Wine and water are of the type that would emanate from a single source
In Joel Gott Wines LLC v Rehoboth Von Gott Inc (Opposition No 91197659, June 26 2013), the Trademark Trial and Appeal Board (TTAB) has sustained an opposition filed by Joel Gott Wines Inc, the owner of the registered trademarks GOTT and JOEL GOTT covering wine in Class 33 of the Nice Classifcation, against Rehoboth Von Gott Inc, the applicant for the mark GOTT LIGHT (and design), as depicted below:
Rehoboth Von Gott’s application for GOTT LIGHT covered water-based beverages in Classes 5 and 32, namely “nutritionally fortified water; vitamin enriched water; vitamin supplement in tablet form for use in making an effervescent beverage when added to water; water-based personal lubricants” and “aerated mineral waters; aerated water; bottled artesian water; bottled drinking water; bottled water; carbonated waters; coconut water; distilled drinking water; drinking water; drinking water with vitamins; essences for making flavoured mineral water; essences for the preparation of mineral waters; flavoured bottled water; flavoured mineral water; glacial water; lithia water; magnetically treated water for human consumption and not for medical purposes; mineral and aerated water; mineral and carbonated waters; mineral water; purified bottled drinking water; quinine water; scented water for making beverages; seltzer water; soda water; sparkling water; spring water; still water; syrups for making flavoured mineral waters; table waters”.
The opposition was based primarily on a likelihood of confusion. In evaluating the similarity of the marks, the TTAB stated that the design features in the applicant’s mark were insignificant background elements that did not create a separate commercial impression, but merely served as a carrier for the words. Thus, the applicant had essentially appropriated Joel Gott’s mark without adding any other distinguishing features. 'Gott' was the first and most prominent portion of the GOTT LIGHT mark and the term 'light' was merely descriptive of a characteristic of the applicant’s goods. Based on the above, the TTAB found the marks GOTT and GOTT LIGHT (and design) to be similar in sight, sound, meaning and overall commercial impression.
The TTAB also found that the goods registered by Joel Gott and those applied for in the subject application were related goods. In so finding, the TTAB emphasised that the goods need not be identical or even competitive; instead the analysis focuses on whether consumers would be confused to think that these goods came from the same source. Joel Gott submitted marketplace evidence to demonstrate that wine and water were related goods, such as a declaration from a consumer who testified to purchasing bottled water at various winery tasting rooms. The water bottles were branded under the respective winery brand. In addition, the opponent submitted third-party registrations which demonstrated “that the goods are of the type that would emanate from a single source”. Thus, the TTAB held that the evidence strongly favoured a finding of likelihood of confusion with regard to the relatedness of the goods.
Finally, the opponent submitted evidence that the parties’ respective goods are and will be marketed to similar retail markets such as grocery stores and 'big box' stores. The TTAB recognised that merely because goods can be sold in the same large stores would not alone be sufficient to show consumers would be likely to encounter both types of product in the same trip. However, additional evidence was submitted that the goods could be sold in the same area of the store. The opponent testified that, in market visits that it had conducted at retailers, it had seen the GOTT-branded wine sold in the same section of the store as water. In addition, the opponent submitted copies of online beverage menus from restaurant websites showing both water and wine offered in the same menu section.
In light of the above, the TTAB found that consumers were likely to assume that the applicant’s goods sold under the mark GOTT LIGHT (and design) would be merely a line extension of goods emanating from the opponent. Thus, the opposition against the applicant’s GOTT LIGHT mark was sustained.
Lara A Holzman, Alston & Bird LLP, New York
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