In one of the first published decisions of the year, the Trademark Trial and Appeal Board had to decide whether “cigars” are related to “liquor; tequila; vodka; wines.” El Galan, Inc. sought to register the mark TERNURA for “cigars” and the Trademark Office refused registration of the mark on the ground that it was likely to cause confusion with the identical mark TERNURA for “liquor; tequila; vodka; wines.”
In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks”). The analysis of the comparison of the goods must be based on the goods description identified in the application and the goods description identified in the cited registration. See Stone Lion Capital Partner, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Computs. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); see also Hewlett-Packard Co. v. Packard Press Inc., 281 F.2d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). Even when goods are not intrinsically related, the use of identical marks can lead to the assumption that there is a common source. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993).
This last sentence is pretty powerful and important to pay attention to as searchers. When we find an identical mark in the search results and the goods identified in that registration or prior application do not appear to be naturally related to our goods, we may still have an issue. This is can be an important data point as we assess what the branding risk tolerance is for a particular mark.
Here, the TTAB found that the Examining Attorney presented evidence the cigars and the various types of liquor identified in the cited registration are complimentary goods. The evidence consisted of a few articles discussing cigar and liquor pairings. The Board even cited 1955 case from the Southern District of Florida where Johnny Walker scotch was found to be related to liquor.
Things have drastically changed since 1955 when smoking in bars and restaurants was common. There are only 14 states that have not enacted statewide smoking bans. Even in states where no smoking ban exists, our experience has been that drinking alcohol and smoking cigars or cigarettes are separate activities and only a relatively small number of people in 2018 enjoy the two together.