IP Law Daily TTAB reverses itself and finds cigar mark likely to be confused with INSIGNIA wine mark
Thursday, January 10, 2019

TTAB reverses itself and finds cigar mark likely to be confused with INSIGNIA wine mark

By Peter Reap, J.D., LL.M.

After considering all of the relevant factors and keeping in mind that the evidence showed appreciation by consumers and the wine market of petitioner Joseph Phelps Vineyards’ INSIGNIA mark for wines and the significant fame of the petitioner’s mark among consumers of wine, the Trademark Trial and Appeal Board has reversed its earlier ruling and decided that there is a likelihood of confusion between petitioner’s mark and the respondent Fairmont Holdings’ mark ALEC BRADLEY STAR INSIGNIA for cigars, tobacco, cigar boxes, cigar cutters, and cigar tubes. The fame of the petitioner’s mark, an issue for which the Board had previously used an incorrect standard for in its original opinion, leading to reversal by the Federal Circuit, bore upon both the relationship of the marks and the relationship of the goods, the Board held on remand. Thus, the petition to cancel the registration of the respondent’s mark on the ground of likelihood of confusion under Section 2(d) of the Trademark Act was granted (Joseph Phelps Vineyards LLC v. Fairmont Holdings, Inc., January 3, 2019, Gorowitz, F.).

The petitioner appealed the Board’s prior decision denying the petition to cancel to the Federal Circuit. That court vacated the Board’s decision "solely on the basis that the Board used an incorrect standard for fame" and remanded the matter to the Board "for redetermination of the merits of the cancellation petition." On remand, the Board noted that in order to appropriately balance the factor of fame in our likelihood of confusion analysis, it would discuss all of the du Pont factors for which there was evidence of record.

Fame of the petitioner’s mark. The Federal Circuit has consistently stated that fame of the mark is a dominant factor in the likelihood of confusion analysis independent of the consideration of the relatedness of the goods, the Board noted. Fame for confusion purposes arises as long as a "significant portion of the relevant consuming public ... recognizes the mark as a source indicator." Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1695 (Fed. Cir. 2005).

The petitioner has been using the INSIGNIA mark for wine for approximately 40 years. At trial, the petitioner did not provide any of its own advertising expenditures for INSIGNIA wine, but did provide sales figures. Since 2000, sales of its INSIGNIA wine have "ranged between 10,000 to 15,000 cases per year representing revenue between $13 million to $20 million per year." In the Board’s earlier decision, it was found significant that there was no evidence about advertising expenditures and no evidence as to market share. However, the Federal Circuit recently observed that market share is not required for a finding of fame and that other contextual evidence could suffice, the Board observed.

The petitioner did provide appropriate context for its assertion of fame, including the fact that it has promoted INSIGNIA wine on its website "for at least 10 years" and the "website now includes a shopping cart for wine that receives over 17,000 unique visitors per month on average." Also, the petitioner testified about awards received by the petitioner and provided articles about INSIGNIA wine.

The mark has achieved a high level of fame with connoisseurs of fine wine, particularly of Cabernet Sauvignon-based wines, the Board concluded. It was not clear from the record the extent to which general consumers and end users of fine wine, other than connoisseurs, are exposed to the wine-themed publications and therefore, among those consumers the Board found a lesser degree of fame. The mark has achieved, overall, a significant level of fame among consumers of wine, according to the Board. While there was no context for sales figures and website visitors, the figures provided were not insignificant. In addition, the long use of the mark, repeated receipt of awards for INSIGNIA branded wine, and the references in specialized and general circulation publications, considered together, established fame.

The similarity or dissimilarity of the marks. Here, the petitioner’s mark consists solely of the word INSIGNIA while the respondent’s mark is the composite phrase ALEC BRADLEY STAR INSIGNIA, which is in standard character format. The specimen filed with the application showed the mark as actually used with the house mark ALEC BRADLEY on top of an emblem and the product mark STAR INSIGNIA, stacked under the emblem with the word INSIGNIA appearing in larger font. The emblem is a natural separation between the house mark and the product mark, the Board noted. The product mark, STAR INSIGNIA incorporates all of the petitioner’s mark INSIGNIA prefaced by the word STAR. The word INSIGNIA is approximately twice the size of the word STAR, and thus is the physically dominant part of the product mark.

When considering the specimen, the commercial impressions of the respondent’s product mark and petitioner’s mark are very similar, the Board opined. The common word in the marks, "insignia," is defined as: a badge of authority or honor; and, a distinguishing mark or sign. Thus, the commercial impression of the petitioner’s mark INSIGNIA is simply an "insignia" or badge or sign, and the commercial impression of the respondent’s product mark STAR INSIGNIA is a badge or sign featuring a star design or element.

Viewing the respondent’s mark in its entirety did not change the commercial impression of it as a badge or sign featuring a star design or element. Based thereon, the marks, as viewed in their entireties, are similar in commercial impression and meaning, according to the Board. Overall, the similarities in the marks outweigh any dissimilarities and the first du Pont factor favors a finding of likelihood of confusion.

Third-party use and registration. There was little support for the respondent’s argument that the mark INSIGNIA for wines is weak apart from two registrations of record. This evidence was insufficient to establish weakness.

The similarity or dissimilarity of the parties’ goods. To establish that wine and cigars are complementary products, the petitioner submitted webpages which advertise or promote cigar bars, cigar stores, wine bars, wine stores and events featuring wine and cigars, which established that the products are sold in the same channels of trade. It also submitted evidence of sales of flavored cigars, which are infused with different flavorings, including wine.

The evidence suggested that cigars and wine can be used together and that the same mark can be used for both products. Thus, the evidence suggested that the goods are sold in the same channels of trade to the same purchasers and established that the goods are sufficiently related for likelihood of confusion purposes, involving a famous mark, the Board said.

The conditions under which and the buyers to whom sales are made. Neither party’s goods are restricted to "expensive" or "high-end" products. Thus, the Board was required to consider the sophistication of all potential consumers of wine and cigars, including those who purchase "inexpensive," "low-end" products."

No actual confusion. While a showing of actual confusion would be highly probative of a high likelihood of confusion, the opposite is not true. The lack of evidence of actual confusion carries little weight, particularly where, as here, it was not clear how much opportunity there has been for actual confusion in the marketplace.

Conclusion. Employing the totality of the circumstances standard, there is a likelihood of confusion between the two marks, the Board ruled.

This case is Cancellation No. 92057240.

Attorneys: Thomas Schneck (Law Offices of Thomas Schneck) for Joseph Phelps Vineyards LLC. Kimberly Koblack (Law Offices of Kimberly Koblack) for Fairmont Holdings, Inc.

Companies: Joseph Phelps Vineyards LLC; Fairmont Holdings, Inc.

MainStory: TopStory Trademark USPTO

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