In the case In re El Galan, Inc, the Trademark Trial and Appeal Board (TTAB) held that there was a likelihood of confusion between marks covering cigars and tequila, finding that such products are related and complementary. Although this case is not precedential, it provides guidance to parties attempting to ascertain whether a mark will be available for registration and exploring arguments available to assist in overcoming likelihood of confusion refusals made by a Patent and Trademark Office (PTO) examiner.
El Galan sought to register the mark TERNURA for cigars but its application was refused by the PTO examiner based on a likelihood of confusion with an existing registration for the identical TERNURA mark covering various alcoholic beverage products. El Galan then appealed the refusal to the TTAB. The TTAB affirmed the refusal.
As part of its analysis, the TTAB noted that, for purposes of finding a likelihood of confusion between two marks, it is not necessary that the goods are identical or even competitive. Rather, the TTAB held that the goods only need to be related in some manner and/or the circumstances surrounding their marketing need to be such that they could give rise to the mistaken belief that the goods emanate from the same source. In this case, the TTAB was persuaded by evidence put forward by the examiner demonstrating that third parties produce and offer for sale both cigars and alcoholic beverages under the same mark and that such products are often marketed together for simultaneous consumption.
El Galan argued that longstanding case law existed which held that tobacco and alcohol are not related "unless the prior registered mark is well-known or famous and an applicant has chosen its mark to exploit [such] registrant's mark." The TTAB responded to this argument by pointing out that the alcohol industry practice has evolved in the nearly 50 years since the decision in the case cited by El Galan was issued and, in the current marketplace, it is not uncommon for companies to sell both cigars and alcoholic beverages under the same mark, even if such mark is not famous.
In this connection, the TTAB made one of several distinctions between an ex parte proceeding (i.e. an appeal of a refusal to register) and an inter partes proceeding (i.e. a dispute between two parties). Firstly, the TTAB noted that the absence of fame of the registrant's mark is not considered in ex parte proceedings since the examiner is not expected to submit evidence regarding the fame of the mark. Secondly, the TTAB noted that for purposes of the likelihood of confusion analysis, the marks are compared only as they appear in the cited registration and the application and the product packaging and other evidence of how the marks are used in the marketplace are not considered. While these factors may have been influential in an inter partes proceeding, they were not considered in this case.
This case is instructional for parties conducting trade mark clearance as they determine whether a registered third party mark covering related products may serve as an impediment to the availability of a proposed mark for registration.
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Karen Artz Ash |
Bret J Danow |
Katten Muchin Rosenman LLP
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New York, NY 10022-2585
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