A trademark registration does not come with an eraser for the other words in somebody else’s brand.
Sutter Home Winery’s BANDIT mark stood in the way of Roar Spirits’ applications to register EL BANDIDO YANKEE and EL BANDIDO YANKEE TEQUILA COMPANY BLANCO. The opposition succeeded before the Trademark Trial and Appeal Board. Roar sought review in federal district court and lost again. Then it appealed.
On October 29, the Ninth Circuit reversed in Roar Spirits, LLC v. Sutter Home Winery, Inc., No. 25-2301 (9th Cir. Oct. 29, 2026). Its central observation deserves attention from beverage brands facing an expansive trademark claim: “A reasonable factfinder could conclude that the marks are dissimilar.” Two earlier wins had not eliminated that possibility. (Mem. at 2–3.)
For anyone tired of trademark demands that treat a shared word as the end of the discussion, this is a welcome correction. Fighting back paid off with a reversal. Roar still must resolve the registration dispute on remand; the panel did not direct the USPTO to issue its registrations.
A useful reminder about summary judgment
The El Bandido Yankee trademark applications date to 2020. Sutter opposed registration under Section 2(d) of the Lanham Act, and Roar later invoked 15 U.S.C. § 1071(b) to seek de novo district-court review of the Board’s decision. (Mem. at 2.)
The Ninth Circuit’s response started with a sentence worth keeping handy:
“We rarely approve summary judgment in likelihood-of-confusion cases.”
—Mem. at 2.
The panel explained why: “We treat likelihood of confusion as a question of fact.” Summary judgment requires “no genuine dispute as to any material fact,” and a reasonable factfinder could side with Roar here. The question at this stage was whether Sutter could win without resolving that factual disagreement. (Mem. at 2–3.)
The familiar eight-factor analysis considers matters including the strength and similarity of the marks, relatedness of the goods, marketing channels, purchaser care, and actual confusion. The panel emphasized that the factors’ relative importance varies “case by case.” On this record, the marks’ similarity supplied the decisive problem with Sutter’s judgment. (Mem. at 3.)
YANKEE does some actual work
Start by reading the whole name. The comparison involved BANDIT and EL BANDIDO YANKEE. As the panel put it:
“Roar’s word mark exceeds Sutter’s word mark by two words and four syllables.”
—Mem. at 3.
That affects how the marks look and sound. More important, YANKEE changes what the name communicates. Whether YANKEE functions as a noun or adjective did not distract the court:
“Whether we read the word YANKEE as a noun or an adjective, it modifies the term BANDIDO in a salient way.”
—Mem. at 4.
The panel explained that YANKEE carries a northeastern United States association, while BANDIDO carries a Mexican connotation. Combining those references gives the mark its own meaning. Roar’s marks also mix English and Spanish, a feature absent from BANDIT. The court’s assessment was refreshingly direct: “Finally, the marks create strikingly different overall impressions.” (Mem. at 4.)
This reasoning makes sense. YANKEE contributes something to the identity of the brand. Treating it as disposable would remove a meaningful part of the very mark under review. As the panel concluded, “a reasonable factfinder could find that the marks are so dissimilar that they are unlikely to cause confusion in the marketplace.” (Mem. at 4.)
For a brand developer, the useful lesson concerns meaningful differentiation. Adding a word that changes the sound, meaning, and overall impression deserves serious consideration in a clearance analysis. Roar’s result does not supply a formula under which any two extra words guarantee clearance. Standing up to a trademark refusal and prosecuting to the bitter end in a Federal Circuit Court might not be in your budget, but it really does pay off if the case is a good one like it was here.
The customers counted too
The panel identified a second error: “The district court also erred by ignoring evidence of a lack of actual confusion.” (Mem. at 4–5.)
Roar’s CFO attested to nearly 30,000 cases of tequila sold and millions of dollars in revenue from 2021 through 2024. Sutter’s president and CEO described more than one million cases sold from 2017 through 2021, with sales continuing afterward. Despite the differing periods, the panel found “at least some record evidence suggesting that the two companies sold large quantities of drinks during the same period.” (Mem. at 5.)
Roar also supplied consumer research:
“Roar supplied an Eveready study finding that, out of 112 consumers, none identified Sutter as the source of Roar’s tequila.”
—Mem. at 5.
That finding did not conclusively settle every possible confusion question. It did give a factfinder something worth considering. “The district court erred when it set this survey aside,” the panel held. (Mem. at 5.)
The registration context did not justify discarding the evidence. The court acknowledged that “we must confine our legal analysis to the registration applications,” while explaining that “a reasonable factfinder could find the survey evidence at least somewhat persuasive.” Marketplace experience could bear on the confusion question presented by the applications. (Mem. at 5–6.)
What beverage brands and suppliers should do with this
Evaluate the complete mark before agreeing to a rebrand. When an objection focuses on one shared or translated word, have counsel assess the full proposed name’s appearance, pronunciation, meaning, and commercial impression. Identify what the additional wording actually contributes. The YANKEE analysis gives that exercise a concrete example.
Read the goods descriptions too. The BANDIT registration covered “alcoholic beverages except beers,” as the underlying TTAB decision records at page 3. That description extends beyond wine. A supplier should not build its entire response around the observation that one product happens to come in a wine package and the other in a tequila bottle. The Ninth Circuit emphasized that, in a registration challenge, “we evaluate the marks as described in the applications.” (Mem. at 2–3.)
Build a record of coexistence. Preserve dated sales figures, distribution territories, retail placements, and customer or distributor communications. Investigate and retain any reports of confusion as well. Those records let counsel assess whether customers had a meaningful opportunity to encounter both brands and what happened when they did. A general assurance that nobody has complained supplies much less information.
Make consumer research answer the legal question. If a survey makes commercial sense, involve counsel and a qualified survey expert early. Address the relevant consumers, the marks being tested, and the source or affiliation questions the dispute presents. The panel required consideration of Roar’s evidence; it did not turn a favorable survey result into automatic registration.
Roar won another opportunity to prove its case, and the court made no finding of bad-faith enforcement or trademark bullying. (Mem. at 1 n.*, 6.) Still, this is a useful answer to overreach. A registration and a pair of earlier wins did not entitle Sutter to a judgment that discounted meaningful differences and relevant evidence. Before retiring a beverage brand because an opponent insists the matter is obvious, put the whole mark back into the discussion. YANKEE earned its place.
The post El Bandido Yankee Fights Back: Ninth Circuit Reverses Sutter Home’s Trademark Win appeared first on Libation Law Blog.