Comparing Apples and Grapes; Not the Same for Trademarks
In most all cases that come before the United States Patent and Trademark Office Trademark Trial and Appeal Board (Board) involving relatedness of wine and other beverages, both alcoholic and non-alcoholic alike, the Board almost always finds the goods to be related for purposes of its likelihood of confusion analysis. A likelihood of confusion analysis involves analysis of several factors, any one of which can be determinative to the outcome of the case. Usually a finding that the marks are similar goes a long way in demonstrating a likelihood of confusion.
Domaine Pinnacle, Inc. (“Domaine” or “Applicant”) is a family-owned orchard and cidery located in Quebec, Canada. Domaine applied to register the mark DOMAINE PINNACLE & Design for “apple juices” and “apple based non-alcoholic beverages.” The word “domaine” was disclaimed.
Franciscan Vineyards, Inc. (“Franciscan” or “Opposer”) a wholly-owned subsidiary of Constellation Brands Inc., an international wine company and U.S. beer importer, opposed the registration of Domaine’s mark on the grounds of priority of use and likelihood of confusion with its marks PINNACLES and PINNACLE RANCHES covering wines.
In the first step of the analysis, the Board considered the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. While acknowledging the difference in wording and the presence of a design element in Domaine’s mark, the Board found the term PINNACLE to be the dominant element in the mark and found the parties’ marks are “similar in appearance, sound, connotation and commercial impression.” Thus, the similarity of the marks weighed in favor of the Board finding a likelihood of confusion.
However, when considering the relatedness of the goods, the Board stated that “we cannot per se deem wines and non-alcoholic apple juices or beverages as related goods; rather, we must examine the particular factual circumstances of each case.”
Franciscan, as plaintiff in the proceeding, bore the burden of establishing a likelihood of confusion by a preponderance of the evidence. Here, Domaine did not even submit evidence nor file a brief with the Board. Nevertheless, the Board found that Franciscan failed to introduce evidence that the same entities produce and sell both wine and “[a]pple juices” or “apple-based non-alcoholic beverages,” or that they market the productsunder the same mark in the United States. Further, Franciscan failed to present evidence showing that the products are complementary (e.g., consumed together at the same meal), or that the goods are sold in proximity to each other in retail outlets.
The lack of evidence regarding relatedness of the goods outweighed the similarity of the marks and all other factors which favored a finding of likelihood of confusion. Thus, the Board concluded that Opposer failed to prove a likelihood of confusion by a preponderance of the evidence and dismissed the Opposition. For a full text of the case see: Opposition No. 91178682 (October 16, 2013) [not to be cited as precedent].
It just goes to show that each case must be considered on its own merits and the apple doesn’t fall far from the tree (and into the wine vat).
For more information or assistance on trademark matters contact Katja Loeffelholz at [email protected].