When we write about non-traditional trademark enforcement here on DuetsBlog, we almost always are referring to the protection of non-traditional marks like product configurations, product containers, product packaging, color marks, scent marks, tactile marks, and other non-verbal indications of source for a product or service. But, today we’re adding a little twist to our normal discussion of non-traditional trademark enforcement.
Last month, the PATRÓN tequila brand poured a non-traditional trademark enforcement action on the CASA NOBLE tequila brand, alleging likelihood of confusion and dilution of PATRÓN’s federally-registered and distinctive bottle design trademark. CASA NOBLE’s answer is due today.
Several aspects of this enforcement action are non-traditional, beyond the fact that PATRÓN seeks to enforce rights in its bottle design, i.e., a distinctive product container and a form of product packaging, that is by definition, a classic non-traditional trademark.
Given the variety of assertions mixed in by PATRÓN that go well beyond whether CASA NOBLE has the right to register a particular bottle design (apparently used in commerce since 2008), you’d think the action might have been filed in federal district court with claims of trademark infringement and dilution, unfair competition and passing off, instead of simply with the USPTO. Something tells me this action eventually will spill into federal court too.
PATRÓN is not only agitated and stirred by the shape of CASA NOBLE’s bottle, but it seeks to label CASA NOBLE with a questionable motive and intent, blending in allegations about trade dress, copying, passing off, use of a similar advertising slogan, and even unusual allegations about how CASA NOBLE’s parent hired PATRÓN’s previous advertising agency (Cramer-Krasselt), “because of its close familiarity with all aspects of the advertising and promotion of the PATRÓN brand” and who “had been charged with promoting the PATRÓN brand” until August 2014:
“Thus, by copying the famous PATRÓN Bottle Design Mark; adopting the slogan ‘Perfection,’ which is very similar to Patrón’s ‘Simply Perfect’ slogan and its senior use of ‘Perfection’; adopting the word ‘crystal’ in the face of Patrón’s senior use of that word; and hiring the same advertising agency that Patrón formerly used to advertise and promote its tequila, Applicant has engaged in a deliberate and willful strategy to pass off its tequila as being sponsored by, connected to, or associated with Patrón and the famous PATRÓN Tequila brand.”
While I suppose much of this potentially could be generally relevant to the question of intent, in the likelihood of confusion analysis, it seems to go well beyond the basic question of whether Casa Noble’s application to federally register its bottle design on the right below is too close to PATRÓN’s federally-registered bottle design mark on the left:
Of course, strength and context will be important in answering that question; provided the samples of alternative and competing tequila bottle designs submitted by PATRÓN are truly representative of the range of designs available in the marketplace, CASA NOBLE will have some serious explaining to do when it comes to its own design choices:
Nevertheless, if I were in CASA NOBLE’s camp, I’d be anxious to explore any design changes to the PATRÓN bottle over time — is it just me, or do you too have questions about whether the current SILVER PATRÓN bottle actually shows use of the mark as registered and appearing in the above drawing?
I’d also be pretty interested in whether PATRÓN is aware of any instances of actual confusion over the past seven years, presumably if any existed, they’d be referenced in the opposition.
And, if the CASA NOBLE first use date of 2008 is accurate, doesn’t that mean the allegedly infringing bottle was created at least six years before PATRÓN’s previous advertising agency was hired by CASA NOBLE?
No doubt, this will be an interesting one to sip on from time to time, any predictions on how long it stays in the USPTO?