If a big company has ever told you your business name is too close to theirs, the Ninth Circuit just handed down a decision worth your attention.

On October 29, 2026, a divided three-judge panel of the U.S. Court of Appeals for the Ninth Circuit revived a tequila company’s bid to register its brand, even though the brand shares a word, more or less, with a well-known boxed wine. The case is Roar Spirits, LLC v. Sutter Home Winery, Inc., No. 25-2301. It’s a fight over liquor labels, but the lesson applies to anyone building a brand.

The Dispute: El Bandido Yankee vs. Bandit

Roar Spirits sells El Bandido Yankee tequila. Sutter Home Winery owns BANDIT, the boxed wine brand. On paper, the BANDIT registration is broad: it covers “alcoholic beverages except beers,” which technically includes tequila.

When Roar applied in 2020 to register two El Bandido Yankee marks (a word mark and a design mark), the owner of BANDIT opposed. The argument was simple: Bandit and Bandido are close enough that shoppers would assume the tequila came from the same people as the wine.

In 2023, the Trademark Trial and Appeal Board (TTAB) agreed and sustained the opposition.

Round Two in Federal Court

Roar had two options. It could appeal to the Federal Circuit on the record the TTAB already had, or it could file a new civil action in federal district court. It chose the second, a route many business owners don’t know exists, because it lets the losing party add evidence the TTAB never saw. Roar added a consumer survey and examples of other “bandit”-style names already on the alcohol shelf.

It didn’t work at first. In February 2025, the U.S. District Court for the Northern District of California granted summary judgment to Sutter Home, concluding that confusion was likely. Because the case ended on summary judgment, Roar never got a trial.

The Ninth Circuit Reverses

The panel disagreed. It held that a reasonable factfinder could conclude that the differences between El Bandido Yankee and BANDIT (in how the marks look, sound and what they mean), together with the absence of evidence of actual consumer confusion, make confusion unlikely. That’s a genuine factual dispute, and genuine factual disputes get decided at trial, not on summary judgment.

The case goes back to the district court, where Roar will get its chance to prove its tequila and Sutter Home’s wine can share a shelf.

One caveat for the lawyers in the room: the Ninth Circuit issued its ruling as an unpublished memorandum disposition, so it isn’t binding precedent. But the reasoning tracks long-standing trademark principles, and it’s a useful look at how these disputes actually play out. You can read the decision here.

How Courts Decide “Likelihood of Confusion”

In the Ninth Circuit, courts weigh what are known as the Sleekcraft factors. Federal courts in Florida, under the Eleventh Circuit, apply a similar multi-factor test. The core questions:

● How strong is the existing mark? A distinctive, well-known mark gets broader protection. But when the market is crowded with similar names, consumers learn to tell them apart, and any one owner’s claim gets narrower.

● How similar are the marks? Courts compare the marks as a whole: sight, sound, meaning and overall impression. “El Bandido Yankee” is not just “Bandit” with an accent; it’s a longer phrase with its own look and feel.

● How related are the goods? Wine and tequila are both alcohol, and in a registration dispute the goods are compared as described in the registration and the application. That’s why BANDIT’s broad description mattered here. Still, relatedness is one factor, not the whole case.

● Where and how are the products sold, and how careful are buyers? Marketing channels and the care shoppers take both count.

● Is there evidence of actual confusion? Real-world mix-ups, or years without any, carry real weight. Consumer surveys are one way to measure it.

● What was the newcomer’s intent? Picking a name to trade on someone else’s reputation weighs heavily against you.

● Is either side likely to expand into the other’s lane?

No single factor controls. That’s exactly why it’s risky for a court to cut the analysis short when the evidence points in different directions.

What This Means for Business Owners

1. A registration doesn’t mean someone owns a word. Big brands often send demand letters claiming rights far broader than a court would enforce. Sharing a word with an established brand is not automatically infringement.

2. A cease-and-desist letter is an opening position, not a ruling. Before you rebrand, reprint or sign a coexistence agreement, have the claim evaluated. Many of these letters are designed to win by intimidation.

3. Losing at the TTAB isn’t necessarily the end. As Roar’s case shows, a losing applicant may be able to take the fight to federal court and build a stronger record. The deadlines are short, so call counsel quickly.

4. Evidence wins these cases. Surveys, proof of how and where products are sold, and examples of similar marks already in the market can be the difference between a quick loss and a real shot at trial.

5. The cheapest trademark fight is the one you avoid. Roar filed in 2020 and is still litigating six years later. A proper clearance search before you launch (not just a quick Google search) can flag conflicts before you’ve paid for signage, packaging and marketing.

The Bottom Line

Trademark law protects consumers from confusion. It doesn’t give established companies a monopoly over common words. The Bandit ruling is a reminder that the analysis is fact-driven, and that businesses on the receiving end of an aggressive trademark claim often have more options than they think.

If you’re launching a brand, protecting one, or staring at a demand letter, TrustSphere Legal can help you assess your position before you make a costly decision.

This article is for general informational purposes only and does not constitute legal advice. Reading it does not create an attorney-client relationship. For advice about your specific situation, contact a licensed attorney.

Sharing a Word Isn’t Stealing a Brand: What the Ninth Circuit’s Bandit Ruling Means for Your Business