-Martha Engel, Attorney
Pisco is a light-colored brandy traditionally produced in portions of Peru and Chile. One brand that offers this product in the United States is PISCO PORTÓN (the latter word meaning “gate” in Spanish).
Pisco Porton has a number of registrations including PORTÓN, PISCO PORTON, and PISCO PORTON THE AUTHENTIC PERUVIAN PISCO.
The owners of PATRON challenged these registrations, first petitioning to cancel PORTÓN in 2014. The owners surprisingly didn’t attempt to cancel PISCO PORTON and PISCO PORTON THE AUTHENTIC PERUVIAN PISCO at the same time, but waited until August 2016 to petition to cancel these – despite these being registered before PORTÓN.
In deciding to cancel the mark, the TTAB went through the typical analysis of the “likelihood of confusion” factors: the goods “distilled spirits” were identical in both registrations; pisco and tequila are offered in similar retail environments to the same or similar mark; the marks were similar in sight & sound; and the PATRON mark has developed some fame. The decision here to cancel the PORTÓN mark is not surprising, especially to those of us following trends in this industry.
However, the Board’s decision includes a few points that breweries, wineries, and distilleries ought to consider in their brand management. First, the Board did not find that PATRON’s claims were barred by laches based on PATRON’s about 2+ year delay following registration before filing the cancellation proceeding. Companies should be mindful of the potential impact of delay on enforcing a registration against a third party under this theory known as laches. Second, the Board went into a relatively lengthy discussion on the admissibility of an article that included quotes from Pisco Porton’s General Manager and Master Distiller made during an interview in London. He was quoted as saying “sometimes people get PORTÓN confused with PATRON Tequila, which can be a good thing for us” and “[the] names might be similar.” Since these quotes were from an interview in the UK, the Board found them to be not probative because they did not necessarily reflect sentiments about US consumer confusion. However, this is an important point for breweries, wineries, and distilleries – as well as any marketer of any good – to consider the implications of public statements, comments made to journalists, or social media posts that may negatively affect their rights in a particular mark.
Now we will have to see how this decision impacts the protection for the remaining PISCO PORTON registrations. Do you think that the decision will also result in the cancellation of the other PISCO PORTON registrations?