Donq bakeries, owned by Japanese company Kabushiki Kaisa Donq, filed a trademark application with the USPTO for food and beverage items and retail services in September 2010. Destilería Serrallés, the makers of Don Q rum, filed an opposition to the mark.
In its opposition, Destilería Serrallés had cited other alcohol brands that had extended their brands to include food and retail services, like Captain Morgan, Jim Beam, and Kahlúa, among others. The judge ruled that Don Q rum had “only achieved a marginal degree of fame for likelihood of confusion purposes” and when used in association with rum had a “marginal degree of fame in the spectrum of fame.” In relation to the other spirits-makers cited, the ruling stated, “Although well-known distillers may use their brand names on collateral items, the record falls short in disclosing a similar practice relative to lesser-known marks.”
The TTAB ruling also noted that the Don Q rum trademark was not related closely enough to the categories of goods and services in which Donq bakeries had applied to register its trademark.