The St. Julian Wine company headquartered in Paw Paw, Michigan, was recently denied registration of its REAL MICHIGAN trademark due to several certification marks that certify apples grown in Michigan. Certification marks are any word, name, symbol, device, or combination that is used to certify a particular quality or feature of the goods or services.
The REAL MICHIGAN Application
Back in May of 2018, the St. Julian Wine company filed an in-use trademark application for wine, hard cider, and online retail stores featuring hard cider. However, the trademark examining attorney later issued an Office Action refusing its registration for being confusingly similar to current registrations. 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. 15 U.S.C. § 1052(d).
In the Office Action, the Office cites several certification mark registrations owned by the Michigan Apple Committee to support the rejection under the Trademark Act Section 2(d). In particular, the Michigan Apple Committee marks are “used by persons authorized by certifier [to] certif[y] that the goods bearing the mark consist of apples grown in the State of Michigan. After unsuccessfully arguing against the refusal in the Office Action, the St. Julian Wine company then appealed the Office’s decision to the Trademark Trial and Appeal Board.
The Trademark Trial and Appeal Board’s (TTAB) Decision
The TTAB focused its analysis on two key considerations: (1) the similarities between the marks, and (2) the similarities between the goods.
Because of the uniqueness of certification marks, the Board based its analysis on the goods of an authorized user, rather than the “goods” of the Michigan Apple Committee. In this particular case, the goods were found to be apples grown within the State of Michigan. The Board reasons that “[s]ince apples are a key ingredient in the production of hard cider, Applicant’s hard cider may be made from [the Michigan Apple Committee’s] apples certified to have been grown in the state of Michigan.” Based on this reasoning, the Board found that “a commercial relationship between Applicant’s ‘hard cider’ and [the Michigan Apple Committee’s] goods are related,” thus weighing in favor of finding that a likelihood of confusion exists.
Next, the Board turns to analyze the marks themselves to determine whether the marks are sufficiently similar in terms of the commercial impression given to consumers. This determination is based on the marks in their entireties and not simply a part of the marks. While the St. Julian Wine company argued that the only common element is the geographic designation “Michigan,” the Board disagreed. Ultimately, the Board found that both the St. Julian Wine companies and the Michigan Apple Committee’s marks have the same “connotation and commercial impression of designating goods from the State of Michigan.
In conclusion, while St. Julian Wine company’s registration for REAM MICHIGAN was ultimately refused registration in class 033 for wine and hard cider, it was ultimately able to register in class 035 for its online retail store.