A recent application before the United States Patent and Trademark Office sought to register the mark Old Americana (in standard characters) for alcoholic beverage except beers in International Class 33. See In re Luca Mariano Distillery LLC, Serial No. 86293520 (June 23, 2016) [not precedential]. The application for registration was originally refused by the Examining Attorney under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark resembled the mark AMERICANA registered for vodka in International Class 33 and was likely to cause confusion. In addition, the Attorney refused registration under Section 6 of the Trademark Act based on Applicant’s failure to comply with requirement to disclaim the word “OLD.” Applicant appealed to the Trademark Trial and Appeal Board and requested reconsideration.
The Board started with a discussion of an evidentiary issue with respect to Applicant including new evidence that was not introduced prior to the Appel, to which the Examining Attorney objected. The Board sustained the Attorney’s objections, reasoning that the record in an application should be complete prior to filing an appeal and untimely evidence is generally not considered. Id. at 3–4.
The Board went on to discussion the disclaimer requirement, which is codified at 15 U.S.C. § 1056(a) and specifically requires the following:
The Director may require the applicant to disclaim an unregistrable component of a mark otherwise registrable. An applicant may voluntarily disclaim a component of a mark sought to be registered.
In the past, the Board has found that if an Applicant does not comply with the disclaimer rule, the Examining Attorney may refuse registration of the entire mark. Id. at 4. In particular, merely descriptive terms are subject to disclaimer if the mark in which they appear is otherwise registrable. The Trademark Act considers a term merely descriptive if it “immediately conveys knowledge of a quality, feature, function, or characteristic of the goods with which it is used.” Id. at 5. Examining Attorney originally required Applicant to disclaim “OLD” in the mark Old Americana arguing that the term “Old” is merely descriptive of the Applicant’s goods (i.e., “old” means “advanced in years” and describes the goods at issue because “alcohol beverages” includes aged alcohol beverages). In a later Office Action and in the Appeal Brief, Examining Attorney changed his reasoning and pointed to Applicant’s website, which indicates the brand is dedicated to bringing back Prohibition-era recipes and have been family secrets since 1914. Examining Attorney went on to explain that “old” can also be defined as “of, relating to, or originating in a past era” and thus described Applicant’s goods. Id. at 5–6. Applicant maintained that the term “old” is suggestive, not descriptive. The Board found that members of the purchasing public would not equate “old” with “aged” when they encountered the mark “Old Americana” at an alcohol beverage store. Id. at 7. The Board went on to analyze the differences between “old” and “aged,” noting that “aged” conveys a positive attributeof a barrel-aged whiskey or a fine wine and “old” suggests that a product has exceeded its expiration date and does not describe a characteristic of the goods. In the Board’s view, “Old” modified the noun “Americana” and “enhances that connotation by alluding to bygone American culture” and “indirectly evok[es] in purchasers’ minds a nostalgic remembrance of a past era.” Id. at 8. The Board thus found this use to be “the essence” of a suggestive term and reversed the disclaimer requirement. Id.
The Board next discussed whether or not Applicant’s mark was likely to be confused with Registrant’s mark for AMERICANA. The Board founds that the goods were legally identical (vodka and alcohol beverages except beers), thus there was no limitation to the channels of trade or classes of purchasers and it was presumed that Applicant’s and Registrant’s goods moved in all channels of trade normal for those goods. The du Pont factors thus weighed heavily in favor of finding a likelihood of confusion. Id. at 10.
Next, the Board looked to compare the marks and to determine the similarity or dissimilarity of the marks in their entireties. Applicant argued that its beverages are sold under the brand Luca Mariano, of which Old Americana is merely a sub-brand; that the design portion of Registrant’s mark distinguishes the two marks, that the prefix “Old” in Applicant’s mark differentiates the marks, and that the shared term (“Americana”) is weak. Unfortunately, the Board found these arguments to be weak. The Board recognized that even if Luca Mariano is the “house brand,” the application at issue is with respect to the registration of “Old Americana,” which would allow Applicant to use that mark by itself. Id. at 11. Further, the stylization of Registrant’s mark did not significantly alter the appearance or pronunciation, nor would it impact how consumers pronounced the term. Id. at 12. Further, “Applicant’s addition of the prefix OLD to AMERICANA does not suffice to dispel confusion between the two marks.” Id. Further, Applicant failed to demonstrate that Registrant’s mark is weak as the listing of third-party AMERICANA marks was not made of record and lacked probative value (as previously noted in the Opinion, about 30 of the marks referencing AMERICANA were not related to the goods at issue). Id. at 13. Therefore, the Board concluded, this du Pont factor weighed in favor of finding a likelihood of confusion.
The Board thus found that the marks are similar and used on legally identical goods which as presumed to move through the same trade channels to the same classes of purchasers. The Board found that Applicant’s and Registrant’s marks so resembled one another to be likely to cause confusion or mistake under Section 2(d) of the Trademark Act. Therefore, the Board affirmed the refusal to register OLD AMERICANA on the ground of likelihood of confusion under Trademark Act Section 2(d) (but the Board did reverse the requirement of a disclaimer of OLD).
For more information on wine or alcohol law, or trademarks, please contact Lindsey Zahn.
DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.