CAFC Says SAZERAC STITCHES is Likely to Be Confused with SAZERAC

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Tuesday affirmed a decision of the Trademark Trial and Appeal Board (TTAB) that the mark SAZERAC STITCHES is likely to be confused with 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 examiner rejected the application due 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.” Laurel Designs appealed to the TTAB and the Board affirmed after analyzing three of the 13 DuPont factors and determining they favored a finding of confusion.

On appeal, Laurel Designs argued that 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 argued that the evidence presented was insufficient 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.”

As to factor 3, “[t]he similarity or dissimilarity of established, likely-to continue trade channels,” Laurel said “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.”

The CAFC disagreed, 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.” Since at least ten 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.

Additionally, the Board identified several websites that featured both Laurel’s and Sazerac’s products, and sufficiently established that “the similarity or dissimilarity of established, likely-to-continue trade channels . . . favor[ed] a finding of likelihood of confusion.” While 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 differ greatly, but the CAFC said such arguments were irrelevant to the inquiry at hand. Citing In re Detroit Athletic Co., 903 F.3d 1297, 1307 (Fed. Cir. 2018), the court 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.”

Turning to DuPont factor 1, 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 subsumes SAZERAC, consumers are likely to believe the former is a variation of the latter, particularly where the services are similar. Laurel attempted to counter that the Board failed to weight the mark in its entirety as required by precedent, but the CAFC 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.

Laurel attempted to rely on Shen Mfg. Co. v. The Ritz Hotel Ltd., 393 F.3d 1238, 1244 (Fed. Cir. 2004) to support its argument that the Board improperly dissected the mark, failing to give “STITCHES” adequate weight. In Shen, the Board was comparing the marks “RITZ” and

“PUTTING ON THE RITZ,” and the Board concluded there was no likelihood of confusion because PUTTING ON THE RITZ gave consumers “a distinct impression, specifically that of getting dressed up or of the song composed by Irving Berlin.” But here, “the Board did not make a similar finding that SAZERAC STITCHES, when evaluated as a whole, has a strong commercial impression unlike that of SAZERAC alone.”