Friday, April 21, 2017

TTAB Test: Are Sauces and Spice Rubs Related to Beer and Bakery Goods?

The USPTO refused registration of the mark SOUTHERN GIRLS GOURMET SAUCES for "sauces; spice rubs" [GOURMET SAUCES disclaimed), finding the mark likely to cause confusion with the mark SOUTHERN GIRL registered by one owner for beer and by another owner for bakery products. The Board found the marks confusingly similar, but what about the goods? How do you think this came out? In re Southern Girls Gourmet Sauces LLC, Serial No. 86932732 (April 19, 2017) [not precedential] (Opinion by Judge Taylor).

The Marks: Not surprisingly, the Board found the marks to be similar in sound, appearance, and meaning, and very similar in overall commercial impression. Applicant pointed to the fact that the two cited registrations are owned by different entities, arguing that if those two registrations can co-exist on the Register, its mark can too. The Board was unmoved.

While the Office strives for consistency in examination, the Board is not bound by the prior decisions of examining attorneys in allowing marks for registration. It is well established that each case must be decided on its own facts. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)

The Board further noted that, to the extent applicant contends that the cited registrations should be treated in the same manner as third-party registrations, these two registrations "do not persuade us that the phrase SOUTHERN GIRL(S) 'has a normally understood and well-recognized descriptive or suggestive meaning, leading to the conclusion that that [term] is relatively weak.'" Juice Generation, Inc. v. GS Enters., 115 USPQ2d 1671 (Fed. Cir. 2015). In short, two registrations are not enough to show that SOUTHERN GIRLS carries a suggestive or descriptive connotation and is a weak formative for the involved goods.

The Goods: Examining Attorney Tara L. Bhupathi relied on various websites showing use of the same mark for both sauces and/or spice rubs and bakery goods and beer. She also made of record third-party use-based registrations for marks covering items in the subject application and cited registrations. The Board found this evidence sufficient to establish the relatedness of the goods, "such goods all being comestibles and flavorings for food that are often sold by the same source under the same mark."

Conclusion: With the marks similar, the goods related, and the channels of trade and classes of purchasers overlapping, the Board found confusion likely and it affirmed the refusal to register.

Read comments and post your comment here.

TTABlog comment: What do you think? Did the registrants get the gold mine and the Southern Girls the shaft?

Text Copyright John L. Welch 2017.


At 8:59 AM, Blogger Frank said...

This is a very bad decision. These goods are not related in the mind of consumers. The applicant should appeal.

At 12:35 PM, Anonymous Sean Garrison said...

Based on the evidence, TTAB precedent and the arguments apparently made by Applicant, it seems the Board had little choice but to render the decision it did, at least as to the registration covering bakery goods. The evidence as to relatedness to beer seemed thin to me. The main problem I see, however, is the reliance on a handful of retail store brands covering the same goods to establish relatedness. Many, if not most, food retailers offer a range of private label goods within their stores. If you consider big box retailers, it is relatively easy to find any type of goods offered under the same private label mark. For example, bleach and macaroni and cheese are both offered under the Great Value brand at Wal-Mart. I don't think the average consumer would consider these related goods that would typically come from the same source, but if all I have to do is to show several big box private label brands on the same goods, then virtually all goods will be related at some point. More exacting evidence should be required by the Board in my opinion.

At 12:49 PM, Blogger Gene Bolmarcich, Esq. said...

As much as I think the result is not "correct" as a factual matter, the decision is a good one because the applicant did not provide any arguments or evidence to counter the examining attorney's evidence.

At 1:10 PM, Blogger Gene Bolmarcich, Esq. said...

Sean..don't even get me going on your good observation. The willingness of the Board to accept third party registrations as evidence of relatedness is beyond irrational. This is especially flagrant when retail services are involved. Also, (while we're on the topic), the per se rule (the Board often expresses it as such) that retail services (including online) for "goods X" is related to "goods X" is absolutely ridiculous and of course does not comport with reality, except for certain goods where it's common for brand owners to operate retail stores for their goods (apparel is probably the most obvious one). This problem has been aggravated by the ability for any brand owner who sells online to register the mark for online retail services. In my opinion, online retail services should be limited to the sale of goods of others (as retail has traditionally ben defined). I'm OK with bricks and mortar retail being considered a service, but selling one's own product on a website should not be considered a service.

At 2:08 PM, Anonymous Anonymous said...

The discussion of the use of third-party registrations to establish relatedness between disparate goods has been a well-debated topic on this blog for years now. I agree with Sean and Gene, but the applicant should have challenged the probative value of the "house" brands. I am pretty certain there are cases that address this and grant limited value to the use of these types of marks in establishing relatedness. In my opinion, you must look to industry practices to determine whether consumers are conditioned to expect these goods would come from the same source. I also think that the fame of the third-party mark should be taken into consideration. Marketing practices, convergence in industries, establishment as "lifestyle brand" should all be considered.


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