The Trademark Trial and Appeal Board Announces a New Test for Comparing Standard Character Marks with Word & Design Marks

Order Affirming Refusal to Register, In re Aquitaine Wine USA, LLC, Serial No. 86928469  (TTAB Apr. 2, 2018) (Ritchie, Wolfson and Adlin)

The Federal Circuit left the following question open in its In re Viterra decision from 2012:  How do we compare standard character trademarks (e.g., non-stylized word marks) with design marks for purposes of determining likelihood of confusion?  More specifically, in addition to considering that variations of standard character marks can include any font style, size, or color, can we also consider that variations may include a design element?  In In re Aquitaine Wine, the Trademark Trial and Appeal Board (“Board”) answered this question in the negative.

In In re Aquitaine Wine, the applicant Aquitaine Wine USA, LLC applied to register the mark shown below for use in connection with “Wine of French origin protected by the appellation of the origin Cite de Carcassonne.”

The Trademark Examining Attorney refused registration based on a likelihood of confusion with the registered standard character mark CHATEAU LAROQUE for use in connection with “Wines having the controlled appellation Saint-Emilion Grand Cru.”  In finding that the marks are similar, the Examining Attorney explained that “a mark presented in stylized characters and/or with a design element generally will not avoid likelihood of confusion with a mark in typed or standard characters because the marks could be presented in the same manner of display.”

The applicant appealed the decision to the Board, which considered how to treat a standard character mark like CHATEAU LAROQUE in such an analysis.  The Board first explained that standard character marks are deemed to include any font style, size, or color for purposes of comparison with another mark.  Thus, in In re Viterra, the Federal Circuit held that the mark XCEED was likely to cause confusion with the registered stylized mark shown below, both for agricultural seed, in part because the standard character mark XCEED could be displayed with a capital “X” followed by a small “ceed.”  See In re Viterra, 671 F.3d 1358 (Fed. Cir. 2012).

In Viterra, however, the Federal Circuit expressly left open “for future cases to determine the appropriate method of comparing design marks with standard character marks.”  The Board found that this case called for such an analysis.

In addressing the issue, the Board rejected the argument that the registrant’s CHATEUA LAROQUE mark, although only a standard character mark, could conceivably be displayed with a depiction of a house and vineyard similar to the applicant’s mark.  In so finding, it held that that “we will consider variations of the depictions of the standard character mark only with regard to font style, size, or color of the words, letters, numbers, or any combination thereof.”  In other words, while a standard character mark can be considered to take on any font style, size, or color, it cannot be considered to include a design element.

Judge Ritchie concurred in the result but disagreed that the Board should “categorically exclude the possibility or depiction of designs from its analysis of standard character marks.”  According to Judge Ritchie, the owner of a standard character mark has the right to display the mark in a way that could potentially include a design similar to that displayed by the applicant.

In this case, the applicant’s design element actually weighed in favor of a finding of confusion, as the Board ultimately found that the design element of the applicant’s mark could be interpreted as a chateau, thus calling to mind the CHATEAU portion of the registrant’s mark.  Ultimately, the Board affirmed the refusal of the registration after analysis of this consideration and the other likelihood of confusion factors.

It is interesting to note that the design was found to enhance confusion in this case.  In many cases, the design element should weigh in favor of distinguishing the marks.  This is also likely not the last time we will hear from the Board or the Federal Circuit on this issue.  In the meantime, the Aquitaine decision counsels that design elements can help distinguish a design mark from a standard character mark, provided that the design does not call to mind any terms found in the standard character mark.