Wednesday, April 13, 2011

Precedential No. 9: Finding Wine and Beer Related, TTAB Affirms 2(d) Refusal of "HB" over "HB & Crown Design"

Third-party registrations and website evidence led the Board to conclude that wine and beer are related goods, and so it affirmed a Section 2(d) refusal to register the mark HB for wine, finding it confusingly similar to the two registered design marks shown below, for beer. The Board was unimpressed by Applicant Kysela's attempt to distinguish the marks based on Registrant's history as the royal brewhouse of Bavaria, Germany in the 16th century. In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261 (TTAB 2011) [precedential].

Third-Party Registrations: Examining Attorney Ronald L. Fairbanks submitted a substantial number of third-party registrations (about twenty being probative) showing that various entities have registered a single mark for both beer and wine. Applicant argued that there are thousands of applications and registrations that include beer or wine in their identification of goods, and so the thirty or so submitted by the PTO constitutes "a negligible percentage (.00025-.00053) and not nearly enough to establish a relationship between the goods sufficient to lead to a finding of likelihood of confusion."

The Board was not persuaded. First, it criticized Applicant's methodology and its failure to provide complete information regarding these records. Second, "[m]ost importantly, the fact that the examining attorney submitted approximately twenty probative third-party registrations listing beer and wine does not mean that they are the only registrations that include these goods." There is no requirement that the Examining Attorney submit all such registrations.

The Board also noted that it has rejected a similar argument in the past: "There is no requirement for goods to be found related that all or even a majority of the sources of one product must also be the sources of the other product. *** Second, the mere fact that some goods are not included in a registration’s identification of goods does not establish that the owner of the mark has not registered the mark for those goods in another registration.... Third, the law recognizes that trademark owners have different marks that are used as a house mark, a mark for a line of products, and a mark for specific items." In re G.B.I. Tile and Stone Inc., 92 USPQ2d 1366, 1370 (TTAB 2009).

The Board concluded that this third-party registration evidence sufficed to establish the relatedness of the goods.

Third-Party Uses: The Examining Attorney also submitted website evidence showing that various companies make and sell both wine and beer. This lent "further support" to the Board's "conclusion that the goods are related because the websites show that consumers have been exposed to the concept that wineries also make and sell beer."

Natural Scope of Expansion: The Board reminded the PTO that this doctrine is "more appropriate to inter partes cases, and that in the context of an ex parte proceeding the analysis should be whether consumers are likely to believe that the services emanate from a single source, rather than whether the owner of the cited registration has or is likely to expand its particular business to include the goods of applicant."

The Marks: Applicant contended that the crown design dominates the registered marks and is sufficient to distinguish the marks at issue. According to applicant, the crown design "indicates [Registrant's] royal pedigree, and implicitly signifies royalty even to those who may not be aware of the company’s history."

The Board was not impressed. "Although information about the registrant’s history appears on the company’s website, we cannot assume that ordinary purchasers encountering the beer on a store shelf will be aware of the history of the German company." Consumers are likely to view the design as merely laudatory.

Applicant further argued that the registered marks could be read as "I-B," but the Board observed that many will view the letters as HB. Furthermore, because applicant’s mark is in standard characters, a registration would provide protection for applicant’s use of HB with a shared vertical element. In any case, because the letters HB dominate the registered marks, the involved marks are, overall, similar in appearance.

As to pronunciation, there was no evidence that consumers would, as Applicant argued, refer to the crown design, contrary to the general principle that in word and design marks, the word portion is dominant. Nor would consumers recognize that HB stands for "hofbrauhaus."

[B]ecause “Hofbrauhaus” is not part of the cited marks, and because the only element of the registrant’s marks that can be articulated is “HB,” which is identical to applicant’s mark HB, we find that the marks are identical in pronunciation

Similarly, as to meaning, Applicant's mark would connote only the meaning "HB." And so the Board found that the marks, in their entireties, convey the same commercial impression.

Further observing that the goods will be sold in the same trade channels to the same classes of consumers, who are not particularly sophisticated, the Board affirmed the Section 2(d) refusal to register.

TTABlog comment: It always surprises me when beer and wine are found related. Maybe I should drink more, but I cannot recall ever seeing beer and wine actually sold under the same mark.

Text Copyright John L. Welch 2011.


At 9:25 AM, Blogger Unknown said...

This type of evidence frustrates me more than almost any other (the other being surname refusals, but I digress). The examiner should be required to submit a printout (or at least the first few pages) that list all live apps/regs that have both goods. When I argue against these types of refusals, I provide that (the whole list actually) and the whole list of apps/regs that have one of the goods only and the whole list of apps/goods that have the other of the goods only. I know I should submit the actual apps/regs but it can be tens of thousands. I always tell the examiner I will submit them if necessary to obtain allowance but I give the examiner the exact search string I used to obtain each result.

There are simply too many marks on the register to allow 20 containing both goods to establish the marks are related. How do others deal with this?

At 10:56 AM, Anonymous Kevin said...

You said: "...I cannot recall ever seeing beer and wine actually sold under the same mark."

1) Isn't that the point of this type of refusal? While sitting at a bar or browsing the "alcohol aisle" in a grocery store, one can typically see rows of wine and beer bottles - that is the relatedness of the goods. If there is an HB wine and an HB beer, wouldn't the consumer think the two come from the same source?

2) If beer and wine are never sold under the *same* mark (single source), then are those registrants lying in their applications? I, too, have never seen, for example, "Budweiser" beer AND wine. I haven't reviewed the cited third party registrations in this case, but I'm curious what type of marks cover both beer and wine.

At 11:53 AM, Anonymous Anonymous said...

Well, what about at your local Trader Joe's? I think the growth of speciality supermarkets (TJs/Wholefoods) does increase the opportunities for consumers to encounter beer and wine from a common source. See, e.g.,

At 11:58 AM, Blogger John L. Welch said...

I'm aware of Trader Jose's brand beer. But does Trader Joe sell wine under the trademark TRADER JOE'S?

Are beer and wine sold under the same mark only when it is a "store brand?"

At 1:14 PM, Anonymous Anonymous said...

They sell Trader Joe's Reserve, Trader Joe's Coastal, Trader Joe's Petit Reserve, Trader Joe's Grand Reserve....and the wine and beer sections are adjacent...Also, there's an argument that they are compatible goods, no? (kidding...or perhaps not!)

I get your argument about store brands, but they do condition the consumer to view the goods as deriving from a common source...

At 3:47 PM, Anonymous Thilo Agthe said...

I can tell you that MY client is pretty happy about this ... :-)

At 3:53 PM, Anonymous Anonymous said...

I generally have a hard time finding beer and wine related. Yes, the term "Beer and Wine" is used everywhere, but we all know the difference.

We work with both breweries and wineries. Some companies (very few in my opinion) produce both but the general rule is that they are quite separate and distinct.

The TM office appears to now be citing Class 32 against 33 more than ever. It is getting harder in Class 33 if there is something in 32. Tequila v. wine is another big issue. (Why all the new tequila filings?)

Are we soon going to find cola and beer similar because they are both drinks and sold in the same stores and both are in Class 32? I hope not. It is not a relatedness of goods issue.

There are of course times when beer and wine marks could conflict, but that is more of a "famous" issue and you "knew it when you see it."

It is not a relatedness of goods issue. Look at a store aisle. beer and wine are not sold in the same aisle generally. Beer is usually cold and wine is generally not. If they are close in the aisle or even in a cold case they are separated.

However, I guess it is nice if you are a big conglomerate to know the USPTO is on your side citing any alcohol related goods against another.

I think someone needs to do a better argument here. When an examiner simply cites registrations and says "Look, people sell both under the same mark, the TTAB all too often just leaves it and never looks at the reality of the marketplace. In today's world that argument could prevent almost any mark from being registered.

At 3:54 PM, Anonymous Anonymous said...

Trader Joe's does also have a private label TRADER JOE'S wine.

Although not common, it is not unusual for a beer and wine to be sold under the same brand. Although now owned by different companies, both wine and beer were produced by the Firestone family under the FIRESTONE mark. It is also becoming more common to see brands across an entire range of alcohol beverage products, including beer, spirits and wine, such as ED HARDY.

Here are some other examples of combined winery and brewery operations:


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