Monday, May 12, 2008

Finding PTO Evidence Inadequate, TTAB Reverses 2(a) and 2(d) Refusals of "HEINEKEN" for Meat Juices

Canadian Robert V. Marcon has done it again. In March 2008, the Board reversed a Section 2(a) refusal of his application to register L'OREAL PARIS for aloe vera drinks because the PTO failed to prove that the French company of that name "is of sufficient fame or reputation to consumers in the United States" that a false connection would be presumed." (TTABlogged here). This time he not only knocked out a Section 2(a) refusal of the mark HEINEKEN for "meat juices," again because of the PTO's inadequate proof, but he also overcame a Section 2(d) refusal. In re Robert V. Marcon, Serial No. 78288366 (April 28, 2008) [not precedential].

Section 2(a): The PTO submitted only the following evidence in support of its refusal: (1) two sets of GOOGLE brand search engine "hit list" result pages; and (2) printouts from the Heineken brewery website. Based on this "scant" evidence, the Board was unable to find "that the HEINEKEN name is of sufficient fame that a connection with Heineken brewery will be presumed."

"Hit list" submissions are of little probative value because insufficient text is available "to determine the nature of the information, and, thus its relevance." Without actual printouts of the web pages, the Board cannot examine "the content and context within which the term 'Heineken' is being used."

As to the printouts from the Heineken website, the information contained therein was of "little consequence" to the issue of the fame of the Heineken name. Moreover, there is a "strong likelihood" that Heineken might engage in "puffery" in stating the importance or fame of the Heineken brewery. Therefore the Board gave this evidence "limited weight in view of the source of the information."

In reversing the 2(a) refusal, the Board noted that "a different result might have been possible" had it been "privy to a fuller record."

Likelihood of confusion The Board focused on one of the 10 registrations cited by the Examining Attorney, namely, for HEINEKEN for "beers and malt beverages." It found its analysis "'inhibited' by the lack of any clear definition of applicant's goods, i.e., 'meat juices.'"

The Examining Attorney feebly asserted that third-party registration evidence established that "a single owner provides meats, meat extracts and beer." Also, "restaurants, such as microbreweries of beer and lager also provide meat dishes that may be prepared with beer." Finally, she pointed to Internet excerpts "showing that that beer is used as a marinade to tenderize and season meats."

The Board was not impressed. As to the registrations covering beer and meat products, they are all owned by foreign entities and are based on Section 44(e) with no use in commerce. Therefore, that have no probative value here.

The fact that a restaurant serves beer and meat dishes is "wholly irrelevant to establishing that beer is somehow related to 'meat juices.'" And the Internet evidence at best "established a connection between beer and meat, albeit a tenuous one."

Finding no evidence on which to conclude that "purchasers are likely to assume or expect that beer (and malt beverages) and 'meat juices' originate from a single source," the Board found the second duPont factor to be dispositive, and it reversed the 2(d) refusal.

TTABlog query: What do you think the odds are that this mark will clear the opposition stage?

Text Copyright John L. Welch 2008.


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