IP Law Daily, TRADEMARK—TTAB.: Registration denied for 1849 BOURBON mark, (Oct 14, 2025)

By Thomas K. Lauletta, J.D.

The Board upheld the refusal to register based on likelihood of confusion with mark 1849 for wine.

Based on likely confusion with the registered mark 1849 for wine, the Trademark Trial and Appeal Board upheld the Examining Attorney’s refusal to register the 1849 BOURBON mark on the Principal Register, citing the relevant DuPont factors (In re Trinity River Distillery, LLC, No. 98170756 (T.T.A.B. Oct. 10, 2025)).

The applicant, Trinity River Distillery, LLC, seeks registration on the Principal Register of the mark 1849 BOURBON (BOURBON disclaimed) in standard characters for “distilled spirits” in International Class 33 (App. Serial No. 98170756, filed September 8, 2023).

The Examining Attorney refused registration under Section 2(d) of the Trademark Act based on likelihood of confusion with the registered marks 1849 for “alcoholic beverages, namely, wine and sparkling wine,” 1849 WINE COMPANY DECLARATION (WINE COMPANY disclaimed) for “wine,” and 1849 WINE COMPANY TRIUMPH (WINE COMPANY disclaimed) for “wine” in Class 33. On appeal, the Board upheld the refusal.

Likelihood of confusion. For purposes of the likelihood of confusion analysis, the Board compared the applicant’s mark with the existing Registration No. 5273858 for the “1849”mark for “alcoholic beverages and wine and sparking wine” in International Class 33. The Board determined that there was a likelihood of confusion based on the relevant factors of E.I. DuPont de Nemours & Co.

Relatedness of the goods, and channels of trade. The Board analyzed the similarity of the goods (DuPont factor two) and the similarity of the established, likely to continue trade channels (DuPont factor three).

The Board concluded that the applicant’s and the registrant’s goods were similar, given that their goods were marketed in a way that “could give rise to the mistaken belief that they emanate from the same source.” Thus, the second DuPont factor favored a finding of likelihood of confusion.

Regarding the third DuPont factor, the Board noted that because the identifications of goods contained no limitations, the applicant’s and registrant’s goods are presumed to move in all ordinary channels of trade and would be available to all classes of purchasers. The Examining Attorney had stated that the similarity of established channels of trade was also shown by the fact of 35 third-party registrations where the same mark was used for both distilled spirits and wine. The Board stated that the third DuPont factor weighed in favor of a likelihood of confusion.

Strength of theregistrant’s 1849 mark. The strength of the registrant’s mark determines the scope of protection accorded to it. The sixth DuPont factor considers “[t]he number and nature of similar marks in use on similar goods.” Because the applicant did not submit any evidence regarding any third-party marketplace use, it had not demonstrated that the registrant’s 1849 mark was commercially weak. Accordingly, the Board held that the sixth DuPont factor was neutral.

Similarity of the marks. The first DuPont factor considers whether the applicant’s and the registrant’s marks are similar as to their appearance, sound, connotation and commercial impression. The Board concluded that “1849” is the dominant portion of the applicant’s and the registrant’s marks, and that it would likely make the greatest impression on consumers. Further, the Board stated that the term 1849 is the entirety of the mark shown in the 1849 registration and is subsumed in its entirety by the applicant’s 1849 BOURBON mark. While there is no explicit rule that similarity must be found where one mark incorporates the entirety of another mark, the fact that it does typically increases the similarity between the two.

Here, the Board ruled that the marks were similar in sound, meaning, connotation and commercial impression. Thus, the first DuPont factor weighed in favor of finding a likelihood of confusion.

Purchase conditions and consumer care. The fourth DuPont factor considers the conditions under which the applicant’s and the registrant’s sales are made. Were the sales made by impulse, or by careful, sophisticated purchases? Noting that neither the applicant nor the registrant provided evidence of the possible sophistication of their customers, the Board found that the fourth DuPont factor was neutral.

Actual confusion. The seventh DuPont factor considers whether there was actual confusion; the eighth DuPont factor considers the length of time during which there was concurrent use of the marks. Stating that the record did not establish that there had been a reasonable opportunity for confusion to occur, and that in any case, showing of actual confusion is not necessary to establish likelihood of confusion, the Board declined to give weight to these factors in its analysis.

Action of the Board. The Board found that the DuPont factors relating to similarity of the marks, the relatedness of the respective goods, and overlap in channels of trade and classes of customers weighed in favor of finding a likelihood of confusion. The factors regarding purchasing conditions and customer sophistication and actual confusion were neutral. No factor supported the applicant’s position. Accordingly, the Board found that confusion of the marks was likely.

The Board affirmed the refusal to register the applicant’s mark.

The Case is Serial No. 98170756.

Judge: Cohen, W.

Attorneys: Blake T. Dietrich (Jackson Walker LLP) for Trinity River Distillery, LLC. Christian Martin for the USPTO.

Companies: Trinity River Distillery, LLC

Cases: Trademark USPTO