Trademark Case: The fame of a mark is determined by the class of customers and potential customers rather than the entire consuming public

Palm Bay v. Veuve Clicquot Ponsardin (Fed. Cir. 2005)

By John Smith

Trademark applicant Palm Bay Imports appealed a decision sustaining an opposition (against its mark “Veuve Royale”) from the United States Trademark Trial and Appeal Board (TTAB).  Palm Bay maintained that there was no likelihood of confusion with opposer Veuve Clicquot Ponsardin Maison Fondee en 1772’s marks “Veuve Clicquot Ponsardin,” “Veuve Clicquot,” and “The Widow.”

The Federal Circuit indicated that the term common to the marks in question, “veuve,” is distinctive, and that the same distinctive term, (especially when it appears as the first word) in both parties’ marks enhances the likelihood of confusion. Likewise, when a term common to two or more separate marks is generic or non-distinctive, there is less likelihood of confusion.

The Court also stated that evidence available only to a trade, such as a guide for distributors, does not show the extent to which consumers encounter a mark in the marketplace. Rather, such evidence only shows that the consuming public could potentially be aware of another use of a mark term. In the same vein, the Court maintained that the question of fame related to the class of consumers or potential consumers of the product, as opposed to the entire consuming public.

The Court found that the Board had made conflicting findings with respect to the mark “The Widow;” the Board had found that many Americans speak French and therefore would translate “veuve” into “widow,” (under the doctrine of foreign equivalents) but later also found that most Americans would not translate “veuve” into “widow.”

The Court affirmed the Board’s finding of a likelihood of confusion with respect to the marks “Veuve Clicquot Ponsardin” and “Veuve Clicquot,” but reversed the Board’s finding of a likelihood of confusion with respect to the mark “The Widow.” The refusal to register Palm Bay’s “Veuve Royale” mark was affirmed.

John Smith is an attorney at MBHB LLP in Chicago.  He earned both his JD and PhD (inorganic chemistry) from Vanderbilt University. He has co-authored numerous articles and served as a faculty member in the Chemistry Department of Lipscomb University in Nashville, Tennessee.

NOTES:

  • For more info on the case and some nice pictures, see John Welch’s TTABlog.