Finding Wine and Beer Related, TTAB Affirms 2(d) Refusal of "BEAR REPUBLIC" over "BEAR REPUBLIC RICARDO'S RED ROCKET ALE & Design"
E. & J. Gallo's attempt to register the mark BEAR REPUBLIC for wine was stymied by the USPTO's Section 2(d) refusal based upon the registered mark RED ROCKET RICARDO'S BEAR REPUBLIC ALE & Design for beer and ale [ALE disclaimed]. The Board affirmed, finding the marks similar and, based on third-party registration evidence, the goods related. In re E. & J. Gallo Winery, Serial No. 77458162 (August 13, 2009) [not precedential].
As to the goods, Examining Attorney Dayna J. Browne submitted "eleven third-party use-based registrations that include in their identification of goods both wine and beer (and/or ale)." The Board cited In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988) and In re Albert Trostel & Sons, Co., 29 USPQ2d 1783 (TTAB 1993), in finding that these registrations "have probative value to the extent that they serve to suggest that the goods listed therein are of a kind which may emanate from a single source under a single mark." In addition, two third-party websites showed that there are wineries that also produce beer.
From this evidence, the Board found that the second du Pont factor supported the refusal.
The Board also noted that it has found in "numerous cases" that different alcoholic beverages "are related products which are sold in the same trade channels to the same classes of purchasers, including to ordinary consumers, and that confusion is likely to result if the goods were to be sold under similar marks."
Turning to the marks, Gallo contended that they are “dramatically” different in appearance, given the presence in registrant’s mark of "a prominent drawing of a rocket in take-off, handwritten script, three different text sizes, a drawing of a star, a banner, and a box enclosing the primary elements of the mark." Gallo also argued that the words "Bear Republic" are weak because they suggest the state of California. [I'm not saying that California is weak, although .... ed.]
The Board, however, found that the dominant portion of the registered mark is the literal portion. Moreover, "[e]ven assuming that the term 'RED ROCKET ALE' is the dominant portion of the registered mark, as applicant argues, we find that the marks are similar because they share the words 'BEAR REPUBLIC.'" As to the weakness of the latter phrase:
Although the words “Bear Republic” may suggest the state of California, the TESS summary indicates the absence of any third-party registrations of the same or similar mark for any goods (or services), let alone for alcoholic beverages. Thus, contrary to applicant’s contention, we do not view these words as “weak.”
Noting that Registrant is named "Bear Republic Brewing Company, Inc.," the Board pointed out that "Bear Republic" appears as registrant’s house mark on its website. Moreover, the evidence revealed that "other brewers use their house mark or trade
name at the top of a label or mark, followed by an additional product mark below, as is the case with registrant’s mark. This would appear to be a common practice in the industry, and serves to buttress the notion that the 'BEAR REPUBLIC' portion of registrant’s mark cannot be ignored when comparing the marks."
And so, the Board found the marks to be similar in appearance, sound, meaning and overall commercial impression.
While registrant’s mark includes other words and design features, this first portion of registrant’s mark is identical to the entirety of applicant’s mark, and thus may lead consumers to mistakenly believe that applicant's BEAR REPUBLIC wine is an expansion of the BEAR REPUBLIC product line and somehow is associated or affiliated with the source of the product sold under the mark BEAR REPUBLIC RICARDO’S RED ROCKET ALE and design.
Resolving any doubt in favor of the prior registrant, the Board affirmed the Section 2(d) refusal.
TTABlog comment: It is my observation that, based on third-party registrations, one can prove any beverage related to any other beverage. In the real world, however, do you think that people would be confused by these marks for these goods? Maybe after a few drinks. But totally sober? I have my doubts.
Text Copyright John L. Welch 2009.