applicant’s tobacco products include alcohol-infused cigarettes and cigarillos.

The aforementioned evidence demonstrates a complementary relationship between the parties’ goods, namely, alcoholic beverages, including vodka and spirits and tobacco products, including cigarettes and cigars. These goods are marketed and touted as goods that can be “paired” with each other, and they may be found in the same trade channels, such as liquor stores and duty-free shops.

Under the fifth DuPont factor, opposer's evidence and testimony indicated that NEMIROFF brand vodka has been sold in this country for 20 years, has been advertised and promoted in a broad range of national media, and was ranked as the third best-selling vodka in the global duty free and travel retail market sector. The Board found the amount spent on advertising and marketing (designated "confidential") was "particularly impressive."

Based on the record, we find Opposer’s NEMIROFF mark is commercially strong and should be accorded a broader scope of protection than marks without any demonstrated commercial strength. Thus, the fifth DuPont factor weighs in Opposer’s favor.

Because the marks at issue are identical, opposer's mark is commercially strong mark, and the goods are related in a complementary manner and may be offered for sale in the same trade channels, the Board found confusion likely and it sustained the opposition.

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TTABlogger comment: Are beer and pretzels complementary and related? vodka and tonic? vodka and orange juice?

Text Copyright John L. Welch 2024.