Martell & Co. (S.A.)v.Tequila Cuervo La Rojena, S.A. de C.V.Download PDFTrademark Trial and Appeal BoardMar 24, 2009No. 91177477 (T.T.A.B. Mar. 24, 2009) Copy Citation Mailed: March 24, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Martell & Co. (S.A.) v. Tequila Cuervo La Rojena, S.A. de C.V. _____ Opposition No. 91177477 to application Serial No. 78589705 filed on March 17, 2005 _____ H. John Campaign of Graham, Campaign P.C. for Martell & Co. (S.A.) Lawrence E. Abelman and Marie-Anne Mastrovito of Abelman, Frayne & Schwab for Tequila Cuervo la Rojena, S.A. de C.V. ______ Before Seeherman, Walters and Bucher, Administrative Trademark Judges. Opinion by Seeherman, Administrative Trademark Judge: Martell & Co. (S.A.) has opposed the application of Tequila Cuervo La Rojena, S.A. de C.V. to register JOSE CUERVO BLACK MEDALLION in standard character form, with the word “BLACK” disclaimed, for tequila.1 As grounds for 1 Application Serial No. 78589705, filed March 17, 2005, based on Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b) (intent- to-use). THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91177477 2 opposition, opposer has alleged that it is the prior user of the mark MEDAILLON for brandy and owns a registration for this mark; that it has used the mark in commerce since 1967, and this use has invested opposer’s mark with a high degree of distinctiveness; that the English translation of opposer’s mark is “medallion”; that applicant’s use of its mark is likely to cause confusion or reverse confusion with opposer’s mark; that opposer formerly used and registered the mark MARTELL V.S.O.P. MEDAILLON as evidenced by cancelled Registration No. 1167575, and this lends credence to a likelihood that consumers will believe that applicant’s mark is used to identify another product from opposer or that opposer’s goods emanate from applicant; that “upon information and belief, in an effort to avoid a likelihood of confusion, opposer and applicant have signed a Worldwide Agreement whereby applicant has undertaken to use and register its applied for mark only in a special representation and not as a word mark” ¶14; and that “applicant’s word mark herein appears to breach the aforesaid Agreement and, therefore, it is submitted that applicant has unclean hands and is acting in bad faith in total disregard of the public’s interest and opposer’s prior rights” ¶15. Opposition No. 91177477 3 In its answer applicant admitted that there is an agreement between the parties but otherwise denied all the salient allegations in the notice of opposition. The Record By operation of the Trademark Rules, the record includes the pleadings and the file of the opposed application. Petitioner submitted its notice of reliance eleven days after its testimony period closed, with a motion that the Board accept the late-filed submission.2 Because applicant did not oppose the motion, the Board treated the motion as conceded, and accepted the notice of reliance. We note that opposer submitted with its notice of reliance a copy of the agreement referenced in its pleading. Although this document normally could not be made of record by notice of reliance, since it is neither a printed publication nor an official record (see Trademark Rule 2.122(e)), applicant treated this document, and indeed, all of the submissions that were included in the notice of reliance, as being of record. See applicant’s brief, p. 1. Thus, the record includes opposer’s Registration No. 1593338 for MEDAILLON for brandy,3 the 2005 agreement between the parties, and 2 Opposer submitted duplicate copies of all the submissions in its notice of reliance. This was unnecessary and is frowned upon by the Board. 3 Issued April 24, 1990, renewed. Interestingly, the domestic representative and attorney listed in this registration is the attorney representing applicant in this proceeding. Opposition No. 91177477 4 applicant’s responses to opposer’s discovery, all submitted by opposer with its notice of reliance. The record also includes the documents submitted by applicant under notice of reliance pursuant to Trademark Rule 2.122(e) (printed publications), consisting of dictionary definitions and numerous news articles referencing the awarding of medals for alcoholic beverages. Applicant also submitted with its notice of reliance third-party registrations for marks containing the word MEDAL or MEDALLION or a foreign word having the same meaning. These registrations appear to be taken from a private search company’s search report, rather than from the USPTO’s database, and therefore would not be acceptable as official records under Trademark Rule 2.122(e). However, opposer submitted what it titled “opposer’s rebuttal testimony,” which contained no testimony but was merely an argument by opposer’s attorney as to the probative value or relevance of the third-party registrations submitted by applicant, but not their admissibility under a notice of reliance. Accordingly, we deem these registrations to be of record.4 We also note that in its reply brief opposer listed the mark and 4 Opposer never reiterated any objection to the registrations in its brief, and therefore any relevancy objection must be deemed to be waived. In any event, the third-party registrations are relevant to the scope of protection to be accorded opposer’s mark, since even though the registrations may not be for or include the word “medallion,” they do include the English or Opposition No. 91177477 5 registration number of certain third-party registrations. These registrations were never made of record, and therefore opposer’s reference to them has not been considered. See In re Duofold Inc., 184 USPQ 638 (TTAB 1974) (the Board does not take judicial notice of registrations that reside in the Patent and Trademark Office). The proceeding has been fully briefed. Opposer’s request that we accept the corrected copy of its reply brief, filed five days after receipt of its original reply brief, is granted. The Issues We must first address what issues are before us in this proceeding. In its main brief opposer characterized the “Issue Presented” as: Whether use of Applicant’s word mark “JOSE CUERVO BLACK MEDALLION” in standard character format, separate and apart from the label, infringes Opposer’s word mark “MEDAILLION” [sic] where the parties have agreed, in effect, that Applicant’s use of the words “BLACK MEDALLION” infringes opposer’s word mark “MEDAILLION,” [sic] but Applicant’s use of “JOSE CUERVO BLACK MEDALLION” in special lettering with a label design does not infringe opposer’s word mark.” Brief, p. 1. Applicant lists, as the “Issues Presented: Applicants submits that the sole issue in this proceeding should be whether the Applicant’s Mark JOSE CUERVO BLACK foreign words for “medal,” and a “medallion,” as discussed infra, is a large medal. Opposition No. 91177477 6 MEDALLION in connection with tequila is confusingly similar to Opposer’s Mark MEDAILLION [sic] for brandy. In Opposer’s recitation of the “Issue Presented” Opposer suggests that “the parties have agreed, in effect, that Applicant’s use of the words BLACK MEDALLION infringes Opposer’s word mark MEDAILLION.” [sic] Applicant does not agree and submits that this Agreement has no bearing on the issue of likelihood of confusion herein and contains no admission of likelihood of confusion of any kind. Nevertheless, as this is apparently a point of dispute, a secondary issue is whether or not the Agreement between the parties precludes Applicant from filing for the word mark JOSE CUERVO BLACK MEDALLION. Brief, p. 2. Despite opposer’s characterizing it as “infringement,” one of the grounds for this opposition is likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d). However, as pleaded in the notice of opposition, it is not clear what ground opposer seeks to assert by its allegations regarding applicant’s breach of the parties’ agreement; the allegation in paragraph 15 refers to “unclean hands” and “bad faith,” which are normally equitable defenses to an action, rather than grounds for bringing an action. Further, although applicant states in its “Issues Presented” that a secondary issue is whether the agreement precludes applicant from filing the application for the subject mark, applicant also states that the sole issue is likelihood of confusion. Thus, it appears that applicant Opposition No. 91177477 7 has discussed the “secondary” issue only in case the Board should consider it as a ground in this proceeding. Although an opposer may assert as a ground that an applicant who is contractually prohibited from using a mark does not have the right to use the mark in commerce as set forth in the declaration of the application, we find that opposer did not assert such a ground in the present proceeding, and that such a ground was not tried. On the contrary, opposer has stated quite clearly that “opposer is not asking the Board to interpret the agreement, but merely to take it for its evidentiary value, that by the agreement the issues in this opposition proceeding have already been decided by the parties themselves.” Brief, p. 10. Further, the agreement itself is clear that it is governed by the laws of France. ¶5. Obviously, if the Board does not interpret the agreement, it cannot determine whether applicant was prohibited by contract from filing the present application. Accordingly, we do not treat any issues regarding the agreement as setting forth an additional ground for opposition. Our consideration of the agreement must therefore fall under the du Pont factor of market interface between the parties. Opposer also appears to try to raise an additional ground in its reply brief, asserting that applicant does not have a bona fide intent to use the mark in the form set Opposition No. 91177477 8 forth in its application. This issue was not pleaded or tried, and it has been given no consideration. Facts The facts that have been presented by the parties during the testimony periods are very limited; only opposer submitted evidence that can be said to provide factual information regarding opposer’s activities or applicant’s activities, to wit: Opposer is the owner of a trademark registration for MEDAILLON for brandy; the parties entered into a worldwide agreement in 2005, which is applicable to and enforceable in the United States; and applicant owns a pending application, Serial No. 78803080, for JOSE CUERVO BLACK MEDALLION and label design for tequila. The evidence submitted by applicant relates only to the strength of opposer’s mark, and not to opposer or applicant or their activities. However, the parties make “factual” statements in their briefs. Although there is no evidentiary support for these statements, to the extent that both parties have made the same statement, we treat them as stipulated facts, specifically, that there is an agreement between the parties that was entered following opposer’s objection to applicant’s European Community trademark application for the mark BLACK MEDALLION. Standing Opposition No. 91177477 9 In view of opposer’s ownership of a registration for the mark MEDAILLON, it has established that it is not a mere intermeddler and that it has standing. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Priority Because opposer owns a registration for MEDAILLON for brandy, priority is not in issue. King Candy Company v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Likelihood of confusion Our determination of this issue is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Because the primary evidence submitted by opposer in this proceeding, and the focus of much of the parties’ argument, is the agreement between the parties, we turn first to this evidence and the factor of market interface. As recited in the agreement, applicant sought to register a European Community trademark for BLACK MEDALLION for “non- alcoholic cocktail mixes for mixing with alcoholic Opposition No. 91177477 10 beverages; non-alcoholic beverages, syrups, and powder for making non-alcoholic beverages; alcoholic beverages; alcoholic cocktail mixes; tequila.” The agreement states that opposer is the owner of a Community trademark application for MEDAILLON for alcoholic beverages excerpt beers, and also owns registrations of this trademark and of trademarks including this word in all the countries of the European Community. The agreement provided that applicant would withdraw its application for BLACK MEDALLION, and would not use separately the word MEDALLION or its translation in its advertisements and in commerce. It also provided that applicant was authorized to register and use for tequila the trademark JOSE CUERVO BLACK MEDALLION in a label design that is the same as the mark shown in applicant’s co-pending application Serial No. 78803080. In return, opposer stated that it accepts the registration and use of the JOSE CUERVO BLACK MEDALLION label design, and that it would derive no rights from the registration and use of its MEDAILLON trademark against the registration and use by applicant of its label design mark. This document shows that the parties agree to coexist with respect to opposer’s mark MEDAILLON and applicant’s mark JOSE CUERVO BLACK MEDALLION and label design. The agreement is silent as to applicant’s registration and use of JOSE CUERVO BLACK MEDALLION in standard character format, Opposition No. 91177477 11 which is the mark shown in the subject application. Because the context for the agreement was applicant’s seeking registration for BLACK MEDALLION per se, we cannot view the agreement as either specifically allowing applicant to register its mark in the standard character form for which it seeks registration, or as prohibiting applicant from doing so. Accordingly, in the likelihood of confusion analysis we treat this du Pont factor as neutral. The next factor we consider is the strength of opposer’s mark. As noted, opposer has not submitted any evidence about its use or advertising of its mark, so there is no basis for us to conclude that it is a strong mark. On the other hand, applicant has submitted evidence in the form of third-party registrations and newspaper articles that indicate that MEDAILLON has a significance in the alcoholic beverage industry. Opposer’s mark MEDAILLON is the French word for “medallion.” See opposer’s brief, p. 7 “Opposer’s word mark MEDAILLON (the French word for ‘Medallion’)” and applicant’s brief, p. 5; see also the definition of “medallion” in The American Heritage Dictionary of the English Language, 4th ed. © 2000, stating that the word comes from the French word “medaillon.”5 “Medallion” is 5 The Board may take judicial notice of dictionary definitions. University of Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). Opposition No. 91177477 12 also defined as “a large medal.” Webster’s New Universal Unabridged Dictionary, © 1989; Random House Webster’s Unabridged Dictionary, 2d ed. © 2001. The third-party registrations include SANTA RITA MEDALLA REAL (translated as “Santa Rita Royal Medallion”) for wine,6 and MEDALLA (translated as “Medal”) for beer,7 as well as numerous “label” marks in which the word “Medal” or a foreign equivalent is used in a subordinate manner to indicate that the product has won medals, e.g., Registration No. 0832757 for scotch whisky, shown below, in which the words GOLD MEDAL appear in relatively small letters below medal designs, indicating that the product twice won gold medals: 6 Registration No. 2776392. 7 Registration No. 1620280. Opposition No. 91177477 13 and Registration No. 0718040 for gin, shown below, in which SCHLICHTE is the dominant term but in which representations of medals, and the phrase “World-Exhibition Brussel 1910 Gold Medal” appear: Opposition No. 91177477 14 Further, the newspaper articles report numerous instances of medals being awarded for various alcoholic beverages. See, e.g., Both wineries have won gold medals in past state competitions as well as national and international competitions. “St. Charles County Business Record” (MO), August 13, 2007 Chateau Thomas also appears to have won more medals than any other winery in the contest, with 30. “Fort Wayne Journal Gazette” (IN), August 11, 2007 In March it was awarded the Double Gold Medal for Best Vodka in the 2008 San Francisco World Spirits Competition. “Gazette” (Colorado Springs, CO), May 1, 2008 Opposition No. 91177477 15 Bob and Laura Hill’s 1979 Loujan Bas Armagnac received a double gold medal at the annual World Sprits Competition in San Francisco last month. Double gold medals, or “best in show,” are given only when the judges vote unanimously for one brand. Four categories are judged: best white spirits, best whiskey, best liquor and best brandy, which includes all cognacs as well. “The Denver Post,” April 22, 2008 I’ve been involved in a variety of spirits and wine judgings that use sharply different methods for awarding medals. “Albany Times Union,” April 17, 2008 Twenty-six entries earned gold medals in the first Spirits of Mexico Tasting Competition. The event, held in San Diego, drew 61 pure agaves - 55 tequilas and six mezcals. “Albany Times Union,” October 4, 2007 A record 365 Michigan wines were entered in the 2007 Michigan Wine and Spirits Competition in East Lansing on Aug. 7, and 36 state wineries won a total of 227 medals. “Ann Arbor News,” October 3, 2007. Although the third-party registrations are not evidence that the marks are in use, and the newspaper articles do not show trademark use of the word “medal,” it is clear from the foregoing that “medals” have a laudatory significance in the alcoholic beverage field. Because “medallion” is a type of medal, opposer’s mark MEDAILLON has a laudatory suggestive significance of a high quality or award-winning brandy. Further, as used in applicant’s mark, the word MEDALLION Opposition No. 91177477 16 also has a laudatory suggestion. During the course of prosecution the examining attorney required that applicant disclaim the word BLACK in its mark because “the word black is used descriptively within the alcoholic beverage industry to indicate a type, quality/grade or age of tequila.” Office action mailed October 18, 2005. Because of the laudatory descriptive meaning of BLACK and the laudatory suggestive meaning of MEDALLION, consumers will view the name JOSE CUERVO in applicant’s mark as the source- indicating portion, and consider BLACK MEDALLION as an indication of the quality of the product. As a result, it is appropriate for us to give more weight to the name JOSE CUERVO in applicant’s mark when considering the similarity of the marks. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (there is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties). Thus, when the marks are compared in their entireties, because of the dominant presence of JOSE CUERVO in applicant’s mark, the marks are different in appearance, pronunciation, connotation and commercial impression. In reaching this conclusion we have taken into consideration opposer’s argument, and the cases cited in support of that Opposition No. 91177477 17 argument, that “when one incorporates the entire registered mark of another into a composite mark, inclusion in the composite mark of a significant, non-suggestive element will not necessarily preclude a likelihood of confusion.” Brief, p. 6. We agree with opposer that applicant’s mark essentially incorporates the entirety of opposer’s mark; the words MEDAILLON and MEDALLION are extremely similar in appearance, and the very slight different in spelling between MEDAILLON and MEDALLION is not likely to be noted by many purchasers. Further, purchasers not familiar with the French language are likely to pronounce the two words the same, while those who do know French will view the words as equivalents, since MEDALLION is not only a direct translation of MEDAILLON, but also is similar in appearance. Thus, in our analysis we have considered these elements as being the same. However, it is not a rule that confusion is likely whenever a mark incorporates the registered mark of another. “[T]here is no arbitrary rule of law that if two product marks are confusingly similar, likelihood of confusion is not removed by use of a company or housemark in association with the product mark.” New England Fish Company v. The Hervin Company, 511 F.2d 562, 184 USPQ 817, 819 (CCPA 1975) (BLUE MOUNTAIN KITTY O's and KITTY not similar). The effect Opposition No. 91177477 18 of the addition of a house mark depends on the circumstances: In cases involving the addition of a housemark to one of two otherwise confusingly similar marks, it has been held that such does not serve to avoid likelihood of confusion. Rather, such addition may actually be an aggravation of the likelihood of confusion as opposed to an aid in distinguishing the marks so as to avoid source confusion. On the other hand, where there are some recognizable differences in the asserted conflicting product marks or the product marks in question are highly suggestive or merely descriptive or play upon commonly used or registered terms, the addition of a housemark and/or other material to the assertedly conflicting product mark has been determined sufficient to render the marks as a whole sufficiently distinguishable. In re Christian Dior, S.A., 225 USPQ 533, 536 (TTAB 1985) (citations omitted). In the present case, the “product mark,” i.e., the word MEDAILLON or MEDALLION, is, as has been discussed, a laudatory suggestive term.8 Therefore, we consider this situation to be similar to that in Knight Textile Corp. v. Jones Investment Co., 75 USPQ2d 1313, 1316 (TTAB 2005), in which no likelihood of confusion was found between the opposer’s mark ESSENTIALS and the applicant’s mark NORTON McNAUGHTON ESSENTIALS despite their use on identical goods. 8 The additional word BLACK in applicant’s mark is, as we have discussed, descriptive of a grade or quality of the product. Therefore, in reaching our decision herein, we have not treated it as being a distinguishing element. Opposition No. 91177477 19 “[W]e find that ESSENTIALS is a highly suggestive term as applied to the articles of clothing identified in applicant's application and in opposer's registration, respectively, and that, under our case law, applicant's addition of its house mark therefore suffices to distinguish the two marks when they are viewed in their entireties.” We, too, find that the addition of JOSE CUERVO in applicant’s mark is sufficient to distinguish applicant’s mark from opposer’s, and that the du Pont factor of the similarity of the marks favors applicant. Moreover, opposer has presented no evidence as to the relatedness of the goods. Brandy and tequila are both alcoholic beverages, and therefore we may assume that they are sold in the same channels of trade, but opposer has not submitted any evidence to show that these goods are related. For example, there is no evidence that both types of goods are made by the same company, or that they are sold under the same mark, or that they are ingredients for particular cocktails, such that we could consider them complementary products that would be bought and used together. They can, of course, both be described generally as “alcoholic beverages.” “It is, however, not enough to find one term that may generically describe the goods.” General Electric Company v. Graham Magnetics Incorporated, 197 USPQ 690, 694 (TTAB 1977); see also, In re W.W. Henry Co., 82 USPQ2d 1213 Opposition No. 91177477 20 (TTAB 2007). There is no per se rule that all alcoholic beverages are related, and because opposer has failed to present evidence that the specific alcoholic beverages, brandy and tequila, are related, this du Pont factor, too, favors applicant. With respect to the factor of the conditions under which and buyers to whom sales are made, i.e., impulse vs. careful, sophisticated purchasers, opposer states only that the “purchasers are the same.” Brief, p. 4. Applicant states that tequila and brandy and relatively high-priced beverages that are purchased with some degree of thought, and that “the source of products of this nature is important to consumers as the quality of these types of goods can vary greatly based on the manufacturer.” Brief, p. 10. However, neither opposer nor applicant has submitted any evidence in support of their assertions. Accordingly, we treat this du Pont factor as neutral. Opposer has acknowledged that there is no evidence of actual confusion, but since there is no evidence that applicant has used its mark at all in the United States, this du Pont factor is neutral. Aside from making one or two word comments with respect to the remaining du Pont factors, opposer has not made any arguments about them, nor has it presented any evidence regarding them. And applicant has not discussed them in its Opposition No. 91177477 21 brief. Therefore, we treat these factors as neutral. We also give no weight to opposer’s argument that applicant acted in bad faith in adopting its mark. This argument is based on opposer’s contention that applicant violated the 2005 agreement between the parties by filing the subject application for the mark in standard character format. However, as we have previously discussed, opposer has stated that it is not asking the Board to interpret the agreement, but only consider it as evidence that the parties have already decided the issues in this opposition. Because the agreement on its face does not discuss the applied-for mark, we cannot view the issue before us as having already been determined by the parties, and therefore opposer has not shown that applicant acted in bad faith in filing the application. In conclusion, opposer has failed to meet its burden in establishing that applicant’s mark JOSE CUERVO BLACK MEDALLION in standard characters for tequila is likely to cause confusion with MEDAILLON for brandy. Decision: The opposition is dismissed. Copy with citationCopy as parenthetical citation