When it came to the similarity of the marks likelihood of confusion factor, a whiskey distillery threw the kitchen sink at the Trademark Office and still lost because of a single word. Unfortunately for the applicant, this was a situation where the Trademark Office should have exercised its discretion to look at the two marks in the real world marketplace to determine if a likelihood of confusion exists. The Trademark Trial and Appeal Board has time and time again stated that the literal portion of a mark is entitled to more weight in the analysis of the marks than any designs. But should a single word – absent a showing of fame – be afforded so much weight that it can bring down an entire logo?
Mystic Mountain Distillery LLC filed a trademark application to register its logo on the Principal Register for “whiskey”:
The Trademark Office refused registration of Mystic Mountain’s mark on the ground that it was likely to cause confusion with the prior registered mark OUTLAW (in standard characters) for “alcoholic beverages.” Because of the identical nature of the goods, less similarity between the marks is necessary for a likelihood of confusion exists. Mystic Mountain did nothing to narrow the goods descriptions and failed to demonstrate that the OUTLAW term was weak.
Without a doubt, there were significant headwinds to Mystic Mountain’s trademark application. About a year ago, the Board in Major League Baseball Properties, Inc. v. Christopher Webb stated that it may take into account the real-world use of the marks to determine if they create confusingly similar impressions. The unanswered question is when will the Board take into consideration the real-world use of the mark and the answer may be that as a party you have to ask for it. If the Board would have considered the specimens and real-world use of the OUTLAW mark, it would have seen that the overall commercial impression is different than the impression given by Mystic Mountain’s logo.