Tuesday, June 12, 2018

PIRATE PISS for Beer Not Confusable With PYRAT for Rum, Says TTAB

The Board dismissed an opposition to registration of PIRATE PISS for "beer, ale and lager," finding that confusion is not likely with the registered mark PYRAT for "“distilled spirits” (and PYRAT RUM for “rum”). Opposer's evidence that beer and rum are related was inadequate, and its reliance on past Board decisions to prove that relationship was misplaced. Patrón Spirits International AG v. Conyngham Brewing Company, Opposition No. 91226939 (June 8, 2018) [not precedential] (Opinion by Judge Thomas W. Wellington).

The Goods: Opposer submitted copies of 13 third-party registrations for marks covering both beer and rum. However, only six were use-based registrations. The other seven were based on ownership of foreign registrations with no claim of use in commerce, and therefore were irrelevant.

The Board found this evidence "not very convincing." "While there is no threshold number, six relevant registrations is a relatively small number given the number of breweries and beer brands in the U.S." Moreover, registrations are not evidence that the marks have actually been used [ever? why not? - ed.] or that consumers are aware of the use. In short, "there is insufficient evidence of third parties using the same mark in connection with beer and rum, or evidence that a maker of rum also actually produces beer."

As to prior Board decisions, "[t]here is no per se rule that holds that all alcoholic beverages are related." In re White Rock Distilleries Inc., 92 USPQ2d 1282, 1285 (TTAB 2009). Each case must be decided on its own record. "Put simply, Opposer cannot evade its burden to prove relatedness by bootstrapping upon previous factual findings made in other decisions on different records." The Board went on to note that the evidence of relatedness here "pales in comparison to the records in many of the decisions where beer was found to be related to other alcoholic beverages." If the marks at issue were identical or highly similar, less evidence of relatedness might be required, but that is not the case here.

Therefore the Board found that the second du Pont factor did not weigh in opposer's favor.

Strength of the word PIRATE: In attempting to show that PIRATE is a weak formative, applicant submitted three use-based registrations - nowhere near enough to prove its point. Registrations alone are not evidence that the marks are in use or that the consuming public is aware of them.

Opposer contended that its mark PYRAT is well known, pointing to various awards, advertisements, recipes mentioning PYRAT rum, online retail stores featuring PYRAT rum, etc. However, these materials were not accompanied by any testimony to verify the truth of the documents or put them in context. Therefore the Board found the fifth and sixth du Pont factors to be neutral.

The Marks: The word "pyrat" is an archaic alternative spelling of "pirate." It will be so understood by consumers, "albeit in an archaic spelling that will perhaps connote the golden age of piracy." The two terms will sound the same and share a visual similarity. However, the marks at issue differ in connotation and commercial impression:

Opposer’s mark simply conjures a feeling of nostalgia for “pirates” or “piracy,” and this is certainly enhanced in the context of the goods, inasmuch as there is a strong association between rum and pirates. Applicant’s mark, PIRATE PISS, on the other hand, conjures the vulgar image of urine from a pirate. In the context of Applicant’s beer, and for better or worse, the mark will likely be understood as a humorous, self-deprecating description of a quality or strength of the beer or simply just as an arbitrary vulgar expression. Nevertheless, the strong image and commercial impression of Applicant’s mark, PIRATE PISS, distinguishes it from Opposer’s PYRAT mark.

The Board therefore found that the first du Pont factor weighed in applicant's favor.

Conclusion: Given the weak record evidence regarding the relationship between rum and beer, and despite the fact that the goods travel in the same channels of trade to the same classes of consumers, the Board found no likelihood of confusion and it dismissed the opposition.

Read comments and post your comment here

TTABlog comment: I'm a bit surprised that Major League Baseball didn't oppose.

Text Copyright John L. Welch 2018.


At 10:34 AM, Blogger Eddie said...

"As to prior Board decisions, "[t]here is no per se rule that holds that all alcoholic beverages are related."
News to me.

At 11:58 AM, Blogger joe said...

Must have been fun for the PYRAT attorney to call their client and tell them, "So I think we want to argue that your product is confusingly similar to Pirate Piss".

At 7:44 PM, Anonymous Anonymous said...

This was a bit of a catch 22 wasn't it? You have to argue that your mark might be confused with pirate piss?

Perhaps the Pittsburgh Pirates thought this might get more publicity than they wanted and it would not look too good.

At 2:22 PM, Anonymous Anonymous said...

Again, another inconsistency. Today beer and spirits are regarded as different, tomorrow they will be the same. Back and forth we go...


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