The USPTO refused to register the mark NIGHT for wine, finding it likely to cause confusion with the registered mark NOCHE, also for wine. On appeal, Aaplicant argued the doctrine of equivalents should not be applied, and even if it is applied, the other differences between the marks require reversal of the refusal. How do you think this came out? In re Night Wines, LLC, Serial No. 87084959 (June 20, 2018) [not precedential] (Opinion by Judge Thomas W. Wellington).
Evidentiary issues: In its request for reconsideration and its appeal brief, Applicant submitted a list of third-party registrations, but a list alone does not suffice to make the registrations of record. Nor does the Board take judicial notice of third-party registrations. Applicant should have submitted copies of the registrations, or of the electronic records of the USPTO. See TBMP Sections 1208.02 and 1208.04,
Applicant also submitted a list of purported Certificates of Label Approval (COLAs) issued for wine by the Alcohol and Tobacco Tax and Trade Bureau (TTB), claiming that use of the word NIGHT within the term MIDNIGHT is not unique. Applicant did not submit copies of the COLAs, but in any case a COLA is evidence only that the label was approved by the TTB. It is not evidence that the label was in use in commerce, or of the extent of such use. However, since the Examining Attorney did not object to this evidence, the Board considered it but noted that the probative value of the list is "severely limited."
The Marks: The similarity in appearance between the marks is slight, and there was no reason to believe that the marks will be pronounced similarly. As to connotation and commercial impression, Examining Attorney Esther Queen maintained that the doctrine of foreign equivalents should apply because NOCHE is a word in a common foreign language (Spanish) and applicant's mark NIGHT is the English equivalent of NOCHE.
The Board agreed that the doctrine of foreign equivalents is applicable here. The doctrine applies when the ordinary American consumer (including those proficient in Spanish) would stop and translate the mark into its English equivalent. NOCHE is not a term that consumers will take "as is," but rather will translate the word into English. The Board distinguished In re Tia Maria, Inc., where no likelihood of confusion was found between TIA MARIA for a Mexican restaurant and AUNT MARY'S for canned vegetables. There the Board took into account the differing contexts in which consumers would encounter the two marks. Here, in contrast, consumers would be encountering the marks on the same goods, and in the same channels of trade.
Under the circumstances, we find that the similarity between the marks based on them having the same meaning outweighs the differences based on sound and appearance, and the du Pont factor of the similarity or dissimilarity of the marks weighs in favor of a finding of likelihood of confusion.
Sophistication: Applicant argued that the sophistication of wine drinkers weighs against a finding of likely confusion, but it provided no evidence to support that assertion. The application and cited registration contain no restrictions on the the price or quality of the wines and thus could encompass the least expensive wine. The Board must base its decision on the "least sophisticated potential purchaser."
Conclusion: In sum, the Board found that the marks are similar in structure and identical in connotation, and will be used on identical goods presumably sold in the same channels of trade to the same classes of consumers. Consequently, the Board affirmed the refusal to register.
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