DuetsBlog Collaborations in Creativity & the Law

Dude, It’s Gotten GNARLY for Beer and Wine

Posted in Agreements, Almost Advice, Branding, Infringement, Marketing, Product Packaging, Trademarks, TTAB, USPTO

Trademark issues regarding breweries and wineries are increasingly intertwined as both breweries and wineries grow, flower, and spread out throughout the country.  I have talked before about the issues relating to a perceived likelihood of confusion between marks on beer used by breweries and marks on wine used by wineries (see here, here, and here).   Well, we’ve got yet another example of a dispute between a winery and a craft brewery over a mark.

madtree

MadTree Brewing in Cincinnati, Ohio has a brown ale in their beer lineup that they have called Gnarly Brown.  In 2014, they filed an application for the word mark GNARLY BROWN in connection with “beer.”

Delicato Vineyards in California filed an opposition in 2015 based on their registration for GNARLY HEAD for wine. The marks at issue are word marks.  Delicato bases its arguments in support of refusing registration at least on “the Opposed Mark and Asserted Mark both begin with the inherently distinctive term ‘Gnarly,’ [and] both pertain to alcoholic beverages commonly sold to the same consumers in the same trade channels.”

So esteemed readers, on the words alone, do you think GNARLY BROWN is confusingly similar to GNARLY HEAD?

How about when there are a number of GNARLY marks registered by other parties for wine?  For example:

Both of these are owned by other California-based wineries.

Now let’s consider the product packaging and logos associated with the word marks.  Does that change your mind on the similarities of the marks?

GnarlyBrown

GnarlyHead

It looks like this may really have been the knot in the issue.  In fact, as part of the basis for its arguments in the Notice of Opposition, Delicato stated that “both appear with gnarled plant designs, as used or contemplated for use in commerce.”

Based on the TTAB record, particularly the number of extensions of time granted, it looks like the parties made several attempts to settle the matter.  Ultimately, MadTree decided to move on from the name.   Here, the issue was related to one beer in MadTree’s lineup, not the brewery’s name itself.  Although the decision to move on from a name is never an easy one, there is certainly some cost/benefit considerations to make when deciding between choosing to fight a dispute like this and choosing a new name for one beer in your lineup rather than settling for perhaps undesirable restrictions on use.  I suspect based on the images above that the parties attempted to agree on different packaging that may diminish the confusing similarities of the mark or tried to reach an agreement on geographic restrictions on distribution.  But for a brewery named MadTree , it might not make sense for its branding to keep the name but move away from imagery related to trees or roots.

Is there hope yet to straighten out the gnarly issues regarding the relatedness to beer and wine?   I think there certainly remains some, especially in the wake of the recent TTAB decision in In re Reubens Brews LLC.  Here, the TTAB determined that a REUBEN’S BREWS design mark used in connection with beer was not confusingly similar to a stylized mark for RUBENS for wine.  As part of that decision, the Board determined that the marks were visually different, based in part on the presence of the word BREWS in the mark.

This might not be the end of GNARLY disputes at the Trademark Office for alcoholic beverages.  The only other pending GNARLY application is a recently filed application for GNARLY GROVE HARD CIDER for “hard cider”, which was filed by a cidery in Indiana.   The application is awaiting examination at the Trademark Office.GnarlyGrove

 

Where do you think this one ends up?