Tuesday, January 14, 2014

Test Your TTAB Judge-Ability on These Two "MOTHER EARTH" Design Marks for Beer

The PTO refused registration of the mark shown below left, for "beer, excluding both organic beer and beer comprised solely of organic components; brewed malt-based alcoholic beverage in the nature of a beer, excluding both organic beer and beer comprised solely of organic components" (class 32) and for "distributorships in the field of alcoholic beverages, excluding both organic beer and beer comprised solely of organic components" (Class 35) [BREWING disclaimed], finding it likely to cause confusion with the mark shown below right, for "beer comprised solely of organic components"  [BREW CO. disclaimed]. Applicant appealed. How do you think this came out? In re Mother Earth Brewing, LLC, Serial No. 77716598 (December 30, 2013) [not precedential].

The goods: Applicant argued that organic beer and non-organic beer are different, but the Board was unmoved: they are both "essentially the same goods." They use the same basic ingredients and are made by the same method. The record showed that both applicant and registrant make craft beer, organic being a subset. Craft beers are promoted together. Moreover, beer makers, both craft beer makers and mainstream beer makers, also make organic beer. [Even Anheuser-Busch makes organic beer].

In short, even if organic and non-organic beer are not identical, they are closely related for Section 2(d) purposes.

Applicant asserted that its beer is sold only at a particular store in San Diego, or at special events like the Vista Strawberry Festival, but the Board pointed out that there are no such limitations in the subject application. The Board must consider that registrant's goods travel in all the normal channels of trade for beer, which channels would include the same ones in which organic beer is sold.

Although the evidence showed that consumers of organic beer do not necessarily purchase mass-market beer, they do purchase craft beer, and craft beer falls within the applicant's identification of goods.

The marks: The literal portions of the marks are essentially identical. Applicant maintained that the design portions are sufficient to distinguish the marks, but the Board found that the designs project similar connotations and commercial impressions. Applicant's mark depicts a female head that consumers are likely to understand as personifying "mother earth," a nurturing figure. In the registered mark, the design suggest the earth as a nurturing place and the letters "ME" would be recognized as the initials for MOTHER EARTH, thereby reinforcing the connection with the words.

Moreover, "[w]hen marks consist of words and designs, the words are generally accorded greater weight because they would be used by purchasers to request the goods or services."

A patron in a bar is likely to ask for MOTHER EARTH beer, rather than the beer with the picture of a woman's head, or the beer with the tree and waterfall."

Applicant argued that MOTHER EARTH is a weak term, pointing to a dictionary definition and several third-party registrations. The Board, however, did not agree that MOTHER EARTH immediately and directly describes beer that is composed of organic ingredients. At most, it suggests that registrant's beer is made from natural ingredients. In an case, in applicant's mark the term has the same connotation.

As to third-party registrations, applicant failed to show that the registered marks are in use. At most they show that MOTHER EARTH some significance in suggesting that the product is wholesome and natural, but the limited number of registrations (three) was not enough to show that MOTHER EARTH has a strong suggestive connotation such that the design portions of the subject marks must be given greater weight.

[E]ven if purchasers note the difference in the design elements in the marks, they are not likely to view the different designs as indicating separate sources for the goods. Rather, they are likely to assume that a single source has adopted these marks as variations of each other, perhaps to differentiate its organic beer from its non-organic beer.

Applicant pointed to the lack of evidence of actual confusion, but applicant admitted that the parties are not in the same locations or channels of trade. Therefore, there has been no chance for confusion to occur. Of course, it must be presumed that registrant's goods are sold throughout the country and in all channels of trade.

Balancing the relevant du Pont factors, the Board found confusion likely as to applicant's goods in class 32.

The services: As to applicant's services, its distributorship must be for the benefit of others in order to register its service mark. If applicant is distributing only its own beer, that would not constitute a service under the Trademark Act. The Board had "some concerns" that the latter is the case. However, because the application was filed under Section 1(b) and proof of use has not yet been provided, the Board assumed that applicant is rendering a services - i.e., it is distributing non-organic beer for third parties.

Based on the complementary nature of the goods and services, the Board found them to be related. Retail establishments that are the consumers of applicant's distribution services are likely to assume that applicant also sells beer.

In fact, the distinction in the type of beer, with applicant’s distribution services being for non-organic beer and registrant’s goods being beer made of organic components, is likely to heighten the likelihood of confusion. That is, consumers could assume that a company that produces beer could use its distribution system to distribute beer for others, and that since the registrant makes an organic beer, it would choose to distribute non-organic beers for third parties, rather than organic beers that would compete more directly with its own products.

Referring to its du Pont analysis for the involved goods, the Board found confusion likely as to applicant's services, and it affirmed the refusal as to class 35.

Read comments and post your comment here.

TTABlog note:  Well, how did you do?

Text Copyright John L. Welch 2014.


At 7:09 AM, Anonymous Anonymous said...

This strikes me as more appropriate for a WHYA. It's a pretty easy case to find infringement -- of course the TTAB affirmed.

At 10:46 AM, Anonymous Nate said...

I am not surprised that registration was denied. The court was right to give greater weight to the words in the mark. Beer producers change their labels and packaging for different styles of beer. Often breweries will drastically change the look of labels for higher alcohol beers. E.g., Harpoon's LEVIATHAN series. Sometimes, breweries will change the entire look of their label as Left Hand Brewing did in the last year. As a consumer, I can attest that I would be confused by two beers each called MOTHER EARTH. So yes, while MOTHER EARTH is suggestive, it still should be powerful enough to keep others from registering. The organic argument is similarly weak. While some brewers specialize in organic components, the market is not robust enough to support a real distinction between organic and non-organic beers.

At 12:09 PM, Anonymous Gene Bolmarcich, Esq. said...

I would love it if someone can point me to a TTAB decision in which on similar facts, it was held that the design portions of the marks sufficiently differentiated them so as to not result in a likelihood of confusion (where the word portions are identical and not merely descriptive or even highly suggestive). My sense is that the TTAB simply ignores the design portions in all such cases.

At 2:01 PM, Anonymous Gene Bolmarcich, Esq. said...

I think Nate answered my question without knowing it. It's true that marketers often change logos and even use multiple logos for the same mark (Lucky Brand Jeans has hundreds of logos for LUCKY). Given this reality, is it not a good legal rule that a design portion of a composite mark should NEVER be given ANY weight in the LOC analysis at least when the literal portion is inherently distinctive? I've never seen this stated as such in any decision but it should be recognized explicitly.

At 3:16 PM, Anonymous Anonymous said...

If I had two beers, I would ignore the design features also (or is the time of day not a factor in likelihood of confusion?).

At 7:47 PM, Blogger Unknown said...

I'm surprised there was no commentary on the sophistication of buyers in this case. In my experience consumers of beer, craft beer especially, are particularly sophisticated and knowledgable when it comes to their purchases. I doubt it would be enough to sway the court (the similarities in name, product, and design were overwhelming) but I thought it was at least worth mention. Also, I'm under the impression that craft beer makers are a dime a dozen and generally serve a very small geographic area. Therefore, the chance for confusion among consumers should be severely minimized unless the two manufacturers markets directly overlapped.

At 7:55 PM, Blogger John L. Welch said...

The geographic element is irrelevant since the registration in nationwide, and applicant seeks a nationwide registration. As to the care of the purchasers, the Board noted that craft beers can be both organic and non-organic, to the goods are closely related, even if carefully purchased.

At 5:56 PM, Anonymous N. Elizabeth said...

I also agree with the decision of the PTO: the marks are so similar that consumer confusion is very likely. In addition to the PTO's analysis of the similar meaning conveyed by the marks and their words, it cannot be ignored that the marks themselves look similar, in form and in style. Both are round and make use of concentric circles. Both employ a somewhat "organic" design: MOTHER EARTH BREW CO uses free-flowing lines to depict the tree's roots and a waterfall, MOTHER EARTH BREWING uses them to depict a woman's hair. Finally, both marks use a similar font and the words are written in all caps. I don't find it hard to believe that a consumer would think these two marks come from the same source.

On a separate point, I have to disagree with the comment above re: consumer sophistication. I don't deny that craft beer consumers traditionally have had a much more sophisticated knowledge of beers, especially craft beers. However, as the comment above notes, craft beers are becoming "a dime a dozen," which is evidence that their popularity is growing (see e.g. More pour into craft beer market, but it's not a bubble, http://www.cnbc.com/id/101124259). A "normal" beer drinker is more likely to come across craft beers in bars and in stores, which means that any analysis of the consumer's sophistication cannot be limited to the traditionally sophisticated craft beer drinker.

At 4:18 PM, Anonymous Sydney Turnbull said...

I do agree with the outcome of the decision, because in weighing the factors, I do find there would be a likelihood of confusion. Specifically in response to Gene’s second comment, I would caution against giving too much credit to a logo or design portion of the marks used in this particular case. In many instances, when I, myself, have purchased craft beer, I have often picked a name off a long list of beers. These beers might have a description of what the beer looks or tastes like, but beyond that, I do not often have the opportunity to see the bottle before ordering, particularly in bars that offer large craft beer selections.

This being said, I can see the value of Michael’s point to the instant case, where perhaps it would have been worthwhile considering, however briefly, the sophistication of buyers in this particular case. There have been articles that I have come across discussing the potential variations between organic and non-organic beers, just as with any other slight change in the process (e.g. aging in a whiskey cask v. steel barrel). Were the organic beer, here, to have more prominently made that point on their logo, I think this would have been a closer case.

At 4:24 PM, Anonymous Sydney Turnbull said...

Sorry, clarification. I realize they did discuss the sophistication of the buyers. But in this context I think clarity in labeling may have made changed the outcome of this case.

I have just realized that would also make it an extremely different mark, however it may have saved Mother Earth Brewing Co. a bit of money in rebranding a potentially specific beer recipe.


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