Water = Wine? Joel Gott Wines Defeats GOTT LIGHT Trademark for Water
On June 26, 2013, the Trademark Trial and Appeals Board (“TTAB”) of the U.S. Patent and Trademark Office (“USPTO”) sustained the opposition filed by Joel Gott Wines (“JGW”) against the trademark application for GOTT LIGHT and Design for water based on JGW’s prior registrations for GOTT and JOEL GOTT for wine.
A copy of the decision may be found at the following link:
http://ttabvue.uspto.gov/ttabvue/v?pno=91197659&pty=OPP&eno=48
When evaluating the issue of likelihood of confusion between two trademarks the principal considerations are the similarity of the marks and the similarity of the goods. When no similarity is found as to one of these two categories, there is almost always a finding of no likelihood of confusion.
In this case, the issue of similarity was fairly cut and dry. GOTT and GOTT LIGHT are obviously similar given the dominant use of the term “GOTT.” The marks JOEL GOTT and GOTT LIGHT were also found to be similar given that both marks contained the term “GOTT” and the fact that the term “JOEL” connotes a persons name giving emphasis to the term “GOTT.”
The more interesting part of this case was the finding as to similarity of the goods: water and wine {insert bad religious pun here}. Goods are generally found to be similar and related if they are complimentary, move through the same channels of trade, or if there is evidence that the same mark is not uncommonly used on both types of goods. In this case, JGW submitted evidence that demonstrated that it is fairly common for wineries to offer water in their tasting rooms that is branded with the same mark as their wine. JGW also submitted evidence that demonstrated that water and wine are sometimes sold in the same areas of a store, or will appear in the same section of restaurant menus. Additional evidence demonstrated that wine and water are also used in a complimentary fashion such as for mixed drinks like a wine spritzer.
Given all of this evidence, the TTAB concluded that water and wine are related goods, and given the similarity between the marks at issue, there existed a likelihood of consumer confusion between the JGW marks for wine and the GOTT LIGHT mark for water. Accordingly, the trademark application for GOTT LIGHT was denied.
This case was designated by the TTAB as precedential meaning it can serve as a basis to support findings in future cases. Typically, the TTAB only designates about fifty cases as precedential in a calendar year.
Dickenson, Peatman & Fogarty is proud to have represented Joel Gott Wines in this case.
For any questions or assistance on trademark matters or TTAB opposition proceedings contact Scott Gerien at [email protected].