IP Law Daily, TRADEMARK—TTAB: Application for IMMORTAL wine mark refused for likely confusion, (Jun 25, 2020)

By Donielle Tigay Stutland, J.D.

The applicant’s composite mark consisting of the word IMMORTAL with a jellyfish design too closely resembled the previously registered mark THE IMMORTAL ZIN in sound and meaning.

A USPTO examining attorney’s refusal of an application featuring the word IMMORTAL, with a design of a jellyfish in the letter "O," in connection with wine, has been affirmed by the Trademark Trial and Appeal Board because it so resembled the registered mark THE IMMORTAL ZIN for wines that it would be likely to cause consumer confusion. The TTAB found the goods, the channels of trade and the classes of consumers were identical. In determining that the word "IMMORTAL" was the dominant portion of the applicant’s mark, the TTAB also found the marks quite similar in sound and meaning (In re Hidden Ridge Vineyard, LLC, June 24, 2020, Larkin, C.).

Hidden Ridge Vineyard sought to register a mark for the word "IMMORTAL" with a design of a jellyfish in the place of the letter "o" for wine. The Application was refused because the examining attorney found it resembled the mark for THE IMMORTAL ZIN for "wines" as to be likely as to be likely, when used on the goods identified in the application, to cause confusion, to cause mistake, or to deceive. The Applicant sought appeal with the TTAB. The TTAB examined the factors set forth in In re E.I. du Pont de Nemours & Co., to determine the likelihood of confusion ("DuPont factors").

Similarity of goods and trade channels. The first two DuPont factors were described by the TTAB as key regarding the similarity of marks and the goods and services. Under the first factor, the TTAB must consider the "the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression." The second factor involves the similarity or dissimilarity and nature of the goods or services as described in an application or registration. The TTAB first looked at the second and third factors and concluded that "wine" and "wines" constitute identical goods. Likewise, the court found that since the marks were for the same goods, they would be distributed through the same trade channels and have the same customers.

Similarity of the marks. Given that the TTAB found the goods to be identical, it then turned the analysis to the first DuPont factor, and examined the similarity of the marks, noting that because the goods were identical, less similarity between the marks was needed to find a likelihood of confusion. Hidden Ridge argued that "consumer confusion is unlikely between the subject marks because Applicant's design Mark creates a visually distinct connotation and a different commercial impression than the Cited Mark," and that the appeal should be granted because the examining attorney "erred by finding that the allegedly dominant portion of Applicant’s Mark is the word ‘IMMORTAL,’ not the jellyfish." The applicant contended that its stylized jellyfish was the dominant element of its mark, and that a "a consumer must carefully examine the Mark before realizing the letters in conjunction with a jellyfish form the term ‘IMMORTAL.’"

The TTAB disagreed with Hidden Ridge’s analysis, and found the word "IMMORTAL" was the dominant portion of the mark. First, in contrasting the applicant’s mark to cases in which the design element was found to be dominant, the TTAB indicated that the jellyfish design element was "integrated into and forms a part of the word element." The TTAB wrote, "Indeed, there would be no identifiable word in the mark without the design," and found that the examples cited by the applicant all showed images that were either separate and independent from the literal features of the mark, or marks "dominated" by the design features.

The TTAB also indicated that in the labeling of the wine, on the applicant’s website, as well as various press articles, the word "Immortal" was used, and none of these things referenced "Immortal Jellyfish" or "Jellyfish." Thus, the TTAB inferred that consumers will similarly use the word "Immortal," not "Immortal Jellyfish" or "Jellyfish" to refer to the applicant or the wine. The TTAB noted that on restaurant and bar menus, it would be very likely that the wine was referred to as Immortal. Again, this reasoning led the TTAB to conclude that the "word IMMORTAL formed by the letters and design in Applicant’s mark, and not the jellyfish design itself, is the dominant portion of the mark."

The TTAB then focused on the similarity of the marks with respect to appearance sound, connotation and commercial impression. While the TTAB agreed with the applicant that the two marks had differences in their appearances, the marks were closely similar in sound, as the word Immortal were dominant in both. With respect to connotation and commercial impression, the TTAB noted that it need not consider only how the cited marks appear on labels, but on menus and wine lists as well. Although the applicant argued that the TTAB should consider that the use of the word Immortal referred to an Immortal Jellyfish and the registered mark holder was referring to an Immortal Sin, the TTAB nonetheless noted that in both cases the word Immortal modified the second word, and in both cases the word connoted that the wines were long-lasting and timeless. The TTAB found the first DuPont factor would support a likelihood of confusion; though the marks differ in appearance, they are similar in sound, connotation, and commercial impression.

Purchase conditions and degree of purchaser care.The TTAB then reviewed the fourth DuPont factor, the conditions under ‘[t]he conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.’" The TTAB noted that the law assumes the buyer acts with some degree of care. The applicant argued that given that it only sold one type of wine and only sold it via its website or through wine tastings, there was "zero chance that a reasonably prudent buyer who is not indifferent or foolish will make an impulse purchase of Applicant’s $97-$303 per-bottle wine at a grocery store, where Applicant’s wine is not sold." The TTAB disagreed with this argument, noting that the TTAB may look at the sophistication of all potential customers, not just actual customers. The TTAB concluded that there "is no reason to infer that the consumers or purchasers of these alcoholic beverages will be particularly discriminating or careful in distinguishing Applicant’s wine from Registrant’s," and was neutral on the court DuPont factor.

Fame of the cited mark; similar marks; absence of actual confusion.While the applicant argued that the registered mark was not famous, the TTAB noted that in an ex parte appeal the fame of the mark factor was normally treated as neutral. With respect to the sixth factor, the applicant noted that there were numerous marks for other alcoholic beverages with the word Immortal. However, the TTAB agreed with the examining attorney that the handful of other registrations were insufficient to show the mark was weak. The TTAB was also neutral with respect to the absence of any actual confusion evidence, given the short time that the two wines had actually been in the marketplace together.

Because the TTAB found the goods, channels of trade and classes of consumers identical, as well as the marks quite similar in sound and meaning, it affirmed the refusal to register the mark.

This case is Serial No. 87868652.

Attorneys: Matthew D. Francis (Brownstein Hyatt Farber Schreck, LLP) for Hidden Ridge Vineyard, LLC. Raymond Harmon for the USPTO.

Companies: Hidden Ridge Vineyard, LLC

Cases: Trademark GCNNews USPTO