When the goods listed in a trademark application are sufficiently similar to those in a prior registration, the marks need not be identical for the application to be denied registration. The Federal Circuit, in a recent case upholding a decision of the Trademark Trial and Appeal Board (Board), held that a likelihood of confusion existed between applicant Chatam International Inc.’s JOSE GASPAR GOLD mark for tequila (Ser. No. 76/138,531) and a prior existing registration for the mark GASPAR’S ALE for beer and ale (U.S. Registration No. 2,088,953). In re Chatam Int’l Inc., 03-1504 (Fed. Cir. Aug. 3, 2004).

Pursuant to Paragraph 2(d) of the Lanham Act, a trademark application may be denied registration if it is likely to cause confusion with a prior registered mark. Whether a likelihood of confusion exists is based on a multi-factor test first articulated by the Federal Circuit in In re E.I. DuPont de Nemours & Co., 476 F.2d 1357 (CCPA 1973). Here, the Federal Circuit affirmed the Board’s determination that the salient DuPont factors in this case were the similarity of the marks and the similarity of the goods and that both of these factors supported refusal of the JOSE GASPAR GOLD registration.

In addressing the similarity of the respective marks, the Court agreed that the dominant elements of the respective marks were GASPAR and GASPAR’S, respectively. The Court rejected the applicant’s arguments that the additional elements contained in each mark distinguished them. The element "ALE" in the prior registrant’s mark could not effectively distinguish the marks because "ALE" is a generic word. Similarly, "GOLD" in the applicant’s mark had no source identifying significance because it merely described either the color of the tequila or applicant’s marketing of the product as a premium beverage. Finally, the inclusion of the element "JOSE" simply reinforced the impression consumers would have that GASPAR referred to a person’s name and did not alter the commercial impression conveyed by the applicant’s mark.

The Court also summarily dismissed the applicant’s arguments that the relatedness of the goods was irrelevant. To the contrary, the Court found that tequila was closely related to beer and ale because all are alcoholic beverages sold in the same channels of trade.

Finally, the Court cited its prior rulings holding that doubts about the existence of a likelihood of confusion should be resolved "against the newcomer because the newcomer has the opportunity and obligation to avoid confusion with existing marks." Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265 (Fed. Cir. 2002). Here, substantial evidence existed to support a refusal of the applicant’s JOSE GASPAR GOLD mark based on the prior registration of GASPAR’S ALE.

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