JERSEY GIRL WHISKEY for Distilled Spirits Confusable with JERSEY GIRL for Beer and Wine, Says TTAB

Despite the applicants' energetic efforts, the Board upheld a Section 2(d) refusal of JERSEY GIRL WHISKEY for "distilled spirits" [WHISKEY disclaimed], finding confusion likely with the registered mark JERSEY GIRL for "wines" and the word-and-design mark shown below (in both color and black-and-white versions), for various beer products [BREWING CO. and ESTD 2014 disclaimed]. The Board found the marks to be "very similar in appearance, connotation and overall commercial impression in light of the shared, dominant wording JERSEY GIRL." And although there is no per se rule that all alcoholic beverages are related, the Board once again found that to be the case here. In re Louis Leonetti and Brandon Leonetti, Serial No. 97321068 (November 26, 2024) [not precedential] (Opinion by Judge George C. Pologeorgis).

Examining Attorney Cayla Keenan relied on 16 third-party websites demonstrating that retailers sell both distilled spirits and wine or beer under the same mark. Applicants argued that the goods "are different, being made via a different process and containing different ingredients," but even if true, the Board observed, that argument misses the mark. Applicants also pointed out, to no avail, that whiskey, beer, and wine are subject to different governmental regulations, but the Board noted that "[m]ore importantly, consumers are accustomed to encountering them under the same marks, without regard to any underlying regulatory schemes."

Next, applicants claimed that the Office's evidence was limited to "big box stores." Not so, said the Board. Applicants pointed to a document called "Executive Order on Promoting Competition in the American Economy," as further proof that the goods are not related, but the Board was unimpressed: "protecting the 'vibrancy of the American markets for beer, wine, and spirits,' as argued by Applicants, was not necessarily the aim of this order, and has no bearing on the registrability of trademarks."

Finally, applicants relied on 140 pairs of TSDR printouts of third-party registrations, purporting to show that the USPTO has registered the same mark to different parties for "distilled spirits," including whiskey, on the one hand, and beer or wine, on the other. In only 60 of the cases were the registrations still alive, based on use in commerce, and covering marks sufficiently similar to one another to be probative. The Board found that that these 60 third-party registrations did not justify the registration of Applicants’ mark.

[W]e lack important marketplace information such as (i) whether the “paired” registrants entered into any coexistence agreements, (ii) whether the marks themselves have actually coexisted in the marketplace without confusion *** and (iii) whether the marks coexist in a crowded field such that consumers have been conditioned to distinguish among the specific marks based on minute differences.

Applicants did not offer any evidence regarding the extent to which the third-party marks are used in commerce, or of consumers’ familiarity with them. “[W]here the ‘record includes no evidence about the extent of [third-party] uses . . . [t]he probative value of this evidence is thus minimal.”

Ultimately, we find that Applicants’ “sets” or “pairs” of prior third-party registrations, although significant in number, do not rebut the Examining Attorney’s arguments and corresponding evidence that the goods at issue are related for the reasons explained above. We therefore find, based on the record, that Applicants’ goods are related to Registrant’s goods.

The Board then found that the channels of trade and classes of consumers for the involved goods overlap, and it found no evidence that these consumers will exercise more than ordinary care. And so, the Board affirmed the refusal.

Read comments and post your comment here.

TTABlogger comment: In these alcoholic beverages case, an applicant's principal hope seems to be the weakness of the Office's evidence of third-party registration and use. See In re Thor Tech, Inc. [TTABlogged here] (two third-party registrations, expensive goods, and lack of proof of overlapping channels of trade.)

Text Copyright John L. Welch 2024.