Jose Felgueroso
Abogado | Attorney
DON Q and DONQ are Confusingly Similar Marks for Alcoholic Beverages, but not for Food Products or Retail Services
info@josefelgueroso.com
2018-05-23
In a dispute between an alcoholic beverage company (Destilería Serralles, the “plaintiff”) and a provider of food products and food-related services (Kabushiki Kaisha Donq, the “defendant”), the Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office held that the mark the defendant applied for was likely to create confusion among consumers regarding services related to alcoholic beverages, but not regarding food products or retail services.
The plaintiff is the holder of the marks DON Q and DONQ COCO for rum. The defendant operates a chain of French-style bakeries under the name DONQ. The defendant applied to register the term DONQ for many goods and services, including the provision of alcoholic beverages in the context of food services. The defendant based its application solely on the Madrid Protocol, as it had not used its mark in US commerce.
The plaintiff opposed the registration of the defendant’s mark alleging likelihood of confusion (that is, that the proposed mark was likely to confuse consumers about the source of the goods and services) and likelihood of dilution (that is, that the proposed mark is likely to reduce the distinctiveness of the plaintiff’s mark).
As a preliminary matter, the TTAB granted the defendant’s motion to amend its application to delete the reference to the provision of alcoholic beverages. The TTAB entered judgment against the defendant regarding the deleted service, stating that this part of the decision has res judicata effect, thus making it final and conclusive in any future proceedings between the parties. The rest of the TTAB’s decision was based on the defendant’s application as amended, that is, without reference to alcoholic beverages in the context of the provision of food services.
Likelihood of Confusion
In a likelihood-of-confusion case, courts must address whether the coexistence of the plaintiff’s mark and the defendant’s mark will create confusion in the market, leading consumers to believe that the goods and services of both parties originate from the same source. To this end, the TTAB follows a judicial precedent that established a series of factors to determine the existence of likelihood of confusion. In the DON Q case, the TTAB considered only the factors for which the parties had submitted evidence: the marks themselves, the fame of the plaintiff’s mark, similar third-party marks, the parties’ goods and services, trade channels, purchasers and conditions of sale, bad faith adoption, and evidence of actual confusion.
The TTAB concluded that although the parties’ marks were similar and the plaintiff’s marks were somewhat famous, the goods and services were not sufficiently related to create likelihood of confusion. Below is a summary of the factors that the TTAB considered and how it applied them to reach that conclusion.
The marks themselves
Are the marks similar in appearance, sound, connotation, and commercial impression? Does the similarity between the marks suggest a connection between the parties? The focus of this factor is on the recollection of the average purchaser regarding the entirety of each mark.
This case involved the plaintiff’s marks DON Q and DONQ COCO, and the defendant’s mark DONQ. During the registration process, the plaintiff had disclaimed the term COCO, therefore making this element less dominant. DON Q and DONQ are phonetically and visually similar and have a similar connotation, namely an association with Don Quixote; they also convey a similar commercial impression.
The TTAB found that this factor of the analysis favored a finding of likelihood of confusion.
The fame of the plaintiff's mark
Does a significant portion of the relevant public recognize the plaintiff’s mark as a source indicator? If so, this factor favors the plaintiff.
DON Q provided evidence that it has sold rum for about 80 years; it is the number one selling spirit in Puerto Rico and is among the top 10 rums sold in the United States. In the period 2008-2015, it had significant sales in the US and engaged in significant national advertising. In addition, it has received awards for quality and has been featured in certain films. On the other hand, the plaintiff provided no evidence showing comparisons with competitors regarding sales and advertising, how often consumers encounter the DON Q mark for rum, or its market share.
The TTAB found that given that the plantiff’s mark has acquired a marginal degree of fame, this factor is neutral.
Third-party marks
Do similar marks exist for goods and services that are similar to the plaintiff’s? The widespread use of similar marks for similar goods and services can reduce the scope of protection for the plaintiff’s mark.
The record contained no evidence of third-party marks similar to DON Q, therefore making it a strong mark.
The TTAB found that this factor favored a finding of likelihood of confusion.
The goods and services
Are the parties’ goods and services related in a manner that leads to confusion about their source? For this factor, the marks need not be identical.
The parties submitted evidence of third-party registered marks and websites of distillers, but they were unrelated to the defendant’s goods and services as described in its application. The record contained no evidence of lesser-known distillers expanding their brand to the goods and services in the defendant’s application or providing food products under the same brand. In addition, the record contained no evidence of consumers’ expecting a connection between the involved goods and services.
The TTAB found that this factor favored a finding of no likelihood of confusion.
Trade channels
What are the channels of trade and channels of distribution for the parties’ products and services? If the parties share those channels, the likelihood of confusion increases.
The record reflected a slight overlap between the trade channels used by the plaintiff’s rum (wholesalers, bars, restaurants, and retail liquor stores) and the defendant’s food products and provision of ethnic cuisines (retail store outlets, grocery stores, and convenience stores). The record, however, did not reflect an overlap between the trade channels used by the plaintiff’s rum and those used by the defendant’s other goods and services (wholesale and retail store services featuring food, non-alcoholic beverages, cleaning tools and washing utensils, and various tools).
The TTAB found that this factor slightly favored a finding of likelihood of confusion.
Purchasers and conditions of sale
Are these goods and services purchased on impulse or after careful consideration? If consumers often buy these goods and services on impulse, confusion is more likely. What is the degree of sophistication of the consumers of these goods and services? If the consumers are sophisticated, confusion is less likely.
In this case, the products of both parties are relatively inexpensive, and the services involved are not sophisticated.
The TTAB found that this factor was neutral.
Bad faith adoption
Bad faith must be supported by evidence of an intent to confuse; mere knowledge of another’s mark or an intent to copy is not sufficient.
The record reflected that the defendant knew about the plaintiff’s prior marks, but it did not contain any evidence about its intent.
The TTAB found that this factor was neutral.
Actual confusion
Evidence of actual confusion makes a finding of likelihood of confusion more likely, but actual confusion is not necessary to prove that likelihood.
Since the defendant had based its trademark application on an intent to use rather than actual use, there has been no opportunity for actual confusion to occur in the market.
The TTAB found that this factor was neutral.
Likelihood of Dilution
The degree of fame required to show likelihood of dilution is higher than the fame required to show likelihood of confusion. Since the TTAB found that the plaintiff’s mark is only marginally famous, it found that its fame was not sufficient to show likelihood of dilution.