New York Trademark Attorney Blog
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 See E. & J. Gallo Winery v. Kinney Family Vinters LLC d/b/a Occasio Winery, Opposition No. 91207656 (March 10, 2015) [not precedential].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.