Making Tequila and Pisco Shots Safe From Confusion

by Akerman LLP - Marks, Works & Secrets
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The United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) cancelled the registration for the mark PORTÓN last week, finding it to be confusingly similar to the senior mark PATRÓN. Patrón Spirits International AG v. Pisco Portón, LLC, Cancellation No. 92059527 (January 4, 2017) (non-precedential).

Petitioner Patrón Spirits International, AG (“Patrón”) sells spirits (mostly tequila) under the brand name PATRÓN. Registrant Pisco Portón, LLC (“PPL”) sells the traditional Peruvian liquor pisco under the registered trademark PORTON. Patrón timely filed a petition to cancel PPL’s mark, alleging a likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on its common-law use and two federally registered trademarks.

Likelihood of confusion determinations under Section 2(d) are based on an analysis of all of the probative facts in evidence that are relevant to the thirteen factors set forth in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). Two key considerations are the similarities between the marks and the similarities between the goods. Going through the governing factors:

A.    Priority

Priority of use was not at issue in this case. PPL conceded that Patrón had established priority of use of the mark PATRÓN for tequila and distilled spirits by virtue of its notice of reliance on its pleaded registrations.

B.    The Parties’ Goods Are Similar, With Similar Channels of Trade and Similar Purchasers.

Patrón’s goods are “tequila” and “distilled spirits.” PPL’s goods are “distilled spirits; brandy; pisco.” Thus, the Board found the parties’ respective goods to be legally identical for purposes of this prong of the du Pont test. When the goods are identical, it is presumed that they travel through the same, normal channels of trade to the same classes of consumers. Moreover, there were no limitations as to channels of trade in the registration at issue, or in Patrón’s registrations of record. As such, the goods are presumed to move in all normal channels of trade for those goods and to be available to all classes of consumers. Stated simply, the Board recognized that PPL’s distilled spirits may be sold through retail outlets like Patrón’s and to the same consumers.

C.    The Marks Are Similar in Appearance, Sound, Meaning, Connotation, and Overall Commercial Impression.

The key factor in this case involved the overall look and feel of the marks. Since the products were deemed “legally identical,” the degree of similarity between the marks necessary for a finding of confusion was reduced. In assessing this factor, the similarities in sight, sound and connotation of the marks are evaluated. This factor weighed heavily in favor of Patrón. The Board found the marks to be similar in appearance in that they are two-syllable six letter words that begin with P followed by a vowel, end with ON, and have a T and R combination in the middle.

As used in commerce, both marks bring the leg of the R lower and Petitioner sometimes uses the diacritical mark over the O.

PiscoTequila

As to connotation, Patrón argued that because both marks are Spanish words and a “sizeable majority of American consumers do not speak Spanish, and … are not familiar with the Spanish meaning of the words PATRÓN and PORTÓN” … the marks would have no meaning “other than as a trademark with a Spanish-language overtone” and “will leave identical commercial impressions.” PPL, for its part, argued that the marks have “entirely different meanings and connotations.” “Portón” means a large door or gate and “patron” means a guest or customer. English speakers would perceive PATRÓN as the English word “patron” while PORTON would clearly be identified as a Spanish term. The Board took Patrón’s side on this issue, finding that a substantial number of non-Spanish speakers in the US would perceive both terms, as used on alcohol, as Spanish words with no obvious meaning.

Although Patrón also claimed that its mark was “famous” − sometimes an important factor in a likely confusion as well as dilution analysis − the Board held that Patrón had failed to provide measurable evidence of its sales or market share, both of which are generally necessary to establish fame, although it had shown a certain level of “commercial strength for tequila”.

Balancing the factors, the Board held that PORTÓN was confusingly similar to the “strong” PATRÓN mark and it cancelled the registration.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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