Thursday, December 15, 2016

TTAB Test: Is WOODY WHEAT Confusable With WOODY STOUT and WOODY BROWN ALE (Different Owners) for Beer?

The USPTO refused to register the mark WOODY WHEAT for "beer," finding it likely to cause confusion with two registered marks owned by different owners, both for "beer": WOODY STOUT [STOUT disclaimed] and WOODY BROWN ALE [BROWN ALE disclaimed]. Applicant argued that the co-existence of the two registered marks proved that WOODY is a weak formative for beer. How do you think this came out? In re Austin Brothers’ Beer Company LLC, Serial No. 86545695 (December 13, 2016) [not precedential].

Of course, the involved goods are identical, and there are no limitations on channels of trade or classes of consumers in the application or cited registrations. The Board therefore presumed that the channels of trade and classes of consumers are the same.

The Board affirmed the PTO's requirement that applicant disclaim the word WHEAT in the applied-for mark, and so the dominant portion of each of the involved marks is WOODY. The added word WHEAT does distinguish applicant's mark in appearance and sound, but consumers are likely to view applicant's mark as designating a variation of one or both cited marks - i.e., "a wheat-style beer under the WOODY brand, which also is offered in stout and brown-ale style beers."

As to applicant's argument regarding the weakness of the word WOODY in view of the co-existence of the cited registrations, the Board was unimpressed. "The application files of the two cited registrations are not of record. Accordingly, we have no evidence that would explain the rationale whereby the later registration was allowed to issue." The facts may have been different in those cases - for example, there may have been a consent provided by the earlier registrant. In any event, each case must be decided on its own merits and the Board is not bound by the prior decisions of examining attorneys regarding registration.

Applicant pointed to a third-party Supplemental Registration for WOODY CREEK WHITE for beer [WHITE disclaimed], but the Board found it distinguishable because WOODY CREEK is a unitary term with a geographic connotation. Applicant also submitted evidence of 20 beers with names incorporation the term WOODY, such as "Old Woody," "Woody's Perfect Porter," and "Woody's Easy Ale," but the Board noted that these marks do not have the same structure as the three marks at issue here: i.e., the word WOODY plus the generic name of a beer style.

Even crediting all of Applicant's evidence and accepting that the term WOODY is commonly used in association with beer, we cannot conclude that the public will look to other elements to distinguish Applicant's mark from the two cited marks because they comprise no other source-identifying elements.
The cited registrations are presumed valid under Section 7(b), and even weak marks are entitled to protection. To accept applicant's argument regarding the two cited registrations would provide substantially no protection for the owners of the cited registrations under Section 2(d).

In short, the Board found that the sixth du Pont weighs against a likelihood of confusion, but that factor was not dispositive.

The Board concluded that confusion is likely with the registered marks, and so it affirmed the refusal.

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TTABlog note: What do you think?

Text Copyright John L. Welch 2016.


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