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Fame Continues To Be A Dominant Factor In 2(d) Cases

In a recent case decided in November 2019, the Trademark Trial and Appeal Board (the “Board” or the “TTAB”) sustained an opposition filed by Baccarat S.A. on various grounds including likelihood of confusion. The applicant was seeking to register the mark BACCARAT in standard characters for alcoholic beverages, namely vodka. Baccarat (“opposer”) pleaded ownership of 20 of its registrations for the mark BACCARAT, some of the goods included, crystal, glasses, cups, vases, decanters, carafes, champagne buckets, jewelry, candle sticks, and tea pots. Since the Opposer pleaded its registrations, priority was not at issue. See our blog post entitled, How Fame Impacts A Likelihood Of Confusion Determination, for an earlier decision on this topic.

The Board reviewed the DuPont factors, and pointed out that if fame exists it plays a dominant role in the likelihood of confusion analysis because famous marks enjoy a broad scope of protection and exclusivity of use. See our webpage entitled, Famous Trademarks Receive A Broader Scope of Protection, for more information on this topic. The Board discussed how fame is determined. It stated that fame could be measured indirectly by the volume of sales and advertising expenditures for the goods and services identified by the mark at issue, and by the recognition received by independent sources, such as unsolicited media coverage. Also, important is the length of time the mark has been used for the relevant goods or services, and the general reputation of the goods and services. The numbers for sales, advertising and market share should be put into perspective by comparing the statistics to similar goods or services.

Opposer placed evidence into the record showing its predecessors-in-interest started producing glass products in 1764 in France and by 1892 had an import agency in New York. Production of glassware and other goods under the BACCARAT mark continued into current times. Sales figures were introduced that showed from the year 2000-2017 sales of BACCARAT branded goods and services totaled $458,430,809. Advertising figures demonstrated that from the years 2005-2017 $33,996,270 was spent to market its goods and services. The opposer advertises its branded goods in top magazines and newspapers such as Vanity Fair, Architectural Digest, The New York Times, The Los Angeles Times, and Forbes magazine.

Opposer also produced evidence to show it had about 13 percent of the U.S. market share for crystal products, a significant market share for crystal lighting products, and a growing share for crystal jewelry products. In addition to articles written about the opposer’s BACCARAT branded goods, TV shows and movies had featured BACCARAT products. Lastly, some dictionaries list BACCARAT as a trademark. The Board has recognized that when dictionaries include a brand and recognize it as part of the language, it signifies that it is reasonably famous. B.V.D. Licensing Corp. v. Body Action Design, Inc., 846 F.2d 727, 6 USPQ2d 1719, 1720 (Fed. Cir. 1988); quoted in B.V.D. Licensing Corp. v. Florencio Rodriguez, 83 USPQ2d 1500, 1506 (TTAB 2007).

To rebut the opposer’s evidence, the applicant hired a global market research firm to conduct a survey to determine if the BACCARAT mark was famous. But the Board held that the survey results were not meaningful since the research firm did not restrict the survey to consumers of crystal products. The proper legal standard for analyzing the fame of a mark under the fifth DuPont factor is the class of consumers and prospective customers of a product or service and not the general public. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1695 (Fed. Cir. 2005).

Finally, how much fame a mark acquires under the fifth DuPont factor ranges on a spectrum from very strong to very weak. Joseph Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734 (Fed. Cir. 2017) (quoting In re Coors Brewing Co.,343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir. 2003)). The Board determined that the BACCARAT brand acquired a high degree of fame for crystal glass goods. Moreover, in light of the fame of opposer’s mark, the Board held that the goods of applicant and opposer were related for likelihood of confusion purposes. In the end, the Board sustained the opposition and refused registration to the applicant. If you have questions concerning fame or likelihood of confusion, please contact the firm for a courtesy consultation.