Trademark attorneys like to explain to clients that they are not only protecting goods listed in their registration but also goods that would be considered related. The related goods or services rule gives trademark owners protection against use of their marks on any product or service which could reasonably be thought by the buying public to come from the same source, or to be affiliated with, connected with or sponsored by the trademark owner.

In this use, related does not mean that there is necessarily any physical relationship between the goods or services identified by the conflicting marks. Rather, it means that the marks as used are related in the mind of the consuming public. And while stating this rule is easy, applying it involves trying to draw lines between various types of products—lines often blurry not only to seasoned practitioners but to courts.

An example of this blurriness arose recently in In re Proximo Spirits, Inc., in which the Trademark Trial and Appeal Board affirmed a USPTO examiner's refusal to accept Proximo Spirits' application to register the Cocomo mark for tequila and tequila-based cocktails.

The examiner had refused registration because she believed it was confusingly similar to the registered mark Kokomo for wine. In response, the applicant argued that its mark suggested coconuts, while the cited registration references the city of Kokomo, Indiana. As to the goods, the applicant argued that the registrant is a winery and that wineries produce only wine.

"Nice try—but we're not buying it" pretty much summarizes the Board's reaction to Proximo's argument. The Board found that the parties' marks were obviously similar in appearance and pronunciation and noted that pronunciation was particularly relevant because the parties' goods could easily be requested verbally without prior reference to a menu. As to the marks' meaning, it held, nothing in the record suggested consumers would associate the registrant's wine with Kokomo, Indiana. Nor was there any evidence to show that the applicant's mark, when used with tequila, would create an association with coconuts in the minds of consumers.

As to the parties' goods, the Board acknowledged that not even an unsophisticated purchaser would accidentally buy wine when he or she really wanted tequila, or vice versa. But, the Board explained, the real issue is not whether consumers would confuse the goods, but whether they would be confused as to their source.

The Board assumed that the involved goods would be sold in all normal channels of trade and to all normal classes of purchasers for such goods. These channels could include liquor stores, bars and restaurants, and the alcoholic beverages sections of retail outlets. Thus, the parties were likely to continue to use the same channels, and typical customers included unsophisticated purchasers.

The TTAB's opinion then noted that the Federal Circuit and the Board itself have repeatedly held that spirits and wine should be considered related goods: "[A] typical consumer of alcoholic beverages may drink more than one type of beverage and may shop for different alcoholic beverages in the same liquor store. Moreover, a person may serve more than one kind of alcoholic beverage before or during a meal or at a party."

On May 18, 2015 Scott Slavick's article, "One more drink's one too many for TTAB," was published in InsideCounsel.

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