IP Law Daily, TRADEMARK—TTAB.: Specialty wine mark RAO’S not confusable with registered mark RAO’s for restaurant services, (May 2, 2023)

By Thomas K. Lauletta, J.D.

The majority of the DuPont factors weighed against a finding of confusion with the registered mark.

The Trademark Trial and Appeal Board held that the trademark application for RAO’S wines sold at wine specially stores qualified for registration on the Principal Register. Reversing the Examining Attorney’s refusal to register, the TTAB concluded that confusion between the proposed mark and an existing registered mark RAO’S for restaurant services, was not likely. Applying the DuPont likelihood of confusion test, the TTAB found that, notwithstanding the similarity of the applicant’s and the registered marks, the relatedness of the goods and services, the trade channels in which the products are offered, and the sophistication of the purchasers weighed against a finding of likelihood of confusion (In re: 1729 Investments LLC, April 24, 2023, Goodman, C.).

The applicant, 1729 Investments LLC, sought registration (App. Ser. No. 90694523, May 6, 2021) on the Principal Register of the mark RAO’S (in standard characters) for: “Wine produced from grapes grown in a single designated vineyard in the Atlas Peak American Viticultural Area, labeled and advertised in compliance with U.S. laws for the Atlas Peak American Viticultural Area appellation of origin; all of the foregoing sold at the vineyard, wine specialty stores, and direct to consumers; none of the foregoing sold in restaurants in International Class 33.”

The Trademark Examining Attorney refused registration of the applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark was likely to cause confusion with registered marks owned by another entity, RAO’S, for “bar services; restaurant services” under Section 2(f) on Principal Register in International Classes 42 and 43.

Likelihood of confusion. The TTAB examined the question of the likelihood of confusion based on the test of In re: E. I. du Pont de Nemours & Co. Under DuPont, the TTAB concluded that although the registered mark was conceptually weak, it was still entitled to protection under Trademark Section 7(b) as a registered mark on the Principal Register.

Similarity of the marks. The first DuPont factor assesses the similarity or dissimilarity of the applicant’s and the registrant’s goods and services. Finding that the two marks are identical in their appearance, sound, meaning, and commercial impression, the TTAB held that the first DuPont factor favored a finding of likelihood of confusion.

Similarity of the goods and services. The second DuPont factor looks to whether consumers would consider the applicant’s wine and the registrant’s restaurant services to come from the same source. In examining this question, the TTAB stated that with respect to food services and food and beverage products, to establish a likelihood of confusion the Examining Attorney must show “something more than that similar or even identical marks are used for food products and for restaurant services.” The TTAB concluded that the following arguments advanced by Examining Attorney failed to meet this “something more” test: (1) that 31 third-party registrations covering “restaurant and bar services” and “wines” under the same mark; (2) that 13 wineries having on-site restaurants with the same name as the winery, and serving wine with the same name; and (3) Internet evidence purportedly establishing winery restaurants having the same name as the wine produced by the winery.

Finding that the “something more” test was not met, the TTAB held that the second DuPont test favored a finding of no likelihood of confusion.

Similarity of the trade channels. The TTAB noted that the restrictions in the identification in the applicant’s proposed application specifically states that sale of its wines would be limited to on-site sales at its winery; to specialty wine shops and to direct consumer sales; and would not be sold in restaurants. Accordingly, the TTAB concluded that there was no meaningful overlap in trade channels between the registered restaurant marks and the applicant’s wine mark. The third DuPont factor relating to the similarity of trade channels favored a finding of no likelihood of confusion.

Purchasers’ sophistication. Under the fourth DuPont factor, purchaser sophistication may tend to minimize the likelihood of confusion. The TTAB noted that the applicant’s identification states that its wine would be, at minimum, 85 percent from the Atlas Peak American Viticultural Area (AVA). This registration identification, as well as statements by the applicant’s owner, established that the applicant’s purchasers are highly discriminating and aware of the AVA designation. In contrast, the class of purchasers of the registrant’s services are ordinary consumers who are patrons of restaurants and bars. Accordingly, the fourth DuPont factor weighed against a finding of likelihood of confusion.

TTAB decision. Although the first DuPont factor favored a finding of likelihood of confusion, the second, third and fourth factors weighed against likelihood of confusion. Accordingly, the TTAB reversed the refusal to register the applicant’s RAO’S mark.

The Case is Serial No. 90694523.

Attorneys: Randy Michels (Trust Tree Legal PC) for 1729 Investments LLC. Dannean Hetzel for the USPTO.

Companies: 1729 Investments LLC

Cases: Trademark USPTO