TTAB Test: Are Distilled Spirits and Brewpub Services Related for Section 2(d) Purposes?

The USPTO refused to register the mark BSB for "distilled spirits," finding it likely to cause confusion with the registered mark shown below, for "brewpub services; taproom services; taproom services featuring beer brewed on premises." On appeal, the Board found that the similarity in the marks (the letters BSB) outweighed the differences.  But what about the goods and services? How do you think this came out? In re Heritage Distilling Company, Inc., Serial No. 86896656 (November 9, 2017) [not precedential] (Opinion by Judge Marc A. Bergsman).

The Board noted that the fact that taprooms and brewpubs serve food and beverages is not enough to make those goods and services related. According to Coors Brewing and Jacobs v. Int'l Multifoods, something more is needed. The CAFC observed in Coors:

It is not unusual for restaurants to be identified with particular food or beverage items that are produced by the same entity that provides the restaurant services or are sold by the same entity under a private label. Thus, for example, some restaurants sell their own private label ice cream, while others sell their own private label coffee. But that does not mean that any time a brand of ice cream or coffee has a trademark that is similar to the registered trademark of some restaurant, consumers are likely to assume that the coffee or ice cream is associated with that restaurant. The Jacobs case [Jacobs v. International Multifoods Corp., 668 F.2d 1234, 212 USPQ 641 (CCPA 1982)] stands for the contrary proposition, and in light of the very large number of restaurants in this country and the great variety in the names associated with those restaurants, the potential consequences of adopting such a principle would be to limit dramatically the number of marks that could be used by producers of foods and beverages.

The Board has found the requisite "something more" in cases where: (1) the applicant's mark made clear that its restaurant specialized in registrant's type of goods (e.g., GOLDEN GRIDDLE PANCAKE HOUSE confusable with GOLDEN GRIDDLE for table syrup); (2) registrant's wines were sold in applicant's restaurant (OPUS ONE); and (3) registrant's mark was found to be "a very strong, unique mark" (MUCKY DUCK).

The examining attorney submitted excerpts from ten third-party websites showing use of the same mark for distilled spirits and restaurant or bar services, and from registrant's website where it offers "Black Shirt Bourbon." Applicant argued that this evidence was inadequate because it did not constitute a sufficient sample of the market. According to applicant, there are more than 1300 craft distilleries and 5000 craft breweries in this country, and only a handful of brewpubs and taprooms distill their own spirits.

The Board agreed with applicant: "the evidentiary record does not support finding that consumers are likely to conclude that spirits and taproom and brewpub services with similar marks emanate from the same source." It noted that in Coors the CAFC found that the degree of overlap between the sources of restaurant services and beer was de minimis.

The Board concluded that the USPTO had failed to satisfy the "something more" requirement, and so it ruled that the involved goods and services are not related and it reversed the Section 2(d) refusal.

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TTABlog comment: How did you do? Is BSB pronounced "bizbee"?

Text Copyright John L. Welch 2017.