Chateau Angelus S.A., a vineyard spanning eight generations in Saint-Émilion, France, sought to extend to the U.S. its International Registration ("IR") under the Madrid Protocol of ECHO D'ANGÉLUS for "wines" and "alcoholic beverages except beers". The scope of protection for this IR also covers hard ciders, digestive beverages, spirits, and alcoholic extracts and essences ("Non-Wine Goods").
Chateau Lynch-Bages, a centuries-old vineyard in Pauillac, in the Médoc region of France, opposed the U.S. application on two grounds: Lack of a bona fide intent to use the mark in U.S. commerce for all of the goods, and a likelihood of confusion with its registered mark ECHO DE LYNCH BAGES.
Did Applicant establish its bona fide intent to use its mark in U.S. commerce on all of the goods, and were the portions of the respective marks appearing after the primary term ECHO sufficient to avoid a likelihood of confusion?
Many IRs, as well as non-U.S. national trademark application filings, claim broad protection for marks by including coverage for a remarkably long list of goods. However, it is compulsory for a U.S. trademark application with a non-U.S. application (or registration) filing basis to include a declaration of a bona fide intent to use the mark in U.S. commerce, for all of the listed goods. That intent must be supported by objective evidence to show that there is a firm, demonstrable plan to commercialize in the U.S. the specified goods bearing the mark. It must be more than a mere subjective "wish" list. If there is a finding of a lack of such intent as to some but not all of the goods, the goods for which evidence of intent is lacking will be deleted from the U.S. application (or registration).
TTAB Proceeding. The ECHO opposition was first decided by the Trademark Trial and Appeal Board (TTAB). Chateau Lynch-Bages v. Chateau Angelus S.A., Opposition No. 91268431 (T.T.A.B. Sept. 28, 2023).
The TTAB acknowledged that Applicant had sent a letter to Opposer nearly two years prior to the IR extension request, stating that it was "working on the creation of a new cuvée which we will call 'Echo d'Angelus'." Opposer replied that the proposed trademark would constitute an infringement of its ECHO DE LYNCH BAGES mark.
The TTAB held that the parties' exchange of letters reflected the required bona fide intent. Accordingly, the TTAB rejected the opposition on this ground, as to "wines" and "alcoholic beverages except beers." It was also noted Applicant owned four U.S. trademark registrations for wine, which suggested Applicant had the capacity to produce at least one of the goods covered by the application.
However, Applicant's interrogatory answers included a statement that it did not have plans to use its mark in the U.S. on Non-Wine Goods. Therefore, the TTAB sustained the opposition as to Non-Wine Goods.
On appeal to the Court of Appeals for the Federal Circuit (CAFC), these determinations were not challenged.
Likelihood of Confusion
TTAB Proceeding. The TTAB observed that the goods listed in the respective parties' application and registration were in part identical, as both covered "wines." Further, neither the application nor the registration limited the respective trade channels or customers. These facts supported a finding of a likelihood of confusion.
Applicant argued that ECHO was a dilute term, as within Class 33 there were 13 third-party registrations for ECHO- combination marks covering wines or alcoholic beverages (except beers). The TTAB was persuaded that, on balance, these co-existing registrations demonstrated that ECHO is a fairly common term in the field, which weighed against finding that confusion was likely.
In the comparison of the respective marks, the TTAB observed that both marks featured ECHO as primary elements, which is generally important in creating a commercial impression. However, this case involved the unusual situation where each party's mark incorporated their respective "different appearing house marks as part of unitary expressions", with a somewhat weak, common term.
Therefore, the TTAB held that given the source-identifying nature of the respective house marks, and the dissimilarities between the marks, outweighed their similarities. The Board held that the application be allowed to proceed as to "wines" and "alcoholic beverages except beers".
CAFC Proceeding. Opposer appealed to the CAFC. Chateau Lynch-Badges v. Chateau Angelus S.A., Case No. 2024-1197 (Fed. Cir. June 13, 2025).
The TTAB placed great weight on its finding that the respective marks contained dissimilar house marks. But the CAFC noted that neither party had argued the subject marks included house marks.
The term "house mark" refers to a trademark showing broad use in commerce throughout the commercial operations of the trademark owner. The TTAB had based its determination as to this issue on Applicant's four registrations containing the term ANGÉLUS, and on the even more sparse evidence that Opposer's letterhead used LYNCH BAGES.
The CAFC held the house mark finding "flawed" because it was not supported by substantial evidence. However, the CAFC also observed that if such evidence had been produced, the TTAB would have had discretion to consider the prominence of the house marks in its similarity analyses.
Accordingly, the CAFC remanded this case to the TTAB for further proceedings.
Author's Note:
There could be various approaches on the remand of this case. These may include the following:
- Applicant might bolster its position that there was no likelihood of confusion, by introducing new evidence to show broad use of each party's house mark in U.S. commerce, on and in connection with its respective wine products and on its website.
- Applicant also could argue that the marks are not likely to cause confusion because, in totality, they convey different commercial impressions, even aside from the house mark issue.
- Either party might introduce survey evidence, to show whether or not consumers believe that the goods come from a common source.
Take-aways:
Remember that the U.S. requires a mark to be used in U.S. commerce, or at least, there must be a verifiable bona fide intent to make such use (followed by actual use in U.S. commerce, or preparations for such use, beginning in the first few years after U.S. registration issuance, to avoid a successful abandonment claim).
You may sometimes avoid a conflicting pre-existing mark by adding a house mark in combination with your new mark. However, if challenged, it will be necessary to gather substantial evidence of widespread use of the alleged house mark.
Furthermore, the addition of a house mark may not be foolproof. This may apply especially if the matching term in both marks is primary element, and if the pre-existing term is strong in trademark significance.
Trademark clearance search results may provide insight into whether or not it would be prudent for you to substitute a different term.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
