TTAB Test: Are Jams and Jellies Related to Beer for Section 2(d) Purposes?
Allagash Brewing Company opposed an application to register the mark ALLAGASH WILD for "jellies and jams; marmalades; preserved fruits and vegetables" [ALLAGASH disclaimed]. alleging a likelihood of confusion with the registered mark ALLAGASH for beer. The marks are pretty close, aren't they? But what about the goods? How do you think this came out? Allagash Brewing Company v. Cathie A. Pelletier, Opposition No. 91214028 (September 22, 2015) [not precedential].
The marks: Allagash is the name of a town and a river in Maine, and for Applicant Pelletier's goods it is geographically descriptive. Although ALLAGASH is the first portion of applicant's mark, and the first portion of a mark is more likely to remembered by consumers, the word's descriptiveness may result in the word WILD "overcom[ing] its secondary position." However, WILD is at least suggestive of jams and jellies since Pelletier intends to make them from wildflowers and berries. So even if WILD has more source-identifying significance than ALLAGASH, that was not enough to distinguish the marks. [The Board also noted that "wild" is a type of Belgian-style beer and is brewed by Opposer].
The Board concluded that the marks are "very similar in appearance, sound, meaning and overall commercial impression."
There was no evidence of third-party use of ALLAGASH by other food or beverage companies. Opposer is listed in the top 50 craft brewing companies by sales, and the evidence indicated that Opposer's mark "has attained commercial strength in the craft beer market."
The goods: Opposer submitted several use-based third-party registrations that cover beer and jam or jellies. Moreover, opposer's president testified that "it is common for brewing companies to make and sell food products." For example, Belgian breweries have traditionally made cheese. [What about American breweries? - ed.]. Other breweries sell mustard, pickles, and sausage. Furthermore, he asserted, craft beer is commonly associated with food. [So beer is related to all food? ed.]. Examples of goods sold under the same mark included beer and cheese, beer and clam chowder, beer and hot sauce, beer and ice cream, and beer and peanut brittle. [What is the extent of sales of these products? - ed.]. The record also included online recipes using beer as an ingredient. [One could probably find a recipe on line for anything at all as an ingredient - ed.].
Opposer's president further testified that it is "very common ... for breweries to extend their brands into lots of different kinds of foods; and you'll commonly find these foods, you know, not only in their stores, but in retail stores like grocery stores." [Where is the corroboration for this obviously self-serving testimony? - ed.].
The Board concluded that at least craft beers, which fall within opposer's broad identification of goods, are "sufficiently commercially related to jams and jellies such that consumers could be confused as to source."
There were no limitations on channels of trade in the pleaded registration of opposed application. The involved goods are all sold in retail food and beverage stores, including grocery stores in some states. And even if purchasers of craft beer are careful consumers, consumers are not immune to source confusion.
The Board concluded that confusion is likely and it sustained the opposition.
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TTABlog comment: Well, how did you do?
Text Copyright John L. Welch 2015.
posted by John L. Welch @ 9/24/2015
15 comments
15 Comments:
This is just bad law. The case ended for me when I learned that the name has geographic significance. No one should have the exclusive right to use such a name, particularly for unrelated goods.
Another TTAB decision that has no basis in commercial reality.
I got that one wrong, but I'll bet I'm not the only one.
I guessed wrong, too. The more-than-usual editorial asides were helpful guideposts. In the long run, this could be a disconcerting decision for second-users of geographic names.
Totally surprised by this. Perfect example of why I continue to advise clients that you can never be sure.
Any search engine will give lots of hits for "beer" and "jelly". I know I have some at home: http://potlickerkitchen.com/beer-jelly/. And Allegash is one of the biggest craft brewers. It's admittedly a bit of a stretch at first glance, but certainly not preposterous.
Personally, I think the Board (and the Examining Attorneys)have jumped the shark on relatedness. Just because a handful of people (may) make both goods does not mean that the practice is so common that consumers, generally, will believe as a general matter that they are likely to originate from the same source. Isn't that what the Federal Circuit said when it reversed the Board in In re Coors?
This is another example of the Board's continued and every increasing paternalistic approach to trademark law and non-sophisticated approach to relatedness when testing likelihood of confusion. The fact that beer and jelly are consumable does not suggest the goods are related anymore than consumers confuse Dominos pizza with Domino sugar. Perhaps, and even this is a stretch, if opposer had a famous mark I would at least understand the basis of the finding. TTAB is increasingly like the tax department, it assumes the junior user is guilty unless this user can prove beyond a shadow of a doubt it is not infringing.
Love me a pbj with my brews!
Personally, I love Welch's grape jelly, on a pb&j. But with beer? Fuggeddaboudit!
Not at all surprising, unfortunately. This is a continuing (and deplorable) trend in the TTAB. The "little guy" is almost always faced with a "clear and convincing" burden of proof, while the "big guy" only has to show a marginally colorable claim.
I was also rather surprised with the disclaimer requirement. This certainly does not appear to be a readily recognized geographic term.
Totally agree with Anon above, that it is a common occurrence to find 2 terms within the same application, such that any search engine will return many hits with the 2 terms (beer and jam/jelly in this instance, and for most other things as well given the sheer number of registrations and the oft-found largess of scope within the description of goods & services). So in essence the bar is set preposterously low, and favoring opposer. But considering the defendant's POV, could there be an effective argument against the opposer if instances of coexistence of similar marks could be found, i.e. on one hand for goods beer and not jam and on the other hand for jam and not beer? What would be the value of such a report to support defendant? Is it at all a game changer? If attainable, how many such examples could help rebalance the obvious bias?
Mitch, different Anonymous here, but you should read this case: http://thettablog.blogspot.com/2015/01/precedential-no-2-applicants-third.html
"The existence of almost fifty pairs of substantially identical marks for land motor vehicles and for towable recreational vehicle trailers on the federal Trademark Register suggests to us that businesses in these two industries believe that their respective goods are distinct enough that confusion between even identical marks is unlikely."
It seems the Opposer did plead its many registrations, but relyed on common law rights instead. That seems pretty risky.
Does the Mucky Duck rationale that registrations naming two items as goods constitute proof of relatedness in light of Madrid and section 44 cases that let registrants list a whole lotta stuff that maybe one day they may want to sell?
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