LEX VINI

USPTO Finds Wine and Tequila Related, Grants Opposition to Trademark Application for GRAN SOL

On May 17th, the Trademark Trial and Appeals Board (the “Board”) of the U.S. Patent and Trademark Office (the “USPTO”) granted an opposition filed by Miguel Torres, S.A. against a trademark application for GRAN SOL and Design for Tequila (as shown below) based on the prior registration of the trademark GRAN VIÑA SOL for wine owned by Torres.

Gran Sol

In finding the marks to be confusingly similar, the Board held that even though the GRAN SOL and Design mark encompassed the stylized image of the sun, the GRAN VIÑA SOL mark was registered as a word mark and therefore could be used in association with any image making the GRAN SOL and Design mark less distinguishable. Furthermore, even though the term “VIÑA” in GRAN VIÑA SOL may be understood to suggest wine, this merely distinguishes the goods under the marks and does not mean that consumers seeing the GRAN SOL and Design mark on Tequila would not think the Tequila was from the same producer of the wine who just decided not to use the “VIÑA” on the Tequila.

Turning to the goods, the Board also found wine and tequila to be related for purposes of determining consumer confusion. The Board noted that in prior cases it had found wine and liquors to be related because the goods were sold through the same channels of trade to the same consumers. Furthermore, the Board also noted that Torres demonstrated that it is not uncommon in the U.S. for the famous Tequila-based cocktail, the Margarita, to be made with wine, especially in establishments that are only licensed to sell beer and wine, but not liquor. Torres also demonstrated that the product known as agave wine is also made from the same plant as Tequila.

Therefore, given the similarity of the marks and the relatedness of the goods, the Board found a likelihood of confusion and granted the opposition refusing registration of GRAN SOL and Design for Tequila. While this case was not designated by the Board as precedential, it demonstrates that wineries must be cognizant of marks for Tequila when wishing to register their own marks for wine, and that when wineries own a senior trademark for their wine, they may prevent registration of a similar mark for Tequila.

Miguel Torres, S.A. was represented in this proceeding by Scott Gerien of Dickenson, Peatman & Fogarty. A full copy of the case of Miguel Torres, S.A. v. Complejo Industrial RM, S.A. de C.V., Opp. No. 91188401 (TTAB 2011), may be found here: http://ttabvue.uspto.gov/ttabvue/v?pno=91188401&pty=OPP&eno=24

For more information or assistance on trademark matters please contact Scott Gerien at sgerien@dpf-law.com.

Leave a Reply

*