Pan American Properties, Corp., 2017 WL 3102585
The Trademark Trial and Appeal Board (TTAB) decided this case. The TTAB is an administrative board that deals with issues arising out of the United States Patent and Trademark Office (USPTO). The TTAB oversees opposition, cancellation, interference and concurrent use hearings. The TTAB also hears appeals for trademark application rejections from USPTO Trademark Examining Attorneys.
Similar Trademarks Background
Pan American Properties, Corp. (Pan American) submitted an application for trademark registration of the mark “G SHOT.” Pan American sought to register this mark on the Principal Register under International Class 33, a category for “alcoholic beverages (except beers).”
The Trademark Examining Attorney (TEA) reviewed Pan American’s application for the G SHOT mark. Then the TEA rejected the G SHOT application.
Korea Ginseng Corp. (Korea Ginseng) already registered their G-SHOT mark for “non-alcoholic energy drinks containing red ginseng.” The G-SHOT mark is on the Principal Register under International Class 32, a category that includes “beers” and “other non-alcoholic beverages.”
The TEA determined that Pan American’s requested mark was too similar to Korea Ginseng’s registered mark. Referencing 15 U.S.C. 1052(d) of the Trademark Act, the TEA concluded that the Pan American mark was “likely to cause confusion or mistake or to deceive.”
After receiving the TEA’s decision, Pan American protested and requested another review. The TEA rejected this request, refusing to reconsider the initial decision. As a result, Pan American appealed to the TTAB.
Trademark Denial Analysis
In considering the likelihood of confusion under 15 U.S.C. 1052(d), the TTAB employed the analytical test from the landmark case In re E. I. du Pont de Nemours & Co., 476 F.2d 1357 (CCPA 1973). Also referred to as the du Pont factors, this test establishes 13 different considerations for determining likelihood of confusion.
Concerning Pan American, specifically, the TTAB focused on three du Pont factors – the first factor (similarities between marks), second factor (similarities between goods or services) and third factor (similarities between trade channels).
To assess the first du Pont factor, the TTAB compared Pan American’s G SHOT mark against Korea Ginseng’s G-SHOT mark. Beyond a superficial hyphen, the TTAB found the marks to be “virtually identical.” The TTAB highlighted that the addition of a hyphen did not distinguish the marks sufficiently, concluding that both marks convey “the same meaning and overall commercial impression.”
Switching to the second and third du Pont factors, the TTAB noted that both Pan American and Korea Ginseng sell beverages. The TTAB also highlighted that energy drinks like Korea Ginseng’s G-SHOT and alcoholic drinks like Pan American’s G SHOT are often bought and sold together as complementary products. In that way, both Pan American and Korea Ginseng were offering products within the same channel of trade.
Overall, the TTAB concluded that the Pan American’s requested mark was too similar to Korea Ginseng’s registered mark. The marks were virtually identical. The goods were complementary and travelled in the same trade channels. As a result, there was a strong likelihood of confusion. Thus, the TTAB confirmed rejection of Pan American’s application for the G SHOT mark under 15 U.S.C. 1052(d).
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