Reversing 2(d) Refusals Via Evidentiary Failure and Conceptual WeaknessCA

A likelihood of confusion refusal can be successfully overcome, even when the marks are virtually identical and trade channels overlap. Success in this case lies in demonstrating that the Examining Attorney failed to provide competent evidence that the goods are related, while simultaneously establishing that the cited mark is conceptually weak due to its geographic suggestiveness.

Background

The Applicant, Lucien G. Lallouz, filed a Section 1(b) application for the standard character mark CASA BLANCA in International Class 33. The application sought registration for "distilled spirits, namely, spirits distilled from the blue tequilana weber variety of agave plant."The application also included a translation statement noting that the English translation of "Casa Blanca" is a house that is white.

The Trademark Examining Attorney issued a final refusal under Section 2(d) of the Trademark Act, citing a likelihood of confusion with the mark CASABLANCA for "wines" in International Class 33. The cited registration was originally based on a Chilean registration and had been renewed.

Faced with this final refusal, the Applicant appealed the decision to the Trademark Trial and Appeal Board.

How the Board Analyzed the DuPont Factors

DuPont #1: Similarity of the Marks

In its analysis, the Board noted that the Applicant’s mark is a two-word foreign phrase CASA BLANCA, while the Registrant’s mark is presented as a single compound word CASABLANCA. The Board acknowledged that some U.S. consumers familiar with Spanish might understand CASA BLANCA to mean "white house." Conversely, wine consumers might associate the Registrant's CASABLANCA with the well-known "Casablanca Valley" wine region in Chile. Based on this, the Board observed that "some U.S. consumers, especially those proficient in Spanish, may glean distinct meanings and commercial impressions from each mark." However, it emphasized that it is improper to compare a foreign phrase with an English or compound term solely based on connotation.

The Board found that many consumers would not translate the mark at all, but would instead take it as it is. Viewed through this lens, the Board found that the marks are virtually identical in sight and sound. The only physical distinction is the single space between the words "CASA" and "BLANCA." The Board dismissed this difference, finding it far too slight for consumers to notice or focus on. Consequently, the Board concluded that this factor weighed in favor of a likelihood of confusion.

DuPont #2: Similarity of the Goods

Because there is no per se rule that all alcoholic beverages are related, the determination of whether wines and distilled spirits are related in this case rested entirely on the specific evidence produced. To support the refusal, the Examining Attorney presented three lines of arguments and supporting evidence.

Third party marketplace uses

The Examining Attorney submitted evidence from third-party wineries, distilleries, and U.S. importer and distributor websites, as well as various industry blogs.

The Board found this marketplace evidence insufficient and unconvincing. They noted that only two of the 11 submitted marketplace examples actually showed wine and tequila being sold by the same source under the same trademark. Furthermore, the Board pointed out that the Examining Attorney had failed to produce any third-party registration evidence demonstrating that tequila and wine emanate from the same source under a single mark.

Complementary use

Beyond source-related evidence, the Examining Attorney argued that the goods are related because they are complementary beverages used together in cocktails. To support this claim, she submitted various online recipes and articles, intending to show that consumers perceive these two types of alcohol as items that can emanate from a single source because they are frequently consumed together.

The Board dismissed the complementary use argument, noting that:

"The recipes alone do not establish that wine and tequila rise to the level of complementary goods frequently used together in cocktail mixers. The mere existence of a handful of cocktail recipes incorporating wine and tequila does not mean that consumers recognize both beverages as ingredients commonly used together for cocktail recipes."

The Board concluded that consumers are not likely to assume, merely from the fact that two items are called for in the same recipe, that they necessarily emanate from the same source of origin. Again, the Examining Attorney again failed to show that wine and tequila emanate from a single source under a single mark on this record.

Shared production methods

Finally, the Examining Attorney provided evidence suggesting that the goods are related through shared production methods and industry expertise. She cited an article describing a group within the Napa Valley wine industry that collaborated to produce ultra-premium tequilas using specific winemaking techniques. This evidence was used to postulate that the boundaries between wine and tequila production are fluid, and that consumers might reasonably expect the two products to be offered by the same entity.

Again, the Board rejected the Examining Attorney’s argument because this meager evidence failed to show wine and tequila actually being offered to consumers from the same entity under the same trademark.

Given the lack of evidentiary foundation in the record, the Board concluded that the second DuPont factor weighs against finding a likelihood of confusion.

DuPont #3: Similarity of Trade Channels

In contrast to its findings on the relatedness of the goods, the Board found that the trade channels and classes of consumers significantly overlapped. Because the identifications in both the application and the cited registration contained no limitations, the Board presumed that the goods move through all normal channels of trade for such items.

The evidence established that both wine and tequila are marketed through U.S. importers, wholesale distributors, online retailers, and winery or distillery tasting rooms. The Board took notice of the three-tier licensing system in the U.S., where products move from producers to wholesalers to retailers. The classes of purchasers, namely bar patrons, restaurant patrons, and retail shoppers of legal drinking age, were deemed identical. Additionally, the Board rejected the Applicant's argument that wine and spirits are physically segregated in stores, noting that consumers browsing a retail environment are likely to wander freely throughout the entire store. Consequently, this factor weighed in favor of a likelihood of confusion.

DuPont #4: Purchasing Conditions

The Board analyzed the fourth DuPont factor concerning impulse versus careful, sophisticated purchasing. Since the identifications of the goods were not limited by price or conditions of sale, the Board had to assume the goods included both inexpensive and moderately priced items.

The Board noted that while some consumers might be sophisticated, others may buy alcohol on impulse. Citing prior case law, the Board remarked that "wine purchasers are not necessarily sophisticated or careful." Because the analysis must be based on the "least sophisticated potential purchaser," the Board deemed this factor neutral.

DuPont #6: Strength or Weakness of the Cited Mark

The final factor in the Board’s analysis was the conceptual strength of the Registrant’s mark. While the mark CASABLANCA was registered on the Principal Register and thus presumed inherently distinctive, the Applicant provided extensive evidence to show it was highly suggestive.

The Applicant submitted more than 1,200 search results for “Casablanca Valley” from U.S. websites to show public exposure and consumer impressions. These results showed numerous brands advertising wines originating from the Casablanca Valley in Chile, and clearly indicated brand names, prices, and the geographical region of origin.

The Board found that while this third-party use did not demonstrate commercial weakness, as the third parties were using the term geographically, not as a trademark, it was a strong indicator of conceptual weakness. The Board concluded that consumers encountering the cited mark CASABLANCA for wine are likely to perceive the mark as shorthand for the Casablanca Valley region in Chile. Because it is highly suggestive of its geographical origin, it was only entitled to a relatively limited scope of protection. Consequently, this factor weighed strongly against a likelihood of confusion.

Board’s Decision

The TTAB reversed the Section 2(d) refusal. In its final balancing of the DuPont factors, the Board acknowledged that the marks were virtually identical and the trade channels overlapped—both of which typically favor a finding of confusion. However, the Board determined that these factors were heavily outweighed by two critical failures in the refusal.

First, the Board emphasized the lack of competent evidence to prove that tequila and wine are related goods. The Examining Attorney’s evidence largely comprised distributors selling different brands or companies using different marks for different products, which does not establish single-source relatedness.

Second, the Board pointed to the relative conceptual weakness of the mark CASABLANCA when used for wine, given its strong geographic association with a well-known wine-producing region in Chile. Because the cited mark is highly suggestive, it possesses a narrow scope of protection that does not extend to the Applicant’s tequila.

Balancing all the factors, the Board concluded that confusion is unlikely and reversed the refusal.

Early on in my practice, whenever a 2(d) refusal landed on my desk, my instinct was to out-argue it. I’d gather my own evidence, draft aggressive responses, and try to force a win through sheer volume of counter-arguments.

But over the years, reading case after case, especially these TTAB reversals, completely shifted my perspective. I realized my job isn't to out-shout the Examining Attorney. My job is to step back, put on an investigator's hat, and methodically take apart their position piece by piece, just like the Board does.

Shift the Burden: Assume Nothing is Related

It is incredibly easy to fall into the trap of accepting general industry assumptions. I see "wine" and "distilled spirits" (tequila) in the same international class, and my brain naturally groups them together. But as the Board reminds us, there is no per se rule that all alcoholic beverages are related. This case perfectly illustrates why we can never take an Examining Attorney’s "relatedness" argument at face value.

In fact, perhaps the best approach we can take is to assume nothing is related until proven otherwise.

Shift the mental burden back to where it legally belongs. The Examining Attorney carries the initial burden to establish a prima facie case of relatedness, and this record shows what happens when they rely on stretched logic instead of competent evidence.

Trade Channel / Relatedness Conflation

I see this all the time in Office Actions. An Examining Attorney will attach screenshots of a big-box store or a supermarket, using them as a blanket statement that the goods are related. But the Board drew a sharp line here, reminding us of a crucial distinction. Just because products are sold in the same environment or move through the same three-tier distribution system does not mean consumers believe they emanate from a single source under a single mark.

When you're analyzing a 2(d) refusal, scrutinize the attached evidence. If the EA’s evidence only shows a conglomerate owning distinct brands, or a retail store carrying both items on its shelves, call it out. Highlight that this evidence speaks strictly to where the goods are sold under DuPont factor three, not who makes them under DuPont factor two.

Geographical Association Leads to Conceptual Weakness

Finally, I love how the Applicant handled the conceptual strength of the cited mark CASABLANCA. Instead of fighting the fact that "Casablanca Valley" is a massive wine-producing region in Chile, they leaned directly into it.

By introducing extensive evidence of this geographic association, they successfully argued that the cited mark is highly suggestive for wine. That clever pivot narrowed the mark's scope of protection so significantly that it could not reach over to the Applicant's tequila, even though the marks themselves were virtually identical.