Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 SCHIEFFELIN & CO.
v.
THE MOLSON COMPANIES LIMITED
January 31, 1989
Hearing: December 7, 1988
Opposition No. 69,312 to application Serial No. 427,320 filed May 24, 1983.
Marie V. Driscoll and Sandra Edelman for Schieffelin & Co.
George H. Spencer, Jay M. Finkelstein, Norman N. Kunitz, Robert J. Frank, Gabor J. Kelemen, Sheldon I. Landsman and Mark Harrison and Spencer & Frank for The Molson Companies Limited
Before Rooney, Simms and Krugman
Members
Opinion by Simms
Member
Schieffelin & Co. has opposed the application of The Molson Companies Limited, a Canadian corporation, to register the mark BRADOR for malt liquor, beer and ale. [FN1] Opposer asserts that applicant's mark used in connection with its goods so resembles the mark BRAS D'OR and the mark shown below,
TABULAR OR GRAPHIC MATERIAL SET FORTH AT THIS POINT IS NOT DISPLAYABLE
previously used and registered for Cognac brandy as to be likely to cause confusion. [FN2] In its answer, applicant has denied the essential allegations of the opposition.
During the course of this proceeding, applicant filed a supplemental answer with counterclaims to cancel opposer's two pleaded registrations. With respect to both registrations, applicant asserts as grounds for cancellation that opposer has engaged in a course of conduct with respect to its advertising and promotion of the mark BRAS D'OR so that the term has lost whatever trademark significance it may have had and has been abandoned as a trademark, and that the term has become the common descriptive name for a style or grade of Cognac brandy and therefore does not function as a trademark. With respect to the registration of the label design mark pleaded by opposer, applicant asserts that opposer no longer uses the exact mark shown in that registration and has not used that mark for at least the past two consecutive years so that that registered mark has been abandoned. In opposer's reply to applicant's counterclaim, the essential allegations are denied but opposer admits that it no longer uses the mark in the exact form shown in Registration No. 939,005, but avers that the mark now used is substantially similar to and creates the same overall commercial impression as the registered mark.
The record of this case consists of portions of discovery depositions relied on by notices of reliance filed by both parties; copies of portions of certain printed publications (newspapers and magazines) relied upon by both parties; opposer's answers to certain of applicant's interrogatories relied upon by applicant's notice; testimony (and exhibits) taken by both parties; and the application and opposer's registration files.
Because the validity of opposer's pleaded registrations has been made an issue as a result of applicant's counterclaims, we shall first consider the evidence and arguments relating to those counterclaims before turning to the issue of likelihood of confusion in the opposition proceeding.
Applicant's counterclaim to cancel the registrations is understandable only with some knowledge of the nature of Cognac brandy and how it is marketed. Cognac brandy is a distilled spirit made from the wine of grapes, aged in oak barrels and then blended with wine of different ages. When the wine is subjected to a double distillation process, Cognac brandy is formed. By French law, brandy may be called 'Cognac' only if is comes from a certain geographic area surrounding the town of Cognac, France. The alcohol content of this brandy is 80 proof or 40 percent alcohol. Opposer imports and distributes Cognac brandy produced in France by Jas. Hennessy & Co. Opposer's BRAS D'OR brandy is made from different blends of different ages from various vineyards in the Cognac region. The price to the consumer for the BRAS D'OR product is about $42 per bottle.
*2 Opposer's BRAS D'OR mark has its origins in the Hennessy family coat of arms, which contains a flexed arm wielding a medieval battle-ax, referred to in French as 'bras arme' (or 'armed hand'). When this symbol is shown in gold, it is called 'BRAS D'OR' or 'golden arm.' For over half a century (since at least 1934), the term BRAS D'OR has appeared on the Cognac brandy imported and distributed in this country by opposer.
Cognac brandy is usually identified by grade designations which indicate the approximate age of the brandy. These designations--V.S. (Very Special), V.S.O.P. (Very Special (or Superior) Old Pale) and X.O. (Extra Old), each signifying minimum ages--have been established by the Bureau National Interprofessionel du Cognac as grades of Cognac brandy which are commonly used by producers. [FN3] It is also not unusual for major distillers to have their own names to identify the quality and blend of their Cognac brandy. Opposer uses the term BRAS D'OR to identify brandy aged at least six years. While there is concededly no evidence that the term BRAS D'OR has been recognized as a grade designation by the Bureau du Cognac, applicant argues that opposer's use in its price lists, shipping statements and in other promotional material, as well as use in some newspaper articles, demonstrates that the term BRAS D'OR is used by opposer as a grade or style designation and would be so perceived by the public. Therefore, according to applicant, opposer has abandoned the term as a trademark.
More particularly, applicant refers to the listing in price lists of HENNESSY BRAS D'OR in the same manner as HENNESSY V.S. or HENNESSY X.O., and to testimony given by officers of opposer who, when asked what blends or types of HENNESSY Cognac brandy were sold by opposer, responded 'V. S., V. S. O. P., X. O., BRAS D'OR and PARADIS.' An advertisement of opposer invited purchasers to move up from V.S.O.P. to BRAS D'OR. The use by opposer of the term BRAS D'OR in the same manner in which recognized grade designations are used leads applicant to conclude that HENNESSY is the brand name of opposer's Cognac brandy while the above-mentioned acronyms and BRAS D'OR are grade or blend designations.
Applicant's counterclaim to cancel opposer's pleaded registrations on the ground that the term BRAS D'OR is a grade or style designation and has been abandoned as a trademark is without merit. While we believe that a term could be 'abandoned' within the definition of 'Abandonment' of Section 45 of the Act, 15 U.S.C. 1127, [FN4] if a party uses a mark in such a manner that it no longer functions as a trademark, we agree with opposer that applicant has failed to prove by a preponderance of the evidence that the term BRAS D'OR functions as a grade designation and has therefore been abandoned. The exhibits such as price lists which show HENNESSY BRAS D'OR used in a manner similar to that of, for example, HENNESSY V. S., are not conclusive proof that BRAS D'OR is a grade designation and would be so perceived by the trade or the purchasing public. Indeed, it is clear that BRAS D'OR is not a designation (such as V.S. or V.S.O.P.) recognized by the Bureau du Cognac and commonly used by the industry for a blend of Cognac brandy. Nor is there testimony that the trade and the consuming public regard the term BRAS D'OR as a grade designation. Unlike the widespread use of the letter designations, opposer's witnesses clearly testified that they are not aware that companies other than opposer use this term for their Cognac brandy. The testimony of opposer's witnesses demonstrates that the name, with its origins in the Hennessy family crest or coat of arms, is used as a product mark or brand name by opposer along with the house mark HENNESSY to distinguish a particular blend of Cognac brandy. (Rodenberg dep., 21, 57). It is an arbitrary term which his not lost its trademark significance.
*3 Applicant's allegation that opposer's label mark, reproduced above, has been abandoned because it is no longer used in that form is also without merit. The sole basis for applicant's charge of abandonment in this regard is that the current label used on this blend of Cognac brandy no longer contains the term BRAS D'OR. Rather, this term is now impressed on the glass bottles themselves and appears immediately above the label design. In other words, the mark BRAS D'OR no longer appears within the scrolled design but appears just above that design on the bottle. The parties agree that a mark can be modified or changed without 'abandonment' if the altered mark retains its original impact and evokes essentially the same commercial impression. Ilco Corp. v. Ideal Security Hardware Corp., 527 F.2d 1221, 188 USPQ 485 (CCPA 1976) and In re Flex-O-Glass, Inc., 194 USPQ 203 (TTAB 1977). We disagree with applicant that the movement of the term BRAS D'OR 'completely alter[s] the commercial impression of the mark' (applicant's main brief, 21), but believe the new form does not alter the essential characteristics of the mark and represents a continuity of trademark rights.
We turn now to the evidence and arguments relating to the central issue in the opposition, that of likelihood of confusion.
As noted above, opposer and its predecessor have been importing and marketing BRAS D'OR Cognac brandy in this country since the end of Prohibition. This premium brandy which is part of the HENNESSY line of Cognac brandy is distributed by opposer to around 200 distributors, who in turn sell to retail outlets (which vary throughout the country because of state laws and regulations), bars and restaurants. They in turn sell the product to the consuming public. Although opposer has in the past advertised its BRAS D'OR Cognac brandy by itself as well as part of the HENNESSY line, opposer currently advertises only the entire line of HENNESSY Cognac brandy in popular and trade magazines and on billboards. Opposer has engaged in some promotional activities relating specifically to the BRAS D'OR product, including the promotion in 1985 of 'case cards' to be placed behind cases of BRAS D'OR brandy in liquor stores. These cards featured the mark in Spanish and were part of a promotion directed to the Cuban market in Miami. Opposer's BRAS D'OR Cognac brandy also appears in various state beverage journals published by alcoholic beverage distributors. These journals list a variety of alcoholic beverages including wines, spirits, beers and malt liquor. Opposer has also been involved in promotions at schools for cooking and at department stores.
Cognac brandy may be consumed in a variety of different ways, including in mixed drinks as a before-dinner cocktail and straight as an after-dinner drink. Opposer also publishes cooking recipes to promote the use of Cognac brandy for flavoring and to flambe various entrees and desserts.
*4 Applicant's product is a malt liquor, a brewed, malt-based beverage that differs from beer in that it has a somewhat higher alcoholic content. Produced in Canada and imported through a wholly-owned subsidiary, applicant's malt liquor is the most expensive of the MOLSON line of products, the bottles bearing a gold label suggestive of its high quality. Usually displayed in the imported section in retail outlets such as grocery and liquor stores, applicant's BRADOR malt liquor is sold primarily in the northeastern states of this country. Applicant does not currently advertise BRADOR malt liquor but does use various promotional materials such as posters and such point-of-sale displays as countercards, table tents, etc. Applicant's malt liquor has been sold since the early 1980s.
According to the various explanations in the record, applicant's mark was either named after the Bras d'or Lakes in Nova Scotia or it was derived from the French 'brassin d'or' or 'brew of gold.' Applicant's representatives pronounce the mark with a short 'a', as in 'brah/dor,' rather than with a long 'a', as in 'bray/dor.'
We agree with opposer that applicant's mark is substantially similar to opposer' mark in sound and appearance. Both marks begin with the letters 'BRA' and conclude with the letters 'DOR.' Both marks are of French origin with no recognizable English meaning. While we have read and considered the expert testimony of the linguistics professor produced by applicant, and recognize that the marks in question can be pronounced in different ways, it is true that they are susceptible of being pronounced in the identical manner ('brah/dor'). [FN5] Indeed, if each mark is pronounced in the manner that the respective representatives pronounce them, they sound alike. We also take into consideration the fact that the products of the parties are of the type ordered verbally in bars and restaurants.
We also believe that applicant's malt liquor is sufficiently related to opposer's Cognac brandy that, when sold under similar marks in the same channels of trade, such as bars, restaurants and liquor stores, confusion is likely. While we have no doubt that purchasers are not likely to consume a malt liquor thinking that it is Cognac brandy, in view of the similarities in the marks it is reasonable to assume that purchasers may believe that BRADOR malt liquor is another premium imported alcoholic beverage sold by the same company which sells the expensive BRAS D'OR Cognac brandy. Those consumers who do recognize the differences in the marks may believe that applicant's mark is a variation of opposer's mark that opposer has adopted for use on a different product. Of course, while there are actual differences in the specific channels of trade that the respective products travel in, nevertheless they are sold in some of the same places and, moreover, since there are no restrictions with respect to channels of trade in either applicant's application or opposer's registrations, we must assume that the respective products travel in all normal channels of trade for those alcoholic beverages. See Martini & Rossi Corp. v. Jose Marques Agostinho, Filhos & Ca., 205 USPQ 722 (TTAB 1979) (wines v. wines, vermouth and other alcoholic beverages); Monarch Wine Co. v. Hood River Distillers, Inc., 196 USPQ 855 (TTAB 1977) (Scotch whiskey, rum, brandy and vodka v. wines and champagne); and In re AGE Bodegas Unidas, S.A., 192 USPQ 326 (TTAB 1976) (wines v. whiskey). A typical consumer of alcoholic beverages may drink more than one type of beverage and may shop for different alcoholic beverages in the same liquor store. Moreover, a person may serve more than one kind of alcoholic beverage before or during a meal or at a party. [FN6]
*5 Finally, we have given some weight to the fact that opposer's BRAS D'OR Cognac brandy has been sold continuously in this country for over half a century, that opposer's mark is arbitrary and fanciful and that there is no evidence of any third-party use of a similar mark on alcoholic beverages.
Decision: The opposition is sustained and the registration to applicant is refused; applicant's counterclaims are dismissed.
L. E. Rooney
R. L. Simms
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. Serial No. 427,320, filed May 24, 1983, claiming use in commerce since May 16, 1983. The application also appears to be filed pursuant to Section 44(e) of the Trademark Act, 15 U.S.C. 1126(e), based upon Canadian Registration No. 195,256, issued November 2, 1973.
FN2. Registration No. 682,658, issued July 28, 1959, Sections 8 and 15 affidavits filed, renewed; and Registration No. 939,005, issued July 25, 1972, Sections 8 and 15 affidavits filed. In the registrations, it is indicated that the term BRAS D'OR is a French expression which means 'golden arm.'
FN3. Another term, 'Napoleon,' is sometimes used or recognized by the public as a grade designation, but, according to opposer's witnesses, the term is without significance.
FN4. Abandonment of mark. A mark shall be deemed to be 'abandoned'
(b) When any course of conduct of the registrant, including acts of omission as well as commission, causes the mark to lose its significance as an indication of origin. Purchaser motivation shall not be a test for determining abandonment under this subparagraph. (Emphasis added.)
FN5. While the professor testified how she would expect he mark to be pronounced by English-speaking persons, she indicated that she herself would pronounce applicant's mark 'brah/door'. She also conceded that the best way to determine how the mark would be pronounced would be to conduct a survey, which has not been done in this case.
FN6. We note that the record demonstrates that there is at least one apparent overlap in potential purchasers of both products, applicant's malt liquor having been promoted and sold primarily to black consumers, who also represent a large segment of consumers of opposer's Cognac brandy.