Patron Spirits International AG v. Pisco Porton, LLC

• Decision Date: 04 January 2017
• Docket Number: 92059527
• Court: United States Patent and Trademark Office. United States Patent and Trademark Office, Trademark Trial and Appeal Board
• Parties: Patron Spirits International AG v. Pisco Porton, LLC

Patron Spirits International AG v. Pisco Porton, LLC

No. 92059527

United States Patent and Trademark Office, Trademark Trial and Appeal Board

January 4, 2017

This Opinion is Not a Precedent of the TTAB

Bernard R. Gans and Jessica Bromall Sparkman of Jeffer Mangels Butler & Mitchell LLP for Patron Spirits International AG.

Gary D. Krugman and Kevin G. Smith of Sughrue Mion PLLC for Pisco Porton, LLC.

Before Kuhlke, Wolfson and Heasley, Administrative Trademark Judges.

OPINION

Kuhlke, Administrative Trademark Judge.

Patron Spirits International AG (Petitioner) seeks to cancel Pisco Porton, LLC's (Respondent) registration for the mark PORTÓN in standard characters for "Distilled spirits; brandy; pisco" in International Class 33.^[1]

As grounds for cancellation, Petitioner alleges likelihood of confusion under Section 2(d) of the Trademark Act, 15 U.S.C § 1052(d), based on its common-law use and registration of the mark PATRON.^[2] Petitioner pleaded two registrations for the mark PATRON registered in typed form^[3] for "tequila, " in International Class 33^[4] and in standard characters for "tequila; distilled spirits, " in International Class 33.^[5]

In its answer, Respondent admits the allegations regarding its registration (Ans. ¶ 7, 4 TTABVUE 3) and otherwise denies the salient allegations. Respondent also asserted the affirmative defense of "the equitable doctrine of laches and acquiescence." Ans. ¶ 16, 4 TTABVUE 4. In a November 16, 2015 order, the Board indicated that this defense was insufficiently pleaded inasmuch as Respondent had not alleged specific conduct in support of the affirmative defense. 14 TTABVUE 1-2. See Lincoln Logs Ltd. v. Lincoln Precut Log Homes, Inc., 971 F.2d 732, 23 U.S.P.Q.2d 1701 (Fed. Cir. 1992); Midwest Plastic Fabricators Inc. v Underwriters Laboratories Inc., 5 U.S.P.Q.2d 1067 (TTAB 1987). However, Respondent took testimony that relates to the defense^[6] and Respondent and Petitioner addressed this defense in their briefs. In view thereof, to the extent the defense was insufficiently pleaded we consider it to have been tried by implied consent. UMG Recordings Inc. v. Mattel Inc., 100 U.S.P.Q.2d 1868, 1872 n.3 (TTAB 2011) (implied consent found where nonoffering party raises no objection to introduction of evidence on the issue and was fairly apprised that the evidence was being offered in support of the issue); Citigroup Inc. v. Capital City Bank Group, Inc., 94 U.S.P.Q.2d 1645, 1650, 1655-56 (TTAB 2010) (Board deemed unpleaded affirmative defense of tacking by prior use of an unpleaded mark to have been tried by implied consent pursuant to Fed.R.Civ.P. 15(b)), aff'd, 637 F.3d 1344, 98 U.S.P.Q.2d 1253 (Fed. Cir. 2011).

RECORD

The record includes the pleadings and, by operation of Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1), the file of the subject registration. Petitioner submitted under notice of reliance printouts from the USPTO Trademark Electronic Search System database (TESS) consisting of copies of its pleaded registrations showing their current status and title.^[7] The registrations are summarized as follows:

Registration No. 1809473 on the Principal Register for the mark PATRON in typed form for "tequila, " in International Class 33, filed on July 28, 1992, issued on December 7, 1993, combined Section 8 & 15 declaration accepted and acknowledged, renewed. The registration includes the following translation: "The English translation of 'PATRON' is 'patron', 'protector', 'landlord' or 'boss'." Registration No. 2969941 on the Principal Register for the mark PATRON in standard characters for "tequila; distilled spirits, " in International Class 33, filed on August 25, 2003, issued on July 19, 2005, combined Section 8 & 15 declaration accepted and acknowledged, renewed. The registration includes the following translation: "The English translation of PATRON is of the protector, of the landlord or of the boss."

In addition, Petitioner submitted under notice of reliance the following: (1) Respondent's responses and objections to Petitioner's first request for admissions; (2) Respondent's responses and objections to Petitioner's first request for documents indicating no documents exist to certain requests;^[8] (3) Respondent's responses and supplemental responses to Petitioner's substitute interrogatories to Respondent; and (4) printouts from various third-party websites.^[9]

Respondent submitted: (1) the testimony, with accompanying exhibits, of Brent Kallop, Respondent's vice president;^[10] and (2) under notice of reliance, Respondent's other registrations and dictionary definitions.^[11]

STANDING/PRIORITY

Petitioner's pleaded and proven registrations for its mark PATRON establish that Petitioner has standing. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 U.S.P.Q.2d 1058 (Fed. Cir. 2014), Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 U.S.P.Q.2d 1842 (Fed. Cir. 2000); Ritchie v. Simpson, 170 F.3d 1092, 50 U.S.P.Q.2d 1023 (Fed. Cir. 1999); and Lipton Ind's, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 U.S.P.Q. 185 (CCPA 1982). Petitioner likewise has established priority of use. Respondent "concedes that Petitioner has established priority of use of the mark PATRON for tequila and distilled spirits by virtue of its notice of reliance on its pleaded Registration Nos. 1, 809, 473 and 2, 969, 941." Resp. Brief, 26 TTABVUE 7. The filing dates of Petitioner's registrations are earlier than the filing date of Respondent's registration and Respondent's first use date of December 11, 2011 established through testimony.^[12] See Brewski Beer Co. v. Brewski Brothers Inc., 47 U.S.P.Q.2d 1281, 1284 (TTAB 1998).

With Petitioner's standing and priority established, we turn to the issue of likelihood of confusion under Section 2(d).

LIKELIHOOD OF CONFUSION

Our likelihood of confusion determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 U.S.P.Q. 563 (CCPA 1973). See also, In re Majestic Distilling Co., 315 F.3d 1311, 65 U.S.P.Q.2d 1201 (Fed Cir. 2003) (listing thirteen factors). Two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 U.S.P.Q. 24 (CCPA 1976).

Relatedness of the Goods, Channels of Trade, Classes of Consumers

We begin with the goods, channels of trade and classes of purchasers. We must make our determinations under these factors based on the goods and services as they are recited in the respective registrations. See Octocom Systems Inc. v. Houston Computers Services, Inc., 918 F.2d 937, 16 U.S.P.Q.2d 1783, 1787 (Fed. Cir. 1990) ("The authority is legion that the question of registrability of an applicant's mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant's goods, the particular channels of trade or the class of purchasers to which sales of the goods are directed."); In re Elbaum, 211 U.S.P.Q. 639 (TTAB 1981).

Respondent's "distilled spirits" are identical to Petitioner's "distilled spirits" listed in Registration No. 2969941 and are legally identical to Petitioner's "tequila" in Registration Nos. 1809473 and 2969941 inasmuch as "tequila" is a "distilled spirit."^[13] Similarly, Respondent's "brandy" and "pisco" are legally identical to Petitioner's "distilled spirits" in Reg. No. 2969941 inasmuch as they are encompassed by "distilled spirts."^[14]

Because the goods are identical in part and otherwise legally identical and because there are no limitations as to channels of trade or classes of purchasers in the registrations, we must presume that the parties' alcoholic beverages will be sold in the same channels of trade and will be bought by the same classes of purchasers. In re Viterra Inc., 671 F.3d 1358, 101 U.S.P.Q.2d 1905, 1908 (Fed. Cir. 2012) (even though there was no evidence regarding channels of trade and classes of consumers, the Board was entitled to rely on this legal presumption in determining likelihood of confusion). See also Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 U.S.P.Q.2d 1001 (Fed. Cir. 2002); Canadian Imperial Bank, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1 U.S.P.Q.2d 1813 (Fed. Cir. 1987); Genesco Inc. v. Martz, 66 U.S.P.Q.2d 1260, 1268 (TTAB 2003); In re Smith and Mehaffey, 31 U.S.P.Q.2d 1531 (TTAB 1994). In view of the above, the du Pont factors of the similarity of the goods, the channels of trade, and classes of purchasers strongly favor a finding of likelihood of confusion.

Conditions of Sale

With regard to the conditions of sale, the ordinary channels of trade would include bars, restaurants, liquor stores and grocery stores where permitted. Petitioner argues that at least as to the channels of trade in restaurants and bars consumers may rely "on the brand names as spoken in making purchasing decisions" and "bars and restaurants are often noisy, " which increases the potential for confusion. Petitioner speculates as to possible scenarios wherein confusion could happen in these circumstances and requests judicial notice of the following facts: 1) bars and restaurants are often noisy; 2) orders in bars and restaurants are often placed verbally; and 3) drinks in bars and restaurants are often delivered to one's table unaccompanied by the bottle from which the alcohol was poured. Pet. Redacted Reply Br., 27 TTABVUE 9. While these could be considered facts that are "generally known within [the Board's] jurisdiction" under Fed.R.Evid 201(b) as to those particular trade channels, ^[15] and...