IP Law Daily, TRADEMARK—TTAB: Refusal to register AI mark for distilled agave liquor affirmed, (May 18, 2026)

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

The TTAB affirmed the refusal to register AI mark for “distilled agave liquor” in view of the identical mark registered for “wine.”

In a non-precedential decision, the Trademark Trial and Appeal Board (TTAB) affirmed an examining attorney’s refusal to register the applicant’s standard-character mark AI for “distilled agave liquor” under Section 2(d) of the Trademark Act finding a likelihood of confusion with an identical mark registered for “wine.” The TTAB determined that confusion was likely because the marks are identical; the applicant’s goods and the registrant’s goods are related; and that the respective goods travel through the same types of trade channels and are offered to the same or overlapping classes of purchasers (In re Destiladora Del Valle de Tequila S.A. de C.V., No. 98588895 (T.T.A.B. May 12, 2026)).

Background. Destiladora del Valle de Tequila SA de CV (applicant) sought to register on the Principal Register of the standard-character mark AI for “Distilled agave liquor,” in International Class 33. The examining attorney refused registration of the applicant’s mark under Section 2(d) of the Trademark Act on the ground that it resembled the standard character mark AI, registered on the Principal Register for “Wine,” in International Class 33. When the examining attorney made the refusal final, the applicant appealed and requested reconsideration. When the request for reconsideration was denied, the appeal resumed.

Likelihood of confusion. The TTAB, upon considering the DuPont factors for evaluating likelihood of confusion, agreed with the examining attorney that the applicant’s mark was likely to cause confusion with the registered mark.

Under the first DuPont factor, the TTAB found that both the applicant’s mark and the registered mark are AI in standard characters which are identical in appearance, and likely to engender the same connotation and overall commercial impression when considered in connection with the applicant’s and the registrant’s respective goods and/or services. However, the applicant pointed out that the registered mark contains a translation statement indicating that the “English translation of ‘AI’ in the mark is INDIGO.” According to the applicant, the TTAB must therefore apply the doctrine of foreign equivalents to the registered mark, in which case the applicant’s mark should be compared to the registered mark as AI vs. INDIGO rather than as AI vs. AI. The applicant argued that, although the respective marks are identical, they are not confusingly similar, because the registrant’s mark would be translated, while the applicant’s mark would not.

The TTAB found no basis for finding that ordinary American purchasers will translate AI into the English term “indigo” when applied to the registrant’s wine, but not do the same when AI is applied to the applicant’s distilled agave liquor. The TTAB did not consider how the applicant and the registrant actually use their marks in the marketplace, but rather how they appear in the registration and the application. In this case, the marks are identical and, in the absence of evidence to the contrary, the term AI appears to be arbitrary as applied to both the applicant’s distilled agave liquor and the registrant’s wine. Moreover, the TTAB had no reason to conclude that the nature of the respective goods somehow changes the connotation or commercial impression of the term. Thus, any connotation or commercial impression attributed to the applicant’s AI mark would also be attributed to the registrant’s AI mark. Therefore, the TTAB concluded that it need not determine whether the doctrine of foreign equivalents should be applied to translate the registered mark.

Accordingly, the TTAB found that the marks are identical in terms of sound, appearance, connotation, and overall commercial impression. Thus, the first DuPont factor weighed strongly in favor of a conclusion that confusion is likely.

Under the second DuPont factor, the examining attorney contended that the respective goods are related and introduced supporting website excerpts showing third-party entities offering both agave liquor and wine under the same mark. Despite this evidence, the applicant argued that the respective goods are not related, relying on 38 third-party registrations, each with a different owner and organized into 19 pairs, to assert that the “USPTO’s past practice shows that the respective goods are dissimilar and that many marks that are similar in appearance, sound, and commercial impression coexist for use with wines and spirits/liqueurs.” However, the TTAB found that the pairs of marks submitted by the applicant did not present the same circumstances as this case, which involved identical marks. In fact, while each mark pair does share the same or similar term, many of them have additional elements or wording that differentiate the marks. Thus, none of these third-party registrations were proof that the respective goods are unrelated, nor were they evidence that the USPTO has adopted a particular policy or practice regarding the relatedness (or unrelatedness) of the goods.

In sum, considering the evidence as a whole, in connection with the goods as they are identified in the application and the cited registration, the TTAB found that the respective goods may emanate from the same source under the same mark. Thus, the conditions and activities surrounding the marketing and use of the goods are such that they could be encountered by the same persons under circumstances that could give rise to the mistaken belief that they originate from the same source when offered under identical marks. Consequently, the second DuPont factor also supported a conclusion that confusion is likely.

Next, the TTAB found the examining attorney’s evidence, discussed above, established that the goods at issue are offered through the same types of trade channels and encountered by the same classes of consumers. Therefore, the third DuPont factor also supported a conclusion that confusion as to source is likely.

The TTAB also found that the remaining relevant factors, the fourth, seventh, eighth, and twelfth DuPont factors were neutral. Balancing the DuPont factors, the TTAB determined that consumer confusion is likely between the applicant’s mark and the registered mark. Thus, the refusal to register was affirmed.

The Case is No. 98588895.

Judge: Lavache, R.

Attorneys: Francis J. Ciaramella (Francis John Ciaramella, PLLC) for Destiladora Del Valle de Tequila S.A. de C.V. Esther Queen for the USPTO.

Companies: Destiladora Del Valle de Tequila S.A. de C.V.

Cases: Trademark USPTO