Friday, July 01, 2016

TTAB Test: Is DUO for Beer Confusable with DUO for Wine?

Uinta Brewing Company applied to register the mark DUO for beer, but the USPTO refused registration under Section 2(d) on the ground of likely confusion with the identical, registered mark DUO for wine. On appeal, Uinta argued that fewer than 1% of trademarks registrations also cover beer, and it provided ten pairs of registrations for a single mark, one for beer and one for wine, and each of the pair owned by a different owner. How do you think this came out? In re Uinta Brewing Company, Serial No. 86333439 (June 29, 2016) [not precedential].

There is no per se rule mandating that all alcoholic beverages are deemed similar goods for likelihood of confusion purposes. [It just works usually out that way - ed.]. Each case must be decided on its own facts.

Examining Attorney Margaret Power submitted excerpts from 11 websites demonstrating that beer and wine may emanate from the same source, usually a combination winery/microbrewery. She also submitted 17 third-party registrations that individually cover both beer and wine, but only two of the marks were shown to be in actual use.

Applicant Uinta relied on the results of three TESS searches indicating that of 18,119 registrations for wine and 8,088 for beer, only 71 cover both wine and beer. Unita argued that more than 99% of the registrations suggest that consumers are not accustomed to encountering beer and wine emanating from the same source. Uinta also submitted ten pairs of registrations for identical or nearly identical marks of different owners, one in each pair for wine, one for beer. It maintained that these pairs of registrations constitute strong evidence that wine and beer are not related goods, and that identical marks for beer and wine can coexist.

The Board was not impressed, finding the USPTO's evidence "sufficient to show that some small wineries and microbreweries offer both beer and wine under a single mark." The 17 third-party registrations "at least suggests an interest among producers of alcoholic beverages in combining the production of both types of beverages within a single business." Although the small producers typified by the USPTO's evidence "may represent only a small segment of the entire wine and beer market," that does not "reduce the potential for trademark confusion from 'likelihood' to a mere possibility, especially where the marks at issue are identical and distinctive."

The fact that some some unrelated producers have registered identical marks does not prove that the goods are unrelated or that the marks can coexist in the marketplace. The Board is not privy to the circumstances or analyses underlying the issuance of those registrations, nor do they indicate the actual, current marketplace conditions.

Finally, the normal channels of trade for beer and wine would include, at a minimum, liquor stores, and so this factor also favors a finding of likely confusions.

And so the Board affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: Well, how did you do?

Text Copyright John L. Welch 2016.


At 11:29 AM, Anonymous Susan Goldsmith said...

Let's be honest: this is a per se rule. I wish someone would take it to the CAFC.

At 1:56 PM, Anonymous Anonymous said...

I gave up on fighting these and now tell client's it just ain't gonna happen.

But guess what! This is getting worse. The USPTO is now often citing restaurant marks and liquor store marks against beer and wine applications.

How far will the USPTO go!?

At 1:17 PM, Anonymous Anonymous said...

I'll tell you how far they will go...they will go until the Fed. Circuit tells them to stop. Same as it ever was (geographic, surnames, foreign equivalents, etc.). USPTO just wants to generate work, there is no real "consumer" element to it at all. Once this is stopped, Examiner's will move on to something new (or old). Anybody remember the geographic name objections from way back(how about an aboriginal village in the outback versus a U.S. pizza restaurant?). The USPTO used to cite remote place names once the new-fangled Internet allowed the Examiner to find any place in the world at a mouse click...then they were slapped by Fed. Circuit...then back again recently...and now the 2015 Newbridge Cutlery case puts the kibosh on all of that silliness. They just rotate around. All silliness and good luck explaining to a client why a federal judge would slap you out of court trying to enforce a wine mark against craft beer (even though it works at TTAB).


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