Thursday, March 17, 2016

BUCK Merely Descriptive of Kentucky Bourbon, Says TTAB

In this consolidated opposition and cancellation proceeding, NJoy Spirits filed a motion for summary judgment, asserting that Frank Lin's registered mark BUCK is merely descriptive of "distilled spirits, namely, Kentucky Bourbon, for human consumption." The Board agreed, but it also found that a genuine issue of material fact existed as to whether BUCK has acquired distinctiveness under Section 2(f). Frank Lin Distillers Products, Ltd. v. NJoy Spirits, LLC. dba NJoy Spirits, LLC., Opposition No. 91211205 and Cancellation No. 92060288 (February 5, 2016) [not precedential].

Mere Descriptiveness: In support of its motion, NJoy submitted recipes for "Kentucky Buck Cocktail," a Wikipedia entry for "buck" as a name for a family of mixed drinks that may include bourbon, and various Internet references to "Buck," "Kentucky Buck," and "Buck Bourbon" as mixed drinks.

The Board found no genuine dispute that BUCK is merely descriptive of Frank Lin's Kentucky Bourbon. "[T]he internet evidence submitted by Petitioner clearly shows that (i) a 'buck' is a particular type of alcoholic cocktail or drink comprised of alcohol, ginger beer or ginger ale, and citrus, and that (ii) 'bucks' often comprise bourbon, e.g., the 'Kentucky Buck cocktail' or 'bourbon buck.'"

In short, the mark BUCK immediately informs consumers that Frank Lin's goods may be used to make a "buck."

Acquired Distinctiveness: Frank Lin asserted that BUCK has acquired distinctiveness, and although Lin did not state this as an affirmative defense, the Board considered the issue as having been "tried" by consent, since both parties argued the issue.

Lin provided a declaration stating that it has spent $100,000 promoting the BUCK mark and has sold 13,000 cases of its bourbon across the country. Google search results for "Buck Bourbon" yielded many references to Frank Lin's product.

Drawing all inferences in favor of the non-movant, the Board ruled that a genuine issue of material fact remained as to whether Respondent’s use of the mark has been substantially exclusive and continuous and as to whether Lin's sales are significant as compared to the sales of competing products.

The Board therefore denied NJoy's motion regarding the issue of acquired distinctiveness.

Read comments and post your comment here.

TTABlog comment: Does Frank Lin need a survey? NJoy? Will both pass the buck?

Text Copyright John L. Welch 2016.


At 5:20 AM, Anonymous Anonymous said...

Decision mistakes descriptiveness with suggestiveness. Buck does not describe bourbon, but suggests using ginger ale or ginger beer to concoct a separately identifiable, named drink, a buck (which can be made with rum or vodka, etc.). comment by Prof. Thomason

At 7:55 AM, Anonymous Anonymous said...

No. If the term identifies a purpose or use of the identified goods (as demonstrated by the evidence), it's descriptive.

At 9:38 AM, Anonymous Anonymous said...

I've been drinking bourbon for well over forty years and I have NEVER heard of a Buck drink, nor of anyone describing bourbon as Buck. What an off the wall decision!

At 10:57 AM, Blogger Bob Klein said...

But descriptive to who? Do bourbon buyers view it as merely descriptive? I think a simple survey would show that a minority of bourbon buyers would view "buck" as descriptive, despite what wikipedia says.

At 12:20 PM, Blogger Mark Stein said...

Not to pass the buck (sorry, I could not resist), but I too have been a brown whisky drinker for many years and have near heard of a Kentucky Buck Cocktail. If the majority is in the same situation as me, then only a small, niche group of consumers would associate "BUCK" with bourbon.

At 1:35 PM, Blogger Mike said...

Maybe if the buck drink were better known? I can't imagine there being much argument that a Screwdriver brand vodka or a Margarita brand tequila would be considered descriptive. Those are obviously words that other vodka or tequila makers would want to use to describe their products.


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