Thursday, November 30, 2017

TTAB Test: Are These Two Word + Design Marks Confusable for Beer?

The USPTO refused to register the mark shown below left for "beer" on the ground of likelihood of confusion with the registered mark on the right, for "Brewed malt-based alcoholic beverage in the nature of a beer." On appeal, applicant argued that the buyers of craft beer are sophisticated, that its logo is dominated by its well-known house mark MAD TREE, and that BLACK FOREST is highly suggestive of a type of beer. How do you think this came out? In re MadTree Brewing, LLC, Serial No. 86608588 (November 28, 2018) [not precedential] (Opinion by Judge Karen Kuhlke).

Because applicant's "beer" encompasses registrant's malt-based beverage in the nature of beer, the Board deemed the goods legally identical. It therefore presumed that they travel in the same channels of trade to the same classes of consumers.

The Board pooh-poohed the argument that consumers of craft beer are sophisticated, first because the involved goods are not limited to craft beer, and second because the Section 2(d) determination must be made based on the least sophisticated consumer - and the sophistication of the general consumer is not very high.

Applicant's argument that, as reflected in the marks, registrant is a home brewer located in Reading, PA and applicant is located in Cincinnati, had no merit, since both the application and registration are nationwide in scope.

As to the marks, the Board found the term BLACK FOREST to be dominant. Generally, the verbal portion of the word + design mark is the more likely to indicate source. The designs in the two marks at issue "do not overwhelm or distract from the wording BLACK FOREST." In fact, the designs reinforce the meaning of BLACK FOREST. The addition of MAD TREE to applicant's mark "is a difference between the marks" but "does not result in marks that are dissimilar for likelihood of confusion purposes." [Given the size of the words MAD TREE, how could they possibly be dominant? - ed.]

Applicant's argument that BLACK FOREST is geographically descriptive in registrant's mark constitutes an impermissible collateral attack on the cited registration. The Board may consider arguments regarding the strength of the registered mark, but as to the purported location involved - a hiking trail in Pennsylvania - there was no evidence that consumers (other than locals) would be aware of this geographical connection.

Finally, applicant claimed that BLACK FOREST is a type of beer, but the Board found applicant's meager evidence to be inadequate.

The Board found that the similarities in the marks outweigh the dissimilarities, and so it affirmed the refusal.

Read comments and post your comment here.

TTABlog comment: How did you do?

Text Copyright John L. Welch 2017.


At 8:55 AM, Blogger Brad Salai said...

If you missed this one, you should consider going back to securities law!!

At 8:01 PM, Anonymous Anonymous said...

This puts the lie to the theory that the PTO considers the graphic design in a word-plus-design mark to have any effect at all. Furthermore, note that of the at least twenty-one words in the marks only two are the same.

Editor - one way that the small words MAD TREE could be dominant would be if the larger text were to be geographically descriptive, such as AMERICA, or, I don't know, maybe BLACK FOREST (a German locality known for its beer)?

Oh wait, the PTO considers a request to consider a portion of a mark to be weak to be a "collateral attack," and therefore generally does not consider strength when comparing marks.

At 8:46 AM, Blogger John L. Welch said...

You can't collaterally attack the validity of the cited registration, but you can attack the strength of the registered mark.

At 8:27 PM, Anonymous Anonymous said...

Sure, you can attack on the basis of strength/weakness. The problem is, in my experience, the PTO will usually give your attack short shrift. Their standard cut-and-paste response is "even weak marks deserve protection." Of course they do. The question is how much protection?


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