Tuesday, June 16, 2015


Rabbit Hole Spirits sought to register the mark MOONSHINE REDEFINED for "distilled spirits; liquor; whiskey" [MOONSHINE disclaimed], but the USPTO refused registration on the ground of likelihood of confusion with the registered mark REDEFINING VODKA for "alcoholic beverages, except beers" [VODKA disclaimed]. The goods, as identified, overlap, but are the marks confusably similar? How do you think this came out? In re Rabbit Hole Spirits, LLC, Serial No. 86193667 (June 11, 2015) [not precedential].

Because the goods are legally identical (the goods identified in the cited registration encompass those of the application), the Board must presume that they travel in the same channels of trade to the same classes of consumers.

Rabbit Hole contended that the cited mark is "highly descriptive," but the Board observed that any such attack on the cited registration, which enjoys a presumption of validity, is improper. And so the Board considered applicant's position to be that the cited mark is highly suggestive and therefore weak.

Rabbit Hole pointed to 251 third-party registrations for marks containing the words REDEFINING, REDEFINED, or REDEFINE. The Board noted that, although such registrations are not evidence that the marks are in use, they may operate in the manner of a dictionary to show that a terms has a significance in a particular field. Here, nearly all of the third-party registrations covered goods and services very different from alcoholic beverages. However, dictionary definitions of "redefine" as "define again or differently" indicated that this meaning would be applicable to a broad range of goods and services. The Board therefore concluded that REDEFINING has a laudatory significance and it agreed with applicant that REDEFINING VODKA is not entitled to the broad scope of protection accorded an arbitrary mark. Nonetheless, even suggestive marks are entitled to protection against confusingly similar marks.

Rabbit Hole next pointed to several labels submitted to the Alcohol and Tobacco Tax and Trade Bureaus as evidence of third-party use of REDEFINING or REDEFINED in connection with alcoholic products. However, in only two did the words appear in the manner of a trademark. The Board observed that mere approval of a label by a government agency does not establish that the goods are actually being sold or that public is exposed to the mark.

Turning to the marks at issue, the Board agreed with applicant that there are specific differences in the marks [I agree, too - ed.] However, both marks consist of a variation of the word REDEFINE coupled with a generic term for an alcoholic beverage. The marks convey the same connotation and commercial impression of a beverage that is "different from the others, i.e., that it has been 'redefined.'" Consumers are likely to view the marks as indicating a single source, with the generic portions of the marks simply identifying the particular type of beverage. And the marks have a similarity in appearance and pronunciation. [Really? - ed.]. The Board concluded that the similarities in the marks far outweigh the differences.

Finally, Rabbit Hole lamely argued that the fourth du Pont factor - the conditions of sale - favored applicant because customers looking to purchase vodka would not buy moonshine. The Board noted for the umpteenth time that the issue is not whether consumers would confuse the goods, but whether they would confuse the sources of the goods. There was no evidence that purchasers of alcoholic beverages are particularly sophisticated or would exercise a greater standard of care than the general public. [Possibly less care, depending on the quantity of alcohol imbibed prior to the purchasing decision - ed.].

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here

TTABlog note: Well, how did you do?

Text Copyright John L. Welch 2015.


At 1:10 PM, Blogger TMBaron said...

Especially as these cases are now given higher status in parallel actions, the TTAB must get a greater grip on reality, rather than intentionally wearing blinders on so many issues. Here they give heightened scope of protection to a marginal (moderately descriptive term, ignore the concept of looking at the marks as a whole, and generally rubber stamp another rejection on technical grounds when it is fairly clear that no rational observer would be confused. I definitely disagree with this decision.

At 7:21 PM, Anonymous Anonymous said...

Wrong and bad decision.

At 9:12 PM, Anonymous Paul Reidl said...

I had no doubt how this would come out, but I have to say (again) that I sure wish the TTAB leaved in Realsville -- especially since Hargis. I completely understand their mindset but when that results in decisions like this I have to wonder whether there is some way to step back and enter the real world.

At 10:15 PM, Anonymous Anonymous said...

Agreed. Not even a close question.

At 10:16 PM, Anonymous Anonymous said...

Agreed. Not even a close question.

At 8:54 AM, Anonymous Anonymous said...

"Parallel Actions" . . . "Hargis" . . This is an ex parte appeal. Hargis cannot possibly be applied in this or any other ex parte case. The Supremes (and many other more esteemed commenters to this BBlog) made clear that preclusion is only possible "when the usages adjudicated by the TTAB are materially the same as those before a district court." Since ex parte cases only arise in district court on de novo APPEAL from a TTAB decision, there can be no question of preclusion. That's what de novo means, after all.

Now, what the TTAB does in oppositions & cancellations is a different matter. But if you take the time to read the cases, you'll see that they've pretty much always treated oppositions differently from ex parte appeals. A multi-party case is just a different animal.


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