TTABlog Test: Is BREAK OUT THE BANDIDO Confusable with BANDIT for Overlapping Alcoholic Beverages?

Sutter Home Winery opposed an application to register BREAK OUT THE BANDIDO for "distilled blue agave liquor" (a/k/a tequila) on the ground of likelihood of confusion with its registered mark BANDIT for "alcoholic beverages except beer[s]." The goods are legally identical and presumably travel in the same trade channels to the same classes of consumers. But what about the marks? How do you think this came out? Sutter Home Winery, Inc. v. Roar Spirits, LLC, Opposition No. 91281737 (June 26, 2025) [not precedential] (Opinion by Judge Mark Lebow).

The Board found the BANDIT mark to be conceptually strong. It has achieved "slight commercial strength, but not enough to increase the scope of protection the mark is entitled as an inherently distinctive mark." Applicant Roar Spirit’s evidence of third-party use of similar marks on similar goods did not diminish its strength. The Board, after weeding out marks for unrelated goods and marks not in use in the United States, was left with two third-party registrations and seven third-party uses – Bandito wine, Bandido wine, Cosmic Bandido mead, Bandito’s Blood wine, Bandido de Amores tequila, Goofy Bandit Espressotini liqueur, Barrel Bandit whiskey, and Time Bandit vodka. But there was no evidence as to the extent of use of the third-party marks.

These several Bandit-esque uses, coupled with the two third-party registrations as discussed above, fail to demonstrate a consistent pattern of use of the term ‘BANDIT’” in a manner that would prove that term “has a normally understood and well recognized descriptive or suggestive meaning,”

As for the marks, Opposer Sutter argued that BANDIDO is the dominant element of the opposed mark, but the Board disagreed, finding that BREAK OUT THE BANDIDO is a unitary mark. The Board rejected Sutter's argument that consumers will shorten the mark to BANDIDO when referring to Roar's product.

The Board found that the marks BANDIT and BREAK OUT THE BANDIDO are "very different in overall appearance, sound, connotation, and commercial impression."

Even if it is known that “bandido” is a synonym of “bandit,” there are still differences in connotation because “bandido” is defined (in MERRIAM-WEBSTER’S) as “an outlaw of Mexican extraction or origin” (consistent with Applicant’s offering of tequila, a Mexican liquor), whereas Opposer’s mark refers generally to an outlaw or robber. Furthermore, and to extent consumers understand the meaning of the word “bandido” as Opposer contends, we again point out that Applicant’s mark is BREAK OUT THE BANDIDO, not BANDIDO. Furthermore, we find some merit to Applicant’s argument that BREAK OUT THE BANDIDO connotes “breaking a prisoner out of jail,”100 which calls to mind breaking an imprisoned Mexican outlaw out of jail.

The Board concluded that "the dissimilarity of the marks in appearance, sound, connotation, and commercial impression is so great as to outweigh the other DuPont factors."

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TTABlogger comment: In 2023, Suttor's assignee of the BANDIT mark suceessfully opposed Roar's application to register EL BANDIDO YANKEE for tequila [TTABlogged here].

Text Copyright John L. Welch 2025.