Evidentiary issues: Applicant submitted a declaration with accompanying exhibits during its testimony period, but the Board observed that a declaration cannot be submitted in lieu of testimony unless the parties so stipulate. See Rule 2.123(b) and TBMP Section 703.01(b). Even if the declaration could be viewed as operating like a notice of reliance, the exhibits to the declaration were not the type of documents that would be admissible by that route: they were advertising materials generated by applicant. In short, neither the declaration nor the exhibits were admissible.
Moreover, that fact that applicant was required to supplement its discovery responses does not mean that the responses were thereby made of record in the proceeding. And in any case, the advertising materials were apparently available only in Peru and therefore had no probative value.
Likelihood of Confusion: The Board viewed the design elements of applicant's mark as "insignificant background elements," concluding that "applicant has essentially appropriated registrant's mark GOTT without adding any other distinguishing features." The word LIGHT, disclaimed in the application, provides descriptive information regarding applicant's products. The wave design "merely reinforces the connection to applicant's goods as water beverages and related goods."
The Board found applicant's mark and the mark GOTT to be similar in sight, sound, meaning, and commercial impression. Likewise, applicant's mark is similar to the registered mark JOEL GOTT. The inclusion of the first name JOEL in opposer's mark merely underscores the fact that GOTT connotes a person's name.
As to the goods, opposer's evidence showed that wine and water are related goods. Opposer's witness testified that she purchased or obtained bottled water at several wineries, the water being sold under the same brand name as the wine. Use-based third party registrations also suggested that these goods may emanate from a single source under a single mark. This evidence "strongly favors a finding of likelihood of confusion."As to channels of trade, opposer proved that the involved goods will be marketed in similar venues, like grocery stores and "big box" stores. Opposer sells to Safeway, Wal-Mart, and Costco; applicant's witness testified that it intends to sell its water in supermarkets.
The fact that the goods will be sold in the same large store does not necessarily support a Section 2(d) claim, but here there was testimony that both water and wine are sold at wineries, and further Mr. Gott himself testified that he has seen water and wine sold in the same section of stores. [I guess you've Gott to believe him - ed.]. Menus from restaurants included water and wine in the same menu section. Website printouts described mixing wine and water to make wine spritzers and other popular drinks, as well as the pairing of wine and water. Thus opposer established that the involved goods are related products sold through the same trade channels to the same classes of consumers.
Balancing the duPont factors, the Board found confusion likely and it sustained the opposition.
Read comments and post your comment here.
TTABlog comment: Why is this case precedential? Seem rather straightforward to me. As I've said before, although there is no per se rule that all beverages are related for Section 2(d) purposes, it does seem to work out that way.
Text Copyright John L. Welch 2013.
Post a Comment