6th January, 2017 by Annie Hayes

Patrón Spirits International has won a lawsuit against Peruvian pisco brand Portón, cancelling the brand’s trademark registration on the grounds that it would confuse consumers.

The Trademark Trial and Appeal Board agreed that their similar pronunciations would confuse English-speaking consumers, Law360 reported, particularly since “both parties’ beverages are sold in the sometimes noisy atmosphere of a bar or crowded restaurant”.

The board wrote: “We find that a substantial number of non-Spanish speakers will perceive both terms, in the context of the goods that include Tequila and pisco, as Spanish words, and any recognition of the English word ‘patron’ will not sufficiently distinguish the marks.”

Pisco Portón registered Portón as a federal trademark in 2011 and the Mexico-based spirits firm sought to terminate the registration in 2014.

Though Portón presented a defense of ‘laches’ – that Patrón waited an ‘unreasonable’ amount of time to bring the case – the board disagreed, stating that the time period for ‘laches’ began in 2012, and that two years was not deemed unreasonable.

The board heard that the manager of the Peruvian distillery which creates Portón, John Schuler, was quoted as saying “sometimes people get Portón confused with Patrón Tequila, which can be a good thing for us” and “the names might be similar”.

However these statements were not a key consideration for the board, who recognised that Schuler was not an employee of the company and was not in a position to comment on consumer confusion.

Greg Cohen, corporate communications, Patrón said: “We continue to aggressively defend and protect our trademarks, and we’re pleased with this ruling.”

According to Law360, Patrón filed a second lawsuit in summer contesting the company’s other trademark registrations, ‘Pisco Portón’ and ‘Pisco Portón, The Authentic Peruvian Pisco’, but the progression of these were halted until the ‘Portón’ case took place.