The Board sustained an opposition to registration of JEAN LEON’S LA SCALA for restaurant services, finding a likelihood of confusion with the registered mark JEAN LEON for wines. Although applicant was the senior user, opposer’s registration was more than 5 years old and could not be challenged under Section 2(d). Jean Leon, S.L. v. La Scala Restaurants, Corp., Opposition No. 91241804 (July 22, 2020) [not precedential] {Opinion by Judge George C. Pologeorgis).

Jean Leon opened the La Scala restaurant in Beverly Hills in 1956. He founded a winery in Spain in 1962, and in 1994 sold the winery to one Torres, who operates opposer. Jean Leon provided his written consent to registration of the JEAN LEON mark for wines.

Priority: Although applicant used its mark prior to any date established by opposer for its wines, this fact did not aid applicant, since Section 2(d) precludes registration of “a mark which so resembles a mark registered in the Patent and Trademark Office … as to be likely … to cause confusion.” [Emphasis by the Board]. “Thus, although Applicant is actually the prior user at common law, such fact is irrelevant to the question of the registrability of Applicant’s mark.” See King Candy Co., v. Eunice King’s Kitchen, 496 F.2d 1400, 182 USPQ 108, 110-11 (CCPA 1974):

[R]registration is not compulsory. We recognize that an applicant-prior user may by delay lose the opportunity to effect cancellation. The answer to that concern resides in the statute. The effect of the entire statute in such instances is to upgrade the register and, so far as registration is concerned, to balance the equities, favoring the long-standing, non-fraudulent registration against the prior user who delays too long in electing to seek registration. The right to exclusive use, in such cases, may be determined in an appropriate action in a district court. We do not regard that result as undesirable. If it were, its correction would be grist for the Congressional mill, not for ours or the board’s.

Goods and Services: The Board pointed out once again that there is no per se rule that restaurant services are related to food or beverages for purposes of Section 2(d). “Something more” is required than the mere showing these goods and services may be offered together. Opposer submitted 37 third-party registrations for marks covering both restaurant services and wine, as well as six registrations showing that well-known individuals have registered their names for alcoholic beverages and restaurant services. Opposer also provided evidence that it is not uncommon for restaurants to offer private label wines.

Relying on In re Opus One, Inc., 60 USPQ2d 1812, 1813 (TTAB 2001), the Board found that opposer satisfied the “something more” requirement, and so the second DuPont factor favored opposer.

Channels of Trade: The evidence showed that the ordinary distributions channels for wine include restaurants, that applicant sells wine at its restaurant, and that opposer’s wines were historically sold at applicant’s restaurant.

Strength of Opposer’s Mark: The evidence indicated that opposer’s wine has achieved limited commercial success for wine, and its mark would not fall on the strong end of the fame spectrum. The Board deemed this factor neutral. However, there were no third-party uses of similar marks that would weaken the JEAN LEON mark.

Similarity of the Marks: Noting that applicant’s mark encompasses opposer’s mark in its entirety, the Board found the involved marks to be more similar than dissimilar in sound, appearance, connotation and commercial impression.

Bad Faith: The Board rejected opposer’s assertion that applicant had proceeded in bad faith in filing its application to register. “[M]ere knowledge of the existence of Opposer’s registration does not, in and of itself, constitute bad faith.”

Lack of Actual Confusion: There was a lack of evidence regarding the length of time in which opposer sold its wines to applicant, and as to the extent of these sales. The lack of reported incidents of confusion may have resulted from patrons assuming that there was a relationship between the wines and the restaurant. The Board deemed this factor neutral.

Conclusion: Balancing the relevant DuPont factors, the Board found confusion likely and sustained the opposition.

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TTABlogger comment: As the senior common law user, can the restaurant stop opposer from selling its wines in applicant’s trading area?

Text Copyright John L. Welch 2020.