WYHA? TTAB Affirms 2(d) Refusal of "AUGUSTINER" for Beer in View of Identical Mark for Same Goods
Let's suppose that you are trying to register the mark AUGUSTINER in the font shown below for "beer, namely, strong beer, low-alcohol beer, beer wort and colorant beer, non-alcoholic beers, non-alcoholic beverages, namely, non-alcoholic beers, malt wort," and the PTO refuses registration under Section 2(d) in view of the registered mark AUGUSTINER for beer. Yes, that's right: essentially the same mark for essentially the same goods. Would you have appealed? In re Augustiner-Brau Wagner KG, Serial No. 79045906 (November 19, 2009) [not precedential].
Anyway, suppose the decision is made to appeal, and you have to give it your best shot. What arguments can you brew up that won't fall flat at the TTAB bar?
Applicant feebly contended that its mark AUGUSTINER "does not resemble the mark" AUGUSTINER in the cited registration, but "not surprisingly" Applicant offered no explanation. "Indeed this would be a difficult task as the marks are essentially identical other than the almost indistinguishable block style font in applicant's mark." Moreover, because the cited mark is in "typed form," the Board must consider "all reasonable displays for purpose of comparison, including applicant's block style lettering." In short, the Board found the marks to be "essentially identical."
Applicant argued that AUGUSTINER is a weak mark based upon a "search of the USPTO database," but Applicant did not provide the search results, failed to bring up the issue in timely fashion, had no proof regarding the use of the third-party marks, and searched the word "AUGUST" rather than "AUGUSTINER."
Next, Applicant pointed to a prior registration for the mark shown below, but there were two major problems with this argument: the prior mark is very different mark, and the Board in any case is not bound by registrability decisions made in other applications.
Applicant relied "heavily" on the argument that the two marks at issue have coexisted for ten years without any actual confusion. However, likelihood of confusion is the test, not actual confusion. The asserted lack of actual confusion "carries little weight," and in an ex parte contest it must be remembered that the registrant "has no opportunity to defend its registration." Nor was there any evidence that the products overlapped in the marketplace.
Finally, Applicant asserted that "its goods are from the oldest and arguably the most prestigious brewery in Munich, Germany [and applicant] has marketed these goods in the U.S. since the 1930s.... Purchasers of specialty German beer are likely very knowledgeable about this niche area of beer tasting, and will be able to distinguish one brand from another."
The Board, however, must consider all potential purchasers, no just those "well-versed in beer varieties." The Board pointed out that it "must make our determination based on the least sophisticated potential consumer." Moreover, even sophisticated consumers may be confused between similar trademarks for similar goods.
Noting that Applicant's identification of goods is not limited to premium beer, and that beer is subject to impulse purchasing, the Board affirmed the refusal to register.
TTABlog comment: After a few beers, the relevant consumers are likely to be even less sophisticated, don't you think?
Text Copyright John L. Welch 2009.