TTAB Rules Wine is Masquerading as Cocktails

Applicant sought to register the mark MASQUERADE for “sparkling wines; wines.” The Trademark Examiner refused registration on the grounds of likelihood of confusion with MASCARADE for “mixed beverage containing alcohol and fruit juice.” Applying the doctrine of foreign equivalents, the Trademark Examiner found that the marks are similar (translating “mascarade” from French to English), and that the goods are complementary. The Applicant appealed.

On appeal, the Board agreed that the marks are confusingly similar in sight, sound, and meaning, and that American consumers will simply perceive “mascarade” as a variant or misspelling of “masquerade.”

Next, in considering the relatedness of the goods, the Trademark Examiner contended that wines and alcoholic beverages made of fruit are similar. The Trademark Examiner submitted 51 copies of use-based registrations for marks that covered both wine and alcoholic beverages containing fruit. The Trademark Examiner also submitted Internet evidence of third party websites showing cocktails that contained wine, wine-based cocktail recipes, and websites of wineries showing that wines are used in cocktail recipes.

The Applicant argued that the products were not related since there is no evidence that wineries actually produce and sell alcohol containing cocktails — only that wine purchased by consumers may be combined later with juice to make a cocktail. Although the Board agreed with the Applicant’s argument, the Board still found that such evidence had some probative value on the issue of the relatedness of the goods and that wine, as an alcoholic beverage, may be combined with fruit and/or juice to make cocktails. Accordingly, based on the nature of the goods, the third party registrations, and Internet evidence, the Board ruled that the Applicant’s wines are related to the Registrant’s mixed beverage containing alcohol and fruit juice.

This opinion demonstrates that the importance of considering the nature of non-identical goods and conducting trademark clearances to minimize the risk of a finding of likelihood of confusion before filing an application with the US Patent and Trademark Office. As part of its full service trademark practice, Arent Fox routinely handles clearance searches and trademark prosecution.