Trademark Review | January 2015
Diageo Enforces Trade Dress Rights in its CROWN ROYAL Drawstring Bag
Diageo owns a registration for the mark CROWN ROYAL for whiskey. Diageo has sold its CROWN ROYAL whiskey in a purple drawstring bag for many years. When Mexcor started selling a line of state-themed whiskies under marks such as Texas Crown Club and California Crown Club, each in a drawstring bag bearing each state’s flag, Diageo sued Mexcor for infringement of its CROWN ROYAL trademark and its trade dress in its drawstring bag packaging.
The jury ruled in favor of Diageo, finding trademark and trade dress infringement. The jury also awarded Diageo over $400,000 in damages. The Court has not yet issued its detailed orders on injunctive relief.
Diageo North America, Inc. v. Mexcor, Inc. et al., Case no. 4:13-cv-00856 (United States District Court for the Southern District of Texas, December 2014).
The Federal Circuit Reverses Refusal to Register TAKETEN Due to High Degree of Customer Care in Selecting Services
St. Helena Hospital applied to register the trademark “TAKETEN” for use with its 10-day in-patient health improvement program. The Patent and Trademark Office examiner refused registration on the basis of likelihood of confusion with earlier registrations for the mark “TAKE 10!” St. Helena’s application identified its services as “health care services, namely, evaluating weight and lifestyle health and implementing weight and lifestyle health improvement plans in a hospital-based residential program” in class 44. The cited “TAKE 10!” registrations are for “printed manuals, posters, stickers, activity cards and educational worksheets dealing with physical activity and physical fitness” in class 16.
On appeal to the TTAB, the Board agreed with the examiner and found the balance of the factors supported the conclusion of likelihood of confusion and affirmed the examiner’s refusal to register St. Helena’s TAKETEN mark.
The Federal Circuit reversed and remanded for further proceedings. While the Federal Circuit agreed the marks were similar, it found there was no substantial evidence to support the refusal to register the “TAKETEN” mark based on the registered “TAKE 10!” marks. The Federal Circuit pointed to (1) the dissimilarities in the respective services and goods; and (2) the high degree of consumer care that would be exercised by any consumer selecting and participating in a 10-day hospital-based health care program.
In re St. Helena Hospital, Case no. 2014-1009, Application no. 85/416,343 (United States Court of Appeals for the Federal Circuit, December 16, 2014).
Franciscan Fails to Prove that Wines and Apple Juices are Related Goods
Domaines Pinnacle, a Canadian corporation and producer of alcoholic ice apple wines, filed in application in the PTO seeking to register the mark DOMAINE PINNACLE for “apple juices and apple-based non-alcoholic beverages.” Franciscan opposed the registration alleging likelihood of confusion with Franciscan’s registered marks PINNACLES for “wine” and PINNACLES RANCHES for “wines.”
The Trademark Trial and Appeal Board found the lack of evidence showing a relatedness of the goods outweighed the similarities in the marks, trade channels and conditions under which and the buyers to whom sales are made, and dismissed the opposition.
On appeal to the Federal Circuit, Franciscan argued the Board overlooked evidence that Franciscan’s wines and Domaines Pinnacle’s “apple juices and apple-based non-alcoholic beverages” were related goods. Specifically, Franciscan argued that the Board failed to follow In re Jakob Demmer KG in which the Board found that wines and non-alcoholic beverages were related goods.
The Federal Circuit found the Board did not err in determining Franciscan failed to prove a likelihood of confusion. Franciscan presented testimony to the Board that the parties were competitors in Canada and that Franciscan’s parent company owned three Canadian companies that sold wines and ciders. The Federal Circuit found the Board correctly noted that this evidence is insufficient to show the parties’goods are related or marketed in such a way that they would likely be seen by the same persons under circumstances that could create confusion.
As to the ruling in Jakob Demmer that wines and non-alcoholic beverages were related goods, the Federal Circuit agreed with the Board that the ruling in that case did not control. Jakob Demmer involved an ex parte appeal in which the Board generally adopts a “more permissive stance with respect to the admissibility and probative value of evidence” than it does in an inter partes proceeding.
In re Franciscan Vineyards, Inc., Case no. 14-1269 (United States Court of Appeals for the Federal Circuit, December 9, 2014) [nonprecedential].