TTAB Test: Are Beer and Wine Related for Section 2(d) Purposes?
The USPTO refused registration of the mark BLACKHAWK for wine, finding it likely to cause confusion with the registered mark BLACK HAWK STOUT for "malt beverages, namely, beer, ales, and stout" [STOUT disclaimed]. The marks are certainly similar, but what about the goods? Are they related? How do you think this came out? In re Sonoma Estate Vintners, LLC, Serial No. 85842056 (January 9, 2015) [not precedential].
Examining Attorney Raul Cordova submitted 15 third-party use-based registrations covering both beer and wine. Applicant asserted, however, that only three of the 15 third-party marks were actually in use for both beer and wine because only three had been issued a Certificate of Label Approval (COLA) for both beer and wine in the past five years. [As to ten of the marks, no COLAS were issued, while as to the remaining two, a COLAs were issued for beer but not for wine]. Thus, according to applicant, in only three of the 15 cases were both beer and wine legally sold under the pertinent cited mark.
The Board, however, concluded that this evidence did not completely rebut the examining attorney's third-party registration evidence. The Board noted that applicant did not submit any evidence as to whether the registrants were using the marks in the registrations. [Does the Board expect applicant to prove the negative? That the marks are not in use? - ed.].
The certificates of registration are prima facie evidence of the validity of the registered marks, the registrants’ ownership of the marks, and of the owners’ exclusive right to use the marks in commerce. Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b). It is possible that the registrants are using the marks for beer and wine and there is some reason or explanation that Applicant did not find their COLA applications.
The Board observed that applicant could also argue that any use of their marks by the 12 registrants who did not obtain COLA certificates was unlawful. However, in order to prove unlawful use, applicant would have to show either a per se violation of a statute regulating the sale of the goods, or a court or agency determination of illegality. Here there was no evidence of any final determination of illegality. As to the issue of per se violation, applicant showed only that it could not find COLA applications. It is therefore not clear that there has been a violation of the regulations, and there is no opportunity for registrants to be heard in this context. [Nor was there evidence that selling wine without a COLA certificate would invalidate a registration, or would merely be a collateral defect that could be rectified].
Moreover the Board noted that although the examining attorney submitted only 15 third-party registrations, there could be more, since there is no requirement that the examining attorney submit all the evidence that supports his position. Indeed, the Board would be "very critical if the examining attorney were to submit an inordinate number of registrations."
The examining attorney also submitted excerpts from nine third-party websites showing use of the same mark for both beer and wine.
Applicant provided 11 sets of "the same or similar marks" registered to different entities for beer and wine (or other alcoholic beverages) in an attempt to rebut the USPTO's evidence. The Board was not impressed, noting that it has previously held such evidence to be relevant but unconvincing. For one thing, the owner of any one of the marks may have obtained another registration for the other goods.
The Board found the evidence of third-party registrations and websites to be sufficient to demonstrate the relatedness of beer and wine, and it therefore affirmed the refusal.
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TTABlog note: Do you think that the Board leaned a bit too far in the examining attorney's direction in its consideration of the evidence? As I've said before, there is no per se rule that beer and wine are related, but it doesn't take much evidence to convince the Board that they are.
Text Copyright John L. Welch 2015.