IP Law Daily, TRADEMARK—TTAB: Cancellation of SEXTO trademark registration denied as confusion unlikely with THE SEXTON, (Jul 28, 2025)

By Carolin Dennis, B.Sc., LL.B., LL.M.

SEXTO mark for alcoholic beverages is not likely to cause confusion with THE SEXTON mark for whiskey because the dissimilarity between the marks outweighed the other applicable DuPont factors.

In a nonprecedential decision, the Trademark Trial and Appeal Board (TTAB) denied the petition for cancellation of West Road Spirits LLC’s registration of the mark SEXTO on the ground of likelihood of confusion under Section 2(d) of the Trademark Act with Proximo Spirits, Inc.’s registered mark THE SEXTON for whiskey. The TTAB, upon considering the DuPont factors for evaluating a likelihood of confusion, found that no confusion was likely because the dissimilarities of the parties’ marks outweighed the other applicable DuPont factors (Proximo Spirits, Inc. v. West Road Spirits LLC, No. 92080766 (T.T.A.B. July 17, 2025)).

Background. West Road Spirits LLC (West Road) owns a Principal Register registration for the standard character mark SEXTO for “alcoholic beverages, except beer; alcoholic beverages, namely, distilled agave liquor,” in International Class 33. Proximo Spirits, Inc. (Proximo) sought cancellation of West Road’s registration claiming that it is likely to cause confusion with Proximo’s mark THE SEXTON (in standard characters) for “whiskey” in International Class 33. Proximo alleged that it has constructive-use priority in connection with its likelihood of confusion claim because the filing date of the underlying application for its pleaded registration precedes the filing date for the underlying application that matured into West Road’s registration. Proximo also alleged that it has used its mark prior to West Road’s first use of the SEXTO mark.

Priority. In a cancellation proceeding where both parties own registrations, priority is in issue. The TTAB found that Proximo’s pleaded registration was filed on May 31, 2016, and West Road’s registration on May 31, 2017. Further, West Road’s witness also testified that West Road “adopted its SEXTO mark” and “has been continuously selling distilled agave spirits, namely, SEXTO brand tequila” on dates that are after May 31, 2016, namely, the constructive use date for Proximo’s pleaded registration. Therefore, Proximo’s priority with respect to its pleaded registration was established.

Likelihood of confusion. In determining whether confusion is likely, the TTAB considered all relevant DuPont factors. The TTAB noted that West Road’s “alcoholic beverages, excluding beer,” is a broad description that encompasses Proximo’s “whiskey,” an alcoholic beverage. Proximo submitted evidence showing that West Road’s “alcoholic beverages, namely, distilled agave liquor,” which can be commonly referred to as “tequila” or “mezcal” and whiskey are closely related, share the same channels of trade and will be offered to the same classes of purchasers. Thus, the second DuPont factor weighed heavily in favor of finding a likelihood of confusion with respect to all of West Road’s goods identified in the registration, and particularly as to the “alcoholic beverages, excluding beer,” given the legal identity with Proximo’s whiskey. The third DuPont factor also weighed heavily in favor of finding a likelihood of confusion given the evidence showing that all of West Road’s goods may be found in the same trade channels as Proximo’s whiskey, and will be offered to the same classes of consumers.

The TTAB found Proximo’s mark THE SEXTON has no demonstrated weakness, but is conceptually strong because the term is arbitrary in connection with whiskey. Further, evidence demonstrated that Proximo’s mark has enjoyed success in terms of sales in recent years as well as received considerable attention in terms of industry awards and exposure through promotions in conjunction with television programs. Accordingly, the fifth DuPont factor weighed in favor of a conclusion that confusion is likely. However, the TTAB found the sixth DuPont factor, involving any possible weakness due to third-party use of the same or similar term on the same or related goods, was neutral.

Under the first DuPont factor the TTAB found the marks dissimilar because Proximo’s mark, THE SEXTON, has a specific meaning in English and may be distinguished from West Road’s mark, SEXTO, that has no meaning in English. The TTAB noted that Proximo has acknowledged in the context of DuPont the conceptual strength of its mark, a “sexton” is “a church officer or employee who takes care of the church property and performs related minor duties such as ringing the bell for services and digging graves.” West Road’s registered mark, SEXTO, on the other hand, has no understood meaning in English and has no meaning or connotation similar to that of the word “sexton.” In addition, the TTAB noted that West Road’s mark SEXTO is merely one letter away from SEXTON and the omission of the letter N at the end of West Road’s mark is significant because consumers are unlikely to view the mark as a misspelling of SEXTON. Rather, consumers are likely to perceive SEXTO as an unknown term, possibly a combination of the words SEX and TO, or if consumers understand Spanish, they will understand it to mean “sixth.” Therefore, the first DuPont factor weighed strongly against a likelihood of confusion.

The TTAB considered all relevant DuPont factors and concluded that the dissimilarities of the parties’ marks outweighed the other applicable DuPont factors. Therefore, the TTAB did not find confusion likely between Proximo’s registered mark, THE SEXTON, and West Road’s registered mark, SEXTO. Accordingly, the petition for cancellation of the registration of the mark SEXTO was denied.

The Case is Cancellation No. 92080766.

Judge: Wellington, T.

Attorneys: Erica R. Halstead and Jennifer Kwon (Womble Bond Dickinson (US) LLP) for Proximo Spirits, Inc. Micah Gunn and Clifford D. Hyra (Fresh IP LLC) for West Road Spirits LLC.

Companies: Proximo Spirits, Inc.; West Road Spirits LLC

Cases: Trademark USPTO