Schenley Distillers, Inc. v. General Cigar Co.

Decision Date25 June 1970
Docket NumberPatent Appeal No. 8328.
Citation427 F.2d 783,166 USPQ 142
PartiesSCHENLEY DISTILLERS, INC., Appellant, v. GENERAL CIGAR CO., Inc., Appellee.
CourtU.S. Court of Customs and Patent Appeals (CCPA)

Milton B. Seasonwein, New York City, attorney of record, for appellant.

John C. Vassil (Morgan, Finnegan, Durham & Pine), New York City, attorney for appellee; Hobart N. Durham, New York City, Harry C. Marcus, of counsel.

Before RICH, Acting Chief Judge, ALMOND, BALDWIN, and LANE, Judges, and FISHER, Chief Judge, Eastern District of Texas, sitting by designation.

FISHER, Judge.

The issue in this case is whether there is likelihood of confusion, mistake or deception in the concurrent use of the identical trademark "OLE" for cigars and for tequila. The Trademark Trial and Appeal Board dismissed the opposition with an opinion dated October 12, 1967, 155 USPQ 742. Petitioner, Schenley Distillers, appeals.

Appellant's agument is that in today's social pattern the imbibing of alcoholic beverages and the use of tobacco products are closely associated. Appellant points out that the two products have many common places of sale, common times of customary use, a similar commercial impression, and similar drives for use. There are also instances of references to alcoholic beverage flavors or names in the advertising and trademarks of tobacco products. Further, appellant points to a growing pattern of corporate diversification and to the fact that companies in the tobacco business engage in many other enterprises — including one instance in which a tobacco company has undertaken to enter the field of distilled spirits.

Appellant relies upon Carling Brewing Co., Inc. v. Philip Morris, Inc., 277 F. Supp. 326 (N.D.Ga.1967), where the mark "BLACK LABEL" was used on beer and cigarettes. The court said:

Given the general situation where the public is generally unaware of the specific corporate structure of those whose products it buys, but is aware that corporate diversification, mergers, acquisitions and operation through subsidiaries is a fact of life, it is reasonable to believe that the appearance of "Black Label" on cigarettes could lead to some confusion as to the sponsorship of EITHER or both the cigarettes and the beer.

Appellant also points to the cases of John Walker & Sons, Ltd. v. Tampa Cigar Co., Inc., 124 F.Supp. 254 (S.D.Fla.1954), aff'd 222 F.2d 460 (5th Cir. 1955), and Geo. A. Dickel Co. v. Stephano Bros., 155 USPQ 744 (T.T.A.B.1967), where it was held on the basis of the facts presented that use of the same mark on both liquor and tobacco products would be productive of confusion and deception.

Appellant admits that its sales of tequila are relatively small in volume and only a small fraction of its overall sales of beverage distilled spirits, but it points out that the market for tequila is as yet quite small in the United States. Appellant contends that the quantum of use of a trademark is not of significance in determining whether it is entitled to protection because of likelihood of confusion. The conflict arising from such confusion can stunt the growth of the trademark and prevent it from attaining stature. Appellant cites cases for the proposition that it is priority of user alone which controls. Waldes v. International Mfrs. Agency Inc., 237 F. 502 (S.D.N.Y.1916); Sweet Sue Kitchens, Inc. v. C-B Drug Co., 159 USPQ 242 (T.T.A.B.1968); Geo. A. Dickel Co. v. Stephano Bros., supra; Phoenix Mfg. Co. v. Plymouth Mfg. Co., 286 F.Supp. 324 (D.Mass.1968). In the last cited case the court said:

If the rule were otherwise, relatively small registrants whose marks were infringed by larger companies would be barred from effectively expanding the use of their marks because of their identification with the larger infringers.

Appellee argues on the other hand that appellant's trademark, "OLE," as applied to tequila, is a "weak" mark and thus not entitled to broad protection. The relative strength or weakness of a mark depends upon its distinctiveness and popularity. Appellee maintains that appellant's use of the product name in advertising and promotion has played up the suggestive connotations of the name rather than educating the public to accept the term as the hallmark of a particular source. In point of fact, the mark has not been...

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6 cases
  • Idv North America, Inc. v. S & M Brands, Inc.
    • United States
    • U.S. District Court — Eastern District of Virginia
    • October 20, 1998
    ...and alcohol products should be considered related only in cases involving special circumstances. Schenley Distillers, Inc. v. General Cigar Co., 57 C.C.P.A. 1213, 427 F.2d 783, 785 (1970). The presence of special circumstances has been found to exist where there is a finding of unfair compe......
  • Application of EI DuPont DeNemours & Co.
    • United States
    • U.S. Court of Customs and Patent Appeals (CCPA)
    • May 3, 1973
    ...elements are not listed above in order of merit. Each may from case to case play a dominant role. In Schenley Distillers, Inc. v. General Cigar Co., Inc., 427 F.2d 783, 57 CCPA 1213 (1970), and in McKesson & Robbins, Inc. v. P. Lorillard Co., 120 USPQ 306 (TTAB 1959), element (9) led to a f......
  • Safety-Kleen Corp. v. Dresser Industries, Inc.
    • United States
    • U.S. Court of Customs and Patent Appeals (CCPA)
    • October 9, 1975
    ...the goods (and/or services) may be sold in the same establishments to the same class of purchasers. See Schenley Distillers, Inc. v. General Cigar Co., 427 F.2d 783, 57 CCPA 1213 (1970). While the similarity or dissimilarity of the goods or services should, in appropriate cases, be consider......
  • In re El Galan, Inc.
    • United States
    • Trademark Trial and Appeal Board
    • February 1, 2018
    ...it is clearly not marketed in a way to gain recognition, confusion is not likely notwithstanding the identity of the parties' marks.[12] In Schenley, the Court rejected contention that it has been recognized as a principle that the use of the same mark on tobacco and alcoholic beverage prod......
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