IP Law Daily, TRADEMARK—TTAB: ‘Máximo Santana’ trademark denied for mezcal, based on ‘Santana’ wine mark, (Jul 24, 2024)

By Steven Melendez

The Trademark Trial and Appeal Board found likelihood of confusion based on the existing trademark.

The Trademark Trial and Appeal Board (TTAB) affirmed an examining attorney's decision to block registration of the trademark “Máximo Santana” for “Mezcal; Distilled agave liquor; Distilled blue agave liquor,” citing an existing “Santana” trademark for wine (In re Aguirre, No. 90859041 (T.T.A.B. July 19, 2024)).

The TTAB used the standard du Pont factors to evaluate the likelihood of confusion between the two marks.

The trademark applicant pointed out that the USPTO previously allowed a registration of the mark "MAXIMO REAL," including a visual element, when "REAL" was already registered for hard cider. But the TTAB pointed out that the argument was "not useful," since each case is inherently different, especially since the existing "REAL" mark in that case had only been allowed to be registered based on acquired distinctiveness.

"This sort of comparison is not useful," according to the TTAB ruling. "It is well settled that each trademark case must be decided on its own unique facts and evidence."

Similarity of the marks. The Board then found that "Máximo Santana" and the existing "Santana" mark give similar commercial impressions, weighing in favor of the likelihood of confusion. The "Máximo" element could be interpreted as "suggestive of the intensity or level of quality of the products," so consumers might think it's a high-end line from the makers of "Santana," according to the ruling.

Similarity of the goods. As far as the similarity of the goods themselves, the TTAB pointed out a variety of brands selling both wine and mezcal or agave spirits, as well as a number of trademark registrations covering both classes of beverage. The fact that other companies use the same trademark for both types of products "tends to show that consumers will perceive the goods as related," according to the ruling.

The applicant behind "Máximo Santana" had argued that the examining attorney simply treated the goods as related because they both contain alcohol, but the TTAB found the examining attorney analyzed the matter appropriately, looking at the evidence of marks covering both types of goods. The applicant also argued that in other cases, USPTO had allowed separate registrations for similar marks for agave spirits and wine, but the TTAB found that had "little, if any, probative value," especially since some of those instances involve written consent from the holder of the first-registered mark.

Trade channels and classes of customers. The TTAB found that the two products are sold through similar trade channels, since many bars, restaurants, and liquor stores carry wine alongside mezcal and agave spirits.

The classes of consumers overlap as well, the Board found, and while the applicant argued consumers are sufficiently sophisticated that they won't be confused by any similarity, the TTAB ruled that it must also take into account less sophisticated buyers.

"The only implicit limitation that flows from the identified goods is that the consumers be of legal age to purchase alcoholic beverages," according to the ruling. "The lack of express limitations means that the customer classes encompass both discerning connoisseurs of agave spirits and wine as well as those just seeking to get intoxicated, those who purchase on a whim as well as those who research before they buy, the wealthy and those of modest means, and people of all levels of education."

Overall, the TTAB found in affirming the refusal to register the mark, "it is clear to us that confusion is likely."

The Case is Serial No. 90859041.

Judge: Casagrande, T.

Attorneys: Felipe Rubio (Rubio & Associates, PLLC) for Mario Enrique Santillan Aguirre. Jeffrey Oakes for the USPTO.

Cases: Trademark USPTO