Archive for August, 2021

Is KING’S RANSOM for Scotch Confusable with KING’S RANSOM for Wine?

Sunday, August 22nd, 2021

In a 2021 nonprecedential case, the Trademark Trial and Appeal Board reversed the refusal to register the mark KING’S RANSOM for “spirits, namely, aged luxury Scotch whisky for private sale only by invitation,” and found it not likely to cause confusion under §2(d) with KING’S RANSOM for “wines.”

In examining marks for likelihood of confusion, all relevant DuPont factors must be considered. Further, there are two key considerations, which must be accounted for: the similarities between the marks, and the relatedness of the goods. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004). With this in mind, the Board conducted its analysis of the marks: KING’S RANSOM for “spirits, namely, aged luxury Scotch whisky for private sale only by invitation,” and KING’S RANSOM for “wines.”

Briefly turning to the first DuPont factor, which looks at the similarities of the marks in their entireties, the Board found that this factor weighed heavily in favor of likelihood of confusion, as the marks were identical in appearance, sound, connotation and commercial impression. See DuPont, 177 USPQ at 567.

The Board then looked at the second and third DuPont factors, which relate to the goods, trade channels and classes of consumers. “[L]ikelihood of confusion can be found ‘if the respective products are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). In analyzing the second and third factors, the Board referred to the goods listed in both the application and the cited registration, and the identifications of the respective goods listed, as well. In citing In re llc, 866 USPQ2d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) and Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) the Board stated that in its analysis of the third factor, it must “assume that the identified goods move through all normal and usual channels of trade and methods of distribution for such goods and services.”

The Applicant argued that even though the marks were identical, the goods did not travel in the same trade channels and did not have the same consumer classes. It explained that its whiskey was not ordinary whiskey and the examining attorney “erred by dismissing the importance of the nature of the unique scotch [sic] whisky at issue, its typical consumer, channels of travel, marketing, and the restricted nature of the sale and the buying process.” It then introduced evidence of high-end whiskey, which sold for high prices ranging from $10,195 to $460,000 a bottle. Finally, the Applicant emphasized that its restricted identification set its whiskey apart from ordinary retail channels of trade for whiskey, and its exclusivity weighed heavily against finding confusion likely.

Considering the Applicant’s argument, the Board first found that none of the submitted evidence showed the same mark for both whiskey and wine, which meant there was no persuasive evidence to suggest that consumers would encounter the aforementioned goods under the same mark, from the same source. The Board cited Contrast In re Detroit Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018), which credited relatedness evidence that third parties use the same mark for the goods and services at issue because “[t]his evidence suggests that consumers are accustomed to seeing a single mark associated with a source that sells both.” Looking next at submitted evidence of online retail stores, which sold both whiskey and wine under various marks, the Board stated that it did not establish “relatedness or common trade channels for wine and whiskey ‘for private sale only by invitation.’” It found that given the exclusivity of the Applicant’s whiskey, it would not be found on a generally available internet-retail site. Turning to other third-party registrations pertaining to wine and whiskey, the Board found that some of the registrations “suggest[ed] that [wine and whiskey] are of a type which may emanate from a single source,” See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1998). However, it found the third-party registrations insufficient to establish relatedness of “wines” to the Applicant’s “aged luxury Scotch whisky for private sale only by invitation.” Ultimately, the Board found that the second and third DuPont factors weighed against a finding of likelihood of confusion.

Finally, the Board studied the fourth DuPont factor, which deals with the sophistication of the purchaser. Given the high-end nature of the Applicant’s listed goods, the Board found that the goods “would involve relatively careful purchasing conditions and more sophisticated purchasers.” See Elec. Design & Sales Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 21 USPQ2d 1388, 1392, “Just from the record description of goods and services here one would expect that nearly all of opposer’s and applicant’s purchasers would be highly sophisticated.” Therefore, the Board found that the fourth factor weighed against a finding of likelihood of confusion.

In conclusion, the Board decided that the Applicant’s mark was not likely to cause confusion with the mark in the cited registration, and the satisfaction of the first DuPont factor was outweighed by the other relevant factors. So, the Board reversed the §2(d) refusal to register the mark KING’S RANSOM for “aged luxury Scotch whisky for private sale only by invitation.”

Disclaim ‘Bark’ in Big Bar? Or Unitary Mark?

Sunday, August 22nd, 2021

In a 2021 nonprecedential case, the Trademark Trial and Appeal Board reversed the refusal to register the mark BIG BARK for “tree care services,” unless the term BARK was disclaimed.

Under §1056(a), an examining attorney may require an applicant to disclaim a component of an otherwise registrable mark. In the case at hand, the Applicant was required to disclaim the term BARK, as it is a merely descriptive term, and therefore unregistrable under §2(e)(1). The Applicant agreed that BARK was a merely descriptive term but argued that it did not require a disclaimer as it was part of the unitary mark, BIG BARK. “If the matter that comprises the mark or relevant portion of the mark is unitary, no disclaimer of an element, whether descriptive, generic or otherwise, is required.” Trademark Manual of Examining Procedures §1213.05 (2018).

So, the Board conducted the following analysis to determine whether or not the applied-for mark, BIG BARK, was a unitary mark. In Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1052 (Fed. Cir. 1991), the Federal Circuit stated that a unitary mark is made up of inseparable elements, and it must create a “single and distinct commercial impression.” Further, the Fed. Circuit explained that the test to determine a mark’s “unitariness” required the Board to determine “how the average purchaser would encounter the mark under normal marketing of such goods and also…what the reaction of the average purchaser would be to this display of the mark.” Using the Applicant’s specimen of use, the Board began its examination of the mark.  Starting with each separate term, it found that BIG was the modifying adjective for BARK, and that used together, the applied-for mark BIG BARK had no well-known meaning in connection with trees, or tree care services. Therefore, the Board found that the mark BIG BARK had a distinct meaning, independent of its individual components, and gave a commercial impression separate from the term BARK, alone. Turning to the commercial impression of the applied-for mark, the Board found it likely that clients, and potential clients, would refer to the Applicant’s services as BIG BARK tree services, opposed to either “Big” tree services or “Bark” tree services. As such, the Board found that the applied-for mark BIG BARK had a “suggestive significance wholly distinct from the merely descriptive significance of the term ‘BARK.’” It found that consumers would not go through the mental process of breaking apart the two terms but would see the applied-for mark as a unitary term. Further, the Board found that the alliteration of the two first letters would reinforce the likelihood that consumers were likely to see the term as a composite and not rely on one term or the other as the dominant portion of the mark.

In conclusion, the Board found that the applied-for mark BIG BARK was a unitary mark, and an incongruous term “because the combination of ‘BIG’ and ‘BARK’ is illogical, out of place, or unexpected.” So, the Board reversed the §1056(a) registration refusal and found that the Applicant was indeed able to register the mark without disclaiming the term “bark,” as it was a component of a unitary mark.

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