Test Your TTAB Judge-Ability on These Two "MOTHER EARTH" Design Marks for Beer
The PTO refused registration of the mark shown below left, for "beer, excluding both organic beer and beer comprised solely of organic components; brewed malt-based alcoholic beverage in the nature of a beer, excluding both organic beer and beer comprised solely of organic components" (class 32) and for "distributorships in the field of alcoholic beverages, excluding both organic beer and beer comprised solely of organic components" (Class 35) [BREWING disclaimed], finding it likely to cause confusion with the mark shown below right, for "beer comprised solely of organic components" [BREW CO. disclaimed]. Applicant appealed. How do you think this came out? In re Mother Earth Brewing, LLC, Serial No. 77716598 (December 30, 2013) [not precedential].
The goods: Applicant argued that organic beer and non-organic beer are different, but the Board was unmoved: they are both "essentially the same goods." They use the same basic ingredients and are made by the same method. The record showed that both applicant and registrant make craft beer, organic being a subset. Craft beers are promoted together. Moreover, beer makers, both craft beer makers and mainstream beer makers, also make organic beer. [Even Anheuser-Busch makes organic beer].
In short, even if organic and non-organic beer are not identical, they are closely related for Section 2(d) purposes.
Applicant asserted that its beer is sold only at a particular store in San Diego, or at special events like the Vista Strawberry Festival, but the Board pointed out that there are no such limitations in the subject application. The Board must consider that registrant's goods travel in all the normal channels of trade for beer, which channels would include the same ones in which organic beer is sold.
Although the evidence showed that consumers of organic beer do not necessarily purchase mass-market beer, they do purchase craft beer, and craft beer falls within the applicant's identification of goods.
The marks: The literal portions of the marks are essentially identical. Applicant maintained that the design portions are sufficient to distinguish the marks, but the Board found that the designs project similar connotations and commercial impressions. Applicant's mark depicts a female head that consumers are likely to understand as personifying "mother earth," a nurturing figure. In the registered mark, the design suggest the earth as a nurturing place and the letters "ME" would be recognized as the initials for MOTHER EARTH, thereby reinforcing the connection with the words.
Moreover, "[w]hen marks consist of words and designs, the words are generally accorded greater weight because they would be used by purchasers to request the goods or services."
A patron in a bar is likely to ask for MOTHER EARTH beer, rather than the beer with the picture of a woman's head, or the beer with the tree and waterfall."
Applicant argued that MOTHER EARTH is a weak term, pointing to a dictionary definition and several third-party registrations. The Board, however, did not agree that MOTHER EARTH immediately and directly describes beer that is composed of organic ingredients. At most, it suggests that registrant's beer is made from natural ingredients. In an case, in applicant's mark the term has the same connotation.
As to third-party registrations, applicant failed to show that the registered marks are in use. At most they show that MOTHER EARTH some significance in suggesting that the product is wholesome and natural, but the limited number of registrations (three) was not enough to show that MOTHER EARTH has a strong suggestive connotation such that the design portions of the subject marks must be given greater weight.
[E]ven if purchasers note the difference in the design elements in the marks, they are not likely to view the different designs as indicating separate sources for the goods. Rather, they are likely to assume that a single source has adopted these marks as variations of each other, perhaps to differentiate its organic beer from its non-organic beer.
Applicant pointed to the lack of evidence of actual confusion, but applicant admitted that the parties are not in the same locations or channels of trade. Therefore, there has been no chance for confusion to occur. Of course, it must be presumed that registrant's goods are sold throughout the country and in all channels of trade.
Balancing the relevant du Pont factors, the Board found confusion likely as to applicant's goods in class 32.
The services: As to applicant's services, its distributorship must be for the benefit of others in order to register its service mark. If applicant is distributing only its own beer, that would not constitute a service under the Trademark Act. The Board had "some concerns" that the latter is the case. However, because the application was filed under Section 1(b) and proof of use has not yet been provided, the Board assumed that applicant is rendering a services - i.e., it is distributing non-organic beer for third parties.
Based on the complementary nature of the goods and services, the Board found them to be related. Retail establishments that are the consumers of applicant's distribution services are likely to assume that applicant also sells beer.
In fact, the distinction in the type of beer, with applicant’s distribution services being for non-organic beer and registrant’s goods being beer made of organic components, is likely to heighten the likelihood of confusion. That is, consumers could assume that a company that produces beer could use its distribution system to distribute beer for others, and that since the registrant makes an organic beer, it would choose to distribute non-organic beers for third parties, rather than organic beers that would compete more directly with its own products.
Referring to its du Pont analysis for the involved goods, the Board found confusion likely as to applicant's services, and it affirmed the refusal as to class 35.
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Text Copyright John L. Welch 2014.