Real difference between marks arguably the most important DuPont factor
In Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v Pasquier DesVignes (Opposition No 91179408, June 14 2013), the Trademark Trial and Appeal Board (TTAB) has indulged itself in the world of French wines and, in a precedential opinion, concluded that the word mark CHEMIN DES PAPES for wines and sparkling wines was not confusingly similar to the following composite trademark:
Applicant Pasquier DesVignes applied to register the trademark CHEMIN DE PAPES for “wines, sparkling wines, distilled spirits and liquors”. Opponent Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape opposed, arguing that CHEMIN DES PAPES – which the application states translates to 'way of the popes' in English - was likely to give rise to consumer confusion as to source, and thus was not entitled to registration under Section 2(d) of the Trademark Act (15 USC § 1052(d)). The opponent established ownership of US trademark registration No 2,097,158 (claiming the composite mark pictured above), and also that it had used the mark in the United States prior to the filing of the opposed application. In addition to the design mark, the opponent also argued that it possessed common law rights in the phrase 'Chateauneuf-Du-Pape' (which translates to 'new castle of the pope'), that the opponent’s use of this mark in the United States predated the filing of the application, and that the applied-for mark, CHEMIN DES PAPES, was confusingly similar thereto.
As an initial matter, the TTAB recognised that the opponent had priority and thus that priority was not an issue. Turning to the likelihood of confusion analysis, the TTAB first focused on the asserted word mark and concluded (after reviewing the various wine naming conventions used in France and the United States) that the opponent did not did have the right to control third-party uses of the designation 'Chateauneuf-Du-Pape' in the United States in connection with wine, and thus did not own exclusive rights to the mark. As such, the use of the applied-for mark by the applicant was not likely to give rise to consumer confusion as to source, and the opposition based on that asserted mark must fail.
Regarding the opponent’s registered design trademark, the TTAB began by reiterating that, in order for the opponent to succeed, it needed to establish, by a preponderance of the evidence, that the applicant’s mark was likely to give rise to confusion in light of the asserted mark of the opponent. In the likelihood of confusion analysis, the TTAB must review the applicant’s mark as it appears in the application; evidence as to how the applicant uses or promotes the mark in the marketplace is not the relevant inquiry. While the TTAB pointed out that likelihood of confusion is typically assessed by reviewing the applicable DuPont factors, it explained that “in any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services”.
In the present case, the TTAB considered the opponent’s argument that the phrase 'Chateauneuf-Du-Pape' was well-known in the United States (and acknowledged that, where fame exists, it plays a dominant role). However, the TTAB found that the 'Chateauneuf-Du-Pape' aspect of the opponent’s registration was merely a portion thereof (and, as noted above, a phrase that was not exclusively associated with the opponent but, rather, designates a type of wine that comes from a specific territory in France). Explaining that marks must be viewed “in their entireties as to appearance, sound, connotation, and commercial impression” and thus that marks are not to be dissected, the TTAB nonetheless pointed out that different features may be analysed to determine whether the marks at issue are similar.
The applicant’s mark in this case was the word mark CHEMIN DES PAPES; in contrast, the opponent’s mark is a composite mark consisting of word elements and design elements. Although words “typically dominate over designs”, in appropriate situations the opposite may be true. Here, the TTAB concluded that the opponent’s registered mark was dominated by the design elements. Moreover, the TTAB found that the connotations engendered by the registered and applied-for marks are “quite different”. Although both include the term 'Pape' or a formative thereof, the other literal elements of the marks are different irrespective of whether a consumer would ultimately translate the words to English or would understand them in French. As such, this factor favoured the applicant.
Addressing the remaining applicable Du Pont factors, the TTAB found that the applicant’s submission of third-party uses and registrations evidencing the fact that the term 'Papes' was not exclusive to the opponent (and thus that the term was weak in a trademark sense for wines) weighed strongly in the applicant’s favour. As to actual confusion, the TTAB concluded that the single instance of alleged confusion offered by the opponent in support of its case was “less than probative” and therefore neutral in the overall likelihood of confusion analysis. Although the goods, channels of trade and classes of consumers were found by the TTAB to be the same (and thus favouring the opponent), the identity of these elements was not enough to overcome the overall differences between the mark as applied for and the mark shown in the opponent’s asserted registration.
The TTAB’s decision in Syndicat Des Proprietaires emphasises that a difference in the marks – while not the only DuPont factor to be considered – is often one of the most important factors, if not the most important factor. Real differences between the marks can outweigh similarities in the other factors such as similarities in goods, consumers and channels of trade.
Finally, with respect to the “distilled spirits and liquor” portion of the opposed application, the TTAB ordered the goods stricken in light of the applicant’s admission (both in its answer to the notice of opposition and in discovery responses) that it had no bona fide intention of using the mark on such goods. Although there was no substantive discussion of the bona fide intention issue, one might query whether there would have been a different outcome if the opponent had alleged and ultimately succeeded in proving that the applicant did not have a bona fide intention to use the mark on distilled spirits and liquors as of the filing of the opposed application. While plans can and often do change in the time that passes between the filing of an application and the introduction of product to market, prior TTAB decisions would suggest that had there been no bona fide intention as of the filing of the application, the application would have been found to have been void ab initio.
Timothy J Kelly, Fitzpatrick Cella Harper & Scinto, New York
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