Tuesday, January 13, 2015

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 In re Sonoma Estate Vintners, LLC, Serial No. 85842056 (January 9, 2015) [not precedential].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.

Read comments and post your comment here

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.


At 8:52 AM, Anonymous Paul Reidl said...

I wish the Board would just say that there is a per se rule and be done with this farce. Few in the industry think that beer and wine are related, but the Board will seemingly bend over backwards to find relatedness. And its analysis of the COLA requirement is simply wrong. No COLA = no lawful use. You would lose your Federal license if you did that and everyone in the business knows that.

At 11:30 AM, Anonymous Anonymous said...

If beer and wine are not related then there should be no 3rd party registrations to support the refusals, right?

At 12:06 PM, Anonymous Michael J. Hughes said...

The TTAB seems to be trying hard to support the "new rules" for trademark Examining Attorneys that their job is to be very stern gatekeepers and always resolve even flimsy excuses for likelihood of confusion in favor of refusal. Where once the expectation was that it took an actual meaningful likelihood of confusion to reject an application, under the current climate even a weak chance of dilution appears to be enough to pass muster with the TTAB.

At 12:27 PM, Anonymous Mike Heilbronner said...

The problem is the artificial use of third-party registration evidence. It's an all-or-nothing proposition, regardless of whether the evidence is genuinely meaningful.

The proof of the artificiality is in the pudding: In the USPTO, wine/beer are related and there is always confusion when the marks are similar. In the real world, the goods are generally not perceived as related except in cases involving very strong marks.

But the latter is the case generally. Strong marks cross otherwise unrelated categories. That has less to do with the goods than with the power of strong marks.

At 12:28 PM, Anonymous Anonymous said...

It's decisions like this that make TTAB look like a Kangaroo Court. I mean really?

"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."

It's possible that monkeys might fly out your butt. Anythings possible, but this is a court of law and there's this thing called evidence . . . where's the evidence to support this statement?

I also like how they find a handful of 3rd party registrations, no matter how dubious, and that establishes a connection. I bet there's several hundred 3rd party registrations that claim wine OR beer but not both. But, that's not evidence of anything according to the Board.


At 6:45 PM, Anonymous Anonymous said...

First, no COLA = no lawful use is probably not correct. There are several ways this could happen. One could use the mark on a six pack carrier or case for example, and not be subject to COLA. This would more likely happen with a slogan I suspect. One could also put the beer into kegs with the beer ONLY sold by the glass. The mark would be placed on the menu board or on displays associated with the goods. I have had such specimens accepted several different times. I initially thought a name written on a chalkboard to be a dubious specimen, but it has been easily approved. Go figure.

As far as beer and wine being related, one can find some relationship between any two products. Surfboards and skateboards would be related if this were the case, but that does not happen. I could go on and on.

All I can say is that this "per se" rule - because that is what it really is - sucks.

At 1:37 PM, Anonymous Anonymous said...

A tap handles in a bar can support trademark use as well and does not require COLA approval.

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

Products should not be considered related just because an examiner can show that there are just a few third party registrations covering both items. That "rule" needs to be overturned by case law.

How can we change this automatic refusal which is impossible to overcome?

The same thing happens with varietal refusals. If the name is listed as a varietal in any database the mark gets refused and no way to get around it. However, these databases are admittedly inaccurate and anyone can easily get a name listed as a varietal, even if it is already a trademark.

So you have no way of getting around these automatic refusals even though they are wrong.

The TTAB should fix these problems not exacerbate them. Does this happen because so many Board Members came from the TTAB?

At 4:36 PM, Anonymous Freiburger said...

Anonymous at 11:30 wrote, "If beer and wine are not related then there should be no 3rd party registrations to support the refusals, right?"

No, that doesn't follow. Both the Federal Circuit and the Board have even said a low number of third-party registrations might even tend to show the goods are not "related" in a trademark sense.

At 1:06 PM, Anonymous Anonymous said...

So if no COLA might equal no lawful use, would the applicant have standing to petition to cancel the relevant third-party registrations, since their existence has impacted its ability to register its mark?


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