Domaines Pinnacle, a Canadian corporation and producer of alcoholic ice apple wines, filed an application with the US Patent and Trademark Office seeking to register the mark DOMAINE PINNACLE for “apple juices and apple-based non-alcoholic beverages”. Franciscan Vineyards Inc opposed the registration, alleging likelihood of confusion with its registered marks PINNACLES for “wine” and PINNACLES RANCHES for “wines”.

The Trademark Trial and Appeal Board (TTAB) found that the lack of evidence showing a relatedness of the goods outweighed the similarities in the marks, trade channels and conditions under which and the buyers to whom sales are made, and dismissed the opposition.

On appeal to the US Court of Appeals for the Federal Circuit, Franciscan argued that the TTAB had overlooked evidence that Franciscan’s wines and Domaines Pinnacle’s “apple juices and apple-based non- alcoholic beverages” were related goods. Specifically, Franciscan argued that the TTAB had failed to follow In re Demmer KG (219 USPQ 1199 (1983), in which the TTAB had found that wines and non-alcoholic beverages were related goods.

In In re Franciscan Vineyards Inc (Case No 14-1269, December 9 2014, non-precedential), the Federal Circuit found that the TTAB had not erred in determining that Franciscan had failed to prove a likelihood of confusion. Franciscan presented testimony to the TTAB that the parties were competitors in Canada and that Franciscan’s parent company owned three Canadian companies that sold wines and ciders. The Federal Circuit found that the TTAB correctly noted that this evidence was insufficient to show that the parties’ goods are related or marketed in such a way that they would likely be seen by the same persons under circumstances that could create confusion.

As to the ruling in Demmer that wines and non-alcoholic beverages were related goods, the Federal Circuit agreed with the TTAB that the ruling in that case did not control. Demmer involved an ex parte appeal, in which the TTAB generally adopts a “more permissive stance with respect to the admissibility and probative value of evidence” than it does in an inter partes proceeding.

This article first appeared on WTR Daily, part of World Trademark Review, in February 2015. For further information, please go to www.worldtrademarkreview.com.