Wednesday, May 24, 2017

CAFC vacates TTAB because of an analysis of the "fame" factor which was "contrary to law"

Joseph Phelps Vineyards, LLC (“Vineyards”) has produced
and sold wines bearing the trademark INSIGNIA
since 1978, and brought a cancellation proceeding against
Fairmont Holdings, LLC (“Fairmont”) who
received federal registration for the mark ALEC
BRADLEY STAR INSIGNIA for cigars and cigar products.

The TTAB denied the petition, but the TTAB decision was vacated by the CAFC.
The CAFC found the decision was "contrary to law":

TTAB erred in its legal analysis, in analyzing the “fame”
of INSIGNIA wine as an all-or-nothing factor, and discounting
it entirely in reaching the conclusion of no
likelihood of confusion as to source, contrary to law and

From the decision:

The record contains many more examples. We are perplexed
at the Board’s finding that INSIGNIA wine has no
“fame,” giving no discernable weight to this factor. The
TTAB applied an incorrect standard, for “fame” is determined
from the viewpoint of consumers of like products.
The record shows appreciation by consumers and the wine
market of Vineyards’ INSIGNIA brand. It was error to
refuse to accord any “fame” to Vineyards’ INSIGNIA
mark. The factor of “fame” warrants reasonable weight,
among the totality of the circumstances.

Judge Newman wrote separately and observed:

Of course, cigars and wine are different. However, as
noted in Hewlett-Packard Co. v. Packard Press, Inc., 281
F.3d 1261, 1267 (Fed. Cir. 2002), “[e]ven if the
goods . . . are not identical, the consuming public may
perceive them as related enough to cause confusion about
the source or origin.” See In re Shell Oil Co., 992 F.2d
1204, 1207 (Fed. Cir. 1993) (the Board is to “consider the
degree of overlap of consumers exposed to the respective
services, for . . . even when goods or services are not
competitive or intrinsically related, the use of identical
marks can lead to the assumption that there is a common
The Board treated relatedness as an all-or-nothing
factor, although this factor should be analyzed along a
sliding scale. As stated in DuPont, there is
no warrant, in the statute or elsewhere, for discarding
any evidence bearing on the question of
likelihood of confusion. Reasonable men may differ
as to the weight to give specific evidentiary elements
in a particular case. In one case it will
indicate that confusion is unlikely; in the next it
will not. . . . In every case turning on likelihood of
confusion, it is the duty of the examiner, the board
and this court to find, upon consideration of all
the evidence, whether or not confusion appears
likely. That determination ends the decisional
In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1362
(C.C.P.A. 1973).

Judge Newman mentioned In re Licores Veracruz, S.A. de C. V., Serial No.
77753913 (TTAB January 26, 2012) and observed:

In the present case, the TTAB relied
on different reasoning: “Thus, the mere fact that two
goods are used together in the same setting or venue does
not, in and of itself, demand a finding that confusion is
likely.” TTAB Op.14 (quoting 4 J. McCarthy, on Trademarks
and Unfair Competition § 24:26 (4th ed. 2015)).
McCarthy cautions that these are fact-bound determinations
and that no fact may “demand” a particular outcome.
However, it devolves on the TTAB to provide


Here, the Board concluded that wine and cigars are
not “related” because they are products differing in both
composition and method of manufacture. TTAB Op. 14.
However, relatedness is a broad concept; products may
exhibit “relatedness” when they “are complementary
products sold in the same channels of trade to the same
classes of consumers.” See In re Licores Veracruz, supra
(finding that rum and cigars meet the criteria of relatedness).
See also John Walker & Sons Ltd. v. Tampa Cigar
Co., 124 F.Supp. 254, 256 (S.D.Fla. 1954), aff’d 222 F.2d
460 (5th Cir. 1955) (“Whisky and cigars are closely related
in distribution and use.”); Geo. A. Dickel Co. v. Stephano
Bros., 155 USPQ 744 (TTAB 1967) (relying on John
Walker in finding confusion for whiskey and cigarettes).
But see Schenley Distillers, Inc. v. Gen. Cigar Co., 427
F.2d 783 (CCPA 1970) (the court rejected any principle
that the same mark on tobacco and alcoholic beverage
products necessarily results in likelihood of confusion; the
court did not address the relatedness of all tobacco products
and all alcoholic beverages under all circumstances).

Separately, from Blawgsearch on May 24, 2017:


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