Friday, June 26, 2015

TTAB Test: Are KNOTTY BRUNETTE and NUTTY BREWNETTE Confusingly Similar for Beer?

Applicant sought to register the mark KNOTTY BRUNETTE for "beer, ale and lager," but the USPTO refused registration, finding the mark likely to cause confusion with the mark NUTTY BREWNETTE for beer. The goods are, in part, identical, but what about the marks? How do you think this came out? The Board panel was divided on the question. In re Twin Restaurant IP LLC, Serial No. 85934428 (June 24, 2015) [not precedential].

Applicant lamely argued that there would be no confusion because its KNOTTY BRUNETTE beer is sold only in Applicant’s Twin Peaks restaurants, which feature "sexy wait staff," and so consumers will understand the mark to be a homophone for "naughty brunette." The Board pointed out, however, that because the goods identified in the application are in part identical to those of the cited registration, it must presume that those goods travel through the same, normal channels of trade (including restaurants not owned by applicant) to the same classes of consumers.

The panel majority found the first du Pont factor - the similarity or dissimilarity of the marks - to be dispositive. Although the marks have slight differences in sound when pronounced correctly, it must be remembered that there is no correct pronunciation of a trademark [What about APPLE or BLACK CAT? - ed.]. Therefore the Board must assume that a consumer could pronounce the marks in the same way.

However, the Board majority found the "obvious" differences in appearance, connotation, and commercial impression to be critical. The primary connotation of the registered mark NUTTY BREWNETTE is the flavor of the beer. The phrase connote a "nutty brew" or nutty flavored beer. The Board recognized that the registered mark is also a double entendre for “nutty brunette” to denote "a dark-haired female with a 'nutty' or 'silly, strange, or foolish' personality." Nonetheless, "the appearance and primary connotation and commercial impression of the mark projects a nutty flavored type of beer."

In Applicant’s mark, "knotty" is a homophone for "naughty," conveying the meaning of "relating to or suggesting sex in usually a playful way." "Applicant’s mark is more likely to project the connotation of a 'naughty brunette,' that is to say, a dark-haired woman displaying a playful type of sexiness."

Moreover, both the adjectives “knotty” as well as its homophone “naughty” are entirely devoid of any connotation of nut or nut-like flavoring. Thus, the marks have their own unique humorous play on words that project separate meanings and distinct commercial impressions. As a result, when confronted with both marks, prospective consumers are unlikely to assume that Applicant’s and Registrant’s respective goods originate from the same source

The panel majority concluded that the dissimilarities in the marks outweighed the other du Pont factors, and so the Board REVERSED the refusal to register.

Judge David Bucher dissented, pointing out that similarity in sound alone may be sufficient to establish that two marks are confusingly similar.

Inside a noisy bar, as the night wears on, and the bartender and patron trade verbal exchanges ... any aural differences in the short vowel sounds of only the first of these four syllables will likely not be readily distinguishable – and especially to southern ears.

Judge Bucher also saw a similarity in connotation and he questioned the majority's assumption that a consumer would "retain fine connotations from one tavern visit to the next."

Yet the majority acknowledges similar sounding marks, each having one or even several double entendres! Let’s see, was that dark-haired female of several weeks ago an extremely difficult personality ("knotty"), strange ("nutty"), or playfully sexy ("naughty"). Or if the brew has an earthy flavor profile – in a wild, Euell Gibbons kind of way – was it due to the (knotty) bark or nuts?

When the goods are identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion, Judge Bucher reminded. And in cases of doubt in the 2(d) ex parte context, the benefit of the doubt goes to the registrant.

Read comments and post your comment here

TTABlog note: I side with Judge Bucher on this one. He sounds like he has real marketplace experience. Personally, I like the taste of NASTY BROONETT.

Text Copyright John L. Welch 2015.


At 7:27 AM, Anonymous Anonymous said...

John, I think you have hung out in bars with people who have enjoyed enough liquid livation so as not to be able to distinguish between Miller and Michelob.

At 9:18 AM, Anonymous Anonymous said...

Wow. This is a surprising decision.

At 11:18 AM, Anonymous Fred said...

Knotty and Nutty aside.....won't the consumer just remember a girl in a bra and based on the similarity of the pictures believe they came from the same place???

At 11:20 AM, Anonymous Fred said...

Knotty and Nutty aside, won't the general public just remember a pretty girl in a bra and think they came from the same place.


At 11:26 AM, Anonymous Miriam Richter, Ft. Lauderdale said...

All other issues aside, in my book knotty and naughty are NOT homophones. Similar yes, homophones no. Knotty has an ah sound and naughty is an awe sound. When I try to pronounce knotty like naughty I sound like Scotty on Star Trek!

At 11:27 AM, Anonymous Anonymous said...

I see an opposition coming. When you see the words with the design/logo this is not really a close call.

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

What a perfect exam question a law school trademark class or in the USPTO's examiner training program.


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