Case law establishes that classification as a certification mark “has very little effect on our determination as to whether or not there is a likelihood of confusion.” The Section 2(d) test is the same: the du Pont analysis, applied from the standpoint of the users of the certification mark. In re Accelerate s.a.l., 101 USPQ2d 2047, 2049 (TTAB 2012).
The Goods: The Board found that applicant’s broadly identified “alcoholic beverages except beers,” encompass the more narrowly identified “distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant” provided by users of the certification mark. Since the goods are legally identical, the Board must presume that they travel in the same trade channels to the same classes of purchasers.
The Marks Because the goods overlap, a lesser degree of similarity between the marks is needed to support a finding of likely confusion. The Board found the marks to be “highly similar” in appearance. The pronunciation of the marks will be similar due to the construction of the two marks. In short, the marks give “the impression of being minor variations of one another.” As to meaning, applicant’s mark “suggests a subset of Opposer’s TEQUILA emanating from or associated with the United States of America.” The Board found the marks to be “more similar than dissimilar.”
Balancing the relevant DuPont factors, the Board found confusion likely and so it sustained the opposition.
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TTABlogger comment: You may recall that in 2017, the Board dismissed an opposition to registration of TEQUILA as a certification mark, finding that Opposer Luxco failed to prove its claims of its claims of genericness, lack of legitimate control, and fraud. [TTABlogged here].
Text Copyright John L. Welch 2020.