Martell & Co. (S.A.)v.Tequila Cuervo La Rojena, S.A. de C.V.

Trademark Trial and Appeal Board

Mar 24, 2009

No. 91177477 (T.T.A.B. Mar. 24, 2009)

Mailed:
March 24, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Martell & Co. (S.A.)

v.

Tequila Cuervo La Rojena, S.A. de C.V.
_____

Opposition No. 91177477
to application Serial No. 78589705
filed on March 17, 2005
_____

H. John Campaign of Graham, Campaign P.C. for Martell & Co.
(S.A.)

Lawrence E. Abelman and Marie-Anne Mastrovito of Abelman,
Frayne & Schwab for Tequila Cuervo la Rojena, S.A. de C.V.
______

Before Seeherman, Walters and Bucher, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Martell & Co. (S.A.) has opposed the application of
Tequila Cuervo La Rojena, S.A. de C.V. to register JOSE
CUERVO BLACK MEDALLION in standard character form, with the
word “BLACK” disclaimed, for tequila.1 As grounds for

1 Application Serial No. 78589705, filed March 17, 2005, based
on Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b) (intent-
to-use).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91177477
2
opposition, opposer has alleged that it is the prior user of
the mark MEDAILLON for brandy and owns a registration for
this mark; that it has used the mark in commerce since 1967,
and this use has invested opposer’s mark with a high degree
of distinctiveness; that the English translation of
opposer’s mark is “medallion”; that applicant’s use of its
mark is likely to cause confusion or reverse confusion with
opposer’s mark; that opposer formerly used and registered
the mark MARTELL V.S.O.P. MEDAILLON as evidenced by
cancelled Registration No. 1167575, and this lends credence
to a likelihood that consumers will believe that applicant’s
mark is used to identify another product from opposer or
that opposer’s goods emanate from applicant; that “upon
information and belief, in an effort to avoid a likelihood
of confusion, opposer and applicant have signed a Worldwide
Agreement whereby applicant has undertaken to use and
register its applied for mark only in a special
representation and not as a word mark” ¶14; and that
“applicant’s word mark herein appears to breach the
aforesaid Agreement and, therefore, it is submitted that
applicant has unclean hands and is acting in bad faith in
total disregard of the public’s interest and opposer’s prior
rights” ¶15.
Opposition No. 91177477
3
In its answer applicant admitted that there is an
agreement between the parties but otherwise denied all the
salient allegations in the notice of opposition.
The Record
By operation of the Trademark Rules, the record includes the
pleadings and the file of the opposed application.
Petitioner submitted its notice of reliance eleven days
after its testimony period closed, with a motion that the
Board accept the late-filed submission.2 Because applicant
did not oppose the motion, the Board treated the motion as
conceded, and accepted the notice of reliance. We note that
opposer submitted with its notice of reliance a copy of the
agreement referenced in its pleading. Although this
document normally could not be made of record by notice of
reliance, since it is neither a printed publication nor an
official record (see Trademark Rule 2.122(e)), applicant
treated this document, and indeed, all of the submissions
that were included in the notice of reliance, as being of
record. See applicant’s brief, p. 1. Thus, the record
includes opposer’s Registration No. 1593338 for MEDAILLON
for brandy,3 the 2005 agreement between the parties, and

2 Opposer submitted duplicate copies of all the submissions in
its notice of reliance. This was unnecessary and is frowned upon
by the Board.
3 Issued April 24, 1990, renewed. Interestingly, the domestic
representative and attorney listed in this registration is the
attorney representing applicant in this proceeding.

Opposition No. 91177477
4
applicant’s responses to opposer’s discovery, all submitted
by opposer with its notice of reliance. The record also
includes the documents submitted by applicant under notice
of reliance pursuant to Trademark Rule 2.122(e) (printed
publications), consisting of dictionary definitions and
numerous news articles referencing the awarding of medals
for alcoholic beverages. Applicant also submitted with its
notice of reliance third-party registrations for marks
containing the word MEDAL or MEDALLION or a foreign word
having the same meaning. These registrations appear to be
taken from a private search company’s search report, rather
than from the USPTO’s database, and therefore would not be
acceptable as official records under Trademark Rule
2.122(e). However, opposer submitted what it titled
“opposer’s rebuttal testimony,” which contained no testimony
but was merely an argument by opposer’s attorney as to the
probative value or relevance of the third-party
registrations submitted by applicant, but not their
admissibility under a notice of reliance. Accordingly, we
deem these registrations to be of record.4 We also note
that in its reply brief opposer listed the mark and

4 Opposer never reiterated any objection to the registrations in
its brief, and therefore any relevancy objection must be deemed
to be waived. In any event, the third-party registrations are
relevant to the scope of protection to be accorded opposer’s
mark, since even though the registrations may not be for or
include the word “medallion,” they do include the English or
Opposition No. 91177477
5
registration number of certain third-party registrations.
These registrations were never made of record, and therefore
opposer’s reference to them has not been considered. See In
re Duofold Inc., 184 USPQ 638 (TTAB 1974) (the Board does
not take judicial notice of registrations that reside in the
Patent and Trademark Office).
The proceeding has been fully briefed. Opposer’s
request that we accept the corrected copy of its reply
brief, filed five days after receipt of its original reply
brief, is granted.
The Issues
We must first address what issues are before us in this
proceeding. In its main brief opposer characterized the
“Issue Presented” as:
Whether use of Applicant’s word mark
“JOSE CUERVO BLACK MEDALLION” in
standard character format, separate and
apart from the label, infringes
Opposer’s word mark “MEDAILLION” [sic]
where the parties have agreed, in
effect, that Applicant’s use of the
words “BLACK MEDALLION” infringes
opposer’s word mark “MEDAILLION,” [sic]
but Applicant’s use of “JOSE CUERVO
BLACK MEDALLION” in special lettering
with a label design does not infringe
opposer’s word mark.”

Brief, p. 1. Applicant lists, as the “Issues Presented:

Applicants submits that the sole issue
in this proceeding should be whether the
Applicant’s Mark JOSE CUERVO BLACK

foreign words for “medal,” and a “medallion,” as discussed infra,
is a large medal.
Opposition No. 91177477
6
MEDALLION in connection with tequila is
confusingly similar to Opposer’s Mark
MEDAILLION [sic] for brandy. In
Opposer’s recitation of the “Issue
Presented” Opposer suggests that “the
parties have agreed, in effect, that
Applicant’s use of the words BLACK
MEDALLION infringes Opposer’s word mark
MEDAILLION.” [sic] Applicant does not
agree and submits that this Agreement
has no bearing on the issue of
likelihood of confusion herein and
contains no admission of likelihood of
confusion of any kind. Nevertheless, as
this is apparently a point of dispute, a
secondary issue is whether or not the
Agreement between the parties precludes
Applicant from filing for the word mark
JOSE CUERVO BLACK MEDALLION.

Brief, p. 2.
Despite opposer’s characterizing it as “infringement,”
one of the grounds for this opposition is likelihood of
confusion under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d). However, as pleaded in the notice of opposition,
it is not clear what ground opposer seeks to assert by its
allegations regarding applicant’s breach of the parties’
agreement; the allegation in paragraph 15 refers to “unclean
hands” and “bad faith,” which are normally equitable
defenses to an action, rather than grounds for bringing an
action. Further, although applicant states in its “Issues
Presented” that a secondary issue is whether the agreement
precludes applicant from filing the application for the
subject mark, applicant also states that the sole issue is
likelihood of confusion. Thus, it appears that applicant
Opposition No. 91177477
7
has discussed the “secondary” issue only in case the Board
should consider it as a ground in this proceeding.
Although an opposer may assert as a ground that an
applicant who is contractually prohibited from using a mark
does not have the right to use the mark in commerce as set
forth in the declaration of the application, we find that
opposer did not assert such a ground in the present
proceeding, and that such a ground was not tried. On the
contrary, opposer has stated quite clearly that “opposer is
not asking the Board to interpret the agreement, but merely
to take it for its evidentiary value, that by the agreement
the issues in this opposition proceeding have already been
decided by the parties themselves.” Brief, p. 10. Further,
the agreement itself is clear that it is governed by the
laws of France. ¶5. Obviously, if the Board does not
interpret the agreement, it cannot determine whether
applicant was prohibited by contract from filing the present
application. Accordingly, we do not treat any issues
regarding the agreement as setting forth an additional
ground for opposition. Our consideration of the agreement
must therefore fall under the du Pont factor of market
interface between the parties.
Opposer also appears to try to raise an additional
ground in its reply brief, asserting that applicant does not
have a bona fide intent to use the mark in the form set
Opposition No. 91177477
8
forth in its application. This issue was not pleaded or
tried, and it has been given no consideration.
Facts
The facts that have been presented by the parties
during the testimony periods are very limited; only opposer
submitted evidence that can be said to provide factual
information regarding opposer’s activities or applicant’s
activities, to wit: Opposer is the owner of a trademark
registration for MEDAILLON for brandy; the parties entered
into a worldwide agreement in 2005, which is applicable to
and enforceable in the United States; and applicant owns a
pending application, Serial No. 78803080, for JOSE CUERVO
BLACK MEDALLION and label design for tequila. The evidence
submitted by applicant relates only to the strength of
opposer’s mark, and not to opposer or applicant or their
activities.
However, the parties make “factual” statements in their
briefs. Although there is no evidentiary support for these
statements, to the extent that both parties have made the
same statement, we treat them as stipulated facts,
specifically, that there is an agreement between the parties
that was entered following opposer’s objection to
applicant’s European Community trademark application for the
mark BLACK MEDALLION.
Standing
Opposition No. 91177477
9
In view of opposer’s ownership of a registration for
the mark MEDAILLON, it has established that it is not a mere
intermeddler and that it has standing. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir.
2000); Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185 (CCPA 1982).
Priority
Because opposer owns a registration for MEDAILLON for
brandy, priority is not in issue. King Candy Company v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
Likelihood of confusion
Our determination of this issue is based on an analysis
of all of the probative facts in evidence that are relevant
to the factors set forth in In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In
re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003).
Because the primary evidence submitted by opposer in
this proceeding, and the focus of much of the parties’
argument, is the agreement between the parties, we turn
first to this evidence and the factor of market interface.
As recited in the agreement, applicant sought to register a
European Community trademark for BLACK MEDALLION for “non-
alcoholic cocktail mixes for mixing with alcoholic
Opposition No. 91177477
10
beverages; non-alcoholic beverages, syrups, and powder for
making non-alcoholic beverages; alcoholic beverages;
alcoholic cocktail mixes; tequila.” The agreement states
that opposer is the owner of a Community trademark
application for MEDAILLON for alcoholic beverages excerpt
beers, and also owns registrations of this trademark and of
trademarks including this word in all the countries of the
European Community. The agreement provided that applicant
would withdraw its application for BLACK MEDALLION, and
would not use separately the word MEDALLION or its
translation in its advertisements and in commerce. It also
provided that applicant was authorized to register and use
for tequila the trademark JOSE CUERVO BLACK MEDALLION in a
label design that is the same as the mark shown in
applicant’s co-pending application Serial No. 78803080. In
return, opposer stated that it accepts the registration and
use of the JOSE CUERVO BLACK MEDALLION label design, and
that it would derive no rights from the registration and use
of its MEDAILLON trademark against the registration and use
by applicant of its label design mark.
This document shows that the parties agree to coexist
with respect to opposer’s mark MEDAILLON and applicant’s
mark JOSE CUERVO BLACK MEDALLION and label design. The
agreement is silent as to applicant’s registration and use
of JOSE CUERVO BLACK MEDALLION in standard character format,
Opposition No. 91177477
11
which is the mark shown in the subject application. Because
the context for the agreement was applicant’s seeking
registration for BLACK MEDALLION per se, we cannot view the
agreement as either specifically allowing applicant to
register its mark in the standard character form for which
it seeks registration, or as prohibiting applicant from
doing so. Accordingly, in the likelihood of confusion
analysis we treat this du Pont factor as neutral.
The next factor we consider is the strength of
opposer’s mark. As noted, opposer has not submitted any
evidence about its use or advertising of its mark, so there
is no basis for us to conclude that it is a strong mark. On
the other hand, applicant has submitted evidence in the form
of third-party registrations and newspaper articles that
indicate that MEDAILLON has a significance in the alcoholic
beverage industry. Opposer’s mark MEDAILLON is the French
word for “medallion.” See opposer’s brief, p. 7 “Opposer’s
word mark MEDAILLON (the French word for ‘Medallion’)” and
applicant’s brief, p. 5; see also the definition of
“medallion” in The American Heritage Dictionary of the
English Language, 4th ed. © 2000, stating that the word
comes from the French word “medaillon.”5 “Medallion” is

5 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).

Opposition No. 91177477
12
also defined as “a large medal.” Webster’s New Universal
Unabridged Dictionary, © 1989; Random House Webster’s
Unabridged Dictionary, 2d ed. © 2001.
The third-party registrations include SANTA RITA
MEDALLA REAL (translated as “Santa Rita Royal Medallion”)
for wine,6 and MEDALLA (translated as “Medal”) for beer,7 as
well as numerous “label” marks in which the word “Medal” or
a foreign equivalent is used in a subordinate manner to
indicate that the product has won medals, e.g., Registration
No. 0832757 for scotch whisky, shown below, in which the
words GOLD MEDAL appear in relatively small letters below
medal designs, indicating that the product twice won gold
medals:

6 Registration No. 2776392.
7 Registration No. 1620280.
Opposition No. 91177477
13

and Registration No. 0718040 for gin, shown below, in which
SCHLICHTE is the dominant term but in which representations
of medals, and the phrase “World-Exhibition Brussel 1910
Gold Medal” appear:
Opposition No. 91177477
14
Further, the newspaper articles report numerous instances of
medals being awarded for various alcoholic beverages. See,
e.g.,
Both wineries have won gold medals in
past state competitions as well as
national and international competitions.
“St. Charles County Business Record”
(MO), August 13, 2007

Chateau Thomas also appears to have won
more medals than any other winery in the
contest, with 30.
“Fort Wayne Journal Gazette” (IN),
August 11, 2007

In March it was awarded the Double Gold
Medal for Best Vodka in the 2008 San
Francisco World Spirits Competition.
“Gazette” (Colorado Springs, CO), May 1,
2008
Opposition No. 91177477
15

Bob and Laura Hill’s 1979 Loujan Bas
Armagnac received a double gold medal at
the annual World Sprits Competition in
San Francisco last month.
Double gold medals, or “best in show,”
are given only when the judges vote
unanimously for one brand. Four
categories are judged: best white
spirits, best whiskey, best liquor and
best brandy, which includes all cognacs
as well.
“The Denver Post,” April 22, 2008

I’ve been involved in a variety of
spirits and wine judgings that use
sharply different methods for awarding
medals.
“Albany Times Union,” April 17, 2008

Twenty-six entries earned gold medals in
the first Spirits of Mexico Tasting
Competition. The event, held in San
Diego, drew 61 pure agaves - 55 tequilas
and six mezcals.
“Albany Times Union,” October 4, 2007

A record 365 Michigan wines were entered
in the 2007 Michigan Wine and Spirits
Competition in East Lansing on Aug. 7,
and 36 state wineries won a total of 227
medals.
“Ann Arbor News,” October 3, 2007.

Although the third-party registrations are not evidence
that the marks are in use, and the newspaper articles do not
show trademark use of the word “medal,” it is clear from the
foregoing that “medals” have a laudatory significance in the
alcoholic beverage field. Because “medallion” is a type of
medal, opposer’s mark MEDAILLON has a laudatory suggestive
significance of a high quality or award-winning brandy.
Further, as used in applicant’s mark, the word MEDALLION
Opposition No. 91177477
16
also has a laudatory suggestion. During the course of
prosecution the examining attorney required that applicant
disclaim the word BLACK in its mark because “the word black
is used descriptively within the alcoholic beverage industry
to indicate a type, quality/grade or age of tequila.”
Office action mailed October 18, 2005. Because of the
laudatory descriptive meaning of BLACK and the laudatory
suggestive meaning of MEDALLION, consumers will view the
name JOSE CUERVO in applicant’s mark as the source-
indicating portion, and consider BLACK MEDALLION as an
indication of the quality of the product. As a result, it
is appropriate for us to give more weight to the name JOSE
CUERVO in applicant’s mark when considering the similarity
of the marks. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985) (there is nothing
improper in stating that, for rational reasons, more or less
weight has been given to a particular feature of a mark,
provided the ultimate conclusion rests on a consideration of
the marks in their entireties).
Thus, when the marks are compared in their entireties,
because of the dominant presence of JOSE CUERVO in
applicant’s mark, the marks are different in appearance,
pronunciation, connotation and commercial impression. In
reaching this conclusion we have taken into consideration
opposer’s argument, and the cases cited in support of that
Opposition No. 91177477
17
argument, that “when one incorporates the entire registered
mark of another into a composite mark, inclusion in the
composite mark of a significant, non-suggestive element will
not necessarily preclude a likelihood of confusion.” Brief,
p. 6. We agree with opposer that applicant’s mark
essentially incorporates the entirety of opposer’s mark; the
words MEDAILLON and MEDALLION are extremely similar in
appearance, and the very slight different in spelling
between MEDAILLON and MEDALLION is not likely to be noted by
many purchasers. Further, purchasers not familiar with the
French language are likely to pronounce the two words the
same, while those who do know French will view the words as
equivalents, since MEDALLION is not only a direct
translation of MEDAILLON, but also is similar in appearance.
Thus, in our analysis we have considered these elements as
being the same.
However, it is not a rule that confusion is likely
whenever a mark incorporates the registered mark of another.
“[T]here is no arbitrary rule of law that if two product
marks are confusingly similar, likelihood of confusion is
not removed by use of a company or housemark in association
with the product mark.” New England Fish Company v. The
Hervin Company, 511 F.2d 562, 184 USPQ 817, 819 (CCPA 1975)
(BLUE MOUNTAIN KITTY O's and KITTY not similar). The effect
Opposition No. 91177477
18
of the addition of a house mark depends on the
circumstances:
In cases involving the addition of a
housemark to one of two otherwise
confusingly similar marks, it has been
held that such does not serve to avoid
likelihood of confusion. Rather, such
addition may actually be an aggravation
of the likelihood of confusion as
opposed to an aid in distinguishing the
marks so as to avoid source confusion.
On the other hand, where there are some
recognizable differences in the asserted
conflicting product marks or the product
marks in question are highly suggestive
or merely descriptive or play upon
commonly used or registered terms, the
addition of a housemark and/or other
material to the assertedly conflicting
product mark has been determined
sufficient to render the marks as a
whole sufficiently distinguishable.

In re Christian Dior, S.A., 225 USPQ 533, 536 (TTAB 1985)
(citations omitted).
In the present case, the “product mark,” i.e., the word
MEDAILLON or MEDALLION, is, as has been discussed, a
laudatory suggestive term.8 Therefore, we consider this
situation to be similar to that in Knight Textile Corp. v.
Jones Investment Co., 75 USPQ2d 1313, 1316 (TTAB 2005), in
which no likelihood of confusion was found between the
opposer’s mark ESSENTIALS and the applicant’s mark NORTON
McNAUGHTON ESSENTIALS despite their use on identical goods.

8 The additional word BLACK in applicant’s mark is, as we
have discussed, descriptive of a grade or quality of the
product. Therefore, in reaching our decision herein, we
have not treated it as being a distinguishing element.
Opposition No. 91177477
19
“[W]e find that ESSENTIALS is a highly suggestive term as
applied to the articles of clothing identified in
applicant's application and in opposer's registration,
respectively, and that, under our case law, applicant's
addition of its house mark therefore suffices to distinguish
the two marks when they are viewed in their entireties.”
We, too, find that the addition of JOSE CUERVO in
applicant’s mark is sufficient to distinguish applicant’s
mark from opposer’s, and that the du Pont factor of the
similarity of the marks favors applicant.
Moreover, opposer has presented no evidence as to the
relatedness of the goods. Brandy and tequila are both
alcoholic beverages, and therefore we may assume that they
are sold in the same channels of trade, but opposer has not
submitted any evidence to show that these goods are related.
For example, there is no evidence that both types of goods
are made by the same company, or that they are sold under
the same mark, or that they are ingredients for particular
cocktails, such that we could consider them complementary
products that would be bought and used together. They can,
of course, both be described generally as “alcoholic
beverages.” “It is, however, not enough to find one term
that may generically describe the goods.” General Electric
Company v. Graham Magnetics Incorporated, 197 USPQ 690, 694
(TTAB 1977); see also, In re W.W. Henry Co., 82 USPQ2d 1213
Opposition No. 91177477
20
(TTAB 2007). There is no per se rule that all alcoholic
beverages are related, and because opposer has failed to
present evidence that the specific alcoholic beverages,
brandy and tequila, are related, this du Pont factor, too,
favors applicant.
With respect to the factor of the conditions under
which and buyers to whom sales are made, i.e., impulse vs.
careful, sophisticated purchasers, opposer states only that
the “purchasers are the same.” Brief, p. 4. Applicant
states that tequila and brandy and relatively high-priced
beverages that are purchased with some degree of thought,
and that “the source of products of this nature is important
to consumers as the quality of these types of goods can vary
greatly based on the manufacturer.” Brief, p. 10. However,
neither opposer nor applicant has submitted any evidence in
support of their assertions. Accordingly, we treat this du
Pont factor as neutral.
Opposer has acknowledged that there is no evidence of
actual confusion, but since there is no evidence that
applicant has used its mark at all in the United States,
this du Pont factor is neutral.
Aside from making one or two word comments with respect
to the remaining du Pont factors, opposer has not made any
arguments about them, nor has it presented any evidence
regarding them. And applicant has not discussed them in its
Opposition No. 91177477
21
brief. Therefore, we treat these factors as neutral. We
also give no weight to opposer’s argument that applicant
acted in bad faith in adopting its mark. This argument is
based on opposer’s contention that applicant violated the
2005 agreement between the parties by filing the subject
application for the mark in standard character format.
However, as we have previously discussed, opposer has stated
that it is not asking the Board to interpret the agreement,
but only consider it as evidence that the parties have
already decided the issues in this opposition. Because the
agreement on its face does not discuss the applied-for mark,
we cannot view the issue before us as having already been
determined by the parties, and therefore opposer has not
shown that applicant acted in bad faith in filing the
application.
In conclusion, opposer has failed to meet its burden in
establishing that applicant’s mark JOSE CUERVO BLACK
MEDALLION in standard characters for tequila is likely to
cause confusion with MEDAILLON for brandy.
Decision: The opposition is dismissed.