Friday, September 11, 2009

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 In re E. & J. Gallo Winery, Serial No. 77458162 (August 13, 2009) [not precedential].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.


At 8:28 AM, Blogger Frank said...

I agree that in the real world marketplace there is no likelihood of confusion here. But who ever said the USPTO worked in the real world? If you were Gallo, would you appeal?

At 12:43 PM, Anonymous Bob Cumbow said...

The case of wine v. beer is especially absurd in light of extensive and precise federal labeling requirements which include disclosures that would ensure that no consumer could possibly be confused that the two products came from the same source--an argument, however, that the PTO never buys.

At 1:27 PM, Anonymous Anonymous said...

I'll be pondering these points over an ice cold Famosa beer...

At 1:46 PM, Anonymous Banjo Bandolas said...

This is a blatant attempt by Gallo to piggyback on the success of a small craft brewer. The Bear Republic brand, like those of many craft breweries, has been forged with the sweat and tears of years of hard work and passionate advocation. Gallo recognized the nationwide popularity of the brand and attempted to jump on board for a free ride. Good ruling!

At 2:53 PM, Anonymous mdr said...

It is a given, to those of us who do trademark work for wineries, that the TMO will refuse any mark in Class 33 (wines & spirits) that it finds similar to any mark in Class 32, be it for beer, ale, fruit juice, energy drinks, mineral water, plain water, or items even more far-fetched. It's surprising that Gallo thought they could pull this off -- perhaps they were relying on being a pretty big bear themselves.

At 7:04 AM, Anonymous Anonymous said...

The issue of similarity of the goods was not the issue here. The law is settled with respect to beer and wine. That is one reason why the commenter who is drinking a FAMOSA beer is not drinking a GALLO beer, which is the mark used in Guatemala where it is brewed. The issue was purely one of similarity of the marks.

At 4:58 PM, Anonymous Anonymous said...

Looks like the registrant got two registrations for the price of one here: one for BEAR REPUBLIC and one for RED ROCKET ALE (not to mention RICARDO'S), since someone trying to register RED ROCKET ALE presumably will be told that BEAR REPUBLIC is merely the house mark, and can be completely ignored, as was RICARDO'S RED ROCKET ALE & Design in the present case.


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