IP Law Daily, TRADEMARK—TTAB: NAPANAC and NAPAÑAC marks not confusable with NAPA-formative certification marks, (Sep 12, 2023)

By Deirdre Kennedy, J.D.

The sheer number of existing NAPA-formative marks created an inference that they can be used and registered side by side without causing confusion provided there are minimal differences between the marks.

The Trademark Trial and Appeal Board reversed a refusal to register the marks NAPANAC and NAPAÑAC, finding that the elements of the marks so merged together that the average consumer was likely to perceive the marks as unitary, coined terms rather than NAPA-formative marks. Further, the large number of existing NAPA-formative marks suggested that many different trademark owners have believed that various NAPA-formative marks can coexist without creating confusion (In re: Hoopes, September 8, 2023, English, C.).

Lindsay Hoopes sought registration on the Principal Register of the two standard-character marks NAPANAC and NAPAÑAC, each identifying “brandy; fortified wines; spirits” in International Class 33 and each disclaiming NAPA. The Trademark Examining Attorney refused registration of the marks based on a likelihood of confusion with two standard-character certification marks: 1. NAPA VALLEY for “wine” in Class A with the following certification statement: “The certification mark, as used by authorized persons, certifies wines derived from grapes grown in the Napa Valley American Viticultural Area and labeled and advertised in compliance with United States laws for the Napa Valley American Viticultural Area appellation of origin.” And 2. NAPA GREEN (GREEN disclaimed) for:

• “wines derived from grapes grown in Napa County, California, labeled and advertised in compliance with U.S. laws for either the Napa County appellation of origin or the Napa Valley American Viticultural Area appellation of origin” in Class A; and

• “promoting sustainable winery practices in Napa County, California to protect the environmental quality of the region by wineries located in Napa County, California; promoting sustainable grape-growing practices in Napa County, California to protect the environmental quality of the region by grape growers located in Napa County, California” in Class B.

The registration included the certification statement: The certification mark, as used by authorized persons, certifies that the winery or vineyard is located in Napa County, California and produces wine or wine grapes according to sustainable practices that protect the environmental quality of the Napa County region.

When the refusal in each application was made final, Hoopes requested reconsideration and appealed. The requests for reconsideration were denied and the appeals resumed.

Certification marks. The message conveyed by a certification mark is that the goods or services have been examined, tested, inspected, or in some way checked by a person who is not their producer, using methods determined by the certifier/owner ... [and] that the prescribed characteristics or qualifications of the certifier for those goods or services have been met.

Here, the cited marks are geographic certification marks, also referred to as certification marks of regional origin. The cited NAPA VALLEY mark designates an American Viticultural Area (AVA), located within Napa County California, while the cited NAPA GREEN mark also certifies that the wine is produced “according to sustainable practices that protect the environmental quality of the Napa County region.”

Likelihood of confusion. In a likelihood of confusion analysis in cases involving geographic certification marks a court must consider not only whether there is a likelihood of confusion as to source, sponsorship or affiliation, but also whether consumers are likely to mistakenly believe that the goods of an Applicant are certified by the Registrant.

In considering the second and third DuPont factors, the Board considered “the similarity or dissimilarity and nature of the goods or services,” and “the similarity or dissimilarity of established, likely-to-continue trade channels.” However, because a certification mark may not be used by the owner of the mark, but instead by certified users, the analysis was based on the certified users’ goods, which, in this case consisted of wine derived from grapes grown in the Napa Valley American Viticultural Area and/or Napa County.

Hoopes argued that brandy, distilled spirits, and fortified wine have specific legal definitions and the certification marks at issue were limited to wine. Allowing the owner of the certification marks to certify all the products identified under Hoopes’ marks would be granting the certification marks overly broad protection to conclude that the goods offered under the marks are related. The court found this argument unpersuasive, however, noting that whether Hoopes’ goods can be certified by Registrant is not controlling as to whether the goods are related. Presuming that Hoopes’ fortified wine included fortified wine made from grapes grown in the Napa Valley American Viticultural Area or Napa County, California, the court concluded that Hoopes’ “fortified wine” would be encompassed within and in part identical to the certified user’s wine. The court also found an inherent relationship between wine and brandy, and presumed that Hoopes’ brandy may also incorporate grapes grown in the Napa Valley American Viticultural Area or Napa County, California.

The court further found that there were no restrictions as to trade channels or target consumers in Hoopes’ applications. Nor were there limitations on the trade channels and consumers of Registrant’s certified users. With respect to Hoopes’ fortified wines the court presumed that the goods traveled in overlapping trade channels to some of the same classes of purchasers. The court presumed that the non-identical goods moved in all normal channels of trade for such goods—liquor stores, bars, restaurants, wineries and distilleries, and online retailers—and flow to purchasers of alcoholic beverages.

These factors weighed in favor of finding a likelihood of confusion.

Strength of the cited marks. The court next examined the strength of the cited NAPA VALLEY and NAPA GREEN marks to determine the scope of protection to which the marks are entitled. Hoopes argued that the marks were clearly weakened by the unusually large volume of third-party registrations for NAPA-formative marks for use in connection with wine and related goods or services and that the market context shows that consumers are accustomed to distinguishing between the cited marks and other NAPA-formative marks.

The Examining Attorney contended that “every Napa-formative registration is the subject of a consent or executed agreement with the Registrant of the certification marks.” The court noted that no evidence of these agreements was presented to the court, and that even if the contention were true, the coexistence of so many third-party registrations, even with coexistence agreements, supports the inference that a number of different owners of trademarks have believed, over a long interval of time, that various NAPA and NAPA VALLEY marks can be used and registered side by side without causing confusion or mistake as to source, sponsorship or affiliation provided there are minimal differences between the marks. Indeed, the court noted that the inclusion by many different entities of a certification mark in their individual trademarks may make it more difficult for the owner of the certification mark to prove likelihood of confusion by a third party that attempts to use that same term in its own mark, which it found to be the case here.

Similarity or dissimilarity of the marks. When considering the similarity of the marks, the focus is on the recollection of the average purchaser of wine, fortified wines, brandy, and spirits, who normally retains a general rather than specific impression of trademarks. The Examining Attorney argued that NAPA was the “dominant feature” of Hoopes’ marks. The court, however, found the elements of Hoopes’ marks so merged together that the average consumer was likely to perceive the marks as unitary, coined terms. Because Hoopes’ marks and the cited marks begin with NAPA, they share some visual and phonetic similarities, but when considered in their entireties, Hoopes’ unfamiliar, coined marks NAPANAC and NAPAÑAC look and sound very different from Registrant’s marks NAPA VALLEY and NAPA GREEN, each composed of two familiar words. Furthermore, Hoopes’ coined, unitary marks have no particular meaning. Even if some consumers were to recognize the NAPA prefix in Hoopes’ marks, the marks in their entities would be perceived as unfamiliar, coined terms, with no meaning. This factor therefore weighed against finding likely confusion.

Notwithstanding the factors that weighed in favor of a likelihood of confusion, the number of third-party registrations co-existing for marks incorporating NAPA VALLEY or NAPA supported the court’s finding that confusion as to source, sponsorship or affiliation was unlikely. The court further found that the marks were sufficiently different in overall appearance, sound, connotation, and commercial impression to preclude a likelihood of confusion. The court therefore reversed the refusal to register.

The Case is Serial Nos. 90498749 and 90498755.

Attorneys: Mari-Elise Paul (Stites & Harbison PLLC) for Lindsay Hoopes. Christina Sobral for the USPTO.

Cases: Trademark USPTO