Friday, October 19, 2012

Test Your TTAB Judge-Ability: Is JOTS for Gelatin Shots Confusingly Similar to TOTT'S for Sparkling Wine?

Well, with four new Administrative Trademark Judges added to the Board recently, I suppose there's not much chance of your being appointed any time soon. Meanwhile, however, you should stay sharp in case the call comes. Take a shot at this Section 2(d) opposition, in which Gallo Winery opposed an application to register JOTS for "alcoholic beverages, namely, flavored gelatin shot consisting of gelatin mixed with distilled spirits and wine - wine and distilled spirits not combined in a single shot." [Wouldn't "distilled spirits or wine" have been simpler? - ed.]. Gallo claimed likely confusion with its registered mark TOTT'S for sparkling wine. How do you think this came out. E.J. Gallo Winery v. Christopher M. Malek, Opposition No. 91199089 (September 14, 2012) [not precedential].

The parties filed cross-motions for summary judgment, and when the Interlocutory Attorney informed them that both motions would likely be denied, they sipulated to the Board's resolving the case on the summary judgment papers.

The Board found the marks to be similar in sound and appearance, and each lacking in any established meaning. Considered in their entireties, the marks are substantially similar. The differences in the marks "are not so great as to overcome the marks' similarities, particularly when hastily viewed, quickly spoken, or poorly remembered." [Or slurred - ed.].

As to the goods, the Board agreed with Applicant Malek that there is no per se rule that all alcoholic beverages are related. [It just works out that way at the TTAB - ed.]. The relationship of the goods must be decided on a case-by-case basis, and this is particularly significant when the goods are "out of the ordinary," like those of the opposed application.

Malek's goods are not beverages in the normal sense (i.e., liquid), but single portions of flavored gelatin prepared with alcohol; thus the goods are semi-solids or gels. Whereas a typical alcoholic beverage is consumed by drinking it, applicant's goods "would presumably be ingested by eating (although depending on consistency, chewing may be optional)." However, Malek's goods share at least one important characteristic with Gallo's product: both are means of ingesting alcohol by "anyone seeking the pleasures of intoxication (safely, and in moderation, we hope)."

There was no evidence that any entity produces both sparkling wine and gelatin shots, and no evidence of any trademark registrations covering both products. Gallo argued that the goods are related because both comprise or contain wine. The Board concluded that, although it is not clear that Malek's customers would know or care whether the gelatin shots contained wine or some other alcoholic beverage, the goods are related "to the extent that both contain wine and they are both sources of alcohol for human consumption."

As to channels of trade, Malek's business plan states that his "general marketplace is that of alcoholic beverages," with the product to be sold at a relatively low-price to a target demographic of 21-30  year olds. The Board found that the involved goods would be marketed to the same potential customers, and may be purchased by relatively unsophisticated customers with little care or prior experience, and in venues that do not afford an opportunity for close inspection of the goods.

Finally, Gallo argued that its mark is famous, but its proofs fell short. Nonetheless, the evidence showed some renown which, when coupled with the arbitrary nature of the TOTT'S mark, "makes it somewhat more likely that applicant's mark will cause confusion."

Balancing the relevant du Pont factors, the Board found confusion likely. To the extent that there remained any doubt, that doubt must be decided in favor of the prior registrant.

TTABlog note: Well, how did you do? Do you agree with the decision? Could you use a good, stiff gelatin shot after this exercise?

Text Copyright John L. Welch 2012.


At 8:37 AM, Blogger Robert said...

I guess I am not ready to be a TTAB judge as I nearly choked on my coffee when I read that the marks have no established meanings. Then I read the case itself, and the applicant apparently chose to contest the appearance by focusing on stylization rather than their meanings. So the applicant missed an opportunity here, and of course, the Board must decide the guess on the evidence it has, not what it wishes it had.

There is a strong argument for different meanings if you supply evidence. TOTT could be a surname, and the addition of the possessive 'S reinforces the surname significance. Meanwhile, JOTS means "smallest bits" or "iota" or "to write quickly" and is suggestive of the size and hasty consumption of the jelly shot. It could be reasonably characterized as a portmanteau word formed from JELLO and SHOT. But if you don't provide the evidence, it doesn't get considered.

At 12:22 PM, Blogger Pamela Chestek said...

Wow, I flunked. I wonder how much would have been gained with a different ID of goods that didn't mention wine? The manual asks for "Alcoholic beverages, namely, {indicate specific beverages}." So the applicant could have written something less specific, e.g., "alcoholic beverages, namely, flavored gelatin shot" and leave it at that. "Gelatin shot" is fairly easily shown to be the common name.

At 7:36 AM, Anonymous Miriam Richter said...

I flunked too! To me - JOTS was a contraction of Jello Shots - if the Opposition had come from Jello I would have decided in favor of confusion. Especially since the consumer of Jello Shots is generally very different from the average champagne consumer! But, I also thought that TOTTS was a bit too close to an abTexpebreviation of Taittinger! While Gallo might have use going back to 1987 - Taittinger goes back to 1754! But then again - the Champagne industry is having a tough time with US marks already!


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