Opposer Luxco claimed that its marks are famous, based on use since 1990, the ranking of ADMIRAL NELSON'S rum as the fifth-largest selling rum in the USA, significant sales and extensive marketing, and the winning of several brand awards in the industry. Not good enough, said the Board.
The Board observed that, in view of the deference accorded a famous mark in the Section 2(d) analysis, a party asserting fame must clearly prove it. Luxco's mark has a high degree of recognition and, given its arbitrary nature, it is entitled to a broad scope of protection. But fame? Blimey, no. [The Board did not spell out what was missing in Opposer's evidence concerning fame. - ed.]
Of course, because the goods are identical, the Board must presume that they travel through the same normal channels of commerce to the same classes of consumers. Moreover, when the goods are the same, a lesser degree of similarity between the marks is required to float a finding of likely confusion.
Turning to the marks, the Board noted that they both suggest a nautical theme, but then "there is nothing particularly distinctive with using a nautical theme in connection with the sale of rum because there is a long-time association between rum and sailors." ["Fifteen men on the dead man’s chest, yo-ho-ho and a bottle of rum!" - -ed.]
The Board noted that "Admiral" is a naval title, and so the parties' marks "identify separate and distinct individuals." In fact, Admiral George Brydges Rodney was a notable British naval officer, and of course Admiral Horatio Nelson is a legendary British hero. The Board referred to those facts not to demonstrate that "typical U.S. consumers recognize British naval heroes, but to demonstrate that the names Admiral Nelson and Admiral Rodney identify different individuals and, when used as marks, are likely to be construed as different names." [Say again? - ed.] Consequently, the Board found that the marks have different meanings and it concluded that the differences in the marks outweigh their similarities.
Balancing the relevant du Pont factors, the Board found that consumers will distinguish the marks because of these dissimilarities. "In other words, in this case, the dissimilarity of the marks is the most important factor."
And so the Board dismissed the opposition.
TTABlog comment: Well, how did you do? Are you ready to join the Board, or must you walk the plank?
Do you think the Opposer was sailing pretty close to the WYHO? line.
Text Copyright John L. Welch 2012.
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