Rebel Wine Co. v. ROAR Spirits, LLC

• Docket Number: Opposition 91268314
• Decision Date: 18 July 2023
• Parties: Rebel Wine Co., LLC v. ROAR Spirits, LLC
• Court: Trademark Trial and Appeal Board

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Rebel Wine Co., LLC
v.
ROAR Spirits, LLC

Opposition No. 91268314

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

July 18, 2023

This Opinion is Not a Precedent of the TTAB

J. Scott Gerien and Joy L. Durand of Dickenson, Peatman & Fogarty for Rebel Wine Co., LLC.

Robert A Rivas and Eric Levinrad of Wolf, Rifkin, Shapiro, Schulman & Rabkin, LLP for ROAR Spirits, LLC f/k/a El Bandido Yankee, LLC.

Before Zervas, Goodman and Hudis, Administrative Trademark Judges.

OPINION

Hudis, Administrative Trademark Judge.

ROAR Spirits, LLC ("Applicant") seeks registration on the Principal Register of the standard character word mark EL BANDIDO YANKEE for "[d]istilled blue agave

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liquor" in International Class 33.^[1] Applicant also seeks registration on the Principal Register of the composite mark:

(Image Omitted)

for "[b]lue distilled agave tequilana weber liquor" in International Class 33.^[2]

In its Notice of Opposition,^[3] Rebel Wine Co., LLC ("Opposer") opposes registration of Applicant's word and composite marks under Trademark Act Section 2(d), 15

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U.S.C. § 1052(d), on the ground that Applicant's marks, as applied to the goods identified in the Applications in International Class 33, so resemble Opposer's standard character BANDIT mark, registered on the Principal Register in connection with "[a]lcoholic beverages except beers,"^[4] as to be likely to cause confusion, mistake or deception. Opposer also asserts common law rights in the BANDIT mark in connection with wine.^[5] Applicant denied the salient allegations of the Notice of Opposition in its Answer.^[6]

The case is fully briefed. Opposer bears the burden of proving its Trademark Act Section 2(d) claim by a preponderance of the evidence. Sabhnani v. Mirage Brands, LLC, 2021 U.S.P.Q.2d 1241, at *16 (TTAB 2021). Having considered the evidentiary record, the parties' arguments and applicable authorities, as explained below, we find that Opposer has carried this burden, and sustain the Opposition as to the goods identified in International Class 33 in each of the '911 and '917 Applications.

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I. The Evidentiary Record

The record consists of the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the files of Applicant's involved applications. In addition, the parties introduced the following evidence:

A. Opposer's Case in Chief

• Opposer's Notice of Reliance ("ONOR") on Opposer's BANDIT registration (Trademark Status and Document Retrieval ("TSDR") record), screen captures of third-party websites, articles published online third-party trademark registrations (TSDR records), and trademark applications filed by Applicant containing the term BANDIT (TSDR records) attached as exhibits [7 TTABVUE 2-150].

• Declaration of Opposer's counsel, Joy Durand, with dictionary definitions, a Spanish-to-English translation of "EL BANDIDO," results of a Google images search, captures of pages from Applicant's website, and captures of pages from Applicant's Twitter account attached as exhibits [7 TTABVUE 151-190].

• Declaration of the Chairman of Opposer's Board of Directors, Robert Torkelson [7 TTABVUE 191-194 (public/redacted); 8 TTABVUE 2-5 (confidential)].

B. Applicant's Case in Chief

• Applicant's Notice of Reliance ("ANOR") on dictionary definitions, captures of third-party websites, a pleading from and the Board's decision in Cancellation No. 92063917 (Rebel Wine Co. LLC v. Piney River Brewing Co.; mark: MASKED BANDIT), a Spanish-to-English translation of "BANDOLERO," trademark applications filed by Applicant containing the terms EL BANDIDO YANKEE (including the two Applications presently at issue, and others) (TSDR records), results of a Google images search, results of a USPTO trademarks database search, and third-party trademark applications and registrations for marks containing the terms "BANDIDO(S)," "BANDIT," "BANDITO(S)," "FORAJIDO" and PATRON attached as exhibits [11 TTABVUE 2-240].

• Declaration of Applicant's counsel, Eric Levinrad ("Levinrad Decl."), attesting to certain online searches he conducted that produced some of the materials accompanying Applicant's Notice of Reliance, and attaching as an exhibit portions of a transcript from a discovery deposition taken in another

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proceeding [12 TTABVUE 2-13 (public/redacted); 12 TTABVUE 2-14 (confidential)].^[7]

• Declaration of a partner of PKGD Group, Jeffrey Ernst ("Ernst Decl."), Applicant's brand consultant, with pictures of both parties' products attached as exhibits [14 TTABVUE 2-16].

C. Opposer's Rebuttal Case

• Opposer's Rebuttal Notice of Reliance ("ORNOR") on a trademark application filed by Applicant for a mark containing the term BANDIDO (not one of the two Applications presently at issue) (TSDR record), abandoned trademark applications filed by Applicant and a third-party for marks containing the term BANDIT (TSDR records), registrations owned by Opposer for marks containing the term "BANDIDOS" or "BANDIT(S)" (TSDR records), and a Spanish-to-English translation of "FORAJIDO" attached as exhibits [24 TTABVUE 2-33].

II. The Parties

Sutter Home Winery, Inc. ("Sutter Home") and Liberators, LLC ("Liberators") are producers, marketers and distributors of alcohol beverage products. Sutter Home and Liberators formed Opposer as a joint venture to produce and market alcohol beverage products pursuant to certain intellectual property rights and brands owned by Liberators and transferred to Opposer, including the BANDIT mark and '340 Registration therefor on which Opposer bases its rights in this proceeding.^[8]

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Applicant was founded by two former professional athletes (a football player and a hockey player). Opposer's only products are tequilas manufactured in Jalisco, Mexico. PKGD Group is the importer (into the United States) and vendor of record for Applicant's EL BANDIDO YANKEE brand tequilas. Tequila is a distilled spirit liquor, regulated by applicable Mexican authorities, which is made from the blue weber agave plant (agave tequilana) (the goods as described in the opposed Applications). Applicant sells its tequila products to distributors, who in turn sell those products to retail stores, bars and restaurants for ultimate sale to and consumption by the ultimate consumer.^[9]

III. Evidentiary Issues

Before proceeding to the merits of the Opposition, we address evidentiary matters raised by the parties.

A. Opposer's Evidentiary Objections

With its Notice of Reliance, Applicant submitted a .pdf print of search results from the USPTO's Trademark Electronic Search System ("TESS"), which comprises a chart of pending applications and issued registrations including the term BANDIT in International Classes 32 or 33, but it is not accompanied by the actual TESS records themselves.^[10] Applicant's counsel also testified to the manner of his search by which

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he obtained these TESS results.^[11] Opposer objects to these TESS search results, as well as the declaration testimony of Applicant's counsel describing the nature of his search.^[12] Opposer's objection is sustained.

A party that wishes to make third-party registrations of record may do so by filing, during its testimony period, plain copies of the registrations, or printouts or copies of information of the registrations from the USPTO's electronic database records, together with a notice of reliance thereon specifying the registrations and indicating generally their relevance and associating them with one or more issues in the case. Trademark Rules 2.122(e) and 2.122(g); 37 C.F.R. § 2.122(e) and 37 C.F.R. § 2.122(g). A party also may make third-party registrations of record by introducing copies of them as exhibits to testimony. See Tao Licensing, LLC v. Bender Consulting Ltd., 125 U.S.P.Q.2d 1043, 1047 (TTAB 2017) (overruling objection to third-party registrations attached as exhibits to declaration testimony).

On the other hand, a party may not make third-party registrations of record simply by introducing a list that includes them. See, e.g., Edom Labs. Inc. v. Lichter, 102 U.S.P.Q.2d 1546, 1550 (TTAB 2012) ("[W]hile the listing that applicant has submitted, of third-party marks downloaded from the USPTO's Trademark Electronic Search System (TESS), is of record, the registrations listed therein are not of record, and the list itself has little, if any, probative value."); Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 U.S.P.Q.2d 1826, 1829 n.8 (TTAB 2012) ("[A]

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summary of search results consisting, for example, of a listing of marks, serial or registration numbers, and status, is not an official record of the Office."). We therefore give no consideration to the TESS third-party search results or the testimony of Applicant's counsel as to how the search results were obtained.

B. Applicant's Evidentiary Objections

Applicant objects to portions of the declaration testimony of Robert Torkelson, Opposer's Chairman of the Board, as follows:

In addition to producing and selling the BANDIT wine and wine-based hard seltzer, Sutter Home also owns numerous other wine brands that it sells and distributes in the United States, and also owns several spirits brands that it sells and distributes in the United States, including brands for Tequila, whiskey and rum. Sutter Home also sells and distributes an agave wine-based margarita wine cocktail.^[13]

The basis for Applicant's objection: relevance, Fed.R.Evid. 402.^[14]

Applicant also objects to the following testimony from Mr. Torkelson:

[Applicant] ... has also encouraged retailers to place advertisements for BANDIT alcohol beverage products in newspapers.^[15]

The bases for Applicant's objections: lack of foundation as to personal knowledge and hearsay, Fed.R.Evid. 602, 802.^[16]

Applicant further objects to Mr. Torkelson's testimony as follows:

The BANDIT alcohol

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