Certification mark blocks trademark from being registered. IN RE ST. JULIAN WINE

Most consumers are familiar with the concept of trademarks. A trademark is something that manufacturers use to distinguish their products from a competitor’s products. Generally, consumers are not aware of the trademark’s close relative, the certification mark. Certification marks can be registered just like trademarks and play an important roll in protecting consumers from inferior quality products.

A certification mark is a special creature created for a purpose uniquely different from that of an ordinary service mark or trademark. Certification marks indicate that goods or services provided by persons other than the mark owner adhere to specified standards set by the mark owner, whereas trademarks indicate the source of the goods or services.

The major distinctions between certification marks and trademarks are: (1) a certification mark is not used by its owner but rather by authorized users, and (2) a certification mark does not indicate commercial source or distinguish the goods or services of one person from those of another person but rather indicates that the goods or services of authorized users are certified as to a particular aspect of the goods or services. There are differences between certification marks and trademarks which potentially impact a likelihood of confusion analysis between such marks.

Trademark Act Section 2(d) prohibits registration of a mark that so resembles a registered mark as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, mistake, or deception. When the USPTO is presented with a trademark application that is likely to be confused with an already registered trademark all of the probative evidence of record bearing on a likelihood of confusion will be analyzed. The USPTO will apply the DuPont factors to the evidence to determine whether a likelihood of confusion exists. In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods. This same process applies in the case of certification marks.

In re St. Julian Wine Company, Inc., Serial No. 87834973 (TTAB 2020) is a case which illustrates when a certification mark can conflict with a trademark.

Applicant in this case wanted to register their trademark “REAL MICHIGAN”. Applicant filed a trademark application for a standard character mark for “wine; hard cider” in International Class 33 and “retail store services featuring wine and hard cider; online store services featuring wine and hard cider” in International Class 35.

The USPTO refused to register the trademark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the grounds that Applicant’s applied-for mark so resembles the registered geographic certification mark owned by the Michigan Apple Committee that it is likely to cause confusion or mistake or to deceive. The certification mark is licensed to apple growers in Michigan and is reproduced above. Applicant appealed the examiner’s refusal to the Trademark Trial and Appeal Board.

The TTAB reviewed the similarities between the marks and the similarities between the goods in detail.

With respect to the goods: Applicant argued that the certification mark was for a fruit and Applicant sold a drink so there was no similarity between the goods. The TTAB found that hard cider is made from fermented apples so it is likely that consumers would be confuse the two marks. Because commercial relationship existed between Applicant’s “hard cider” and Registrant’s identified goods and that the goods are related, this DuPont factor weighed in favor of finding a likelihood of confusion.

With respect to the similarities of the marks: The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties. The TTAB found that Applicant’s mark REAL MICHIGAN connotes and projects a commercial impression of “real” or “genuine” goods originating in the state of Michigan. Because both marks create the impression that the goods originate from the state of Michigan, this Dupont factor weighed in favor of finding a likelihood of confusion.

The TTAB ultimately affirmed the Section 2(d) refusal as to the International Class 33 goods. The application was allowed to proceed to publication for opposition as to the International Class 35 services.

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