Tuesday, September 27, 2016

TTAB Test: Is "HOPNOTIC" for Beer Confusable With "HPNOTIQ" for Liqueur?

Heaven Hill Distilleries petitioned to cancel Cricket Hill's registration for the mark HOPNOTIC for "beer" on the ground of likelihood of confusion with the registered mark HPNOTIQ for "liqueur." Heaven Hill proved priority, and since all beverages are related at the TTAB [as a practical matter], it all came down to the marks. How do you think this came out? Heaven Hill Distilleries, Inc. v. Cricket Hill Brewing Co., Inc., Cancellation No. 92060811 (Sept. 23, 2016) [not precedential].

Relatedness of the Goods: Beer and liqueur are sold in the same channels of trade to the same classes of consumers. Moreover, brand extension have become more frequent in the alcoholic beverage industry. Even if consumers are aware of the difference in the manufacture of beer and liqueur, they may assume that there is a licensing arrangement concerning the two.

Conditions of Purchase: Beer is an inexpensive drink and may be purchased on impulse. Liqueurs are more expensive, but are still relatively inexpensive items. A cocktail containing HPNOTIQ liqueur may cost as little as $5.00.

Strength of Petitioner's Mark: The Board concluded that consumers would understand petitioner's mark to be the equivalent of "hypnotic," an arbitrary term for liqueurs. In addition to the inherent strength of the mark, the evidence established that the mark HPNOTIQ is a "big brand" with larger sales than popular brands like Chambord and Cointreau. And there was no evidence of third-party use or registration of a mark having a "hypnotic" or "hypnosis" formative. The Board therefore concluded that HPNOTIQ is a strong, but not famous, mark.

The Marks: Consumers who make impulse purchases are not likely to notice the different spellings of the marks. Even if consumers notice the "O" in respondent's mark, they will see HOPNOTIC as a variation of the HPNOTIQ mark that suggests a connection between "hops" and beer.

The marks are also similar in pronunciation. In a noisy bar, a waiter or bartender may not be able to distinguish between the two. Although when the customer is served the error would be corrected, there still would be initial confusion. Even putting aside the similarity in sound, the similarity in meaning dictates a finding in favor of petitioner regarding this du Pont factor.

The Board concluded that, when the marks are considered in their entireties, they are similar in appearance, pronunciation, meaning and commercial impression.

Lack of Confusion Evidence: Respondent argued that the lack of actual confusion despite twelve years of concurrent use, was dispositive. The Board, however, pointed out that there was almost no evidence of the extent of respondent's use of its mark, and so it was not possible to determine whether there has been a reasonable opportunity for confusion to occur. In any case, it is not necessary to show actual confusion in order to prove likelihood of confusion.

After considering all the relevant du Pont factors, the Board found confusion likely and it granted the petition for cancellation.

Read comments and post your comment here.

TTABlog comment: How did you do? In the real world, do you think anyone would be confused as to the source of these two products?

Text Copyright John L. Welch 2016.


At 9:58 AM, Anonymous Anonymous said...

The Board's argument that spirits manufacturers are broadening their goods bases is interesting, but the facts described are not convincing: they're just examples of spirits manufacturers making other kinds of spirits. No one is surprised that a bourbon maker also makes other types of whiskey, but I cannot recall ever seeing beer made by a spirits manufacturer. Surely it exists, but that's the evidence that should be in the record.

At 12:49 PM, Blogger Unknown said...

The only example of liquor/beer cross marketing that comes to mind are bourbon-barrel-aged stouts (e.g. http://revbrew.com/beer/detail/deths-tar), where the brewery will sometimes promote their distillery partner. But the idea that an IPA might be a logical brand extension for a fruity blue liqueur only exists in TTAB Land. Ignoring the hops pun also seems to defy the common-sense commercial impression of that mark. Not a surprising decision but one with absolutely no basis in actual market confusion.

At 7:09 PM, Anonymous Lawrence Binderow said...

Our local San Diego brewery and distillery Ballast Point sells both craft beers and distilled spirits. See: http://www.ballastpoint.com/ You gotta try a Sculpin. Absolutely the best!

At 12:15 PM, Blogger Unknown said...

@Lawrence Big Eye is also excellent. Didn't realize they'd branched into spirits.


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