“Something More” Standard – Relatedness Of Goods & Services

On April 24, 2023, the Trademark Trial & Appeal Board (TTAB) issued a non-precedential opinion regarding whether there needs to be “something more” to tie together certain goods and services of an applied-for trademark and a registered trademark. In the case of In re 1729 Investments LLC (Serial No. 90694523), the primary issue was whether the trademark “RAO’S” for wine would likely cause confusion with pre-existing trademarks for “RAO’S” used in restaurant and bar services. The United States Patent and Trademark Office’s (USPTO) Trademark Examining Attorney refused the registration of “RAO’S” for wine, arguing that it would likely cause confusion with the marks for “RAO’S” restaurant and bar services. The applicant, 1729 Investments LLC, appealed this decision to the Trademark Trial and Appeal Board (TTAB).

The central aspect of this case revolved around the “something more” standard, which requires additional evidence to establish the relatedness of goods and services beyond merely showing that similar marks are used. Specifically, the “something more” standard necessitates proof that consumers would likely believe that the goods (wine) and services (restaurant and bar services) come from the same source.

The TTAB began by analyzing the strength of the cited “RAO’S” trademarks for restaurant and bar services. These trademarks were found to be conceptually weak because they were based on the surname of the registrant’s founder and registered under Section 2(f) of the Trademark Act, indicating acquired distinctiveness rather than inherent distinctiveness. Despite this, weak trademarks still receive trademark protection against confusingly similar trademarks for related goods and services.

Next, the TTAB assessed the similarity of the trademarks. Since both the applicant’s and the registrant’s marks were in standard characters and identical in appearance, sound, and commercial impression, this factor supported a likelihood of confusion. However, the primary concern was whether the goods and services were sufficiently related to cause confusion among consumers.

To establish relatedness, the TTAB considered whether the Examining Attorney provided “something more” than the mere fact that similar trademarks were used. The evidence submitted included third-party registrations where a single mark was used for both restaurant services and wine, and websites of wineries with on-site restaurants. However, the TTAB found this evidence insufficient to meet the “something more” standard. The evidence did not convincingly show that it is common for regular restaurants to offer house-branded wines under the same name as the restaurant. Most of the winery restaurants did not use the same name for the wines produced by the winery, nor did they establish a substantial overlap in trade channels for wine and restaurant services.

The TTAB highlighted that there is no per se rule that food and beverage products and restaurant services are related. Previous cases have shown that a finding of relatedness requires specific evidence indicating that consumers would expect the goods and services to come from the same source. For example, in In re Coors Brewing Co., it was determined that brewpubs and restaurants serving private label beer could not be assumed to have common source without additional evidence. Similarly, in this case, the TTAB required more substantial evidence to show that consumers would associate wine branded as “RAO’S” with “RAO’S” restaurant services.

The TTAB then examined the trade channels and marketing restrictions in the applicant’s identification of goods. The applicant’s wine was restricted to being sold exclusively at the vineyard, wine specialty stores, and directly to consumers, explicitly excluding sales in restaurants. This specific limitation was significant as it indicated that the wine would be marketed to a distinct consumer base, separate from the trade channels for restaurant services. The TTAB found no meaningful overlap between the trade channels for the applicant’s wine and the registrant’s restaurant services.

Moreover, the TTAB considered the conditions under which the wine would be purchased. The applicant’s wine, being a rare and exclusive product from a specific vineyard, was likely to be purchased by sophisticated consumers who are careful and discerning. This high degree of purchaser care further reduced the likelihood of confusion.

Balancing all the relevant factors, the TTAB concluded that there was no likelihood of confusion between the applicant’s “RAO’S” wine and the registrant’s “RAO’S” restaurant and bar services. The Board reversed the refusal to register the applicant’s mark.

The decision in In re 1729 Investments LLC provides several important lessons. It underscores the need for substantial evidence when claiming that goods and services are related under the “something more” standard. Simply showing that similar trademarks are used for related goods and services is not enough; there must be compelling evidence that consumers would likely believe the goods and services come from the same source. Additionally, the decision highlights the importance of specific trade channel and marketing restrictions in trademark applications, as these can significantly influence the likelihood of confusion analysis. The sophisticated nature of the consumers and the context of the purchase also play a critical role in determining the likelihood of confusion.

This case serves as a valuable reference for trademark owners and practitioners, illustrating the complexities of establishing relatedness between different goods and services in trademark disputes and emphasizing the importance of comprehensive evidence in meeting the “something more” standard.

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