An examining attorney with the United States Patent and Trademark Office (USPTO) recently issued a suspension letter to an applicant for beer based, in part, on a pending application for hats and shirts.

Applications for marks relating to goods and services in the beer industry are very seldom, if ever, refused based upon similar marks being registered for clothing.  However, precedent for a suspension and potential refusal does exist.  It’s a situation that is covered by section 1207.01(a) (Relatedness of the Goods or Services) of the Trademark Manual of Examining Procedure (“TMEP”).

The section reads as follows:

In some instances, because of established marketing practices, the use of identical marks on seemingly unrelated goods and services could result in a likelihood of confusion. See In re Sloppy Joe’s Int’l, Inc., 43 USPQ2d 1350, 1356 (TTAB 1997) (“[T]he licensing of the names and/or likenesses of well known persons for use on various goods and services is a common practice.”); In re Phillips-Van Heusen Corp., 228 USPQ 949, 951 (TTAB 1986) (“The licensing of commercial trademarks for use on ‘collateral’ products (such as clothing, glassware, linens, etc.), that are unrelated in nature to those goods or services on which the marks are normally used, has become a common practice in recent years.”).

It can seem somewhat vague and make it difficult to determine when one may receive a refusal for a mark to be used with goods and/or services in the food and drink industry (or other businesses) based upon the existence of a registration for a similar or identical mark with t-shirts or other clothing products.  Given the plethora of examples of marks in the beer industry and the clothing industry that already coexist, it can also create a response of “why is this being applied to my mark and why is this being enforced now”.  A small sampling of the marks that are registered and coexist for beer and shirts follows:

Beer

Shirts

ALCHEMY

ALCHEMY

BASS

BASS

BEHEMOTH

THE BEHEMOTH

CABIN FEVER ALE

CABIN FEVER

DAREDEVIL

DAREDEVIL

ENDURANCE

ENDURANCE

FAT BOY

FAT BOY

GHOSTRIDER

GHOSTRIDER

As far as I’ve been able to tell, every college or university that participates in athletic competition sells clothing items that include the schools’ nicknames.  Yet, a quick search shows registrations for Bulldog, Catamount and Mustang, among others, that coexist with colleges and/or universities.

SloppyJoeTurning back to TMEP section 1207.01(a), the cases often cited for refusing marks due to the existence of collateral goods like t-shirts generally deal with famous names and marks.  For example, the Sloppy Joe’s case cited above deals with the refusal of the Sloppy Joe’s restaurant mark that includes a portrait of Ernest Hemingway, in part, because of the existence of HEMINGWAY’S in connection with bar and restaurant services and clothing.  While the Sloppy Joe’s mark did not include the name Hemingway, the purchasing public “would be just as likely to remember the Hemingway portrait, and consequently the name Hemingway, as the words SLOPPY JOE’S.”  Hemingway, of course, is a very famous name and figure.

Similarly, in Turner Entertainment Co. v. Ken Nelson, 1996 TTAB LEXIS 31 (TTAB Apr. 4, 1996), Turner Entertainment (owner of the mark GILLIGAN’S ISLAND in connection with entertainment services and television programs) opposed an application for GILLIGAN’S ISLAND in connection with suntan oil, suntan lotion, sunblock, shampoo and soap.  Turner also licensed various types of merchandise, including items such as beach towels, beach bags and key chains, for about a decade prior to opposing applicant’s mark.  The TTAB there ultimately granted summary judgment in favor of Turner, because the Gilligan’s Island television show had gained significant notoriety and because the GILLIGAN’S ISLAND mark had already been subject to a number of licenses for collateral goods.  The TTAB there also cited to a publication the focused on the merchandising of famous trade symbols.  An opposition was also sustained when the owner of the Monopoly real estate trading game opposed the application for MONOPOLY in connection with clothing items.  Again, MONOPOLY is a mark that had already gained significant notoriety.

In the Phillips-Van Heusen case also mentioned above, Van Heusen’s application for 21 CLUB was refused because of the existence of a registration for THE “21” CLUB in connection with a restaurant.  This is a situation in which the mark was not a famous mark like those previously discussed.  However, the TTAB there noted that the restaurant registrant had already made use of the mark on towels, another collateral product.  Thus, the TTAB reasoned that use of the mark would naturally expand onto other collateral goods, such as clothing/shirts.

Refusals and oppositions based upon collateral goods are somewhat rare and very frustrating.  They are also unlikely to be (are not) issued in any sort of consistent manner, as is suggested by the evidence offered above.  However, refusals and oppositions for collateral goods based upon use of a similar or identical mark generally occur when a famous mark is included.