Here we go again. Vini, Vidi, non Vici. The USPTO refused registration of the mark MASQUERADE for “sparkling wines; wines,” finding the mark confusingly similar to the registered mark MASCARADE for “mixed beverage containing alcohol and fruit juice.” Applicant appealed. Examining Attorney Rebecca Smith relied on a number of third-party registrations the covered wine and other alcoholic beverages, but applicant pointed out the none of the registrations included the specific goods identified in the cited registration. How do you think this came out? In re 8 Vini, Inc., Serial No. 85857391 (January 16, 2015) [not precedential].
Applicant urged that MASCARADE is a French word that translates into English as “farce,” while MASQUERADE is an English word meaning, roughly, a party where people where masks. The Board, however, refused to apply the doctrine of foreign equivalents because the relevant consumers were not likely to translate MASCARADE, and also because its was not sufficiently clear that it the word would be translated as applicant contended.
Instead, the Board applied its “traditional” approach to consideration of the marks. It found that the marks have similar spellings, that the first portion of the marks sounds the same, that the meanings will be perceived as the same since consumers will see MASCARADE as a variant of MASQUERADE, and therefore that the marks are similar in overall commercial impression.
But what about the goods? The USPTO’s evidence included 14 use-based registrations that included both wine and alcoholic beverages containing fruit, although none of the registrations included the specific goods of the cited registration. Applicant argued that “mixed beverages” or mixed drinks are beverages that are typically prepared by a bartender and sold on the premise: i.e., they are “mixed,” and not just a combination of alcohol and fruit juice. The Board pointed out, however, that nothing in the cited registration required that the beverages be mixed by a bartender, nor did any record evidence support such an implication.
Several websites and a Wikipedia entry indicated that cocktails may be mixed with wine, and therefore the beverages of the registration, containing “alcohol and fruit juice,” may include wine and fruit or fruit juice. And the Board noted that various alcoholic beverages have been found to be related for the purposes of the likelihood of confusion analysis. [E.g., beer and ale, tequila and malt liquor, beer and wine, scotch whiskey and gin and vodka, brandy and beer, cola flavored liqueur and brandy, fruit juice and wine].
Based on the nature of the goods, the third-party registrations and Internet evidence before us, we conclude that Applicant’s wines are related to Registrant’s mixed beverage containing alcohol and fruit juice, such goods being alcoholic beverages that may emanate, as shown by the evidence, from the same source and under the same mark. Further, the evidence shows that wine, as an alcoholic beverage, may be combined with fruit and/or fruit juice to make cocktails.
The Board presumed that the respective goods would travel in all normal channels of trade, including the same liquor stores, bars, or restaurants, to the same ordinary consumers.
The Board therefore concluded that confusion is likely, and it affirmed the refusal.
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TTABlog note: Well, do you agree with the Board? Are you convinced by the opinion?
Text Copyright John L. Welch 2015.