Applicant Perry David Merlo tripped over two hurdles in his quest for registration of the mark MERLO'S MERLOT for "grape wine; red wine": Sections 2(e)(4) and 2(d) of the Trademark Act. The Board agreed with Examining Attorney Robert J. Struck that the applied-for mark is primarily merely a surname, and further is confusingly similar to the registered mark LAGO DI MERLO for wines. In re Perry David Merlo, Serial No. 85510114 (May 23, 2013) [not precedential].Section 2(e)(4): The Board did not find MERLO to be "a particularly rare surname." It appeared 866 times in a national directory of surnames, and 2,697 times in the 2000 census. Of course, Applicant's own name was further evidence that MERLO has surname significance. Negative dictionary evidence showed that MERLO has no other meaning in English. [Applicant belatedly submitted evidence that the Italian word "merlo" means "blackbird" in English, but the Board gave that evidence no consideration.]
Finally, MERLO has the "look and feel" of a surname, as evidenced by the fact that the Merlo family of California produces the wine sold under the cited mark LAGO DI MERLO. Use of the possessive MERLO'S by Applicant reinforced the surname significance.
Applicant argued that MERLO’S MERLOT "has a unique meaning above an[d] beyond merely a surname and a generic term” and "constitutes “a play on two similarly sounding words which sound the same and are interchangeable." The Board, however, was unimpressed by this homophonicity, finding that it did not displace or diminish the surname significance of the phrase "in designating a type of good (merlot wine) offered by applicant (Mr. Merlo)."
Section 2(d): The goods of the application and cited registration are legally identical, and the Board must presume (absent any express limitations) that they travel through the same, normal channels of trade to the usual classes of consumers. These factors strongly support the refusal to register. Moreover, when the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion.
The cited mark LAGO DI MERLO translates into English as “Lake of Merlo.” Because there was no dispute regarding this translation, the Board "must therefore assume that the ordinary U.S. consumer familiar with Italian would 'stop and translate' the foreign wording in registrant’s mark to 'Lake of Merlo.' See Palm Bay Imps. Inc., 73 USPQ2d at 1696."
The Board found MERLO and its possessive form, MERLO’S, to be the dominant portions of the respective marks, and further that consumers are likely to view the subject marks as "creating similar commercial impressions." In the cited mark, the Board concluded, the phrase "LAGO DI" modifies "MERLO." [Seems more like a unitary phrase to me - ed.] "Given the structure of applicant’s mark, consumers who are familiar with registrant’s LAGO DI MERLO goods would view the term MERLO’S MERLOT, when used in association with applicant’s goods, as designating a particular varietal of registrant’s wines."
Balancing the relevant duPont factors, the Board found confusion likely and it affirmed the Section 2(d) refusal.
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TTABlog comment: I disagree with the 2(d) ruling. I don't think the marks are sufficiently similar. The cited mark identifies a lake. The applied-for mark attaches a name to a type of wine.
Text Copyright John L. Welch 2013.
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