Thursday, November 21, 2019

Finding Distilled Spirits and Malt Related, TTAB Sustains 2(d) Opposition to BLACKLAND DISTILLERY

The Board sustained an opposition to registration of BLACKLAND DISTILLERY for "distilled spirits" [DISTILLERY disclaimed], finding a likelihood of confusion with the registered mark BLACKLANDS MALT for "malt for brewing and distilling" [MALT disclaimed]. The parties stipulated many facts and proceeded under the Board's ACR regime. The key issue under Section 2(d) was, of course, the relatedness of the goods. Opposer also claimed that applicant's mark is primarily geographically descriptive under Section 2(e)(2), but that claim failed due to the obscurity of "Blacklands" as a place or location. Blacklands Malt, LLC v. M Distillery, Inc., Opposition No. 91243647 (November 18, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo).

Likelihood of Confusion: Opposer introduced evidence that third-party brewers and distillers state in their advertising, packaging and labels that their beers and spirits are produced with Opposer’s malt. Opposer also introduced evidence that it licenses its mark, or portions thereof, to third-party brewers for use in such beers as “Smoak on the Blacklands.” Opposer also provided evidence that a third-party craft distiller was opening one of the largest malting facilities in the world. And finally, it submitted  copies of four use-based, third-party registrations for marks identifying both “malt for brewing and distilling” and various beers.

There was no evidence that opposer is a source of beer or distilled spirits. Nevertheless, the Board found that the evidence did support opposer's allegation that "Opposer and its goods are inextricably entwined in the alcoholic-beverages industry.

The Board therefore concluded that "the parties’ goods are related inasmuch as Opposer’s malt is a
necessary and primary ingredient in distilled spirits, including distilled spirits of the types produced by Applicant." 

The parties stipulated that distilled spirits and malt are not sold through the same trade channels, and that ninety-eight percent of opposer's sales of malt were to commercial entities. Although malt purchasers are not impulse buyers, applicant's purchasers presumably include ordinary consumers who may not exercise a high degree of purchasing care. The Board therefore deemed this du Pont factor to be neutral of weighing slightly against a finding of likelihood of confusion.

Balancing the relevant factors, the Board found confusion likely and it sustained the Section 2(d) claim.

Geographical Descriptiveness The first prong of the test for geographical descriptiveness is a showing that the primary significance of the mark is a generally known geographic location. Opposer failed to satisfy that prong. [Can a prong be satisfied? - ed.].

The parties stipulated that the boundaries of the “Blackland Prairie Ecoregion” in Texas are unclear, and there was little evidence in the record that established any recognized boundaries for the Blackland Prairie. It was also unclear whether applicant operated in or near that region. The parties stipulated that many of their own customers are not familiar with the significance of the term.

The scant evidence in this case, along with the parties’ stipulations, do not necessarily evidence that the Blackland Prairie is a geographic location known generally to the relevant American purchasing public. As such, the term does not convey a readily recognizable geographical significance to the average American consumer, but rather simply denotes the name of an obscure or vaguely defined geographic area.

Therefore the Board dismissed opposer's Section 2(e)(2) claim.

Read comments and post your comment here.

TTABlog comment: Sometimes, when your are in the middle of a blog post, you realize that the case is not that interesting. I'll call that a WYHBT? Would You Have Blogged This? This case may be one of them.

Text Copyright John L. Welch 2019.


At 2:46 PM, Anonymous Anonymous said...

I actually found it to be interesting. One more example of how hard it is to understand how the USPTO will view relatedness. Basically, flip a coin.

Beer/Wine/Alcohol/Hops are sometimes related and sometimes not, but Beer/Water are never considered to be related?


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