J.C. Newman opposed an application to register the mark
GOLD CROWN for cigars, cigar boxes, and the like,
claiming a likelihood of confusion with its registered mark
DIAMOND CROWN for cigars and various smoking
articles. The goods are identical or closely related, but what
about the marks? Opposer claimed the DIAMOND CROWN is
"renowned," whereas Applicant Fairmont Holdings Media
maintained that "CROWN" is a weak formative due to
substantial third-party use. How do you think this came out? J.C. Newman Cigar Company v. Fairmont Holdings,
Inc., Opposition No. 91239345 (May 12, 2020) [not
precedential] (Opinion by Judge Frances Wolfson).
Applicant submitted 13 third-party registrations for marks
including the word CROWN or CORONA for cigars: BLACK CROWN,
UNDERCROWN, SHROUDED CROWN, ZINO PLATINUM CROWN (3), LA CORONA,
GRAN CORONA, ENGLISH CORONAS, CORONA CLASSICO, and J.R. SPECIAL
CORONA. [I count only 11 - ed.]. The Board found that
"four iterations" of the term CROWN, coupled with the
meaning of crown (e.g., "a mark of honor") show that
"buyers of CROWN branded cigars likely perceive the term as
suggesting the cigars are of a high or superior quality."
Therefore the term "CROWN" is conceptually weak for
cigars.
As to commercial strength, Opposer Newman contended that its mark
"is renowned in the cigar market and among consumers of
cigars." It has sold DIAMOND CROWN cigars since 1995, and the
brand allegedly is "among the best selling Super Premium
cigars on the market." Sales have been in the several millions
for the past four years, but opposer did not provide any evidence
of market share. The cigar has received a number of awards and
media recognition. The Board concluded that the mark has
"achieved some marketplace recognition."
Applicant Fairmont argued that the term "CROWN" is
"diluted" because of "[prevalent] third party use of
the term 'CROWN' in the cigar industry." It provided
website pages from six third-party retailers advertising cigars
under marks containing the word CROWN. Numerous cigars are sold
under "CROWN"- formative marks: "NOBLE CROWN,
SHROUDED CROWN, BLACK CROWN, and RED CROWN, which share the
grammatical structure of Opposer's mark, as well as TRIPLE
CROWN COLLECTION, CROWN ACHIEVEMENT, DREW ESTATE UNDERCROWN SHADE,
CROWNED HEADS, and ZINO PLATINUM CROWN SERIES." One
distributor sells both parties' cigars.
The Board concluded that "[t]he prevalent use of
"CROWN" as part of many third-party marks demonstrates
that CROWN is a commercially weak component of cigar marks, thus
weakening the overall commercial strength of Opposer's
mark."
Comparing the marks, the Board found find that they differ in
their commercial impressions, "in light of the conceptual and
commercial weakness of the term 'CROWN," the fact that
'gold' is also a color and could be perceived as such by
consumers encountering Applicant's mark, and given that the
distinguishable terms in the parties' marks are the first term
in each mark, i.e., 'GOLD' and 'DIAMOND,' further
establishing that it is these terms that are the dominant elements
of each respective mark."
The Board concluded that the marks, considered in their entireties,
are more dissimilar than similar.
Opposer's sophistication argument was quickly snuffed out by
the Board, since the identification of goods in the cited
registrations and opposed application contain no limitations as to
price. The Board must make its determination in view of the least
sophisticated consumer. In any case, even careful purchasers may be
confused by the use of similar marks on identical goods.
Finally, the lack of evidence of actual confusion was neutral,
since that may be attributable to the fact that applicant displays
its mark with its house mark. In any case, the involved products
have been concurrently used for only a relatively short period of
time.
Balancing the relevant du Pont factors, the Board found
the difference in the marks to be sufficient to make consumer
confusion unlikely.
Article originally published on 14 May 2020
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