While the Minnesota state legislature ponders whether consumers should be able to purchase liquor on Sundays within the state, the U.S. Trademark Trial and Appeal Board (TTAB) has once again concluded that consumers are likely to be confused that beer sold under one mark comes from the same source as wine (or another liquor) sold under a similar mark.  While these TTAB decisions are positive for those who already have their trademark registered, it’s problematic for potential applicants on either side of the debate seeking to protect their mark in this industry.

I have griped before about the USPTO’s firm stance on the relatedness of beer to wine and other liquors – a troubling trend that I think should be adjusted.  In my experience, when a registration is refused on this basis, the Examining Attorney will cite prior case law; evidence supporting that beer, wine and liquor are sold at the same retail outlets; evidence showing that breweries have used wine or bourbon barrels to age their beer; and third party registrations claiming both beer and wine.  I question whether consumers would believe that a craft beer under one mark emanates from the same source as wine sold under a similar mark such that the consumer would be confused as to the source.  I’d like to see someone present some current survey evidence that either supports or dispels this notion based on actual consumer perceptions.  I also don’t see this issue as being much different than how the USPTO has treated apparel items.  Despite apparel items like hats being sold in the same retail outlets as other apparel products like shirts, and some registrations covering both hats and shirts, similar marks for different apparel goods are often both able to co-exist on the Register without issue.    Can’t even the most dejected of Vikings fans distinguish between source for SKOL vodka and a SKOL STOUT beer?  I think so.

And as an NPR blog post this month suggests, craft  breweries may run out of available names even among themselves, and then throw in the context of the USPTO’s position on the relatedness of beer and wine?   Troubles may brew.

In the appeal decided this month, In re Sonoma Estate Vintners, LLC, the Applicant’s mark for BLACKHAWK in class 33 for wine was refused registration based on an alleged likelihood of confusion in view of the registered mark BLACK HAWK STOUT in class 32 for “malt beverages, namely, beer, ales, and stout” owned by Mendocino Brewing Company, Inc.  While copies of the bottle labels are shown below, note that the applied for mark does not include the bird as part of the mark.

https://www.duetsblog.com/files/2015/01/sideloadimage-2017-10-30-17-13-51.jpg

 

 

The hawks used on both labels are certainly troublesome here, but not considered as part of the refusal.  In supporting the refusal, the Examining Attorney relied only on 15 registrations of marks that were registered for both beer and wine to show relatedness of the goods.  In response, the Applicant raised an interesting argument – many of the cited registrations never obtained a COLA label approval certificate from the TTB, which is required for federal regulation.  Interstate commerce sales of alcohol require federal approval of the label, and this regulated interstate use is needed in order to obtain the trademark registration.  Here, none of the cited third party registrations ever received COLA labels for both wine and beers.

It’s important to note that this isn’t the end of the road for breweries, vineyards, and distilleries when it comes to rights in a trademark.  Among other tactics, the Applicant can always reach out to the Registrant to obtain a coexistence agreement with the Registrant that would allow registration of Applicant’s marks.  Refusal to register also does not necessarily mean that the Applicant is unable to use the mark, since enforceable rights in the US begin upon use of the mark.  Moreover, if the applicant had applied for BLACKHAWK WINERY, they would have had a better chance for obtaining the registration over BLACK HAWK STOUT.

Do you think consumers are likely to confuse beer sold by a craft brewery under one mark from wine sold under a vineyard’s mark?  Was the TTAB’s decision here correct?

 

  • stevebaird

    Thanks Martha, this is a great topic of discussion, I especially noted the regulatory argument about the COLA labels — how do you suppose the third party federal trademark registrations were obtained for both beer and wine (recognizing that interstate commerce is a prerequisite), when COLA labels weren’t obtained for both?

    This also strikes me as another good example of the difference between the right to register and the right to use, one the Supreme Court will be addressing any day now, as we anxiously await the Court’s decision in B&B Hardware:

    https://www.duetsblog.com/2014/12/articles/trademarks/channeling-justice-ginsburg-of-supreme-court-on-the-right-to-register-a-trademark/

    It is one thing for the Board to deny the right to register a word-only trademark for wine, based on a prior word-only trademark registration covering the same distinctive word for beer, but it would be quite another to hold the entire label to be infringing, and open the door to injunctive relief, monetary damages, and attorneys fees.

  • Martha Engel

    Steve, I thought the argument about COLA was interesting due to the need to obtain the TTB approval necessary (the Alcohol and Tobacco Tax and Trade Bureau) to sell product in interstate commerce (one of the requirements for federal registration). As alluded to in the TTAB’s decision, the owners of the marks have attested to use in interstate commerce — even if that use failed to meet the COLA requirement. The TTAB says essentially it’s not their job to police other regulations, and in this ex parte context, the validity of the Registrant’s claim of use is not in play.

    • stevebaird

      Perhaps the Board will begin to see a cottage industry of cancellations challenging the interstate commerce requirement for registered marks where no COLA label was obtained?

      • Martha Engel

        I have been trying to come up with an analagous circumstance – where “use” may have violated another government requirement. Have we seen anything similar with FDA? Something that was alleged to have been used in commerce, but never made it through regulatory approval?

  • James Mahoney

    From this non-lawyer, beer-, wine-, spirits-drinking occasional inebriate’s point of view, the answer to your two final questions, Martha, is the same: no.

    Even if these two were side by side on the shelf, even if they were accompanied by some spirit(s) of the same name but obviously different label design and beverage, the answer would still be “no.”

    To put finer points on it, note that the Blackhawk in winery is one word, and Black Hawk in beer is two words, and the treatment of the hawk graphic is completely dissimilar. ‘Course, that probably makes little difference to the fine folks who parse such things.

    And, as a separate observation, isn’t “the most dejected of Vikings fans” a redundancy?

    Go Patriots! ;-)

    • Martha Engel

      Glad you agree with me, James — well maybe not with respect to football team preferences. :-)
      Much like the spectrum of distinctiveness in trademarks, there’s a spectrum of dejection. I lived in Packers territory during the Giants/Vikings playoff game. There certainly can be a “most dejected”.