TTAB Denies Request for Reconsideration of TORPEDO JUICE Cancellation Denial

Petitioner Oregon Grain requested reconsideration of the Board's denial of its petition for cancellation of a registration for the mark TORPEDO JUICE for "Alcoholic beverages, except beer; Gin; Liquor; Rum" [TTABlogged here]. The Board had found that Oregon failed to prove priority because it failed to prove that its common law, identical mark was distinctive as of the filing date of Respondent's underlying application. Oregon here claimed that the Board erred in ruling that the issue of the lack of distinctiveness of Oregon's mark was tried by implied consent. Oregon Grain Growers Brand Distillery Inc. v. Michael Pitsokos, Cancellation No. 92076817 (reconsideration denied February 9, 2024) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Implied Consent Not Necessary: The Board first pointed out that, despite its earlier ruling, "it was not necessary to find implied consent" to consider the issue of distinctiveness. First, the issue of priority was raised by respondent in its answer, and in any event the petitioner in a cancellation proceeding must prove priority. Second, "under the rule of Otto Roth, a petitioner cannot prevail unless it shows that its unregistered common law mark is distinctive of its goods or services." The Board noted that "plaintiffs relying on common law rights, in general, often overlook the element of proof of distinctiveness as part of the burden of establishing priority."

Accordingly, the Board did not err in considering, as an initial matter, the distinctiveness of Petitioner’s designation TORPEDO JUICE in connection with priority since distinctiveness of an asserted common law mark must be proven and addressed in our consideration of Petitioner’s prior rights in such mark.

Distinctiveness of Petitioner's Mark: The Board also concluded that it did not err in finding TORPEDO JUICE to be merely descriptive.

The evidence and testimony in the record fully support our finding that TORPEDO JUICE merely describes a feature of Petitioner’s pineapple vodka by informing purchasers that Petitioner’s goods are an alcoholic beverage that is high proof, and that its pineapple flavored vodka is based on a beverage that purportedly originated from naval sailors during World War II.

Amend Petition to Add Descriptiveness Claim?: Petitioner asserted that the issue of descriptiveness was also tried with regard to registrant’s identical mark. The Board, construing this argument as seeking an amendment to the pleadings to conform to the evidence under Fed. R. Civ. P. 15(b) based on implied consent, was unmoved.

After a thorough review of the record, we find that the issue of descriptiveness of Respondent’s mark was not tried by the implied consent of the parties and, in particular, that Respondent was never fairly apprised that Petitioner’s evidence was being offered in support of a descriptiveness claim. To the contrary, until its present request for reconsideration, Petitioner had not raised this issue. *** In its brief on the case, Petitioner states unequivocally that there are two issues in this proceeding, namely, likelihood of confusion and nonuse. Petitioner does not in any way address the issue of descriptiveness of Respondent’s mark in its brief.

And so, the Board denied the request for reconsideration and denied the request to amend the pleadings.

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TTABlogger comment: In a review of a Board decision by way of civil action under Section 1071, the plaintiff may raise new issues and add evidence. What new issue would you raise?

Text Copyright John L. Welch 2024.