Tuesday, May 19, 2015

TTAB Test: Are Ginger-Based Soft Drinks Related to Vodka, Gin, and Rum?

Waiwera LLC applied to register the mark GINGERELLA for "vodka, gin, rum," but the USPTO refused registration under Section 2(d) in view of the identical mark for "Non-alcoholic ginger based carbonated soft drinks." Waiwera appealed, arguing that the mark GINGERELLA is weak for ginger-based drinks, and that a mere four third-party registrations is not enough to prove the relatedness of the goods. How do you think this came out? In re Waiwera LLC, Serial No. 86310144 (May 15, 2015) [not precedential].

Applicant maintained that GINGERELLA is weak and entitled to limited protection even for non-alcoholic beverages, because the word GINGER is generic and ELLA is often used as a suffix to denote a diminutive version of something. The Board observed that, at most, GINGERELLA is suggestive of a drink containing ginger, and that applicant's goods could also have a ginger flavor. In addition, GINGERELLA appears to be a play on "Cinderella" and as such is a suggestive mark. In any case, even weak marks are entitled to protection against likelihood of confusion.

Of course, when the marks are identical a lesser degree of similarity between the goods is necessary to support a finding of likely confusion. Applicant maintained that the respective goods of the parties occupy unique niches within the broad category of beverages. The Board agreed with Applicant that the four third-party registrations, covering the involved goods, cited by Examining Attorney Joanna Shanoski were insufficient to prove relatedness of the goods.

However, more compelling was the evidence that registrant's goods are complementary to and commonly used with applicant's goods. Internet evidence showed that well-known cocktails have been made with ginger ale and ginger beer, including the Moscow Mule, the Foghorn, and the Dark 'N Stormy. [Shouldn't that be 'N'? - ed.]. Numerous drink recipes call for the mixing of vodka, gin, or rum with ginger-based carbonated soft drinks. Producers of ginger ale market their goods as an ingredient of cocktails containing vodka, gin, or rum. Applicant conceded that ginger ale and alcohol are often mixed to make cocktails.

When the evidence shows that goods have complementary uses and are often purchased by the same purchase for those purposes, "such goods have generally been found to be sufficiently related such that confusion would be likely if they are marketed under the same or similar marks." [E.g., bread and cheese, pepper sauce and agave nectar].

And so the Board affirmed the refusal to register.

Read comments and post your comment here

TTABlog note: What do you think? Was this a WYHA?


At 8:57 AM, Blogger Vincent said...

I'm having a general problem understanding how to tell if goods overlap. I just got a rejection for hosting parties (IC41) with an identical mark for "online social networking" (IC45).

The online social networking of the prior registration seems almost like a tag on, because the business basically does self-help instructional videos.

At 9:13 AM, Anonymous DaveB said...

As a sailboat racer familiar with the fact that the Dark 'N Stormy is made using GOSLING'S ginger beer and GOSLING'S rum I would find confusion likely.

At 3:02 PM, Anonymous Anonymous said...

Interesting that both companies are from New Zealand.


At least the USPTO is doing its job here. I suspect they will reject the new filing as well.

If the applicant had been using its mark I think they would be dead in the water in the USDC and looking at damages although the cited mark is registered only under 66a. Could they file an infringement suit based on a 66a registration if the third party was using the mark?

At 5:27 PM, Blogger John L. Welch said...

If all you have is a 66(a) registration and no use, how will you prove likelihood of confusion in the marketplace?

At 10:28 PM, Anonymous Anonymous said...

Use in US commerce is required of a foreign registrant before enforcement can occur in USA. A registration under § 44(e) or § 66(a) is unenforceable unless and until the mark in question is actually in use in the United States.

At 11:16 PM, Anonymous Anonymous said...

Hmmmm . . . tiny point: John, your post indicates that the "In re Waiwera LLC" decision is precedential. It is not.


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