Monday, March 25, 2019

TTABlog Test: Is TEMPUS for Beer Confusable With TEMPUS TWO for WInes?

The USPTO refused registration of the mark TEMPUS in the stylized form below, for "beer," finding a likelihood of confusion with the registered mark TEMPUS TWO for "wines." There was little doubt regarding the similarity of the marks, and the evidence failed to prove that the cited mark is weak. Applicant Cerveceria Primus pulled out all the stops in trying to show that the goods are not related, including an argument that all but one of marks in the cited third-party registrations covering beer and wine are not in use (based on their lack of COLA certificates). How do you think this came out? In re Cerveceria Primus, S.A. de C.V., Serial No. 87460794 [not precedential] (Opinion by Judge George C. Pologeorgis).

The Marks: Applicant submitted a "very modest amount" of third-party uses and registrations for marks containing the term TEMPUS for wine or distilled or potable spirits. This evidence was insufficient to show that registrant's mark is commercially weak for wine. Moreover, there was no evidence concerning the inherent weakness of TEMPUS or TEMPUS TWO for wine.

The Board found the word TEMPUS to be dominant in the cited mark, and it opined that consumers are likely to believe that registrants wine offered under the mark TEMPUS TWO is the second product in a line of goods. The stylization of applicant's mark was, not surprisingly, deemed insufficient to distinguish the marks.

The Goods: Examining Attorney Katherine S. Chang submitted 24 third-party use-based registrations each covering both beer and wine, as well as third-party Internet evidence from 21 websites offering both beer and wine.

Applicant argued that the third-party registrations have little probative value due to the USPTO's program to examine whether registered marks for which Section 8 or 71 declarations have been filed, are still in use.The Board noted, however, that applicant provided no evidence that any of the cited registrations have been cancelled or restricted under that program, and therefore applicant's argument was speculative and unavailing.

Next, applicant attempted to demonstrate that all but one of the third-party registered marks are not actually in use for both beer and wine, by submitted evidence "purportedly demonstrating that these registrations have not obtained Certificates of Label Approval ('COLA') from the TTB for both types of beverages." The Board pointed out, however, that its decision must be based on the goods identified in the third-party registrations, and not on actual use of the marks. An ex parte proceeding is not the proper forum for challenging an issue registration, which enjoys a presumption of validity under Section 7(b).

As to the third-party use evidence, applicant again argued that many of these third parties have not obtained the required COLA approval to offer both beer and wine, and therefore that the marks are not in use. The Board pointed out, however, that consumers are unaware of whether COLA approval has been obtained and therefore lack of such approval would not affect their understanding that beer and wine are provided by a single source, noting the website evidence showing beer and wine offered by the same source.

Applicant further maintained that an extremely small percentage of microbreweries or nanobreweries sell both beer and wine under the same mark. The Board observed that this evidence did not show that only a small percentage of all breweries (large and small) sell both beer and wine under the same mark. Nor did it refer to wineries that sell both beer and wine. In any case, applicant's "beer" is not limited to beer produced by a microbrewery.

Finally, applicant submitted pairs of third-party registrations for allegedly similar mark owned by different registrants, one registration covering wine, the other beer, arguing that these registrations showed that the USPTO considers beer and wine to be unrelated goods. The Board was unimpressed. First, the paired marks are "clearly not identical," and furthermore the "history of the registrations or the commercial relationships between the pairs of parties" is not known. Therefore this evidence is entitled to little weight. The "nontrivial" amount of Internet evidence submitted by the Examining Attorney supported the conclusion that beer and wine are related.

The Board noted that, although there is no per se rule that all alcoholic beverages are related, its finding is "consistent with prior precedent." The Board acknowledged, however, that those prior decisions were based on different factual records.

As to trade channels and consumers, the evidence showed that beer and wine travel in overlapping trade channels (e.g., retail stores, grocery stores, restaurants) to the same classes of consumers (the adult general public) .

Conclusion: Considering the relevant du Pont, the Board found confusion likely and it affirmed the refusal.

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TTABlog comment: Beer and wine related under Section 2(d)? What else is new?

Text Copyright John L. Welch 2019.


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