On remand from the CAFC, the Board granted a petition for cancellation of a registration for the mark ALEX BRADLEY STAR INSIGNIA for “cigars, tobacco, cigar boxes, cigar cutters and cigar tubes,” finding the mark likely to cause confusion with the registered mark INSIGNIA for wines. The CAFC (here) concluded that the Board had applied an “incorrect standard for fame,” and it remanded the case to the TTAB for determination utilizing the correct standard. [TTABlogged here]. Joseph Phelps Vineyards LLC v. Fairmont Holdings, Inc., Cancellation No. 92057240 (January 3, 2019) [not precedential] (Opinion by Judge Francie R. Gorowitz)

The CAFC pointed out that, unlike for dilution, fame for likelihood of confusion purposes is not an “all-or-nothing” proposition. Consequently, the Board “did not properly apply the ‘totality of the circumstances’ standard, which requires considering all the relevant factors on a scale appropriate to their merits.

In a concurring opinion, Judge Pauline Newman pointed out two additional issues that should be reviewed on remand. First, the Board failed to consider the actual usage of respondent’s mark, with the words ALEC BRADLEY separated from STAR and INSIGNIA, in a different font and size. [See specimens of use above]. Second, the issue of relatedness of the goods should be further considered, since the Board found that the evidence “suggests that the goods are sold in the same channels of trade to the same purchasers.” Again, the Board treated this factor as an all-or-nothing proposition, but the evidence of relatedness should be considered on a “sliding scale.”

On remand, the Board found that the INSIGNIA mark “has achieved a high level of fame with connoisseurs of fine wine, particularly of Cabernet Sauvignon-based wines,” but a lesser degree of fame with other wine consumers.

We conclude that the mark has achieved, overall, a significant level of fame among consumers of wine. While we have no context for sales figures and website visitors, the figures we have been provided are 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, establish fame.

As to the marks, the Board considered the actual manner of use of respondent’s mark on its specimen of use, noting that respondent’s registration makes no claim to any font, style, color, or size of display, and therefore is not limited to any particular presentation. Judge Newman had observed that “the dominance of the word INSIGNIA as used on Fairmont’s products is indeed an issue,” and that “the actual use of the ALEC BRADLEY STAR INSIGNIA mark presents a different impression to the consumer than the standard character mark . . . .”

The Board concluded that “the similarities in the marks outweigh any dissimilarities..

Turning to the goods, “the evidence of use of the same mark on both cigars and wine is not extensive,” but it suggested that “cigars and wine can be used together and that the same mark can be used for both products.” The evidence further suggested that the cigars and wine are sold in the same channels of trade to the same purchasers. The Board concluded that the goods “are sufficiently related for likelihood of confusion purposes, involving a famous mark.”

The Board recognized that the parties target sophisticated customers, but the Board must consider the parties’ goods as they are identified in the relevant registrations. Neither registrations restricts the goods to “expensive” or “high-end” products, and therefore the Board must consider all potential consumers of wine and cigars, even the unsophisticated purchasers of cheap wine and cigars.

Considering “the totality of the circumstances standard,” i.e., “consider[ation of] all the relevant factors on a scale appropriate to their merits,” as directed by the CAFC, and “taking into proper
consideration the evidence of fame, which bears on both the relationship of the marks and the relationship of the goods,” the Board found confusion likely and it therefore granted the petition for cancellation.

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TTABlog comment: Wine and cigars related? The marks are similar? Gimme a break, CAFC!

Text Copyright John L. Welch 2019.