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In In re Lucien G. Lallouz, the Trademark Trial and Appeals Board (the “Board”) was asked to decide whether there would be a likelihood of confusion between CASA BLANCA for distilled spirits and CASABLANCA for wine. Somewhat surprisingly, and not in line with previous cases, the Board found there was no likelihood of confusion. Nonetheless, it is likely that this decision is limited to the unique facts of this case and lack of evidence, and is not applicable as a brightline rule for all similar cases.
Previously the Board found that when two alcoholic beverages have similar marks, they are likely to be from the same source.
Lucien G. Lallouz (“Applicant”) sought to register the standard character mark CASA BLANCA for distilled spirits.1 The Examining Attorney refused registration of the mark on the grounds that it was likely to cause confusion with a prior registered mark, CASABLANCA, for wine.2 The overarching issue being whether a similar mark on distilled spirits and wine is likely to cause confusion with a consumer. Applying the DuPont factors, the Board reversed the Examining Attorney’s finding, and ruled that there was no likelihood of confusion.
With respect to the second DuPont factor, the Board found that the Examining Attorney failed to provide evidence that tequila and wine were related goods. Specifically, the Board found that there was “no indication whether Applicant’s specific type of tequila [was] made by any of the[] wineries/distilleries” cited to by the Examining Attorney and the Examining Attorney did not provide enough evidence identifying entities which “produce and market both tequila and wine under the same trademark.”3
While the Board reversed the Examining Attorney’s finding of likelihood of confusion, the reversal was primarily due to the lack of evidence provided by the Examining Attorney. The Board’s finding of no likelihood of confusion between these marks should therefore be taken with caution.
The real break from other Board and Federal Circuit decisions comes down to the Board’s analysis of the second DuPont factor.4 The Board rejected much of the evidence the Examining Attorney presented for this factor. The Examining Attorney submitted evidence from “third-party winery, distillery, and U.S. importer/distributor websites as well as blogs purporting to show that tequila and wine are related.”5 However, the Board found that the Examining Attorney’s evidence “conflates evidence of the trade channels for wine and tequila with the relationship between the beverages themselves” and that the entities provided as evidence do not “produce and market both tequila and wine under the same trademark.”6 The Board also found the Examining Attorney’s evidence of recipes posted online that incorporate both tequila and wine as not establishing that both “rise to the level of complementary goods frequently used together in cocktail mixers”7 and both to be “distinct types of alcoholic beverages consumed individually, not together.”8 The Board found that the Examining Attorney’s evidence was unpersuasive and that the second DuPont factor weighed against a finding of likelihood of confusion.
The Board has previously ruled the other way with the second DuPont factor.9 The Court of Appeals for the Federal Circuit has similarly found spirits and wine to be related under the second DuPont factor.10 For example, in In re Cruz, the Board found that the PA’DENTRO mark for tequila and the registered mark ADENTRO for wines were similar under the second DuPont factor.11 The Examining Attorney provided evidence of “eleven active third-party, used-based registrations showing that the same entity has registered a single mark identifying both tequila and wine.”12 The Examining Attorney also provided evidence showing “e-commerce direct-to-consumer website, charbay.com, demonstrating that a single entity provides both tequila and wine under the same trademark.”13 The Board found this to be acceptable evidence.
As another example, in Monarch Wine Co. v. Hood River Distillers, Inc., the Board also found that the MONARCH mark for “Scotch whiskey, Canadian whiskey, rum, brandy and vodka” was similar to the MONARCH mark on wines and champagne.14 The Board reasoned that:
the products of both parties are alcoholic beverages which flow through the same channels of trade to the same class of purchasers, and we believe that a prospective purchaser of an alcoholic beverage upon entering and browsing through the various alcoholic products located or displayed on the various shelves or counters in retail liquor establishments would, upon encountering a whiskey, rum, brandy or vodka identified by the term “MONARCH”, and then continuing on his jaunt to another counter or section of the same store and seeing a wine or champagne sold under the identical mark “MONARCH”, be likely to believe that both products originated with the same producer.15
Using this reasoning, the Board found that the marks at issue were “so commercially related that purchasers familiar with opposer’s wine and champagne sold under the mark ‘MONARCH’ might reasonably assume upon encountering applicant’s distilled alcoholic beverages in the nature of whiskey, rum, brandy and vodka, bearing the identical mark, ‘MONARCH’, that such products had their origins in, or were in some way connected with, opposer.”16
While the Board in In re Lucien G. Lallouz found that tequila with a CASA BLANCA mark and wine with a CASABLANCA mark were not related goods this is due to the Examining Attorney’s lack of evidence concerning entities that produce wine and tequila under the same trademark. This case should not be taken as a bright line rule that tequila and wine are not related goods and instead viewed as limited to the facts of this case.