Published: January 16, 2024
Read time: 2 mins
Casa Ermelinda Freitas-Vinhos, LDA recently faced a trademark dispute when they sought to register the trademark "SAND CREEK" for their wine products. The application was initially rejected by the Trademark Examining Attorney, citing the likelihood of confusion with an existing trademark for "SAND CREEK" associated with beer and related products. Despite the applicant's appeal and request for reconsideration, the refusal was upheld.
Review by the Trademark Trial and Appeal Board
During the proceedings, the Trademark Trial and Appeal Board (TTAB) examined the case and carefully considered the DuPont factors, which are used to assess the likelihood of confusion between marks and goods. One of the key factors evaluated was the similarity of the marks in terms of appearance, sound, connotation, and commercial impression. Upon review, the TTAB determined that the marks in question were identical across all these aspects.
Moreover, the TTAB dismissed the applicant's argument that the commercial strength of the registered mark should negate any likelihood of confusion. The evidence of third-party use submitted by the applicant was deemed insufficient to demonstrate that the registered mark was weak. In addition, the TTAB examined the similarity of the goods and channels of trade, finding that they were closely related and could potentially lead to confusion regarding their source.
In particular, the TTAB noted the inherent relationship between wine and beer as alcoholic beverages. They highlighted that while the nature of the beverages may differ, evidence suggesting they were inexpensive commodities, targeting the same consumers, or marketed through similar channels of trade weighed in favor of a likelihood of confusion. The TTAB considered 32 use-based third-party registrations that indicated wine and beer could originate from the same source.
Additionally, excerpts from the websites of eleven entities producing and selling both wine and beer were included in the record, illustrating the shared channels of trade. The TTAB concluded that since there were no specific restrictions on trade channels for the identified goods, it was reasonable to presume they would travel through all appropriate channels of trade.
Furthermore, the TTAB emphasized the significance of the marks in question being identical, which lowered the degree of similarity required between the goods to support a finding of likelihood of confusion. They referred to various cases supporting this viewpoint and reiterated that the evidence indicated an inherent relationship between wine and beer, with the potential for both to be produced and sold by the same entity. Based on these factors, the TTAB affirmed the refusal to register the mark "SAND CREEK".
The Appeal Board's Decision
In summary, Casa Ermelinda Freitas-Vinhos, LDA's application to register the trademark "SAND CREEK" for their wine products was denied due to the likelihood of confusion with an existing trademark associated with beer and related goods. The TTAB's decision, based on comprehensive examination and the evaluation of relevant factors, highlights the potential for confusion between identical marks and related goods.
