The USPTO refused to register the mark KING'S RANSOM for "spirits, namely, aged luxury Scotch whisky for private sale only by invitation," finding a likelihood of confustion with the identical mark registered for "wines." Applicant Signatory argued that its restricted identification of goods "sets its whiskey apart from the ordinary retail channels of trade or whiskey, and limiting sales as private and invitation-only weighs heavily against a likelihood of confusion." How do you think this appeal turned out? In re Signatory Vintage Scotch Whisky Company Limited, Serial No. 79261464 (August 3, 2021) [not precedential] (Opinion by Judge Cynthia C. Lynch).
The examining attorney relied on website evidence that purportedly showed whiskey and wine being offered in the same trade channels to the same classes of consumers, and also on third-party, use-based registrations covering wine and whiskey.
Signatory introduced evidence of high-end whiskey being sold for tens of thousands of dollars per bottle. The Board granted Signatory's request that it take judicial notice of the definition of "luxury" as "something expensive which is not necessary but which gives you pleasure." Signatory emphasized that its identified goods are not sold in the ordinary channels of trade for whiskey, since its sales are private and by invitation-only.
The Board observed that only two of the pieces of evidence showed the same mark being used for whiskey and wine. One involved Costco's Kirkland house brand, which covers an unusually broad range of goods, and the other was a foreign website. The Board deemed this evidence "minimally probative."
Moreover, the evidence of online retail stores selling whiskey and wine under various marks "does not establish relatedness or common trade channels for wine and whisky 'for private sale only by invitation,' because the latter on its face would not be available on an Internet retail site generally available to the public." Likewise, the third-party registrations were insufficient to establish that wine is related to "aged luxury Scotch whisky for private sale only by invitation.
"The Board agreed with Signatory that, on the face of its identification of goods, its whiskey would involve relatively careful purchasing decisions and more sophisticated purchasers.
Balancing the relevant DuPont factors, the Board concluded that confusion is unlikely, and so it reversed the refusal to register.
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