Sazerac Stitches may be confused with Sazerac: CAFC

Sazerac Stitches may be confused with Sazerac: CAFC

According to the CAFC, “The relevant inquiry in an ex-parte proceeding focuses on the goods and services described in the application and registration, and not on real-world conditions.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) confirmed the Trademark Trial and Appeal Board’s (TTAB’s) decision that the mark Sazerac Stitches may be confused with the registered mark Sazerac.

Laurel Designs, LLC sought to register Sazerac Stitches for retail store and online services related to lighting, hardware, furniture and textiles, among others. The application was rejected by the examiner owing to potential confusion with the mark, Sazerac, owned by Sazerac Brands LLC and registered for “online retail store services featuring distilled spirits, beverage glassware, cocktail accessories, T-shirts, caps, postcards, and cocktail recipe books.” The TTAB was appealed by Laurel Designs and the Board affirmed after analysing three of the 13 DuPont factors and determining that they favoured a finding of confusion.

The Board erred in its analysis, first turning to factor 2 “[t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use,” Laurel Designs argued on appeal. The evidence presented was inadequate to establish that “the goods / services are related in some manner and/or the circumstances that surround their marketing are such that consumers could have the mistaken belief that the goods / services emanate from the same source,” Laurel argued.

Laurel said, “[t]he similarity or dissimilarity of established, likely-to continue trade channels. The Board failed to properly weigh the evidence before it regarding the actual trade channels of the cited services..., as well as the class of customers and the items listed under each respective set of services,” as to factor 3.

Noting that the services in the application versus the registered mark do not have to be identical to support a finding of likelihood of confusion but simply “related in some manner,” the CAFC disagreed. As at least 10 third-party providers of the services listed in Laurel’s application also offer services featuring the services covered by the Sazerac registration, substantial evidence supports the Board’s finding on factor 2.

The Board also identified several websites that featured both Laurel’s and Sazerac’s products, and adequately established that “the similarity or dissimilarity of established, likely-to-continue trade channels... favour[ed] a finding of likelihood of confusion”.

Laurel countered that there was no “specific overlap” between its products and Sazerac’s, the CAFC said no such requirement exists for DuPont factor 2. Laurel also tried to show that “the real-world conditions in which various goods are purchased and sold” under each of the marks vary greatly, but the CAFC said such arguments are irrelevant to the inquiry at hand. The court cited in re Detroit Athletic Co., 903 F.3d 1297, 1307 (Fed. Cir. 2018) and reportedly said, “The relevant inquiry in an ex-parte proceeding focuses on the goods and services described in the application and registration, and not on real-world conditions.”

The CAFC supported the Board’s factual finding that the two marks are “similar in appearance, sound, connotation, and commercial impression”. Because the Sazerac stitches mark includes Sazerac, consumers may believe the former is a variation of the latter, particularly where the services are similar. Laurel tried to counter that the Board failed to weigh the mark in its entirety as required by precedent, but the CAFC reportedly said, “[I]t is not improper for the Board to determine that, for rational reasons, it should give more or less weight to a particular feature” of a mark.