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Posted by James Juo | Sep 22, 2023 | 0 Comments

In determining whether there is a likelihood of confusion between trademarks, two key factors are the similarity or dissimilarity of the marks and the goods or services. Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). With respect to the similarity or dissimilarity of the marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression' such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012).

When the question involves a likelihood of confusion between an applied-for trademark and a certification mark (which is used to indicate that the goods of authorized users are certified as to a particular aspect of the goods); the analysis also includes whether consumers are likely to mistakenly believe that the goods of Applicant are certified by Registrant. Community of Roquefort v. Santo, 170 USPQ 205, 208 (CCPA 1971) (“We therefore do not think that the marks here so resemble each other that the public will be mistakenly led to believe that appellee's salad dressing is one certified by appellant.”).

NAPA VALLEY Certification Mark

Lindsay Hoopes filed a trademark application to register NAPANAC to be used with brandy, fortified wines, and spirits. But the U.S. Patent and Trademark Office (“USPTO”) refused registration based on existing registered trademark certification marks for NAPA VALLEY used to certify wines derived from grapes grown in the Napa Valley American Viticultural Area. In re Lindsay Hoopes, Ser. Nos. 90498749 and 90498755 (TTAB Sept. 8, 2023).

On appeal, the Trademark Trial and Appeal Board (“TTAB”) found that “there is an inherent relationship between wine and brandy” because brandy is an alcoholic beverage distilled from wine or fermented fruit juice. See In re St. Julian Wine Co., 2020 USPQ2d 10595, at *4 (TTAB 2020) (finding a “commercial relationship” between apples and hard cider because “[b]y definition, apples are a necessary component of ‘hard cider'”); Bureau Nat'l Iterprofessionnel Du Cognac v. Int'l Better Drinks Corp., 6 USPQ2d 1610, 1616 (TTAB 1988) (“‘COLAGNAC' liqueurs and ‘COGNAC' brandy are very closely related products”).

            The dictionary definition of “fortified wine” is “[w]ine, such as sherry, to which alcohol in the form of grape brandy, has been added during or after fermentation.” Because Applicant's identification of goods is unrestricted, we must presume that Applicant's fortified wine includes fortified wine made from grapes grown in the Napa Valley American Viticultural Area or Napa County, California. Accordingly, Applicant's “fortified wine” is encompassed within and in part identical to the certified user's wine.

The TTAB also found that wine, brandy and distilled spirits may be encountered by the same classes of consumers in at least one common trade channel – the websites and physical locations of wineries and distilleries.

But the TTAB found that the marks in their entireties are distinguishable in appearance, sound, connotation and commercial impression.

            With respect to meaning and commercial impression, the cited marks have readily understood meanings. The cited mark NAPA VALLEY refers to the Napa Valley wine region in California . . . and connotes environmentally-friendly goods or sustainable production practices. Applicant's coined, unitary marks have no particular meaning. Even if some consumers were to recognize the NAPA prefix in Applicant's [NAPANAC] marks, the marks in their entities would be perceived as unfamiliar, coined terms, with no meaning. Faberge, Inc. v. Dr. Babor GmbH & Co., 219 USPQ 848, 851 (TTAB 1983) (“One recognizes instantly that which is familiar. Conversely, that which is unfamiliar would be given closer scrutiny and in this way could be distinguished from the familiar.”); see also Oakville Hills Cellar, 119 USPQ2d at 1290 (“Board correctly found that the unfamiliar MAYARI is distinguishable from the familiar MAYA,” both for wine).

Also, there were a number of third-party registrations co-existing for marks incorporating NAPA VALLEY or NAPA.

Accordingly, the TTAB concluded that there was no likelihood of confusion, including the likelihood that consumers may mistakenly believe that Registrant has certified Applicant's goods.

Thomas P. Howard, LLC is experienced in trademarks nationwide including in Colorado.

About the Author

James Juo

James Juo is an experienced intellectual property attorney. He has successfully litigated various intellectual property disputes involving patents, trademarks, copyrights, and trade secrets. He also has counseled clients on the scope and validity of patent and trademark rights.


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