Aurora, Colorado’s own La Aurora cigar shop, co-owned by Guillermo Leon, recently found itself opposing a possible trademark infringement claim by Dominican cigar company, Cigarros Don Guillermo C por A (CDG). Both companies were before the Trademark Trial and Appeal Board (TTAB) in July of this year making their cases. La Aurora was seeking to prevent Don Guillermo from registering the mark DON GUILLERMO CIGARS, CIGARROS DON GUILLERMO.
La Aurora first argued that Don Guillermo’s mark should not be registered because it is too similar to La Aurora’s registered mark, GUILLERMO LEON BY LA AURORA, and therefore would likely confuse consumers. Second, La Aurora argued that the mark should not be registered because CDG failed to get consent from a living individual (specifically, Guillermo Leon) and falsely stated that the mark does not identify Mr. Leon. The crux of La Aurora’s second argument rests on the belief that Guillermo Leon is a famous individual and allowing the use of his name without his consent would violate the Trademark Act.
CDG argued that it had priority it over La Aurora’s mark and that the similarity of the marks would dilute and cause harm to CDG’s mark. CDG and La Aurora agreed that both marks would confuse consumers, if allowed, but each party asserted that they had superior rights in their mark.
TTAB’s holding on La Aurora’s Claim to Fame
La Aurora argued that the name Guillermo, the name of one of the co-owners and president of La Aurora, is a famous name because of its close association with the cigar industry and the company’s status as a “leading cigar company.” The TTAB disagreed.
Section 2(c) of the Trademarks Act prohibits the registration of a mark that consists of or comprises a name, portrait, or signature identifying a particular living individual except with his or her consent. In determining whether the name identifies a particular person, a judge will look at whether the person is, essentially, famous enough that the public would assume a connection with the name and whether there is a public connection between the person and the business that is using the mark.
The TTAB found that Guillermo Leon of Aurora was not famous enough to warrant protection of the name “Guillermo” in the cigar industry.
TTAB’s Holding On La Aurora’s Opposition of CDG’s Mark
Although La Aurora’s fame argument failed, it succeeded in showing superior priority and a likelihood of confusion among consumers.
Before the TTAB could address the issue of similarity between the marks, the TTAB had to address which party had priority in their respective marks. La Aurora filed its trademark registration on January 29, 2010 and CDG filed their registration on June 18, 2012. Because La Aurora filed first and CDG failed to establish evidence of a “first use date,” the TTAB held that ultimately concluded that La Aurora had priority in its mark.
The next issue was whether CDG’s proposed mark would be too similar such that it could deceive or confuse consumers in the cigar industry. The TTAB addressed each of the factors determining similarity individually. First, the TTAB considered the similarity, dissimilarity, and nature of the goods as described in CDG’s application and compared it to the goods under La Aurora’s registered trademark. The TTAB held that the goods were identical: both CDG and La Aurora are in the business of selling cigars. Second, the TTAB analyzed the similarity and dissimilarity of the marks themselves, taking into consideration the appearance, sound (although not relevant in the present case), connotation and commercial impression. Despite CDG conceding that the marks are similar, the TTAB still performed its own analysis and found that the marks are “obviously” similar because of the literal similarities in the name Guillermo.
Finally, the TTAB found that the trade channels and industry are the same, and ultimately that consumers would be confused as to the source. Accordingly, La Aurora’s opposition to CDG’s mark was sustained and CDG was denied registration.
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