IP Law Daily, TRADEMARK—TTAB: Confusion likely between 100 PUNTOS and 100 POINTS marks for related alcoholic beverages and glassware, (Sep 19, 2023)

By Linda O’Brien, J.D., LL.M.

The goods of the beverage company and glassware maker could be and were sold together in a complementary manner by consumers.

The application of a beverage company to register a proposed mark of 100 PUNTOS for its alcohol beverages and cocktail mixes was properly refused, the Trademark Trial and Appeal Board has determined. The proposed mark was likely to cause confusion among consumers with the registered 100 POINTS mark for alcoholic beverage glassware. Thus, the refusal to register with respect to the application was affirmed (In re: Tequila Cuervo, S.A. de C.V., August 31, 2023, Hudis, J.).

Tequila Cuervo, S.A. de C.V. (Applicant), a Mexican beverage company, sought to register on the Principal Register the proposed mark 100 PUNTOS in standard character form for “non-alcoholic cocktail mixes” in International Class 32, and “alcoholic beverages, except beer; alcoholic cocktail mixes; distilled blue agave liquor” in International Class 33.

The examining attorney refused to register the proposed mark under Sections 2(d) and 2(e)(1) of the Trademark Act on the ground that the proposed mark, as applied to the goods identified in the application, so resembled the mark 100 POINTS registered on the Principal Register for “drinking glasses, decanters” in International Class 21 as to likely to cause confusion, mistake or deception and on the ground that the proposed mark merely describes a feature or quality of the Applicant’s identified goods. The registration also was refused pursuant to Trademark Rule 2.61(b) due to the Applicant’s failure to provide required information pertaining to the descriptiveness refusal that was reasonably necessary to the examination of the application. After the refusals were made final, the Applicant appealed the refusal to register to the Trademark Trial and Appeal Board.

Likelihood of confusion. In weighing the evidence under the factors set forth in In re: E.I. du Pont de Nemours & Co., 476 F.2d 1357 (1973), the Board found that confusion was likely between the Applicant’s 100 PUNTOS mark and goods and the Registrant’s 100 POINTS marks and goods. Regarding the strength of the Registrant’s mark, its 100 POINTS mark was assumed to be inherently distinctive as evidenced by its registration without a claim of acquired distinctiveness and there was no evidence of third-party uses of similar marks on similar goods or of any commercial weakness.

Comparing the similarity of the two marks, the identical first term in the marks of both the Registrant and Applicant is the number “100,” although it would not be perceived as the dominant element since “100” functions as an adjective which modifies the nouns “POINTS” and “PUNTOS.” The examining attorney argued that the terms “POINTS” and “PUNTOS” were legally identical under the doctrine of foreign equivalents as the Spanish to English translation of the Spanish term “PUNTOS” (the plural of PUNTO) means “POINTS” in English. The doctrine applied as ordinary American purchasers would readily translate 100 PUNTOS from Spanish to its English equivalent 100 POINTS and conclude that the marks were similar in meaning and commercial impression. In rejecting the Applicant’s argument that American consumers would not translate 100 PUNTOS to 100 POINTS as meritless, the Board found that an ordinary American consumer who was knowledgeable in English and Spanish would translate 100 PUNTOS into its English equivalent of 100 POINTS. Thus, the Applicant’s mark and the Registrant’s mark have the same meaning and overall similar commercial impression.

The examining attorney produced evidence of examples of spirit and liquor companies, such as the Applicant, advertised for sale their alcoholic beverages as part of combination gift sets that included drinking glasses and decanters in them. Such evidence demonstrated that the Applicant’s and Registrant’s goods not only could be and were sold together, but also that they were intended to be used together in a complementary manner by consumers. The complementary nature of the respective goods supported the finding that the goods were related and therefore similar, the Board explained.

According to the Board, the examining attorney’s uncontradicted evidence relating to the similarity of the respective goods demonstrated that the goods were sold together in overlapping, if not identical, trade channels. Further, since the goods identified in the Registrant’s registration and in the Applicant’s application did not include any restrictions or limitations as to the channels of trade or classes of consumers, prospective purchasers for the parties’ goods include a variety of consumers who do not have significant knowledge or experience with the purchase or use of those goods.

Conclusion. The Registrant’s 100 POINTS mark is inherently distinctive, with some degree of suggestiveness in connection with alcoholic beverages, the marks of the Registrant and Applicant are notably similar when compared in their entireties, the goods of the Registrant and Applicant are complementary in that they can be used together in gift sets, and the goods are related and travel in overlapping, if not identical, trade channels favor a finding that confusion is likely, the Board concluded.

The Case is Serial No. 90741831.

Attorneys: Julianne Abelman (Womble Bond Dickinson [US] LLP) for Tequila Cuervo, S.A. de C.V. William Verhosek for the USPTO.

Companies: Tequila Cuervo, S.A. de C.V.

Cases: Trademark USPTO GCNNews