Unreported / Non-Citable
Background
Roar Spirits, LLC (Roar) sought to register two trademarks in 2020: the word mark EL BANDIDO YANKEE and the composite mark EL BANDIDO YANKEE TEQUILA COMPANY BLANCO.
Sutter Home Winery, Inc. (Sutter) opposed the registrations under 15 U.S.C. § 1052(d), claiming a likelihood of confusion with its registered BANDIT word mark.
The Trademark Trial and Appeal Board (TTAB) sustained Sutter’s opposition.
Roar then sought de novo review in the United States District Court for the Northern District of California pursuant to 15 U.S.C. § 1071(b).
The district court granted summary judgment in favor of Sutter, concluding that the marks were likely to cause confusion.
Roar appealed.
The reviewing court therefore addressed the dispute in the posture described above, applying the governing standard to the existing record rather than deciding questions the opinion expressly reserved.
The Court’s Holding
The Ninth Circuit reversed the district court’s grant of summary judgment and remanded the case.
The court held that a reasonable factfinder could conclude that the marks are dissimilar in appearance, sound, and meaning, making this factor decisive.
Roar’s marks are over twice as long as Sutter’s BANDIT mark, differing by two words and four syllables.
The term YANKEE modifies BANDIDO to create a unique meaning alluding to two distinct geographic regions, unlike Sutter’s mark.
Additionally, the district court erred by disregarding evidence of a lack of actual confusion, including years of marketplace coexistence with substantial sales volumes and a consumer survey in which none of 112 respondents identified Sutter as the source of Roar’s tequila.
Because genuine disputes of material fact exist regarding the similarity of the marks and actual confusion, summary judgment was inappropriate.
The panel emphasized that likelihood of confusion is ordinarily a factual question under the eight Sleekcraft factors.
Its ruling does not register Roar’s marks or decide that consumers cannot be confused.
It holds only that Sutter was not entitled to judgment as a matter of law on this record, leaving the factfinder to weigh the competing evidence on remand.
Key Takeaways
- The Ninth Circuit reiterated that summary judgment is rarely appropriate in likelihood-of-confusion cases because the issue is treated as a question of fact.
- Mark dissimilarity can be decisive: Roar’s marks (EL BANDIDO YANKEE) were found significantly different from Sutter’s (BANDIT) in length, structure, and overall commercial impression due to the fusion of English and Spanish and references to distinct geographic regions.
- Evidence of a lack of actual confusion—including prolonged marketplace coexistence with high sales volumes and a consumer survey—can create a genuine dispute of material fact precluding summary judgment, even if the survey is imperfect.
- In a de novo registration challenge under § 1071(b), the court evaluates the marks as described in the applications, but extrinsic evidence of marketplace realities (like sales and surveys) remains relevant to the Sleekcraft factors.
- The district court’s error in setting aside the Eveready survey was legal; a reasonable factfinder could assign it appropriate weight regarding the likelihood of confusion in the marketplace.
Why It Matters
This decision reinforces the Ninth Circuit’s reluctance to resolve trademark likelihood-of-confusion disputes on summary judgment, emphasizing the fact-intensive nature of the Sleekcraft analysis.
It clarifies that substantial differences in mark length, linguistic composition, and semantic meaning can outweigh a shared root word (BANDIDO/BANDIT) at the summary judgment stage.
The ruling also affirms that evidence of actual marketplace coexistence without confusion—including consumer surveys that may not perfectly mirror the registration context—is admissible and probative, preventing courts from prematurely dismissing such evidence as irrelevant to the statutory registration inquiry.
For practitioners, the limits of the disposition are as important as its result: the decision controls the identified issue and posture, while leaving reserved questions and further proceedings to the tribunal handling the case.