On June 26, 2013, the Trademark Trial and Appeal Board of the United States Patent and Trademark Office (“USPTO”) found a likelihood of confusion between the marks JOEL GOTT and GOTT LIGHT. Rehoboth Von Gott, Inc. filed an application with USPTO to register the mark GOTT LIGHT for nutritionally fortified water (and other similarly described bottled waters). See Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc. Shortly after filing for registration, Joel Gott Wines, LLC opposed the registration of the mark GOTT LIGHT under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground of prior use and likelihood of confusion of previously registered marks GOTT and JOEL GOTT. Joel Gott Wines, LLC also argued that Rehoboth Von Gott, Inc.’s mark was descriptive as per Section 2(e)(1) of the Trademark Act and that the application to register GOTT LIGHT is void ab initio because Rehoboth Von Gott, Inc. lacked a bona fide intent to use the mark on the specified goods at the time of filing. In its answer, Rehoboth Von Gott, Inc. denied the 2(d) and 2(e)(1) allegations and, in the company’s amended answer, denied the lack of bona fide intent to use the mark.
While the Board discussed issues related to evidentiary matters, standing, and priority, of significant interest is the Board’s analysis of factors relevant to the likelihood of confusion claim. First, the Board compared the marks in entireties with respect to “sound, appearance, connotation and commercial impression.” See Joel Gott Wines, LLC v. Rehoboth von Gott, Inc (citing Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005)). The Board noted that the key factor is that the marks must be “sufficiently similar” in their overall commercial impression such as to render confusion as to the source of the goods. Id. The Board found that GOTT and GOTT LIGHT and JOEL GOTT and GOTT LIGHT are similar in “sound, meaning, and overall commercial impression.” See Joel Gott Wines, LLC v. Rehoboth von Gott, Inc. In its analysis, the Board observed that the mark GOTT LIGHT contained the word “Gott” capitalized in font size significantly greater than that of the word “light,” which appeared in lower-case letters. Additionally, the Board noted that the word “light” in GOTT LIGHT acted as a modifying word, indicating the source of the goods was lower in calorie amount or contained lower amounts of minerals and by-products, thus rendering it to be “subordinate” part of the mark and “less likely to be perceived as a distinguishing element of the mark.” Id.
Next the Board analyzed the similarity or dissimilarity of the marks with respect to the relatedness of the goods, trade channels, and classes of purchasers. Noting that the issue was whether consumers would be confused as to the source of the goods, the Board explained that consumers, “upon encountering the goods under similar marks, [would be likely to assume] that the goods originate from, are sponsored or authorized by, or are otherwise connected to the same source.” Id. From marketplace evidence submitted by Joel Gott Wines, LLC, the Board discussed the commonality between bottled water and wine and the clear ability to purchase both types of goods from the same or similar marketplace (e.g., from a winery tasting room where both products contained the same mark, supermarket, etc.). As a result, the Board reasoned that the third-party registration examples served to indicate that the marks can originate from a single source under the same mark. Through additional evidence—such as the ability to purchase both goods from the same areas of retail outlets or copies of menus indicating restaurants offered wine and water for sale in the same menu section—submitted by Joel Gott Wines, LLC, the Board agreed that Joel Gott Wines, LLC provided sufficient information that the goods are “related products sold through the same trade channels to the same classes of customers.” Id.
In light of the above analysis, and after balancing all of the applicable factors, the Board sustained the opposition of Joel Gott Wines, LLC and came the conclusion it was thus not necessary to reach the alternative ground for opposition (i.e., whether Rehoboth Von Gott, Inc. had a bona fine intent to use the mark at the time the company filed its registration application).
For an additional, and more in depth, discussion, visit Precedential No. 26: Finding Wine and Water Related, TTAB Sustains 2(d) Opposition.