Thursday, February 17, 2011

Test Your TTAB Judge-Ability: Two Cases of Beer and Wine

Before you send in your resume for one of the open positions on the TTAB, test your judicial potential on these two Section 2(d) refusals. In the first, the Examining Attorney found the mark UPSLOPE BREWING COMPANY for beer, ale, and lager [BREWING COMPANY disclaimed] likely to cause confusion with UPSLOPE for wines. In the second, EARTHQUAKE HIGH GRAVITY LAGER & Design for "high gravity lager" [HIGH GRAVITY LAGER disclaimed] was blocked by EARTHQUAKE for wine. How do you think the appeals came out?

In re Upslope LLC., Serial No. 77650402 (January 28, 2011) [not precedential]. The Board not surprisingly found that the similarities in the marks UPSLOPE BREWING COMPANY and UPSLOPE outweigh the differences. As to the goods, the Board agreed with Applicant that beer and wine are not per se related. However, numerous use-based third-party registrations identified both beer and wine, and under Albert Trostel, such evidence may suggest that these goods are of a type that may emanate from the same source.

Examining Attorney Robin S. Chosid-Brown also submitted website pages showing many third parties offering for sale both beer and wine.

As to channels of trade, there were no restrictions in the subject application or the cited registration, and so "there is nothing that prevents applicant from offering for sale its beer (once the goods are in use) through the same channels of trade and to the same consumers who purchase registrant’s wines, and vice-versa."

Likewise the goods involved are not limited to expensive beers and wines; instead they include inexpensive products that would be purchased on impulse.

Considering the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal to register.

In re Phusion Projects, Inc., Serial No. 77695481 [not precedential]. Again not surprisingly, the Board found the two marks to be "highly similar." As to the goods, third party registrations suggested that beer and wine could be marketed by a single source under a single mark.

Moreover, Examining Attorney Leslie L. Richards submitted website evidence showing that "wineries across the country are opening their own microbreweries and brewing and selling a variety of craft beers along with their wines, including such high gravity beers as India Pale Ale, imperial stout, and barley wine." In addition,

... the similarity between wine and high gravity beers is demonstrated even more clearly by the 2007 article quoted above at the beginning of our discussion, which states that “[h]igh gravity beers are meant to be sipped and appreciated, even paired with foods like wine.”

The Board therefore concluded that the involved goods are similar and related for purposes of the du Pont analysis.

Applicant feebly argued that beer and wine are not related because they are specifically different, the only thing in common being alcohol. The Board, however, pointed out once again that the question is not whether purchasers are likely to confuse the goods, but whether they will likely be confused as to source if the goods are offered under confusingly similar marks. Moreover, the Board has often found that different alcoholic beverages are related for purposes of its du Pont analysis.

Finally, Applicant asserted (without evidence) that the beer that it actually markets is very inexpensive and sold "primarily to lower-class purchasers who buy the high-alcohol beer for 'a quick cheap high.'" On the other hand, said Applicant, Registrant's wine sells for up to thirty dollars per bottle and is marketed to "more affluent wine drinkers who buy wines to be sipped and savored along with good food." The Board, as usual, rejected this argument because the issue of likely confusion must be determined on the basis of the goods as identified in the involved application and cited registration, regardless of the actual goods being sold. The goods must be presumed to encompass all goods of the nature and type identified in the application and registration.

As to channels of trade, there is no restriction in the involved application and cited registration, and the normal channels for both for beer and wine would include supermarkets and liquor stores. Finally, beer and wine are purchased by ordinary consumers exercising only a normal degree of care.

And so, weighing the relevant du Pont factors, the Board found confusion likely, and it affirmed the refusal.

TTABlog comment: Well, are you ready to send in your resume?

Text Copyright John L. Welch 2011.


At 1:16 PM, Anonymous Anonymous said...

Yes. I'm just glad the 2 decisions came out alike and were consistent. The examiners should have gotten together with their evidence but if they didn't, I guess it was not necessary.

At 8:26 PM, Anonymous Anonymous said...

These two decisions along with the Ravenswood decision are all not precedential. Any reason why? Wouldn't it be helpful for beer or wine companies to have a precedential decision?

At 9:12 AM, Blogger John Ward said...

While I understand the Board’s reasoning, I can’t think of an example of a beer and wine issuing from a common source. I’ll pull the cork on a Heineken Pinot this weekend and maybe something will come to me.

At 9:36 AM, Blogger John L. Welch said...

I agree with you, John. I always find these beer/wine cases to be rather Alice-in-Wonderland-ish.

However, Heiny Winey might be a good trademark?

At 9:21 AM, Anonymous Concrete Cutting Equipment said...

I feel that The two decisions that came out were alike and consistent..


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