Fame?:The Board first addressed opposer’s claim of fame. In assessing the relative strength of a mark along the spectrum of strength, the Board considers both inherent strength and commercial strength. “We assess the inherent or conceptual strength of a mark in terms of where it falls on the spectrum of distinctiveness, . . . and the commercial strength of a mark by the degree of its marketplace recognition.”
The Board found the mark JACQUIN’S in stylized form to be inherently distinctive and thus conceptually strong. However, the standard character mark JACQUIN was registered under Section 2(f) and thus is concededly not inherently distinctive, and therefore is conceptually weak. As to commercial strength, opposer’s sales figures without contextual evidence were insufficient to show that either of its marks is commercially strong.
Opposer’s JACQUIN’S typed drawing mark is conceptually weak, while its JACQUIN stylized mark is conceptually strong, and, on this record, we can find at most that both marks have average commercial strength. Contrary to Opposer’s claim that its marks are “well-known and entitled to broader protection,” 22 TTABVUE 8, we find that they are entitled at best to a normal scope of protection. This du Pont factor is thus neutral in our analysis of likelihood of confusion.
The Marks: Opposer pointed to the common letters JACQU in the involved marks, but provided “no evidence that JACQU would be viewed by American consumers as a discernable, discrete feature of either the name JACQUES or the name JACQUIN.” The Board found the marks to be “quite dissimilar” in appearance and sound.
As to meaning, the Board declined to apply the doctrine of foreign equivalents because the constituent elements of the applied-for mark are words known to American consumers. JACQUES will be recognized as a male given name and the French form of Jacob or James. “Opposer’s marks have a secular commercial impression relating to a family business, while Applicant’s mark has a
distinct religious connotation, and Applicant’s mark consists of the familiar words VIA SAINT JACQUES, while Opposer’s marks contain forms of the unfamiliar surname JACQUIN.”
In sum, “[t]he marks are quite dissimilar in appearance, sound, and connotation and commercial impression when considered in their entireties.” This factor weighs strongly against a finding of likely confusion.
The Goods: The Board noted once again that there is no per se rule that all alcoholic beverages are related. Opposer’s evidence of relatedness of the goods was minimal: two third-party registrations covering ““alcoholic beverages, except beer,” and testimony that the involved goods fall in the same International Class and travel in the same channels of trade.
Given the specific types of alcoholic beverages here, the presence in the record of only two registrations whose broad identifications of goods cover all alcoholic beverages except beer, and the absence from the record of evidence of third-party registrations covering French wines from Alsace and distilled spirits or evidence showing that those goods actually emanate from the same source under the same mark, we find that Opposer did not show that the identified alcoholic beverages are related.
Channels of Trade: Opposer’s testimony sufficed to prove that “alcoholic beverages are sold through common channels of trade to presumably overlapping ordinary purchasers,” and so this factor favored a finding of likely confusion.
Third-Party Registrations: Applicant submitted 10 use-based third-party registrations for marks containing the name JACQUES (or the variant JACQUE) for various alcoholic beverages, including wines and brandy. The Board pointed out, however, that registrations alone are not probative on the issue of commercial strength. “The “real evidentiary value” of third party registrations is to show the sense in which a term is used in ordinary parlance. If a term has a relevant, well-understood meaning, it may be considered a weak formative.
The Board noted that the involved marks do not share the word JACQUES, and it concluded that applicant’s evidence “at most merely corroborates Applicant’s dictionary evidence indicating that American consumers would understand JACQUES to be a first name when it appears in Applicant’s mark.”
Conclusion: Balancing the relevant du Pont factors, the Board found that opposer failed to prove by a preponderance of the evidence that the mark VIA SAINT JACQUES is likely to cause confusion as to the source or sponsorship of applicant’s goods.
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TTABlog comment: Well-written opinion worth reading.
Text Copyright John L. Welch 2018.