Joseph Phelps Vineyards, LLC won its appeal before the United States Court of Appeals for the Federal Circuit, and its case was remanded to the Trademark Trial and Appeal Board. This time the Board granted Joseph Phelps Vineyards’ petition for cancellation finding that wine and cigars are complimentary goods.
Fairmont Holdings, Inc. sought to register the mark ALEC BRADLEY STAR INSIGNIA (in standard characters) for, among other goods, “cigars.” The Trademark Office approved the registration of the ALEC BRADLEY STAR INSIGNIA mark and party, including Joseph Phelps Vineyards, opposed the registration of the mark. A little over a year after the mark registered, on May 17, 2013, Joseph Phelps Vineyards petitioned to cancel the ALEC BRADLEY STAR INSIGNIA registration. The proceeding lasted almost 6 years – Yikes!
There is a lesson here for trademark owners. Getting the registration does not mean you are safe. A registration remains vulnerable to a likelihood of confusion claim for five years following the registration date.
With respect to the relatedness of the goods factor, Joseph Phelps Vineyards offered several Web pages that advertise or promote cigar bars, cigars, wine bars, wine stores, and events featuring wine and cigars. It also offered evidence of flavored cigars infused with wine. Because the evidence showed that wine and cigars are used together, the Board found they are complimentary goods. This is consistent with the Board’s prior decision finding cigars and different spirits to be complimentary goods.
Joseph Phelps Vineyards mark consists solely of the word INSIGNIA and while Fairmont Holdings mark was the composite phrase ALEC BRADLEY STAR INSIGNIA it was not limited to any particular presentation and could be depicted with the word INSIGNIA larger than the word STAR. Joseph Phelps Vineyards argued that INSIGNIA in fact appears larger than STAR on the cigar labels and Fairmont Holdings’ specimen of use confirmed this.
INSIGNIA was not descriptive, generic, or diluted. Therefore, Fairmont Holdings could not avoid a likelihood of confusion by adopting Joseph Phelps Vineyards’ entire mark and adding subordinate matter. There is another lesson for trademark searchers. Unless your search reveals that the common element among the marks at issue is diluted, it is best to steer clear of the mark.