The USPTO refused to register the word+design mark shown below,
for "whiskey," finding it to be confusingly similar to
the registered mark OUTLAW for "alcoholic
beverages." The goods overlap, but what about the marks?
Applicant Mystic Mountain argued that the design portion of its
mark dominates, that the term "outlaw" is weak, and that
consumers of alcohol are careful in their purchasing decisions. How
do you think this came out?
In re Mystic Mountain Distillery LLC, Serial
No. 87014045 (September 17, 2019) [not precedential] (Opinion by
Judge Cheryl S. Goodman).
Since registrant's "alcoholic beverages" encompass
"whiskey," the involved goods are in part legally
identical. The Board must presume that these goods travel in the
same channels of trade to the same classes of consumers. Moreover,
when the goods are identical, a lesser degree of similarity between
the marks is necessary to support a finding of likely
confusion.
Turning to the marks, Applicant Mystic Mountain relied on five
third-party registrations and eight third-party uses of the term
"OUTLAW" in connection with whiskey and other alcoholic
beverages. However, the list of third-party uses appeared for the
first time in Applicant's brief and so the Board refused to
consider them, observing: "Applicant has the responsibility to
make sure that the record is complete prior to filing a notice of
appeal."
As to the five registrations, three were for marks the referred to
historical figures or notable individuals - SHERIFF HENRY
PLUMMER'S OUTLAW BREWING, JESSE JAMES AMERICA'S OUTLAW
BOURBON WHISKEY, and JESSE JAMES AMERICA'S OUTLAW BEER - and
therefore those marks created different commercial impressions than
Mystic Mountain's mark. The other two registrations fell
"well short of the 'voluminous' and
'extensive' evidence that was found probative in Jack
Wolfskin or in Juice Generation. The Board therefore
found this factor to be neutral.
Comparing the marks, the Board noted that for word+design marks,
the words are normally accorded greater weight "because the
words are likely to make an impression upon purchasers, would be
remembered by them, and would be used by them to request the goods
and/or services."
Mystic Mountain argued that the design is the dominant portion of
its mark, but the Board disagreed. Although the design features are
prominently displayed, the Board found that the literal portion of
the mark is entitled to greater weight. Moreover, lesser weight is
given to the generic or descriptive words WHISKEY and HANDCRAFTED
SMALL BATCH, which have been disclaimed.
Thus the distinctive portion of Applicant's mark is comprised
of the words MYSTIC MOUNTAIN, BRAD LEE SCHROEDER, and OUTLAW. The
Board concluded that the term OUTLAW "is the most dominant,
given that it is the wording that is most prominently displayed,
MYSTIC MOUNTAIN is a house mark, and BRAD LEE SCHROEDER, in even
smaller type, appears to identify a person that is endorsing or is
in some way associated with Applicant's product."
The presence of the house mark does not suffice to distinguish two
otherwise similar product marks, "unless there are
recognizable differences in the shared product marks, or unless the
product mark is descriptive or highly suggestive as applied to the
parties' goods and/or services." The Board found neither
exception applicable here.
The Board concluded that the design in Applicant's mark
"simply reinforces the term OUTLAW," and the disclaimed
terms are entitled to little weight. The term OUTLAW is not so weak
that the addition of the house MYSTIC MOUNTAIN or the name BRAD LEE
SCHROEDER suffices to avoid confusion.
In sum, the Board found the involved marks to be similar, albeit
not identical, in sound, appearance, and meaning, and in overall
commercial impression. Therefore, this du Pont factor
supported a finding of likelihood of confusion.
Finally, although Mystic Mountain contended that consumers of
alcohol, especially whiskey, are "particular in their
choices," there was no evidence to support that contention.
Moreover, there were no restrictions in the application or cited
registration as to price point or consumers, and so the Board must
assume that the goods will be sold to all consumers, including
those exercising only ordinary care, at all price points. The Board
must consider the degree of care that would be exercised by the
least sophisticated consumer.
Balancing the relevant du Pont factors, the Board found
confusion likely and it affirmed the refusal.
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