Via American Brewer, Fall 2013 Issue

Via American Brewer, Fall 2013 Issue

In the most recent issue of American Brewer Magazine, I mentioned that the fact that a mark is used and registered for wine or distilled spirits does not necessarily bang a death knell for a craft brewer’s ability to use a similar or identical mark.  I’ve recently discussed geographically descriptive trademarks and refusals of beer marks based on a likelihood of confusion with clothing items.  This will discuss why a similar, or even identical, mark registered for wine or distilled spirits should not (and does not) mean a mark for beer and/or brewery services cannot register and acquire nationwide trademark rights.

The Refusal:

The USPTO will generally issue a refusal that compares the marks (how they look, sound, etc.) and then compares the similarity of the goods. The goods comparison generally goes as follows:

 BeerAndWineRefusalSample

The X-Search database evidence that the examining attorney includes generally shows one to two dozen entities with registered marks for both beer and wine.  The internet materials that they attach often point to places like Total Wine that sell both beer and wine at the same location (I’ll note here that many stores also sell pretzels and band-aids, but those aren’t likely to confuse consumers).

MillerCoors

MillerCoors

Just as there are cases throughout the years that suggest that beer and wine are related goods for a likelihood of confusion determination, there are cases that suggest the opposite.  In the case of Coors’ Blue Moon mark, the Trademark Trial and Appeal Board determined that while beer and wine are sometimes sold by the same party under the same mark and may be sold in the same retail outlets to a similar class of consumers, the two beverages are not sufficiently related that the contemporaneous use of similar marks on the two products would be likely to cause confusion as to source.

In In re White Rock Distilleries, Inc., the USPTO examining attorney made a similar argument to that repeated above when arguing that wine and vodka were related goods.  The TTAB held otherwise, noting that evidence such as websites showing that wine and vodka are sold under the same roof was not sufficient to show that the goods were sufficiently related.  Evidence must be submitted to prove that the goods are related as there can be no per se rule that any two goods are related.

The next thing that is of utmost importance to show that any such refusal should be withdrawn is to provide evidence that registered beer and wine marks coexist.  There are quite a few of these.  As we demonstrated in the T-Shirt context, here is just a sampling of the marks that coexist:

 

Beer

Wine

ALCHEMY

ALCHEMY

BLACK WIDOW

BLACK WIDOW

BUZZSAW AMERICAN PALE ALE

BUZZSAW

CABIN FEVER ALE

CABIN FEVER

DUCK DUCK GOOZE

DUCK DUCK GOOSE

EPIPHANY PALE

EPIPHANY

FATHOM

FATHOM

 

If you receive a refusal based upon a likelihood of confusion with a mark registered for wine or distilled spirits, don’t just abandon your applied-for mark.

Refusals based upon a likelihood of confusion between marks for beer and wine are rather common.  One should include wine and liquor (and restaurants) in any search to determine the possibility of registering a given mark.  Given that there are over 20,000 marks registered for wine, it becomes more and more difficult all the time to find and register distinctive marks.