Kinney Family Vinters LLC doing business as Occasio Winery (“Applicant”) filed a trademark application for the mark APOTHEOSIS for various types of wine. E. & J. Gallo Winery (“Opposer”) filed a Notice of Opposition, claiming prior use of the mark APOTHIC for wine. It was undisputed that the Opposer has used the trademark APOTHIC for wine since 2010. Applicant filed an intent-to-use application on January 18, 2012. Therefore, there was no dispute pertaining to priority rights. The primary issue in this case is likelihood of confusion. See E. & J. Gallo Winery v. Kinney Family Vinters LLC d/b/a Occasio Winery, Opposition No. 91207656 (March 10, 2015) [not precedential].
The two primary considerations in a likelihood of confusion analysis are the similarities of the marks and the relatedness of the goods or services. Opposer bears the burden of establishing likelihood of confusion by a preponderance of the evidence. This standard requires that the evidence be sufficient to determine that the claim is more likely to be true than not. In this case the goods analysis is a simple one as both parties are seeking to use their trademarks in connection with wine. Therefore the goods are identical.
When the goods are identical it is presumed that the trade channels and the classes of purchasers are also identical. See In re Vitterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). This rule applies even when there is no evidence regarding trade channels. The Trademark Trial and Appeal Board (the “Board”) is entitled to rely on this presumption.
The Applicant attempted to introduce evidence that he utilizes a membership system that involves among other things methods of sales different than Opposer’s methods and maintained a sophisticated customer base. However, the Board determined that since this type of information was not included in the identification of the trademark application, it could not be considered. Applicant’s identification includes “wine” without any restrictions or limitations. Since the parties’ goods are identical, it is therefore presumed that the trade channels and classes of consumers are overlapping which leads to another rule that works to the Opposer’s benefit and the applicant’s detriment. Under these circumstances, the degree of similarity of the marks required for a finding of likelihood of confusion is lessened or reduced.
The marks were compared in their entireties for appearance, sound, connotation and commercial impression. It is a well established rule that while conducting this analysis one feature of a mark may be determined to be more significant than another. To conclude one feature is more important, you simply need a rational reason. The Board pointed out here that the marks share the same first five letters “APOTH”. That being the case, it must be pointed out that it is well settled that consumers are likely to focus on the first part of trademarks. See Presto Products Inc. v. Nice-Pak Products, Inc. 9 USPQ2d 1895, 1897 (TTAB 1988). The Board determined that the marks look and sound similar due to the shared first five letters.
Regarding connotations, the Board stated that the mark APOTHEOSIS, means the highest or best part or perfect example, but is not a commonly used word to many consumers and therefore will not connote a meaning. Therefore, Applicant could not rely on connotation as a ground to distinguish it from the Opposer’s mark. While APOTHIC lacks a direct meaning, evidence shows that the mark was derived from the term Apotheca and the term Epic. The Board stated that there was no evidence to demonstrate that consumers will understand or perceive the mark APOTHIC to include the word “epic” or its meaning. In the end, the Board concluded that the words do not convey the same meaning.
Somewhat influential in this decision was the fact that the Opposer has used variations of the mark APOTHIC, including APOTHIC RED, APOTHIC WHITE, APOTHIC ROSE, and APOTHIC DARK. Consumers could perceive APOTHEOSIS to be another version of the Opposer’s mark. Although, the Opposer attempted to prove APOTHIC was a famous mark, the evidence did not bear this out. The Board determined that the Opposer’s mark was a fairly strong mark and should be given a broad scope of protection. In the end, the Board concluded that the factors weighed in favor of finding a likelihood of confusion and sustained the opposition and refused to register Applicant’s mark APOTHEOSIS. If you need assistance with assessing whether there would be a likelihood of confusion when you enter the marketplace with a new trademark, kindly contact our office for a courtesy consultation.