Champagne Louis Roederer, S.A. v. Delicato Vineyards
148 F.3d 1373, 1998 WL 397047 (1998)
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Rule of Law:
In a trademark likelihood of confusion analysis, the dissimilarity of the marks in appearance, sound, significance, and overall commercial impression can be a single, dispositive factor that outweighs other factors suggesting confusion, such as the identity of goods and the strength of the senior mark.
Facts:
- Champagne Louis Roederer, S.A. ('Roederer') produces and sells champagne under its registered word mark 'CRISTAL' and a design mark for 'CRISTAL CHAMPAGNE'.
- Roederer's 'CRISTAL' mark has become a very strong and famous indicator of origin for its champagne.
- Delicato Vineyards' ('Delicato') predecessor sought to register the word-mark 'CRYSTAL CREEK' for wine.
- Both Roederer's champagne and Delicato's proposed wine are the same class of goods.
- The products are sold through the same channels of trade to the same or similar customers.
Procedural Posture:
- Delicato Vineyards' predecessor in interest filed an application with the U.S. Patent and Trademark Office to register the word-mark 'CRYSTAL CREEK' for wine.
- Champagne Louis Roederer, S.A. ('Roederer') filed an opposition to the registration in a proceeding before the Trademark Trial and Appeal Board (the 'Board').
- The Board dismissed Roederer's opposition, concluding that Delicato's mark was not confusingly similar to Roederer's marks.
- Roederer appealed the Board's decision to the U.S. Court of Appeals for the Federal Circuit. Roederer is the appellant; Delicato is the appellee.
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Issue:
Does the mark 'CRYSTAL CREEK' for wine create a likelihood of confusion with the senior mark 'CRISTAL' for champagne, where the Trademark Trial and Appeal Board found the dissimilarity of the marks to be dispositive despite other factors favoring confusion?
Opinions:
Majority - Per Curiam
No, the mark 'CRYSTAL CREEK' does not create a likelihood of confusion with 'CRISTAL'. A single DuPont factor can be dispositive in a likelihood of confusion analysis, and in this case, the Board did not err in concluding that the dissimilarity of the marks was the dispositive factor. The court found no reversible error in the Board's conclusion that the marks were dissimilar in appearance, sound, significance, and overall commercial impression. Specifically, the Board's finding that 'CRISTAL' suggests the clarity of the wine or the bottle, while 'CRYSTAL CREEK' evokes an image of a clear stream, was not clearly erroneous. Therefore, this difference in commercial impression was sufficient to outweigh other factors favoring confusion, such as the identity of the goods and the strength of Roederer's mark.
Concurring - Michel, Circuit Judge
No, while the ultimate conclusion is correct, the Board's opinion is concerning due to its lack of analysis. I concur in the judgment only because the opposer, Roederer, bore the burden of proof and failed to meet it. The Board's opinion failed to explain why the dissimilarity of the marks outweighed four significant factors favoring Roederer: the strength of the 'CRISTAL' mark and the identity of the goods, customers, and channels of trade. An administrative body must engage in reasoned decision-making and explain its underlying theory to permit meaningful appellate review; simply enumerating factors and leaping to a conclusion is insufficient. Without a synthesis of the conflicting findings, the court is left to guess at the Board's reasoning, which impedes the review function.
Analysis:
This decision solidifies the principle that a single DuPont factor, particularly the dissimilarity of marks, can be legally sufficient to dispose of a likelihood of confusion claim, even against a famous mark on identical goods. It underscores the high degree of deference appellate courts give to the Trademark Trial and Appeal Board's factual findings, reviewing them only for clear error. However, the influential concurrence from Judge Michel serves as a significant piece of judicial guidance, cautioning the Board that its decisions must contain sufficient analysis and reasoning, especially when factors conflict, to allow for meaningful appellate review. This suggests that future Board opinions with similar 'analytical opacity' might face remands rather than affirmance.
