The Trademark Trial and Appeal Board (the “Board”) decided this appeal a few days ago. The Board determined that the trademark PA’DENTRO when used in connection with liquor and liqueurs namely tequila, resembles the registrant’s mark ADENTRO for wines and causes confusion and/or deceives consumers under the Trademark Act. See In re Cruz, Serial No. 86845373 (May 10, 2017) [not precedential], where the applicant was seeking registration on the Principal Register for the mark PA’DENTRO in standard characters and the Examiner refused the application under 2(d) of the Trademark Act. A likelihood of confusion analysis will evaluate the probative facts in evidence.
A likelihood of confusion analysis will evaluate all the probative facts in evidence. The two key considerations are similarities between the marks and similarities between the goods and/or services. When reviewing the likeness between the marks, the emphasis is on the general impression the average consumer will retain and not on a specific recollection. See In re Cynosure, Inc., 90 USPQ2d 1644, 1645 (TTAB 2009). In the case at bar, the Board held that the marks PA’DENTRO and ADENTRO have almost identical appearances and only have slight differences in sound. Moreover, the marks translate identically (to the English word “inside”), therefore they have the same meaning. In sum, the Board held that with respect to the marks, the similarities in sound, appearance and meaning create a similar overall commercial impression.
Next, the Board evaluated the relatedness of the goods. Keep in mind that the goods do not have to be similar or competitive to support a finding of likelihood of confusion. The goods need only be related in some manner or that the conditions surrounding the marketing permit the same persons to encounter the marks under circumstances that would give rise to a belief that the goods originate from the same source or that both goods are associated with the same producer. The Examining Attorney introduced into evidence eleven use based registrations where the registrant sells both tequila and wine under a single brand.
It is settled law that third party registrations alone are not evidence of that the marks are in use, but they are relevant to suggest the goods emanate from a single source. See In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001). One can submit further evidence of use of the mark in commerce to bolster the argument, for example submitting websites with use of the mark may be accepted as proof of use of the mark in commerce. In this case, the Examining Attorney also submitted Internet evidence demonstrating use of a single mark for both tequila and wine. The Board in the past has noted that different types of alcohol are related. Since there were no limitations in the application as to trade channels or classes of consumers, the Board presumed the goods would be marketed in the normal trade channels to the same classes of consumers. The Board in this decision went as far as stating that “we find that the evidence of record, as well as legal precedent, sufficiently demonstrates that the goods identified in Applicant’s application and the goods identified in the cited registration are related.” Thus, the second du Pont factor weighs in favor of a finding a likelihood of confusion.
With respect to the degree of sophistication of the consumer base, the applicant did not put forth a persuasive case that the goods as a whole were expensive and that the purchasers were sophisticated. The evidence of record showed that wine and tequila are low cost goods and impulse purchases and thus care is not taken at the time of sale. After balancing the factors and carefully reviewing the evidence, the Board affirmed the 2(d) refusal for likelihood of confusion. For information on how to overcome an Examiner’s refusal, see our web page entitled, Overcoming Likelihood Of Confusion Refusals. If you have questions pertaining to your trademark or brand, please do not hesitate to contact our firm for a courtesy consultation.