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Trademark: Can a Last Name be Confusingly Similar for a Wine?

Trademark Can Last Names Be Confusingly Similar for a wine BartonJoseph Barton, Applicant, sought to register the mark (in standard characters) BARTON FAMILY on the Principal Register in international class 33 “wine; wines.” See In re Thomas Barton, Serial No. 85826787 (Dec. 11, 2014) [not precedential]. The Trademark Examining Attorney refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting that there was a likelihood to cause confusion with the registered mark THOMAS BARTON for alcohol beverages, namely wine, in International Class 33 and with the registered mark BARTON & GUESTIER in typeset letters for wine in International Class 33. Id. at 1–2. (The two registered marks are owned by the same entity.) Applicant appealed and filed a request for reconsideration, which was denied by the Examining Attorney and thus the appeal resumed.

In its opinion, the Trademark Trial and Appeal Board (“the Board”) noted that the Applicant’s mark was more similar to the mark THOMAS BARTON than to BARTON & GUSTIER because the latter mark contained the term “GUSTIER,” which the Board found to be a more distinctive point of difference. Thus, the Board restricted its analysis to Applicant’s mark in relation to THOMAS BARTON (i.e., if the Board were to find that confusion existed between said marks, the Board recognized there was no need to examine whether the same existed between BARTON FAMILY and BARTON & GUSTIER).

The Board started with a discussion of the du Pont factors, noting that the first factor at issue was the relatedness of the goods, which it based on the the goods as identified in the application and cited in the trademark registration. Without much consideration, the Board easily found that the goods were identical (i.e., “wine”) and thus the second du Pont factor weighed heavily in favor of finding a likelihood of confusion. Because the goods were identical, there was a presumption that the channels of trade and classes of purchasers would be the same as well; Applicant admitted that the channels of trade were the same, thus the third du Pont factor weighed in favor of likelihood of confusion.

In comparing the marks, the Board considered the entireties of the marks as to appearance, sound, connotation and commercial impression, in order to determine the similarity or dissimilarity between the marks at issue. Similarity of any one of these factors can be sufficient to find the marks confusingly similar. Further, since the Board founds the goods to be the same, the grade of similarity required to find likelihood of confusion was lowered. The Board noted that, when comparing the marks, “[t]he proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Id. at 5 (quoting Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted)). Instead, the Board mentioned that the focus is on an average customer who will retain a general impression of the mark, as opposed to a specific impression.

In its discussion, the Board noted that because both marks contained the term “BARTON,” each mark was similar in appearance and pronunciation. The Board indicated that the name “BARTON” would be perceived as a surname and thus suggest that the same family produced the wine. Consumers familiar with THOMAS BARTON wine would likely assume that BARTON FAMILY was a new line of wine produced by the Barton Family. Further, the Board noted that “Barton” dominated Applicant’s mark BARTON FAMILY, leaving consumers with the impression that such wine is produced by a family business whose surname is BARTON. Similarly, “Barton” dominated the mark THOMAS BARTON whereas the term “Thomas” served more as a modifier, emphasizing the “Barton” portion of the mark. Thus, the Board reasoned, it was not unreasonable to give “Barton” more weight in the Applicant’s mark, the result of which provided a finding of confusion with respect to the first du Pont factor.

While Applicant provided six additional registrations containing the term, “Barton,” as an attempt to show that Registrant’s mark existed in a “crowded field and should be afforded a limited scope of protection,” the Board noted that such evidence was of limited probative value because such did not suggest the marks were used on a commercial scale or that the public had become familiar with the marks. Id. at 7–8. Further, only two of the registrations provided by Applicant were registered under Section 1(a) of the Trademark Act, both of which were owned by the same entity and did not include wine (i.e., applied to whisky and distilled spirits). (The remaining registrations provided by Applicants were based on Trademark Act § 66(a), which did not require a claim of use prior to registration of the mark, thus rendering the registrations of no probative value. Id. at 8.)

The Trademark Trial and Appeal Board affirmed the refusal to register on the grounds that BARTON FAMILY for “wine; wines” is likely to cause confusion with registered mark THOMAS BARTON for “alcoholic beverages, namely wine.” The reasons, as discussed above, encompass the identical nature of the goods, the presumption the foods will move in the same trade channels and be sold to the same classes of ordinary purchasers; and that the marks were similar in sight, sound, connotation, and overall commercial impression. Id. at 9. As mentioned previously, because the Board found a likelihood of confusion existed for the term BARTON FAMILY with respect to THOMAS BARON, the Board did not need to consider the Applicant’s mark in relation to BARTON & GUSTIER.

Can I trademark my surname?

For many winery and vineyard owners, the desire to use a surname or a family name as the business name or a brand name can be tempting. Often times, applicants believe they have an absolute right to register their last name or surname as a trademark with the USPTO. Generally speaking, in practice, this belief plays out as a myth but—like many instances in the law—there are exceptions that may allow for the registration of a surname on the Principal Register. The above case is a good example. Ordinarily, marks that are primarily merely surnames (such as “SMITH WINES”) cannot be registered on the Principal Register even if such names are already used as a business name or brand name and even if no one else is currently using the surname. Under the Lanham Act, a mark that is primarily merely a surname generally cannot be protected unless there is proof said mark has acquired distinctiveness (i.e., secondary meaning). In the past, “primarily merely a surname” has been understood to mean a mark whose primary impact or impression on the consumer is that of a surname and not of a trademark. The trademark law is partially designed to protect the interest of the consumer, specially from being deceived or confused by the use of a mark, and it is overwhelmingly understood that if all individuals retained a right to protect his or her own surname, some level of confusion or deception could inevitably evolve (particularly if said marks were obtained in the same class of goods). This attitude is seen in the above opinion discussing Applicant’s mark BARTON FAMILY WINES and the registered THOMAS BARTON within the same international classes (i.e., wine or namely wine). There are, of course, exceptions and multiple layers to trademark registration—and many aspects can depend on the mark itself (i.e., a unique or rare last name; whether the surname has any other recognized meanings aside from a surname; if the surname is used in combination with other words or other surnames; etc.). In the above case, it is unlikely that the mark THOMAS BARTON would be interpreted as “primarily merely a surname” because of the presence of the first name “THOMAS” in combination with the surname. However, if the mark contained only the surname “BARTON,” the result might be different. An interested party should contact his or her legal counsel for more insight.

Image property of Snooth.

For more information on wine or alcohol law, labeling, or trademark, please contact Lindsey Zahn.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.

Lindsey A. Zahn

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Lindsey is the founder and author of On Reserve: A Wine Law Blog. She is an alcohol beverage and food attorney and is admitted to the New York State Bar.

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