TTABlog Test: Are Water-Based Nonalcoholic Beverages Related to Beer for Likelihood-of-Confusion Purposes?

The Board repeatedly tells us that there is no per se rule that all beverages are related for Section 2(d) purposes. Okay, then how do you think this appeal came out? The USPTO refused to register the mark ROCKAWAY for "Non-alcoholic sparkling water-based beverages, namely, functional beverages containing herbal extracts, plant infusions, and fruit," finding confusion likely with the registered mark ROCKAWAY BREWING COMPANY for "Beer; Brewed malt-based alcoholic beverage[s] in the nature of a beer" [BREWING COMPANY disclaimed]. The marks are close enough, but what about the goods? In re Rockaway Drinks LLC, Serial No. 90115947 (March 25, 2022) [not precedential] (Opinion by Judge Mark Lebow).

Applicant did not argue that the marks are dissimilar, but contended that the cited mark is weak because it is descriptive and registered on the Supplemental Register. The Board, however, observed that even weak marks "are entitled to protection against a mark that is substantially similar in sight, sound, and commercial impression and is used on or in connection with goods that are related."

Turning to the issue of the relatedness of the goods, Examining Attorney Raul Cordova relied on third-party use evidence in contending that beer and "non-alcoholic water-based beverages" (as he characterized applicant's goods) are sold under the same brand name. Third-party registration evidence supported the Examining Attorney's position. Applicant disagreed with the characterization of its goods, insisting that they are more narrowly defined: "they are a specific type of sparkling health beverage containing herbal extracts, plant infusions, and fruit." The Examining Attorney responded that "beers may be infused with herbs and enhancers and thus diminishing the commercial space between beers and non-alcoholic water-based beverages that may be equally infused." The Board sided with the Examining Attorney.

[T]here is no clear definition of what is or is not a 'functional' beverage, and the evidence shows that many of the same ingredients, as well as other fruits and herbs, are used in making beer. ***  As the Examining Attorney’s evidence shows, many beers today also include herbal extracts, plant infusions, and/or fruit, just like Applicant’s purportedly 'functional' non-alcoholic water-based beverages.

The cited registration identifies the goods broadly as "beer," which encompasses beer that includes herbal extracts, herbal infusions, and/or fruit that could be classified as functional. Consequently, the Board found the involved goods to be related. Therefore, it must presume that these goods travel in the same trade channels to the same classes of consumers, "including health-conscious consumers seeking herbal and fruit infusions in their beers or other sparkling beverages."

And so, the Board affirmed the refusal to register.

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TTABlogger comment: There is no per se rule that all beverages are related. It just works out that way.

Text Copyright John L. Welch 2022.