TTAB Affirms Refusal of "WEGE": Specimens Fail to Show Use of Mark for Beer
The Board affirmed a refusal to register the proposed mark WEGE for beer on the ground that "none of the specimens show use of the mark ... to indicate the source of beer." Applicant's specimens displayed WEGE only in the phrase "BREWED WITH WEGE OF HANOVER PRETZELS," which use did not show an association of the mark with beer, but rather with the pretzels with which the beer is brewed. In re Nittany Corporation, Serial No. 88439889 (March 17, 2022) [not precedential] (Opinion by Judge Elizabeth A. Dunn).
The Board observed that "[w]hether the prospective purchaser of the goods will perceive a term on the goods as the trademark indicating the source of the goods will vary with the circumstances, including whether more than one term appears on the goods." Multiple terms on a product may comprise a trade name and a trade mark, or a house mark and a product mark, or they may indicate the sources of different goods. See, for example, in In re Bose, 192 USPQ 213, 216 (CCPA 1976) ("[I]t is quite apparent that, in the specimens of record, only INTERAUDIO identifies the loudspeaker systems for high-fidelity music reproduction as originating with appellant and distinguishes such goods from those manufactured and sold by others. The mark SYNCOM merely relates to a speaker-testing computer.").
In sum, the common use of multiple terms on the goods requires careful consideration of how those terms will be perceived by the prospective consumer of the goods. Demonstrating a technical trademark use by affixing a term to the goods in and of itself does not serve the essential specimen purpose of verifying use of the mark by showing that the mark “has been used as a trademark with respect to the goods named in the application.” Bose at 216.
Use of multiple marks on a product may be dubbed "co-branding," but the question remains whether the use of applicant's mark, as it appears on the specimen of use, serves as a source indicator for the goods listed in the application.
Here, the Board agreed with Examining Attorney Elaine Xu that the proposed mark WEGE does not function as a trademark for applicant's beer. Consumers will see ALDUS BREWING COMPANY and the prominent "A" design, in close proximity to the words "pretzel wheat ale," as the trademark for the beer. The phrase "BREWED WITH WEGE OF HANOVER PRETZELS" will be viewed as the source of the pretzels with which the beer is made.
To be clear, there is nothing inherent to the term WEGE which prevents it from functioning as a beer trademark. It is Applicant’s choice to directly associate WEGE with pretzels by only using WEGE as part of “BREWED WITH WEGE OF HANOVER PRETZELS” which prevents the association between WEGE and beer. See Bose, 192 USPQ at 216.
And so, the Board affirmed the refusal to register.
Read comments and post your comment here.
TTABlogger comment: So when, say, "Bank of America" appears on a city's rental bikes, that's not a trademark use for bikes, right?
Text Copyright John L. Welch 2022.
posted by John L. Welch @ 3/21/2022
11 comments
11 Comments:
There seems to be little consistency in the ay the USPTO treats ingredient marks. If only the word WEGE appeared on the beer package then the Board stated that it would have been an acceptable specimen for beer. But let's say it's a famous mark for pretzels that everyone knows. Why should that be OK for beer if it's used alone but not OK if the word "pretzels" appeared after it? They need to put out an examination guide for ingredient marks..including features of products, like software
In answer to your question re BofA on bikeshare bikes, I think, according to this decision, it could well be use. But it would not qualify if it appeared as “Financed through BANK OF AMERICA.”
INTEL INSIDE?
It is part of a phrase rather than a stand along mark. In my opinion, I would not have used that as a specimen if the client was trying to protect WEGE. This is where a Trademark Attorney needs to advise a client on how to use a trademark.
Why isn't BANK OF AMERICA appearing on a bicycle, similar to BANK OF AMERICA appearing on a sign in a subway car (or "the T", if you're from Boston)? Isn't it just an advertisement for B of A and not a trademark use?
I don't get how the phrase "Brewed with" fails to associate WEGE with beer.
Another approach the applicant could have taken here would have been to apply for "pretzels as a featured [or component] ingredient of beer." This would have avoided the specimen issue and successfully secured Class 32 coverage. TMEP 1402.05(a).
As an avid beer drinker, I would be inclined to think WEGE was a source identifier - at least upon first viewing the carrier (given the relative size of WEGE). Co-branding has become quite common in the beer industry, particularly for collaborations between two breweries. Without knowing anything more about WEGE than what is on the front of the carrier, I likely would have thought this was a collaboration between two breweries rather than WEGE merely identifying the source of pretzels used in brewing the beer.
@John, I think you BANK OF AMERICA example is trademark use + plus use of a mark to reference a secondary source, which is a little different.
Wege is merely shown to be an ingredient here, a brand of pretzel used in the manufacture of the final goods, beer. That would be no different than a gasoline fuel system additive (Techroline) or a weather-proofing fabric for clothing (Gore-tex). In both instances, they all are components, ingredients etc. of the finished goods.
I have to say this was not a close case. I would not have applied, much less appealed.
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