In another noteworthy opinion on relatedness of goods, the Trademark Trial and Appeal Board (“TTAB”), on remand from the Court of Appeals for the Federal Circuit (“CAFC”), found wine to be related to cigars. In this cancellation proceeding, Joseph Phelps Vineyards, LLC, owner of the mark INSIGNIA for wine since 1979, petitioned to cancel Fairmont Holdings mark, ALEC BRADLEY STAR INSIGNIA, for cigars, tobacco, cigar boxes, cigar cutters, and cigar tubes.
Initially the TTAB denied the petition for cancellation but on appeal the CAFC vacated on the basis that the TTAB applied an incorrect standard for fame and tasked the TTAB, on remand, to reconsider all relevant factors necessary for a showing of likelihood of confusion applying the correct standard for fame.
Although fame alone is insufficient to establish likelihood of confusion, the TTAB noted that “fame of the mark is a dominant factor in the likelihood of confusion analysis independent of the consideration of the relatedness of the goods.” When evidence of fame exists, the scope of protection is widened to include greater disparity in determining relatedness. The TTAB found that the INSIGNIA mark for wine has achieved a high level of fame with connoisseurs of fine wine and, overall, a significant level of fame among consumers of wine. After consideration of the evidence of fame, which bears on the relationship of the marks and the goods, the TTAB reversed its prior decision and found a likelihood of confusion between INSIGNIA for wines and ALEC BRADLEY STAR INSIGNIA for cigars. In doing so, the Court noted that the similarities in the marks outweighed the dissimilarities and that the goods “are sufficiently related for likelihood of confusion purposes, involving a famous mark.”
Here, fame was a significant and dominant factor in the analysis affecting the relationship of the goods. Would this have turned out differently if the mark was not famous? Awhile back we posted “Spoiler Alert! Alcohol and Cigars Are Complementary Products,” about another opinion finding cigars related to alcohol. It seems that this trend will continue as once again the TTAB has found cigars related to alcohol products.