The U.S. Court of Appeals for the Federal Circuit affirmed the Trademark Trial and Appeal Board’s (TTAB) decision that the mark VEUVE ROYALE for sparkling wine would likely cause confusion with the marks VEUVE CLICQUOT PONSARDIN and VEUVE CLICQUOT. The Federal Circuit, however, held that there is no likelihood of confusion with the mark THE WIDOW. Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, Case No. 04-1042 (Fed. Cir., Feb. 9, 2005) (Lourie, A.).
Palm Bay filed an intent-to-use trademark application for the mark VEUVE ROYALE for sparkling wine. Veuve Clicquot Ponsardin (VCP) filed an opposition alleging a likelihood of confusion with its own marks. The TTAB refused registration of VEUVE ROYALE finding a likelihood of confusion with three marks: VEUVE CLICQUOT PONSARDIN, VEUVE CLICQUOT and THE WIDOW.
Palm Bay appealed TTAB’s finding on four DuPont factors: the fame of VCP’s; third-party use of the term VEUVE; the similarity of the marks; and purchaser sophistication.
The Federal Circuit, for the first time, addressed the question of what segment of the consuming public must be aware of a mark in order for it to be considered famous. The Federal Circuit held that it is not the general public awareness standard, but the relevant consuming public, i.e., "the class of customers and potential customers of a product or service, and not the general public." For the mark at issue, the relevant consuming public is purchasers of champagne and sparkling wine. Under this standard, VCP’s substantial sales volume; advertising expenditures; ranking as the second leading champagne brand in the United States; media exposure; and widespread presence in restaurants, liquor stores, wine shops and other retail establishments made VCP’s marks famous.
As to the similarity of the marks, the common term VEUVE is an arbitrary term as applied to champagne and sparkling wine. In addition, VEUVE, as the first word to appear on the label, is a prominent feature. Likewise, VEUVE also constitutes "the dominant feature" in the commercial impression created by VEUVE ROYALE because ROYALE is more laudatory and less source-indicating than VEUVE. The Federal Circuit distinguished other cases where the courts found no likelihood of confusion based on common terms because the common terms were generic or non-distinctive terms.
For the third DuPont factor under review — third-party use of the term VEUVE — Palm Bay argued that at least five other different alcoholic beverages use the term VEUVE. The Federal Circuit, however, agreed with the TTAB that the only evidence, an industry trade publication distributed to the trade, was insufficient to show that the consumers actually encounter these brands in the marketplace. Palm Bay also argued that at least six stores in New York, as well as internet websites and restaurant lists, used another third-party mark VEUVE DE VERNAY for sparkling wine. The Federal Circuit explained although that the evidence showed more than de minimis use, it did not rise to the level of demonstrating that the single third-party use was so widespread as to "condition" the consuming public, where customers have been educated to distinguish between different marks on the basis of minute distinctions.
The final DuPont factor reviewed by the Federal Circuit was purchaser sophistication, a factor which it found mitigated in favor of finding a likelihood of confusion. The Federal Circuit agreed with the TTAB that general consumers, not just connoisseurs, purchase champagne or sparkling wines on celebratory occasions or as holiday presents for friends and colleagues, with little care or prior knowledge. In fact, the Court noted that even more sophisticated purchasers who may be aware that champagne houses offer both types of products under similar marks, could easily conclude that VEUVE ROYALE was VCP’s sparkling wine.
As to the mark THE WIDOW, the Federal Circuit first noted that the doctrine of foreign equivalents is not an absolute rule and merely a guideline. The doctrine should be applied only when it is likely that the ordinary American purchaser would "stop and translate into its English equivalent." Here, the Federal Circuit found that the TTAB erred in finding that the doctrine applies because an American buyer will not likely translate "VEUVE" into "widow."
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.