Articles Tagged with Trademarks

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A recent court case in the Eastern District of California, E. & J. Gallo Winery v. Grenade Beverage LLC, No. 1:13-cv-00770 (E.D. Cal. Aug. 15, 2014), seems to underscore a trend of court decisions and TTAB findings where alcoholic and non-alcoholic beverages are considered related for purposes of a likelihood of confusion analysis. In this recent case, the court held that GALLO (for wines) and EL GALLO (for energy drinks) were similar trademarks and that the products were related. There was not much evidence produced by the parties that showed use of the products in the marketplace. Therefore, the Court relied on the similar spellings of the terms “Gallo” and “El Gallo” and inferred that based on the spellings of the terms, purchasers would likely pronounce the marks in the same way.

Regarding the analysis of the relatedness of the goods, the questions usually focus on the following: (1) are the products complementary; (2) are the products sold to the same class of consumers; and (3) are the products similar in use and function. A close proximity of the goods is not necessarily required. Here both products are in the beverage industry. Thus, they have similar use and function. Given that both products are beverages, there is a reasonable inference that they utilize similar marketing channels. Through deposition testimony, Gallo Wines contended that it would market its wine in convenience stores, supermarkets, liquor stores, restaurants, and bars. One of the Plaintiff’s witnesses attested to the fact that energy drinks and wines are sold in the same aisle of the grocery store. Therefore, the court concluded that the marketing channels of the two products overlapped to a certain degree.

The degree of care factor favors Plaintiff here. The rationale is that Plaintiff’s wines cost somewhere between $5.99-$9.99 a bottle. It has been held that consumers are likely to exercise less care when the goods are relatively inexpensive and that confusion is more likely when less care is employed. Several other factors also favored the Plaintiff. After reviewing all the evidence, the Court granted Plaintiff’s motion for summary judgment on all of its claims. It issued a permanent injunction against the use of EL GALLO for energy drinks.

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On May 19, 2013 Chef Dominique Ansel filed a trademark application with the United States Patent & Trademark Office (“USPTO”) for the trademark CRONUT in International Class 30. International Class 30 includes bakery desserts, bakery goods, breads, etc. Dominique Ansel’s identification of goods specifically named a “croissant and doughnut hybrid” among multiple baked goods, pastries, and other sweets.

Criticism immediately emerged from others in the industry. The criticism came from lay people lacking the knowledge and subtleties of trademark law. Legally speaking, Dominique Ansel followed the correct procedures and was entitled to seek trademark registration for the term CRONUT for the goods identified in his trademark application. In fact, he wisely capitalized on a food trend while simultaneously branding the sweets with a unique trademark. He accomplished all of the above, while beating his competitors to the Trademark Office.

A few weeks after Chef Ansel’s filing, on June 10, 2013 a trademark application was filed with the USPTO for the proposed mark THE CRONUT HOLE. The applicant was seeking to protect the mark for retail bakery shops. The application was filed on an intent-to-use basis. The examining attorney suspended the application on September 21, 2013 on the basis that Dominique Ansel’s application had an earlier filing date, and should the application proceed to registration then the applicant’s mark for THE CRONUT HOLE may be refused under section 2(d) of the Trademark Act (15 U.S.C. §1052(d)) due to a likelihood of confusion with the registered mark.

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