CHEMIN DES PAPES Not Confusable with CHATEAUNEUF-DU-PAPE CONTROLE for Wine, Says TTAB

In the case of Syndicat Des Proprietaires Viticulteurs De Chateauneuf-Du-Pape v. Pasquier DesVignes, the TTAB determined there to be no likelihood of confusion between the opposer’s registered mark CHATEAUNEUF-DU-PAPE CONTROLE for “wines” and the applicant’s mark CHEMIN DES PAPES for “wines, sparkling wines.”   The Board noted that although there are similarities in the goods, trade channels, and classes of consumers, the first du Pont factor simply outweighed the other factors.   

Though the Board dismissed the opposition with respect to “wines, sparkling wines,” it nonetheless granted the opposition with respect to “distilled spirits and wines.”  In this precedential decision, the Board cited to the case of The Wet Seal, Inc. v. FD Management for the reasoning that “an application will not be deemed void for lack of a bona fide intention to use absent proof of fraud, or proof of a lack of bona fide intention to use the mark on all of the goods identified in the application, not just some of them.”  In following such reasoning, rather than declaring the application void in its entirety, the Board ordered for the goods the applicant conceded to lacking a bona fide intent to use the mark on be stricken from the application.

This decision essentially puts an end to the question of remedies left open in the case of Wet Seal, and the subsequently conflicting decision of Spirits International, B.V. v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis Kooperatifleri Birligi.  In the case of Wet Seal, the Board stated, “we will decide this issue in terms of whether the items, if any, for which opposer has shown applicant’s lack of bona fide intention to use the mark should be deleted from the application.”  However, the opposer failed to prove a lack of bona fide intent, thus resulting in a dismissal of the opposition, and leaving the issue of remedies up in the air.  The Board again examined the issue of bona fide intention to use in the 2011 case of Spirits where it discussed the issue stating, “to the extent that opposer is successful in proving likelihood of confusion or lack of a bona fide intention to use the mark with respect to any of the goods in each class…opposition against the classes in their entirety would be sustained.”