Eleven Third-Party Uses of "Cowbell" Not Enough to Overcome Cited COWBELL CREAM ALE Registration
The Board upheld a Section 2(d) refusal to register the mark shown immediately below, for "Beer, ale, lager, stout, porter, craft beers, pale beer, flavored beers" [BLYTHE and BREWING CO. disclaimed], finding confusion likely with the registered mark COWBELL CREAM ALE for "Ales" [CREAM ALE disclaimed]. Since the goods overlap, the Applicant Blyth started out behind the 8-ball. Moreover, both of the involved marks are dominated by the word COWBELL. Blyth tried to end-run the cited registration by citing eleven third-party uses of COWBELL-containing marks, but the Board wanted more cowbell. In re Blyth Cowbell Brewing Inc., Serial No. 87411623 (February 7, 2025) [not precedential] (Opinion by Judge Martha B. Allard).
Given the disclaimers and the dominance of the word COWBELL, the Board found the marks to be "similar" overall, especially when one considers "(1) 'the fallibility of memory over a period of time;' and (2) that the 'average' purchaser 'normally retains a general rather than a specific impression of trademarks.'"
Blyth maintained that the cited mark is entitled only to a narrow scope of protection, pointing to eleven third-party uses of COWBELL-containing marks, including two for cream ales and nine for beers. Examining Attorney Chioma Oputa made no attempt to discredit this evidence but instead argued that the uses were too few in number to support Blythe's argument.
The Board found that the evidence consisting of 11 third-party uses "reflects a more modest amount of evidence than that found convincing" in Jack Wolfskinand Juice Generation, "wherein 'a considerable number of third parties’ use [of] similar marks was shown.'" The Board then concluded that "at best the term COWBELL is somewhat commercially weak."
Thus, we consider the first, second and third DuPont factors dispositive and even considering the slight commercial weakness of the COWBELL term, it is not enough to outweigh the other factors.
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TTABlogger comment: In the recently blogged 12 Cosmetics case, the Board found 10 third-party registrations to be probative of the weakness of the term "twelve." But that was for conceptual weakness, not commercial weakness. See the difference?
Text Copyright John L. Welch 2025.
posted by John L. Welch @ 2/10/2025
9 comments
9 Comments:
With this decision, the “12” decision and many other decisions, how should we explain about the third party prior registrations to the clients? Sometims it is considered by the board? Sometimes it?
The Board says that when you are considering conceptual or inherent strength, third-party registrations have value even, even if not a large number, in showing that a term is adopted because it has some relevant meaning in the particular field and therefore is a weak formative. When you turn to commercial strength, you are talking about consumers distinguishing between marks, and the Board wants more cowbell in that circumstance in order to say the consumers will distinguish between the involved marks. It often downplays third-party registration evidence due to lack of proof of manner and extent of use.
Wait, a search of the USPTO online database for "CM:cowbell AND LD:true AND RD:*" yields 13 hits. Yet, only one for IC:032 goods (namely, the cited COWBELL registration), none for IC:033 goods, and one for IC:043 (restaurant and bar services) for the mark "MORE COWBELL". The other 11 are for unrelated goods and services. No wonder the applicant's evidence was insufficient.
... the Board wants *more cowbell*
"...but the Board wanted more cowbell." Comedy gold, Mr. Welch, comedy gold. Bravo! Now I have a strong desire to listen to "Don't Fear the Reaper."
So is the rule that conceptual weakness dilutes a mark more than commercial weakness? or just that the former requires less proof? or that I'm just confused?
I wouldn't say that one dilutes the mark more than the other. Maybe one type of proof is more probative or credible than the other. The fact that other TM owners chose a term may on its face show some descriptiveness and thus conceptual weakness. As for commercial strength, the extent of use of the cited marks is important in the assessment; unless there are a lot of them, in which case Jack Wolfskin comes in. Does it make sense? Maybe.
If we are talking about prior registration, all the marks are being used or have to be used in commerce. How can we decide when it is conceptual? when commercial? Why the examiner let one mark registered earlier, but not later for another one? It is confusing for the ordinary consumers, business owners, hopefully not many attorneys…
On the conceptual side, adoption of a term is alone enough to indicate descriptiveness. On the commercial side, minimal use of a mark will have little impact on consumer perception when distinguishing betweeen marks.
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