Earlier this month, the Trademark Trial and Appeal Board (TTAB) affirmed the Trademark Office Examiner’s refusal to register the mark TERNURA for cigars. See In re El Galan, Inc., Serial No. 86961428 (T.T.A.B. Feb. 1, 2018) (non-precedential). The TTAB agreed with the Examiner that consumers are likely to be confused by alcoholic beverages and cigars sold under identical marks, specifically because the goods are complementary products. The TTAB compared the marks TERNURA for liquor, tequila, vodka, and wines in Class 33 (Reg. No. 4994298), and TERNURA for cigars in Class 34 (Serial No. 86961428).
Although several du Pont factors may be considered in a likelihood of confusion analysis, the TTAB highlighted the “fundamental inquiry,” which is the cumulative effect of the differences in the goods and the marks. Looking to the marks at issue, the TTAB unsurprisingly determined that the identical marks weigh heavily in favor of a likelihood of confusion. It further noted that where marks are identical, the degree of similarity between the goods is reduced.
In examining the similarity of the marks, the Trademark Office and courts compare the similarity in appearance, sound, meaning, and commercial impression. In this case, the applicant argued that the identical marks are in fact different because they travel in different trade channels and the products have different packaging. This argument was rebuffed by the TTAB, which rejected this extrinsic evidence. Because product packaging and trade channels are extrinsic to the marks themselves, they should not be considered in examining the similarity of the marks. Instead, the marks as they appear in the application and cited registration are considered. The TTAB also concluded that the marks gave no distinct commercial impression, because consumers would perceive that TERNURA marks similarly evoked arbitrary meanings of “kindness” or “tenderness” in association with cigars or alcoholic beverages.
In examining the relatedness of the goods—cigars and alcoholic beverage—the Board noted that the goods need not be similar or competitive to meet this factor. The inquiry is whether the “circumstances surrounding their marketing [be] such that they would give rise to the mistaken belief that goods emanate from the same source.” Where marks are identical, as with the TERNURA marks, the goods do not need to be intrinsically related. Instead, the Board noted that use of identical marks can lead to the assumption that there is a common source.
The TTAB helpfully confirmed the types of acceptable evidence in establishing relatedness of the goods, which may include news articles, advertisements showing cigars and alcoholic beverages marketed together or by the same source, or third-party trademark registrations showing that cigars and alcoholic beverages come from the same source. The Examiner offered evidence of several companies that promote, advertise, and sell both cigars and alcoholic beverages, such as Patron, Jalisco International Imports, Vineyard 48, Hammer + Sickle, Bellaterra Ranch, and Schrader Cellars.
The Examiner also provided convincing evidence of cigars and alcoholic beverages being marketed together, much of which comprised articles on pairing cigars with wine, beer, spirits, and cocktails. Logically, then, the TTAB found that these complementary goods traveled in similar trade channels, such as through liquor stores and online retailers.
The TTAB rejected the applicant’s reliance on a 1970 decision arguing that confusion is less likely if the mark that was used on alcohol and tobacco products is not famous. The TTAB noted that the industry practices have evolved greatly over the past 48 years, and it is now common in the marketplace for distillers and vinters to offer cigars and alcoholic beverages under the same mark.
Although the Board refrained from making any general rule that cigars and alcoholic beverages are related, the Board agreed that based on the record before it, the combination of identical marks used in connection with complementary goods leads to a likelihood of consumer confusion.
So, enjoy your cigar and booze pairings! It just won’t be under the same mark from different sources.