VEUVE CLICQUOT v. VEUVE OLIVIER: TTAB Favours Petitioner as Respondent Defaults in Cancellation Action
In MHCS v Les Grands Chais De France (Cancellation No 92075021, 8 March 2024), the Trademark Trial and Appeal Board (TTAB) has granted a petition for cancellation brought by viticulture giant MHCS against a mark owned by the smaller Les Grand Chais de France. Petitioner MHCS, aided by the relative absence of the respondent from the proceedings, prevailed, as the TTAB determined that the petitioner’s VEUVE CLICQUOT mark is entitled to broad protection based on its commercial strength, in addition to the similarity of the respective marks and their specified goods.
BACKGROUND:
Petitioner MHCS has owned, among others, a registration for VEUVE CLICQUOT (No 2333257) for “champagne” in Class 33 since
2000. In August 2020 the petitioner filed a cancellation action against respondent Les Grand Chais des France’s registration for
VEUVE OLIVIER (No 5046283) for “sparkling wines” in Class 33, which the respondent has owned since 2016.
The petitioner based its cancellation petition on a Section 2(d) likelihood of confusion claim and a dilution claim. The respondent denied the allegations and counterclaimed to cancel the petitioner’s marks on the basis of fraud and abandonment. However, the respondent did not support these claims in subsequent filings. Therefore, the TTAB ultimately dismissed the respondent’s counterclaims.
DECISION:
In determining the petitioner’s likelihood of confusion claim, the TTAB turned to the DuPont factors, from the decision in In re EI DuPont de Nemours & Co (476 F2d 1357, 177 USPQ 563, 567 (CCPA 1973)). In its analysis, the TTAB focused on DuPont factors 2 (nature of the goods and services) and 3 (trade channels) together, then 5 (fame or strength of the prior mark), then 1 (similarity or dissimilarity of the marks), before coming to its decision.
The TTAB reasoned that factor 2 weighed in favour of confusion, finding that the respondent’s goods, “sparkling wines”, encompassed the petitioner’s narrower “champagne” in Class 33. The TTAB determined factor 3 to favour the petitioner as a matter of law, presuming the identical goods to operate within the same channels of trade. For factor 5, the TTAB considered 1) the conceptual strength of the mark itself, and 2) the mark’s commercial strength. The TTAB considered the petitioner’s mark to be inherently distinctive, relying on the registration’s absence of a 2(f) claim and the ‘Veuve ’(‘Widow’ in French) component’s arbitrary relationship to wine.
In determining the commercial strength of the petitioner’s mark, namely the degree to which the public considers a mark to denote a single source, the TTAB examined the extensive record provided by the petitioner to support its assertion that its registration is widely known and deserving of the broadest deference in a likelihood of confusion analysis. The TTAB was convinced by the petitioner’s use of VEUVE-formative marks continuously in US commerce for over 175 years, and VEUVE CLICQUOT specifically since, at least, 1994; however, the TTAB noted that the petitioner provided more evidence for the fame of VEUVE-formative marks as a whole rather than the VEUVE CLICQUOT mark under scrutiny.
Nonetheless, the TTAB found the petitioner’s mark to be stronger rather than weak, and entitled to a broader scope of protection. Factor 5 favored confusion. The TTAB found factor 1 to favour confusion, stating that the dominant ‘Veuve’ component of each mark outweighed the different ‘Clicquot’ and ‘Olivier’ elements, and therefore provided a similar overall commercial impression. In particular, the TTAB noted that consumers would probably not translate the ‘Veuve’ element into the English word ‘widow’ when considering the marks.
For each factor analyzed, the respondent provided no argument.
Therefore, the TTAB granted MHCS’ petition for cancellation, declining to opine on the claim of dilution, and dismissed the respondent’s counterclaims with prejudice for failure to pursue them at trial.
COMMENT:
The decision reaffirms the strength of protection a mark is afforded not only when the mark possesses a great deal of notoriety, but also when the owner elects to carefully support its arguments before the TTAB with extensive evidence.