August 18, 2009
Intellectual Property Alerts

TTAB Clarifies Likelihood of Confusion Between Wine and Restaurant Services
by Cyrus Wadia

In a non-precedential decision issued earlier this month, the Trademark Trial and Appeal Board (TTAB) reversed a refusal to register Wente Bros.' trademark application for ANDIAMO for "wine" based on likelihood of confusion with an existing trademark ANDIAMO for "restaurant services." In re Wente Bros. dba Tamas Estates, Serial No. 77314718 (August 6, 2009) (not precedential).
 
The translation of the mark claimed by both parties was "Let's Go."  The TTAB focused its likelihood of confusion analysis on whether the restaurant services in the registered mark were related to wine, such that a likelihood of confusion would exist.  The TTAB looked to Federal Circuit precedent stating that "[t]o establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and for restaurant services."  (Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA 1982) (emphasis added).)  In the context of "something more", the TTAB was looking for specific evidence in this case finding that the goods and services were related, but only found evidence that Wente Bros. has a restaurant at its winery ("The Restaurant at the Wente Vineyards") and that Wente Bros. had previously issued advertisement for a hotel that displayed a picture of a wine bottle with takeout food.  The TTAB noted that "the relatedness of restaurant services and food items is not to be assumed and that significant evidence of their relatedness is necessary."  The TTAB relied in large part on the Federal Circuit's decision in In re Coors Brewing, 343 F.3d 1340, 68 USPQ2d 1059 (Fed. Cir. 2003) which stated that:
It is not unusual for restaurants to be identified with particular food or beverage items that are produced by the same entity that provides the restaurant services or are sold by the same entity under a private label.  Thus, for example, some restaurants sell their own private label ice cream, while others sell their own private label coffee.  But that does not mean that any time a brand of ice cream or coffee has a trademark that is similar to the registered trademark of some restaurant, consumers are likely to assume that the coffee or ice cream is associated with that restaurant.  The Jacobs case stands for the contrary proposition, and in light of the very large number of restaurants in this country and the great variety in the names associated with those restaurants, the potential consequences of adopting such a principle would be to limit dramatically the number of foods and beverages.
Accordingly, the Board reversed the examining attorney's refusal to register.
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