Trademarks With Dissimilar Meanings Can Still Create Likelihood of Confusion

Analyzing two trademarks under the “du Pont” likelihood of confusion test, the Trademark Trial and Appeal Board (TTAB), in a recent trademark opposition proceeding, held that the dissimilarity of meaning between the two marks is immaterial, where one of the trademarks, though an English word, is not commonly used by the general public. Trademark applicant E. & J. Gallo Winery sought registration of the mark APOTHEOSIS for, among other things, wine.  Kinney Family Vintners, LLC opposed the registration, alleging that it had used its trademark APOTHIC on wine prior to the filing of E & J’s intent-to-use application.

The only issue for the TTAB was whether the two marks presented a likelihood of confusion under In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).  One such du Pont factor is the similarity or dissimilarity of the “marks in their entireties as to appearance, sound, connotation, and commercial impression.”  With respect to connotation, the TTAB determined that the two words had different meanings.  Nonetheless, the TTAB held:

At the same time, however, we agree with Opposer that because “apotheosis” is not a commonly-used word, to many consumers Applicant’s mark would not connote anything, and its meaning would therefore not necessarily be a basis to distinguish it from Opposer’s mark, especially where both marks begin with the letters “APOTH.”

Consequently, where two trademarks have different meanings, the marks’ connotation may not be given as much weight as other factors under du Pont, where one or both words are not commonly used by the general public.  In the end, the TTAB sustained the opposition, finding that the opposer had proven a likelihood of confusion.

TTAB Proceeding: E. & J. Gallo Winery v. Kinney Family Vintners, LLC, Opposition No. 91207656 to Application Serial No. 85519705

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