DuetsBlog

Collaborations in Creativity & the Law

The Olympics! Officially Protected from Zika by OFF!

Posted in Advertising, Branding, Mixed Bag of Nuts

The Summer Olympics are with us again, in what has been a great summer for sports. Besides the normal summer sports highlights, soccer fans have gotten a special second year in a row of the Copa America, not so great if you’re a Messi fan. That happened to land in the same summer as the Euro Cup in which tiny Iceland sent England packing. Iceland, by the way, has a population of a little over 300,000 and their co-coach hasn’t quit his day job as a dentist. England had the highest paid coach in the Euros and has won the World Cup.

Rio 2016But I digress. Now the Summer Olympics are approaching, such a well known brand that the Lanham Act gives it special privileges. This year, they’ll be held in Rio de Janeiro, and though it’s winter in the Southern Hemisphere Brazil is basically ground zero for the Zika virus. A number of athletes have pulled out over Zika concerns. The CDC. though, has only urged pregnant women or those who may become pregnant to stay away. Though it does recommend bug spray.

Enter S.C. Johnson. OFF! has become the first official bug spray of the Olympics this year. On first blush, this seems to be a great idea. The world is understandably concerned about Zika. What better way to make your product the preeminent protector from Zika? All those people who decided to stay home, and those who would have stayed home anyway, will see OFF! used by athletes, judges, spectators, commentators, and the like. It’s safe to say that most of the people traveling to Rio will be basting themselves in OFF! more than they baste their Thanksgiving turkey. Zika has crossed into the U.S. and many of those viewers may run out to buy some OFF! to start basting themselves.

OFF!There is, of course, the chance that S.C. Johnson will be lambasted for trying to profit off of people’s fears of a new and horrific virus. Even if they don’t raise prices a la Martin Shkreli, trying to capitalize off of a public crisis is generally frowned upon.

There’s something I would be more concerned about though. What happens when some of those who have gone to watch the Olympics catch Zika? Worse yet, what happens when one, or two, or more high profile athletes or commentators are infected with Zika despite the gallons of free OFF! they were provided? The average high is 77 and the average low is 65  in Rio in January.  I would guess that there are a few mosquitos still around, even if it is the driest average month.

My money is on at least a few visitors catching the Zika virus. There are two real variables here though. First, who and how many catch it? This variable will directly influence the second, what is the public and media reaction? If T.V. viewers around the world are connecting OFF! with the Olympics, and possibly seeing high profile personalities lather themselves in its protection, will they conclude that OFF! doesn’t cut it when one of them gets Zika? That may not be the right conclusion. After all, I know I’ve gotten mosquito bites despite wearing an unhealthy amount of bug spray (I’m looking at you, Northern Minnesota). But it does seem to be a conclusion that they are risking, if not inviting. It’s probably better to be seen as just a bug spray brand, than the bug spray brand that won’t protect you from Zika.

On the other hand, by the time it is apparent that someone caught the virus, it will be approaching the end of the summer in the Northern Hemisphere. Perhaps consumers up here will forget by the time next bug spray season rolls around. Or maybe a cure or vaccine will be found that drops Zika from the public mind.

Or perhaps, hopefully, no Zika transmission is associated with the Olympics. In that case, OFF! may be recognized as THE bug spray to protect from Zika and other mosquito born viruses. I’m sure the folks over at S.C. Johnson weighed even more possibilities, and did not come lightly to the conclusion that this is right for the brand. I’ve just been spit balling here, but it seems there is a decent risk involved.

So which will it be? OFF! the brand that stops Zika in its tracks? Or, OFF! the brand that leaves you vulnerable to horrible mosquito born viruses?

A Prime Concern: Counterfeiting on Amazon

Posted in Advertising, Branding, Counterfeits, Infringement, International, Trademarks

Readers: find any good deals on Prime Day? For my part, I abstained. I’ve had a “Gold Box” deal sitting in the box for about 6 months now — turns out, I really didn’t need a pressure cooker.

If you did seize upon Prime Day, here’s hoping you got exactly what you ordered, and not a knockoff or counterfeit product. Amazon is generally very reliable, yet as it grows to unspeakably immense proportions, sales listings have become increasingly difficult for brand owners to police, and Amazon may not be much help either.

According to a CNBC report, counterfeiting on Amazon.com “has exploded this year, sellers say, following Amazon’s effort to openly court Chinese manufacturers, weaving them intimately into the company’s expansive logistics operation.”

This is a big issue for Amazon, a $348 billion dollar company, sixth most valuable in the United States.

One common problem arises from the “commingled” listing system on Amazon which bundles together multiple third-party sellers, including Amazon’s own fulfillment system, onto one product listing. Suppose you see a product for sale on Amazon for $20, while a third-party seller claims to offer the exact same product for $8. Which one to buy? The answer seems obvious – until a knockoff product (or blatant counterfeit) arrives at your doorstep instead.

Amazon does use bold language in its Anti-Counterfeiting Policy to assure consumers:

Products offered for sale on Amazon.com must be authentic. The sale of counterfeit products, including any products that have been illegally replicated, reproduced, or manufactured, is strictly prohibited.

But in practice, brand owners can face an onerous burden when it comes to addressing counterfeit sales of products. To cite a recent experience, upon discovering that knockoff goods were sold through a brand owner’s listing, Amazon was exceedingly unhelpful in removing the listing and taking any action whatsoever against the seller. We repeatedly received emails asking for the following information:

If you believe sellers are offering items different than advertised, please file a report with Seller Performance and provide an Order ID Number of a test buy that confirms your claim that these sellers are not offering the item(s) advertised.  You may contact the Seller Performance team through the following form:

http://www.amazon.com/gp/help/reports/contact-us

To facilitate an investigation, be sure you include the following information in your complaint, as applicable:

  • The ASIN/ISBN of the item’s detail page and the product title
  • The store or business name of the seller you are reporting
  • Your order ID (required)
  • A brief explanation of the violation (required)

Once all this information was provided, Amazon will assist with removing that specific listing, but likely will not take any broader action against the seller’s account or other marketplace listings. This is because sellers will frequently claim their knockoff product was simply “mis-listed” by Amazon and should not have been listed as the brand owner’s product. Too often, it seems Amazon is willing to give the benefit of the doubt.

You may also notice the reference to a “test buy” in the emails — indeed, Amazon has confirmed to us that brand owners (or their counsel) are required to purchase items from third-party sellers to prove they are counterfeit or knockoff products — even if they are sold at a fraction of the authorized resale price. This means that serial counterfeiters are likely to get away with their activities, as purchasing their entire catalog is a unsavory option for brand owners. And even if a single listing were enough to deactivate the seller’s account, they may spring up again under another account days later.

eBay has long dealt with counterfeiting issues, and now the same rule applies to Amazon – if it seems too good to be true, it probably is.

 

 

Trademark Goods/Services Limitations, Why Not Exclude Any Federal Unlawful Activities?

Posted in Almost Advice, Articles, Branding, Marketing, Trademarks, TTAB, USPTO

Those involved in the cannabis industry — where certain activities are legal in some States, but unlawful under federal law — continue to search for creative strategies and solutions in protecting their trademarks and service marks.

Picking up where Tim left off last Friday, I’ve been giving some thought as to how the Herbal Access business in Washington State might have been able to overcome the “unlawful use” registration refusal recently affirmed by the TTAB.

As you will recall, the mark HERBAL ACCESS was refused registration in connection with “retail store services featuring herbs” because the evidence of record tended to show some of the “herbs” sold included “marijuana”:

“Because the evidence that Applicant’s mark is being used in connection with sales of a specific substance (marijuana) that falls within both the services identification and the prohibitions of the [Federal Controlled Substances Act] is unrebutted, we find that Applicant’s retail store services include sales of a good that is illegal under federal law, and therefore encompasses a use that is unlawful.”

To the extent the In re Morgan Brown decision is appealed, and assuming the TTAB’s ruling withstands scrutiny, what if the Applicant had specifically excluded from the identification of services, the “unlawful” portion of the services being offered, i.e., the sale of marijuana?

In particular, what if the description of services was amended, limited and narrowed to the following with an express exclusion built into the ID: “Retail store services featuring herbs, excluding marijuana”?

It’s hard to argue that the retail store services featuring non-marijuana herbs — provided lawfully under the HERBAL ACCESS mark — could fairly be denied registration, as the applied-for mark and description of services no longer encompass or include unlawful activities.

Obtaining this narrower registration would be better than none, and it might provide some halo effect over activities that might not always be unlawful under federal law.

Better yet, what about these possible descriptions?: “Retail store services featuring herbs, excluding any in violation of federal law” or “Retail store services featuring herbs, excluding any unlawful herbs.”

What I like about these options over specifically excluding “marijuana” from the description is allowing the scope of the ID to flex if federal law changes in the future.

What do you think, how would you attempt to overcome and/or moot the “unlawful use” refusal for cannabis related activities?

USPTO Keeps the Door Locked for Marijuana-related Services

Posted in Branding, First Amendment, Food, Trademarks

Medical marijuana is currently legal in 25 states, including four states that have also legalized recreational use (Alaska, Colorado, Oregon, and Washington). On Nov. 8, California voters will have a chance to make their state the next to legalize recreational use. As a dollar amount, Forbes estimated that Colorado’s marijuana industry was worth $1 billion. In light of these statistics, it is odd that marijuana is still considered a controlled substance and illegal under federal law. However, the Trademark Trial and Appeal Board issued a decision yesterday that reminds us of the odd conundrum that marijuana-related business owners find themselves.

The Lanham Act has long prohibited the registrations of trademarks in connection with illegal goods or services. The Lanham Act requires that that an applicant make “use in commerce” of the trademark in order to be eligible to receive a trademark registration. The Board and courts have interpreted the language to require “lawful use in commerce.” Consequently, if the use of a mark violates the law, the Trademark Office will likely refuse registration of the mark.

The applicant in the Board’s recent decision operates a retail marijuana store called “Herbal Access” in Washington State. As evidence of use, the applicant submitted a screenshot of its website and of its Facebook page, which included an image of the store. The application did not include a reference to marijuana, but instead identified the services as “retail services featuring herbs.” The Examining Attorney refused registration of the mark, concluding that the applicant was using the mark in connection with unlawful activity. The Examining Attorney reasoned that the term “herbs” was broad enough to include marijuana and, in any event, the applicant’s specimen and website confirmed that the applicant did in fact sell marijuana. The applicant appealed to the Board.

The Board affirmed the Examining Attorney’s decision to refuse registration (decision available here). While the “unlawful use” doctrine is not a new phenomenon, the Board addressed in some detail the applicant’s attempt to tiptoe around the use of the marijuana in the identification of services description. The Board first noted that it agreed with the Examining Attorney that “herbs” was broad enough to include marijuana, so the attempt to carve out illegal services failed.

However, the Board’s analysis is equivocal as to what would happen if the identification of services undeniably excluded illegal activities. The Board reaffirmed the principle that it must focus on the goods or services as identified in the application. However, the Board also reasoned that the Board should consider the services or goods that the applicant is actually selling. Yet the reference to this evidence is in the context of assisting the Trademark Office “to ascertain that the word ‘herbs’ in the description of services encompasses marijuana.”

Even if a federal registration is out of reach for marijuana business owners, there are alternatives. Each individual state has its own process for registering trademarks, usually modeled after federal law. Until Congress attempts to clarify the conflicting laws regarding the use of marijuana on a national level, the door to the U.S. Patent and Trademark Office will likely remain shut for marijuana activities.

 

POKEMON GO Caught By…POKEMON?

Posted in Trademarks, USPTO

Last week was rough.  We went from celebrating America to watching her at her worst.  We saw officers shoot two black men in Baton Rouge, LA and Falcon Heights, MN, a black man shoot cops in Dallas, and resulting social unrest (including my hometown police being hit with concrete last weekend and protests blocking our freeways yesterday).  We read polarizing social media posts.  Everyone seems more on edge than I can ever recall.

Call me a conspiracy theorist if you must, but what a perfect time to release a mind-numbing game called Pokemon Go!

I have not played the game myself – and don’t intend to given the fact that it’s probably “a government surveillance psyop conspiracy” according to a worthwhile read from Mashable) – but my friends say the game is “EVERYTHING.”   To the extent that I understand it, apparently you try to catch cute characters like Pidgey and Pikachu on your smartphone’s screen and, once you get to a certain level, you then can go to “gyms” (real locations) to find things to catch.  It seems somewhat like geocaching with your phone and with unreal objects.  From one friend:  “A kid found a dead body while playing – she indicated that she wasn’t too scared to stop playing, so that’s a positive sign.  I have never taken my dogs on more walks, so I think they like the game too.  The other day I biked by a pack of teens pawing at the door of a locked church trying to get in to take over the ‘gym’ located inside – it’s weird seeing teens desperately trying to get into churches.”  I don’t get it.

Conversations with friends have devolved into “Martha, I’m fine waiting, I just saved [partner] from a Seel and he didn’t even thank me,” and I’ve grown increasingly uncertain about whether “I am going to try to go to the gym later” means a place to work out or a place to play Pokemon Go.   Based on what I’ve seen it do to people’s walking ability, I am scared to be on the roads with anyone trying to “catch” things that don’t exist in reality while trying to drive in reality.

Perhaps dazed itself, the pending U.S. trademark applications for the POKEMON GO logo (here, here, and here) have been refused registration as being likely to be confused with a registration for POKEMON in standard characters.

Mark Image

These three applications were all filed based upon foreign applications, which were filed by Nintendo Co. Ltd. (a Japanese corporation) as the applicant, and thus the Japanese corporation was listed as the applicant on these U.S. filings.  However, Nintendo of America Inc., an American corporation incorporated in Washington, owns the registration for POKEMON.

Nintendo, and companies finding themselves in similar situations, can overcome this issue by claiming ownership of the prior registrations.  In order to do so, Nintendo would need to (1) record an assignment of the prior POKEMON registration from the American corporation to the Japanese corporation, (2) submit copies of documents evidencing the chain of title, or (3) submit an affidavit or declaration stating that the applicant is the owner of the cited registration.   Additionally, when making maintenance filings, it is important that the company that owns the mark have control of the use of the mark, even when that use is made only by the company’s parent company.  As the TTAB ruled earlier this year in  Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, a parent company’s use of a wholly-owned subsidiary’s registered mark does not inure to the benefit of the subsidiary if the parent controls the nature and quality of the goods sold under the mark.  In the alternative to claiming ownership of the marks, Nintendo of America Inc. could file new US-based applications for the mark, and these applications could be abandoned, but Nintendo would lose the priority date of the original filing.   Multinational corporations and corporations with subsidiaries should consider these ownership issues when managing a trademark portfolio that includes filings in the United States.

 

Standard Character Trademark Overbreadth

Posted in Articles, Infringement, Trademark Bullying, Trademarks, TTAB, USPTO

When we hear the word “overbreadth” in close connection with the word “trademark,” the often discussed “trademark bullying” topic will frequently come to mind.

Yet, discussions about “trademark overbreadth” are not limited to exaggerated and unrealistic trademark claims by a trademark owner.

We previously have discussed how one might deal with prior registrations that contain overbroad descriptions of goods or services, utilizing Section 18 challenges to compel certain narrowing.

Trademark overbreadth also can have real meaning in connection with the representation of the chosen mark an applicant might select in attempting to federally register at the USPTO.

An applied-for mark, in standard character format, is the broadest possible method of protection: “Registration of a mark in the standard character format will provide broad rights, namely use in any manner of presentation.” (emphasis added)

Broad isn’t always best, especially when a new comer and Applicant is hoping to coexist with prior federally-registered rights that already enjoy the many benefits of that very broad standard character protection at the USPTO:

“[T]he TTAB decides likelihood of confusion “on paper” at the USPTO as opposed to how a federal district court finds likelihood of confusion in “the real world” with the specific marks in use in their full and complete marketplace context:

  • If a mark (in either an application or a registration) is presented in standard characters, the owner of the mark is not limited to any particular depiction of the mark. Cunningham v. Laser Golf Corp., 222 F.3d 943, 950, 55 USPQ2d 1842, 1847 (Fed. Cir. 2000); In re Cox Enters., 82 USPQ2d 1040, 1044 (TTAB 2007).
  • The rights associated with a mark in standard characters reside in the wording (or other literal element, e.g., letters, numerals, punctuation) and not in any particular display. In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1284 (TTAB 2009).
  • A registrant is entitled to all depictions of a standard character mark regardless of the font style, size, or color, and not merely “reasonable manners” of depicting such mark. SeeIn re Viterra Inc., 671 F.3d 1358, 1364-65, 101 USPQ2d 1905, 1910 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 1353, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011).
  • Therefore, an applicant cannot, by presenting its mark in special form, avoid likelihood of confusion with a mark that is registered in standard characters because the registered mark presumably could be used in the same manner of display. See, e.g., In re RSI Sys., LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988).
  • Likewise, the fact that an applied-for mark is presented in standard character form would not, by itself, be sufficient to distinguish it from a similar mark in special form. See, e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 1348, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010); Sunnen Prods. Co. v. Sunex Int’l, Inc., 1 USPQ2d 1744, 1747 (TTAB 1987); In re Hester Indus., Inc., 231 USPQ 881, 882 n.6 (TTAB 1986).

“With this well-settled precedent governing most TTAB cases, it should become more and more clear that proving likelihood of confusion at the TTAB to prevent another from being able to register a standard character mark doesn’t necessarily mean that infringement should be assumed or that it can even be established in federal district court, based on the actual market conditions of the specific trademark uses of the parties.”

The reverse is true as well. Just because an Applicant might be successful in avoiding a finding of trademark infringement based on its particular stylized use, doesn’t mean the Applicant’s federal registration application — in standard character form — is sufficiently tailored and narrow enough to avoid a finding of a likelihood of confusion at the TTAB, especially when the new comer and Applicant is confronted by prior standard character trademark or service mark registrations.

So, there is certainly an advantage to being the first to obtain standard character protection at the USPTO, and there is no guarantee a new comer Applicant is entitled to one.

Applicants should think carefully about whether the broad standard character format puts them in the best position to defend against a likelihood of confusion claim at the TTAB.

Rise of the Game

Posted in Mixed Bag of Nuts

Video games have been an existing and growing component of popular culture for my entire life.  I literally cut my teeth on the Atari 2600 while I was still a toddler.  From there I spread into bowling alley arcades, Nintendo, PC Games, Playstation, Nintendo 64, Playstation 2, Playstation 3, and Playstation 4.  Over that time, the gaming industry grew in popularity, volume, and innovation.

Over the past several years and over the following few years, there have been and are likely to be significant new developments that are going to expand the gaming industry even further.  Simply put, its an exciting time to be alive for a “gamer.”  So called eSports appear to be gaining a significant foothold such that they will be regularly broadcast on TBS on Friday nights.  Vegas is “looking to video games” to bring in a new crowd of gamblers.  And it appears that hardware and software capabilities are almost finally to the point where VR games are something people will actually want to play.

The rise of the games is also an exciting time for the legal profession.  Each of these new avenues of gaming promise to provide new and interesting legal issues.  For example, top gaming talent is likely to end up working with agents similar to sports stars.  The gambling angle is likely to raise tricky legal issues regarding whether the games are “games of skill” or “games of chance.”  And one can only start to imagine the issues that will begin to arise in an entirely virtual world.  (“Virtual infringement,” anyone?)

Being both a gamer and an attorney, I’m excited for the possibilities, and I’d love to hear from any readers with thoughts on what they think the future may hold.

No Budding in Line Washington Redskins

Posted in Branding, Famous Marks, Marketing, Mixed Bag of Nuts, Trademarks

In a case with special significance to our DuetsBlog crew (our founder Steve Baird started the fight to cancel the THE REDSKINS trademark registrations in 1992 – see more about the Harjo case here) and significant to trademark practitioners and owners alike, the federal government is asking the United States Supreme Court to deny the Washington Redskins’ request to skip over the appellate court and go directly to its Court to have this dispute decided.  I will refer to the Washington Redskins as the “Team,” although unlike my good friend Craig, my team will always be the Vikings.

By way of background, the highly publicized Pro-Football Inc. v. Blackhorse, No. 15-1311, case was filed by the Team to avoid cancellation of its trademark registrations for THE REDSKINS mark.  Losing at the Eastern District of Virginia, the Team wants to skip the normal path of letting the Fourth Circuit hear the dispute, and instead asked the Supreme Court to hear the case directly.  The Team relied on the following arguments for this unusual request:

  1. The Court often grants certiorari before judgment to consider companion cases together (in this case it is the Tam case involving the Slants rock band);
  2. The Team’s case is an ideal companion to Tam and essential to resolve the constitutionality of the Lanham Act’s §2(a); and
  3.  The Team is better situated to challenge §2(a)’s constitutionality (in effect our lawyers are better or more well-funded and were relied upon by the Federal Circuit).

The government asserted that there was no valid reason to allow the Team to bud to the front of the line and skip over the Fourth Circuit.  In other words, there was no “reason to deviate from the [C]ourt’s usual practice of deferring any review until the court of appeals has issued its decision.”  The government slammed the Team stating that “Petitioner’s confidence in its own attorneys’ litigation skills provides no reason to take the extraordinary step of granting certiorari before judgment.”  Plus, Tam’s attorneys are really good attorneys themselves.

Not surprisingly, the Native Americans, who won at the district level, agreed with the government and added that if the Court did grant the Team’s petition it should only do so to answer the First Amendment questions, not the other challenges that they have asserted to THE REDSKINS registrations.

This Washington Redskins case and the Tam case have widespread interest because if the Supreme Court agrees with the Federal Circuit’s decision in Tam, then the provision in the 70 year old Lanham Act preventing the registration of disparaging trademarks will be found unconstitutional as violating the First Amendment.  There are wide-reaching implications for this decision.

With the death of Justice Scalia, there are only eight Justices currently on the high Court.  If there is a split decision, then the lower court’s decision stands.   I suppose I am putting the cart before the horse as the Supreme Court has not yet granted certiorari on the Tam or the Team’s case.  However, I would be shocked if the Court does not do so.  This issue is as exciting as the Super Bowl (at least for trademark attorneys).

LEAFS BY SNOOP May Be Blocked by Another Leaf Logo

Posted in Mixed Bag of Nuts

Snoop Dogg’s LEAVES BY SNOOP design mark application may be in trouble. The owners of the Toronto Maple Leafs filed a request for extension of time to oppose the mark with the Trademark Trial and Appeal Board, citing the need for more time to investigate potential claims.

Calvin Broadus, more popularly known as Snoop Dogg, filed two intent to use applications back in November. One for the LEAFS BY SNOOP word mark and another for LEAFS BY SNOOP with a design element. The Maple Leafs didn’t take issue with the word mark, but apparently think that the design mark may be a little too close to their own Maple Leaf logo.

LEAFS BY SNOOPleafs-logo

The marks clearly share some visual commonalities, though the inspiration behind the marks is quite distinct. The Maple Leafs logo draws from the teams history, including 13 veins in the top representing the number of Stanley Cup Championships the team has won, and a total of 17 veins on the leaf representing the year the team was founded, 1917. Snoop Dogg drew inspiration from the marijuana leaf, a substance that he very publicly promotes.

The LEAFS BY SNOOP applications don’t cover marijuana, of course. Both applications cover cigarette lighters. We’ve written before about marijuana branding and how some may be trying to stake their claims with registrations that cover other goods that the U.S.P.T.O. may find similar or complementary to marijuana. They hope that this will protect their territory if federal registration ever becomes a possibility. Marijuana has seen growing public acceptance in recent years, with a few states legalizing even recreational use. The federal government still sees it as an illegal narcotic and so federal trademark registration is out of the question for the marijuana industry, at least for registrations that cover marijuana.

It will be interesting to see how these marijuana related applications and registrations fare as they bump up against big established brands. The Maple Leafs marks are arguably famous marks. Though they may well have a registration that covers cigarette lights, they might not need it. If they decide to oppose the registration, I’m assuming they will be strongly considering tarnishment.

A Duel Over DUO Leaves Only Uno

Posted in Almost Advice, Food, Product Packaging, Trademarks, TTAB, USPTO

The never-ending battle at the Trademark Office over trademarks for beer and wine suffered another casualty last week, this time over the mark DUO.  Applicant Uinta Brewing Company filed a use-based application to register DUO for beer.  Fun fact:  the Utah-based brewery owns a trademark registration for TINDER for “beer.”

Uinta Brewing uses the DUO mark on product packaging for its 12-pk sampler containing two types of its beers shown below.

duo1

uinta_organic_duo2

Uinta received an office action refusing registration, not for being merely descriptive, but rather based on a likelihood of confusion with U.S. Registration No. 2,255,914 for DUO for wine owned by Chilean wine company Alto de Casablanca, S.A.   Incidentally the mark was assigned to Alto de Casablanca from California-based winery, Franciscan Vineyards.  The Trademark Office asserted that the marks were identical and that “beer” and “wine” were sufficiently related such that consumer confusion was likely.

duowineUinta argued that “beer” and “wine” were not related, basing those arguments on the fact that such a small percentage of trademark registrations cover both beer and wine (about 70 registrations in total), the relative number of registrations for beer and wine (about 8,000 for beer and 18,000 for wine), and also about 10 pairs of registrations for identical or highly similar marks covering “beer” and “wine.”

However, the math was insufficient to overcome the refusal.  In total, the Office provided 11 websites of combination brewery/winery operations and 17 third-party registrations covering both beer and wine.  Uinta appealed this decision, and the Board affirmed the refusal.   This decision provides an interesting comparison with the Board’s decision in In re Reubens Brews LLC, which was decided after the Notice of Appeal was filed in the DUO matter.  As we have discussed here before, Applicant’s REUBENS BREWS & Design mark for beer overcame a refusal over a registration for a stylized RUBENS on wine.  Although not precedential, this decision offers important clues to help overcome similar refusals by distinguishing features between the marks and also responding to the Examining Attorney’s evidence by providing, in part, evidence of the number of breweries and wineries in the United States, not the number of registrations.

While the brewery could have argued the evidence in a similar way to Reubens Brews, these arguments may still not have been sufficient to overcome the refusal.  The more difficult issue with DUO is that the marks were identical as filed.

Can breweries and wineries avoid this issue?  Certainly.  One takeaway from this pair of cases is to consider filing for a mark that includes words or design elements that tie it more closely to beer or wine (as BREWS and the design did for the Applicant in Reubens Brews) or otherwise distinguishes it.  Here, although the packaging might need to be changed first before alleging use, filing for UINTA DUO may have at least overcome the Trademark Office’s concern with the wine’s registration, especially given that another’s registration for DIRIGIBLE DUO for wine co-exists with the DUO registration on identical goods.  Alternatively, properly drafted consent agreements between applicants and registrants can also be used to overcome these refusals.