Finding Distilled Spirits Related to Wine, TTAB Sustains 2(d) Opposition to BEAR CREEK DISTILLERY
Here we go again. The Board sustained an opposition to registration of the marks BEAR CREEK DISTILLERY, in standard character and design form, for "Spirits; Spirits and liqueurs; Distilled spirits," finding a likelihood of confusion with the registered mark BEAR CREEK for "wines." Third-party registrations and Internet webpages convinced the Board that consumers are accustomed to seeing distilled spirits and wine emanating from the same source. In re Bear Creek Distillery, LLLP, Serial Nos. 87026602 and 87026770 (May 1, 2018) [not precedential] (Opinion by Judge Cindy B. Greenbaum).
Applicant pointed to four third-party uses of BEAR CREEK in connection with wine or wine-related services, but this small number of uses was insufficient to support a finding that consumers would distinguish among marks containing “Bear Creek” based on minor distinctions.
Applicant also pointed to its own Internet evidence of 79 wineries that do not produce spirits, but the Board was unimpressed:
There is no requirement for goods to be found related that all or even a majority of the sources of one product must also be sources of the other product. Therefore, evidence showing only that the source of one product may not be the source of another product does not aid applicant in its attempt to rebut the evidence of the examining attorney.
And so the Board affirmed the refusal to register.
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Text Copyright John L. Welch 2018.
posted by John L. Welch @ 5/04/2018
8 comments
8 Comments:
I really do not like the automatic conclusion of the Board that wines and spirits should be treated the same. There cannot me more than a handful of examples where a winery produced spirits or a distillery produced wine. Clients tend to think that it is absurd when we provide an opinion of a "likelihood of confusion" based on a registered mark for wine. There are also only a few circumstances where a winery sought injunctive relief against a distillery for trademark infringement.
I can't recall the last time I went to a supermarket, gas station with liquor or alcohol specialty store where beer and wine weren't sold in the same isle.
If I look to the left and on that wall of the isle is Bear Creek Wine and then turn to the right and on that wall of the isle is Bear Creek Whiskey (or whatever). Same isle, two different companies selling product with the same name. How is that not confusing?
That it's possible the two companies don't sell to the same liquor store is a non-starter.
I would add that there are very few occasions where a distilled spirit and a wine are sold under the same brand name. Where this occurs, it is mostly mom and pop type businesses in remote locations. I have argued that this does not demonstrate that the average consumer is likely to believe that they originate from the same source.
This passage from the TTAB is 100% WRONG:
Applicant contends that “website evidence from the owners of nine of the registrations reveal that the registered marks are used either on wines or spirits, but not both.”13 However, a trademark registration on the Principal Register is prima facie evidence of the
validity of the registration and the registrant’s exclusive right to use the mark in commerce in connection with the specified goods. 15 U.S.C. § 1057(b). Consequently, Applicant’s contentions constitute an impermissible collateral attack on the validity of the third-party registrations, and may not be considered in an ex parte proceeding. See Dixie Rests., 41 USPQ2d at 1534-35.
The presumptions afforded a registration have no bearing on their evidentiary value as used in this manner
This is just a terribly written decision. The author goes so far as to say it's enough that there are a bunch of winery/distillery companies even if they don't sell the respective products under the same mark. That's counter to the most basic of basic law on relatedness.
Applicant’s evidence attempted to show that registrations were not in use in connection with all of the good for which they are registered. That sounds curiously like a collateral attack in the registrations. The owners of those registrations were not a party to this proceeding and were not afforded an opportunity to rebut applicant’s evidence.
Gene is correct that the Board got this point wrong. The situations in which a registration is cited in an ex parte proceeding as the basis for a refusal under Section 2(d) or is asserted by an owner in an inter partes proceeding “must be distinguished from the situation where a party to a proceeding, whether ex parte or inter parte [sic], introduces copies of *third-party* registrations. In this latter situation, the Section 7(b) presumptions do not come into play; that is, only the owner of a registration is entitled to rely upon the presumptions afforded thereto under Section 7(b).” In re Phillips-Van Heusen Corp., 228
U.S.P.Q. 949, 950 n.5 (T.T.A.B. 1986).
For example, in In re Ayurvedic Concepts, Ltd., Serial No. 78800436 (T.T.A.B. December 5, 2008) (nonprecedential), the Board stated that an applicant may rebut the inference raised by an examining attorney’s third-party registrations “with evidence (e.g., a declaration from counsel or a paralegal that he/she investigated the use of the marks in the third-party registrations and could not find any evidence that the registrants used the marks on both of the products at issue . . .”
The type of fallacious syllogistic reasoning evidenced in this case seems to permeate nearly every 2(d) decision these days, and it is only getting worse. It’s lazy analysis. No, worse – it’s a substitute for actual analysis.
Nuance has never been a strong suit of the Trademark Office. And I appreciate that with a ten-month backlog examiner are seriously overworked. Nevertheless, the assumption that if it may be shown that if any mark is used to sell any two different kinds of alcoholic beverages, it conclusively establishes that likelihood of consumer confusion is insulting to both logic and consumers. As I tell clients, by comparison, the concept of related goods, as demonstrated by decisions of the Trademark Office, makes the Major League Baseball strike zone a marvel of consistency.
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