One of the factors that is considered by trade mark tribunals in the United States when determining whether there is a likelihood of confusion between two marks is a comparison of the goods sold under the marks at issue. The test for trade mark infringement does not require that the goods sold under the respective marks be identical, or that they are even competitive. Rather, the test requires a relatedness between goods (or services) such that the products (or services) would be likely to be encountered by the same consumers in situations that would cause the mistaken belief that the products originate from the same source or that there is some association or connection between them. The determination, therefore, often yields different results based on specific facts.
One particular sector where this issue typically arises is in the alcoholic beverage industry. Specifically, a question often posed to trade mark tribunals is whether, for example, wine and other types of alcoholic beverages are so-called related goods. Although US trade mark law specifically holds that there is no per se rule that holds that all alcoholic beverages are related, historically, the USPTO commonly found confusing similarity between different types of alcoholic beverages, holding that in view of the common channels of trade, consumers would likely encounter the respective marks in the same place.
Recently, however, the US Trademark Trial and Appeal Board (TTAB) has trended away from the earlier view that different types of alcoholic beverages are related for purposes of making a likelihood of confusion analysis. For example, even though both wine and vodka fall into the general category of alcoholic beverages and are sold to the same category of purchasers (namely, persons of legal drinking age), recent holdings by the TTAB indicate that these factors, alone, do not constitute a sufficient basis to compel the conclusion that such goods are related. Instead, trade mark tribunals seem more willing to look at additional facts regarding the specific beverages at issue to ascertain whether a consumer would be confused into believing that such products emanate from a single source.
In the past, brand owners in the alcoholic beverage industry may have been hesitant to attempt to overcome a refusal to register a trade mark covering a specific type of alcoholic beverage based upon a likelihood of confusion with a third party mark covering a different type of alcoholic beverage. However, recent case law indicates that there may now be increased flexibility by examiners in the USPTO – and, ultimately, judges at the TTAB level – to consider specific evidence to overcome such refusals. Therefore, trade mark owners in the alcoholic beverage industry who have had trade mark applications refused by the PTO would be wise to confer with US trade mark counsel to ascertain whether, in view of recent case law, there are viable arguments to overcome such refusals.
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| Karen Artz Ash and Bret J Danow |
Katten Muchin Rosenman LLP
575 Madison Avenue
New York, NY 10022-2585
United States
Tel: +1 212 940 8554
Fax: +1 212 940 8671
karen.ash@kattenlaw.com
www.kattenlaw.com