On December 11, I will be presenting a CLE on Brewery and Distillery Law, discussing trademark issues affecting breweries and distilleries.  One of the topics that I’ll spend some time on during that presentation – and one that we’ve covered a lot here – is how the Trademark Office considers beer to be sufficiently related to wine and other spirits when evaluating a pending application for a likelihood of confusion with a registered mark.  The same has, in a few cases, been said about these alcohol products being related to restaurant services or bar services.

In today’s episode involving this issue, Heritage Distilling Company in Washington filed a trademark application in 2016 for a standard character mark BSB for “distilled spirits”.  The Trademark Office refused registration of this mark, however, based on a prior registration by Black Shirt Brewing Company for the following mark for “brewpub services; taproom services; taproom services featuring beer brewed on premises.”

Trademark image

Meanwhile, Heritage Distilling Company filed for the logo below and that went through the office with ease.  Not even an Office Action.  It was filed on April 28, 2017 and registered on October 3, 2017.

Trademark image

Heritage Distilling Company appealed the Examining Attorney’s rejection of its standard character mark for BSB claiming, in part that brewpubs and taprooms are not generally known for distilled spirits.  Although finding the marks to be similar, the Board agreed that the claimed services of the registration were not sufficiently related to support a likelihood of confusion.  “To establish likelihood of confusion a party must show something more than that similar or even identical marks are used for food products and restaurant services.”  In re Coors Brewing Co., 343 F.3d 1340 (Fed. Cir. 2003).  The Board further noted that “the definitions of taproom and brewpub refer to beer and food, not spirits. ”  Based on the evidence of record, the Board determined that the Examining Attorney had not satisfied the “something more” requirement here and found that the goods and services were not similar or related.  Only because the record failed to show these goods were related, the Board reversed the refusal.

So what if Black Shirt Brewing Company had instead filed for their mark on “bar services”?  It’s possible that the Board may not have reversed the refusal because there would have been a more clear association between a distilled spirits and bar services.

Taking that a step further, what if Black Shirt Brewing Company had filed for the mark on “beer”?  That would have likely made a refusal of BSB in standard characters over BSB on beer more difficult for the Trademark Office to reverse.  The “something more” standard would not apply when comparing goods to goods – beer to distilled spirits – as it does when comparing food products and restaurant services.  The brewery never filed for its house mark for beer, yet a few months after these applications were filed, they filed for some of its beer names for “beer”.   Here’s the specimen from one of those filings in 2014.  Would you have filed for BSB for beer?

https://tsdrsec.uspto.gov/ts/cd/casedoc/sn86372733/SPE20140823081858/1/webcontent?scale=1

It has been a while since a billboard campaign has caught my interest and attention, but the currently running Absolut Goes Dark ads are an exception worth noting:

AbsolutJack

AbsolutJohnnie

AbsolutJim

Isn’t it interesting — at least in this context — how the simple references to Jack, Johnnie, and Jim, draw an obvious comparison to the distilled spirits brands Jack Daniels, Johnnie Walker, and Jim Beam? We’ve discussed here before similar fair comparative advertisements — in the context of Vodka brands no less — and brand leader references.

Although the JIM BEAM brand has been federally-registered a very long time, it doesn’t appear the brand has sought protection for the truncated version of its name, JIM.

Same story with JOHNNIE, but not so with Mr. Daniel — he seems to know more than Jack about protecting trademark truncations, having obtained a federal registration for JACK standing alone, more than a decade ago, and he recently used this specimen to keep it active:

JackAd

Swedish Absolut is not only on a first name basis with these well-known distilled spirit brands, but it also appears to know how to own federally-registered rights in the shape of its bottle:

AbsolutBottleNow, if Absolut were to truncate its name, should it target a low calorie version that allows drinkers to target their Abs? Look what one finds when searching for Abs Vodka . . . .

We’ve spilled a lot of digital ink here over the past several years discussing the protection of non-traditional trademarks. We’ve also written about the importance of layering various intellectual property rights (trademark, copyright, and patent) to accomplish the competitive goals of a business. And, we’ve enjoyed writing about non-traditional vodka branding here and here. Today, we have it all come together at once.

A federal lawsuit filed in Minnesota a couple of weeks ago illustrates very nicely the creative layering of intellectual property rights that are available to many brand owners, not just distilled spirit and vodka brand owners.

In Globefill Inc. v. Maud Borup, Inc. (complaint is here and exhibits are here), Globefill (who sells vodka in skull-shaped bottles) brought several IP claims against Maud Borup (who apparently sells cocktail mixers and hot sauces in skull-shaped bottles). I suspect the lawsuit resulted from Maud Borup’s recent Halloween features.

Globefill asserted infringement of its federally-registered skull bottle trade dress rights and its common law rights in the skull bottle trade dress, in addition to infringement of its registered copyright in the 3 dimensional sculpture embodied in the vodka bottle packaging, and infringement of the ornamental design features covered by a design patent (all issued rights shown in the exhibits attached to the complaint).

Specimen for U.S. Trademark Reg. No. 4,043,730
U.S. Trademark Reg. No. 4,043,730

The beauty of the layering of IP rights lies in the fact that each asserted IP right offers a different path to accomplish the same end goals of ending the infringement and unfair competition while also providing a monetary award to the brand owner.

For example, having copyright and patent rights will serve as a strong basis for injunctive relief even if there is no likelihood of confusion (which is required to establish trade dress infringement), so for those IP claims, no need to focus on whether hot sauce and vodka are sufficiently related to establish the requisite confusion for the trade dress claims.

Since the trade dress is federally-registered, the burden shifts to Maud Borup if it wants to defend the trade dress claims on functionality grounds. Without a registration, Globefill would have had the burden of establishing non-functionality of the skull design vodka bottle.

To establish copyright infringement Globefill will need to prove Maud Borup’s access to Globefill’s bottle and substantial similarity of the three dimensional skull works. This uniquely then opens the door to statutory damages and an award of attorneys fees to the prevailing party. On the other hand, with the patent and trademark claims, actual damages must be proven (as opposed to more easily obtained copyright statutory damages), and an award of attorneys fees is only possible for exceptional cases with patent and trademark claims, merely prevailing it not enough (as it is with copyright claims).

And, let’s not forget the boxcar numbers that can result from proving design patent infringement.

Of course, the different proofs and remedies resulting from Globefill’s intelligent layering of IP rights on a single product is far more complex than what I’ve noted here, but I think you get the point — there’s more than one way to obtain injunctive relief and more than one way to obtain monetary relief, based on essentially the same conduct by the defendant.

So, creative layering can be a beautiful sight, but just yesterday, John Welch, over at the TTABlog highlighted a case where the layering of IP rights didn’t go as well for the brand owner.

In that case, the brand owner fell into the all-too-common trap we have warned about for a long time, touting function over form, while trying to obtain non-traditional trademark rights — basically, it was a failed attempt to go beyond the copyright and utility patent rights the brand owner already had secured.

In short, word to the wise, there is far more art than science to an intelligent layering of intellectual property rights.

 

 

 

 

 

 

 

 

 

Diageo, the Tanqueray brand owner is currently running billboard ads in the Twin Cities as part of its “Tonight We Tanqueray” ad campaign. A couple of years back when the campaign first was announced, Diageo explained it this way:

“One of the world’s most awarded gins, Tanqueray London Dry has just launched a substantial new global campaign ‘Tonight we Tanqueray’, positioning Tanqueray as the drink to set the tone to an evening, inviting consumers to start the night right.”

Did you notice the verbing of the Tanqueray brand and trademark? Nancy Friedman over at Fritinancy did last year. As risky as verbing can be for some brands, as we previously have discussed extensively here, here, here, here, and here, Diageo appears to have gotten this one right, making a number of choices consistent with our earlier checklist for mitigating the risk of genericide and avoiding a complete loss of trademark rights.

Diageo obtained federal registrations for TONIGHT WE TANQUERAY and the stylized version depicted in the ads shown above, two years ago. And, it appears another Tanqueray verbing tagline was federally-registered six years ago for READY TO TANQUERAY? — but unless a Section 8 & 15 Declaration is filed during the currently open grace period, it will die a natural death.

One of the non-legal consequences of using TANQUERAY as a verb in these taglines is that consumers naturally will fill in the blank on what the brand means to them so that they can ascribe meaning to the tagline. I suppose this invitation for engagement could be good or bad, depending on how the brand is perceived. Given the title of this blog post, I have filled in the blank for TANQUERAY to be synonymous with TOAST or CELEBRATE. What does the brand mean to you?

The ads shown above also depict something else we have written extensively about here: non-traditional trademarks. Note the classy and unspoken “look-for advertising” to promote the Tanqueray green/red color trade dress and bottle configuration (both federally-registered decades ago).

Last, for the history buffs out there, note the wonderful archive of product labels that can be obtained from the online records at the USPTO, here the front and back of a nearly century old product label for TANQUERAY gin, showing the USPTO’s mail room stamp from 1917:

Until seeing this specimen I hadn’t appreciated Tanqueray is the surname of the brand’s founder Charles Tanqueray.

It must be a very rare surname as the Diageo marks are the only ones in the entire USPTO database containing the term TANQUERAY. And, none of the registrations rely on Section 2(f) of Lanham Act for purposes of distinctiveness.

Have you ever met someone named Tanqueray?

Last week I captured a few eye-popping photographs of a delivery truck parked in downtown Minneapolis promoting Kinky Liqueur, “a delightfully fruity fusion of super premium vodka“:

And my hunch — that scratching the surface of this interesting brandname would reveal a worthwhile trademark story — actually paid off.

As it turns out, Kinky Liqueur didn’t have a straight shot at federal registration with the USPTO since an Australian company already owned two federal registrations for some Kinky marks for rum: KINKYNERO RUM and KINKYLUX RUM. Not surprisingly, the USPTO found likely confusion when Kinky Liqueur sought to register KINKY for distilled spirits and liqueurs, and its weak attempt to argue otherwise was not successful.

This then led a rather determined Kinky Liqueur to file a pair of petitions to cancel the blocking registrations, on fraud grounds, see here and here. The Australian company claimed otherwise, but it ended up settling the dispute with Kinky Liqueur.

The key question to be answered when resolving these kinds of trademark disputes is: Do you want to end up with weak and narrow national rights (consent agreement) or broad and strong geographically-limited rights (concurrent use agreement)? The parties here opted — perhaps reluctantly — to water-down the strength and scope of their respective rights by choosing the former option, presumably because both have their eyes on a national market and don’t want to divide up the country into two non-overlapping geographic territories.

Trademark counsel should strongly encourage their clients to think hard about whether dividing up the country into separate markets is really not a viable option since the consequence of not doing so is significant from a trademark perspective.

In a resolution using a concurrent use agreement, the parties end up dividing the country — and the fact that no geographic overlapping use is permitted provides the basis for convincing the USPTO that there is no likelihood of confusion, and if the USPTO agrees, it can issue trademark registrations to unrelated parties for even identical marks in connection with identical goods, so long as the entire geography of the U.S. is accounted for between them and there is no overlap of geographic territory. This approach is ideal for companies who have a limited geographic market and desire broad and strong rights within that area.

In a resolution using a consent agreement, as the Kinky example illustrates, the parties publicly admit to the absence of any likely confusion, even in the case of overlapping geographic markets, which gives third parties a strong basis for pointing to the agreement (a public record now), to justify their entry into the same market under yet another Kinky brand name.

The Kinky trademark agreement is interesting in that it forbids either party from publishing the Agreement or any of the terms of the Agreement, while at the same time it permits disclosure to the assigned Examining Attorney at the USPTO — that is, by the way, how we obtained a copy from the online trademark file at the USPTO — so, it is a matter of public record, it is not confidential information. No matter how one pours the drink, giving the USPTO a copy of the agreement to overcome a registration refusal amounts to a public airing of the terms of the Kinky agreement.

The Kinky trademark agreement also appears designed to deny the natural consequences of the consent agreement option by including this provision:

“This Agreement is to operate as a resolution of the pending trademark dispute only as between the parties hereto, and it is understood that the parties expressly reserve the right to prosecute suits and claims against any and all other entities or persons that may use like or confusingly similar marks to either of the parties’ trademarks.”

Notwithstanding this provision, the significant hurdle both parties will face in future trademark enforcement efforts will be explaining to the factfinder how their target’s use of a Kinky mark for another distilled spirit product is somehow likely to confuse consumers when these coexisting Kinky marks have been admitted to not result in any likelihood of confusion:

 

  

How likely do you think it is we’ll see yet another’s Kinky spirit to pour over the rocks?

 

Let’s revisit the topic of non-traditional “touch” trademarks today.

Of all the traditional five human senses (sight, hearing, taste, smell, and touch) and trademarks that can be perceived by one or more of those senses, touch, a/k/a tactile, a/k/a texture trademarks are just about as uncommon as any (taste, perhaps, being the least common). Indeed, back in 2006, Marty Schwimmer from The Trademark Blog correctly noted the dearth of recognized tactile marks. Moreover, despite a 2006 INTA Board of Directors’ Resolution supporting the protection of touch marks, few appear to have reached for or grabbed any such protection (putting aside Kimberly-Clark, already blogged about here).

As arguably one of the most intimate of the senses: ‘Touch is the first sense developed in the womb and the last sense used before death.” Given that and given other unique characteristics of “touch” among the senses, it is a bit surprising that touch marks haven’t been pursued more by marketers looking to create intimate, emotional connections with a brand: “Another distinction of the sense of touch is that it is identified with the real. You can’t believe your eyes, nor your ears, and taste is personal and subjective, but touch is proof.” By the way, since touch/tactile/texture marks are so uncommon, why can’t we agree on what to call them? For what its worth, my vote is to call them “touch” marks since that is the term that names the underlying basic human sense.

Anyway, with that background, as far as I can tell, the one industry that seems to show the most promise or, at least, interest in touch trademarks, is the alcoholic beverages industry, most particularly those companies that focus on selling distilled spirits or wine.

                          

Continue Reading Touch Trademarks and Tactile Brands With Mojo: Feeling the Strength of a Velvet, Turgid, Touch Mark?