-Martha Engel, Attorney
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.
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.
Uinta 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 Although not precedential, this decision offers important clues to help overcome similar refusals by distinguishing features between the marks and also responding to the Examining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.