In a non-precedential opinion, the U.S. Trademark Trial and Appeal Board cancelled two US trademark registrations for the mark PORTON,  finding it to be confusingly similar to the mark PATRON. Patron Spirits International AG v. Pisco Porton, LLC, Cancellatio No. 92059527 (January 4, 2017). PORTON is the brand name for a Peruvian brandy sold by Pisco Porton. PATRON is the brand name for a Mexican tequila sold by Patron Spirits International. The Board analyzed the issue of likelihood of confusion by examining the similarity of the marks, the relatedness of the goods, the channels of trade, the classes of customers and the conditions under which the products are sold.  Unlike in a civil infringement action, the TTAB must make its determinations under these factors based on the goods as they are recited in the U.S. trademark registrations.

The registrations of the parties contained the descriptions “distilled spirits,” “brandy,” “pisco,” and “tequila.” The Board considered all these descriptions, and the actual products, to be legally identical for purposes of its analysis. Moreover, since there were no restrictions in the registrations as to the channels of trade or the class of purchasers for the products, the Board was required to assume that the products would be sold in the same channels of trade and to the same class of purchasers. Thus, it found that all these factors favored Patron, as the prior user.

With regard to the conditions of sale, the Board noted that the “ordinary” channels of trade for distilled spirits would be bars, restaurants, liquor stores and grocery stores. Patron argued that the conditions of sale in some of these channels of trade would increase confusion since (1) bars and restaurants are often noisy, (2) orders in these venues are often placed verbally, and (3) drinks in these venues are delivered to a customer or table without the bottle from which the alcohol was poured. The Board noted that although these types of circumstances might have some relevance to issue of the similarity between the marks, they were not compelling on the issue of conditions of sale.

It was the similarity between the marks that was the final blow to Pisco. Since the products were deemed “legally identical,” the degree of similarity between the marks necessary for a finding of confusion was reduced. In assessing this factor, the similarities in sight, sound and connotation of the marks being compared are evaluated.  In this case, the Board found the structure, spelling, and appearance  of PORTON and PATRON to be similar which, the Board held, created a similarity in sight and sound between them.  On the issue of connotation, the Board rejected Pisco’s arguments that (1) the different meanings of the two words –“porton” means a large door or gate and “patron” means a guest or customer–would be a distinguishing factor among Spanish speakers, and (2) English speakers would perceive PATRON as the English word “patron” while PORTON would clearly be identified as a Spanish term. Rather, the Board took Patron’s side on this issue, finding that a substantial number of non-Spanish speakers in the US would perceive both terms, as used on alcohol, as Spanish words with no obvious meaning.

Although Patron also claimed that its mark was “famous,” a factor that can be very dominant in a likely confusion analysis, the Board held that it had failed to provide measurable evidence of its sales or market share, both of which are generally necessary to establish fame. The Board did find that, however, that a certain level of “commercial strength [of the mark PATRON] for tequila” had been shown.

On balance, the Board held that PORTON was confusingly similar to the “strong” PATRON mark and it cancelled the registrations.

Since this was a cancellation proceeding before the TTAB, the only issue before the Board was the registrability of the marks. Thus, although the PORTON registrations were cancelled, Pisco is under no obligation to cease using the PORTON mark. Patron would have to seek an injunction in civil court to force Pisco to stop using the mark. Of course, given the TTAB ‘s decision and the US Supreme Court’s pronouncements in B&B Hardware, Inc. v. Hargis Industries, Inc., Pisco is quite vulnerable if it continues use under the circumstances.

An important takeaway from this case is not to rely heavily on the connotative differences between non-English language words when they are used as or in marks in the US. Since English language speakers are still the dominant “customers” in the U.S. for purposes of a likely confusion analysis, unless there are specific restrictions in an application or registration to indicate the contrary, they should be the customer base considered when choosing new marks in the U.S..