J.C. Newman opposed an application to register the mark GOLD CROWN for cigars, cigar boxes, and the like, claiming a likelihood of confusion with its registered mark DIAMOND CROWN for cigars and various smoking articles. The goods are identical or closely related, but what about the marks? Opposer claimed the DIAMOND CROWN is “renowned,” whereas Applicant Fairmont Holdings Media maintained that “CROWN” is a weak formative due to substantial third-party use. How do you think this came out? J.C. Newman Cigar Company v. Fairmont Holdings, Inc., Opposition No. 91239345 (May 12, 2020) [not precedential] (Opinion by Judge Frances Wolfson).

Applicant submitted 13 third-party registrations for marks including the word CROWN or CORONA for cigars: BLACK CROWN, UNDERCROWN, SHROUDED CROWN, ZINO PLATINUM CROWN (3), LA CORONA, GRAN CORONA, ENGLISH CORONAS, CORONA CLASSICO, and J.R. SPECIAL CORONA. [I count only 11 – ed.]. The Board found that “four iterations” of the term CROWN, coupled with the meaning of crown (e.g., “a mark of honor”) show that “buyers of CROWN branded cigars likely perceive the term as suggesting the cigars are of a high or superior quality.” Therefore the term “CROWN” is conceptually weak for cigars.

As to commercial strength, Opposer Newman contended that its mark “is renowned in the cigar market and among consumers of cigars.” It has sold DIAMOND CROWN cigars since 1995, and the brand allegedly is “among the best selling Super Premium cigars on the market.” Sales have been in the several millions for the past four years, but opposer did not provide any evidence of market share. The cigar has received a number of awards and media recognition. The Board concluded that the mark has “achieved some marketplace recognition.”

Applicant Fairmont argued that the term “CROWN” is “diluted” because of “[prevalent] third party use of the term ‘CROWN’ in the cigar industry.” It provided website pages from six third-party retailers advertising cigars under marks containing the word CROWN. Numerous cigars are sold under “CROWN”- formative marks: “NOBLE CROWN, SHROUDED CROWN, BLACK CROWN, and RED CROWN, which share the grammatical structure of Opposer’s mark, as well as TRIPLE CROWN COLLECTION, CROWN ACHIEVEMENT, DREW ESTATE UNDERCROWN SHADE, CROWNED HEADS, and ZINO PLATINUM CROWN SERIES.” One distributor sells both parties’ cigars.

The Board concluded that “[t]he prevalent use of “CROWN” as part of many third-party marks demonstrates that CROWN is a commercially weak component of cigar marks, thus weakening the overall commercial strength of Opposer’s mark.”

By encountering third party cigar brands utilizing the term “CROWN” under identical marketing conditions, consumers have been educated to distinguish among these cigar marks based upon their other, source-identifying, features. Accordingly, the fifth DuPont factor is neutral, while the sixth factor favors a finding of no likelihood of confusion.

Comparing the marks, the Board found find that they differ in their commercial impressions, “in light of the conceptual and commercial weakness of the term ‘CROWN,” the fact that ‘gold’ is also a color and could be perceived as such by consumers encountering Applicant’s mark, and given that the distinguishable terms in the parties’ marks are the first term in each mark, i.e., ‘GOLD’ and ‘DIAMOND,’ further establishing that it is these terms that are the dominant elements of each respective mark.”

The Board concluded that the marks, considered in their entireties, are more dissimilar than similar.

Opposer’s sophistication argument was quickly snuffed out by the Board, since the identification of goods in the cited registrations and opposed application contain no limitations as to price. The Board must make its determination in view of the least sophisticated consumer. In any case, even careful purchasers may be confused by the use of similar marks on identical goods.

Finally, the lack of evidence of actual confusion was neutral, since that may be attributable to the fact that applicant displays its mark with its house mark. In any case, the involved products have been concurrently used for only a relatively short period of time.

Balancing the relevant du Pont factors, the Board found the difference in the marks to be sufficient to make consumer confusion unlikely.

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Text Copyright John L. Welch 2020.