Friday, May 05, 2023

TTABlog Test: Are Beer and Restaurant Services Related for Section 2(d) Purposes?

The USPTO refused to register the mark CHICKEN SCRATCH for "beer" on the ground of likely confusion with the identical mark registered for "restaurant services." Applicant R.S. Lipman argued that the cited mark is weak because it describes registrant's services, which provide "chicken dishes made from scratch." The Board pooh-poohed that argument, but what about the "something more" requirement? Did the USPTO clear that hurdle? In re R.S. Lipman Brewing Company, LLC, Serial No. 88209633 (May 3, 2023) [not precedential] (Opinion by Judge Michael B. Adlin).

As to the marks, the Board noted that the cited mark is presumably inherently distinctive, since it was registered without a Section 2(f) claim. Applicant, relying on the registrant's webpage ("Chicken made from scratch with a nostalgic flavor  profile"), argued that the cited mark is descriptive and conceptually weak. The Board disagreed: "'CHICKEN SCRATCH' (bad handwriting) has a different connotation and commercial impression than chicken 'made from scratch' (meaning 'to use only the most basic ingredients, with nothing premade')." Moreover, the cited mark is presumed to be at least suggestive of the services.

It takes a long stretch of a consumer’s imagination to say that CHICKEN SCRATCH calls to mind or suggests chicken entrees made from scratch. Thus as a whole CHICKEN SCRATCH has some suggestion of “chicken” because this term is contained within the mark, but inclusion of the term “scratch” in the mark makes it less suggestive of restaurant services. “A mark that is only somewhat suggestive is entitled to greater protection than a more highly suggestive mark.”

Applicant did not offer any proof of third-party use of the mark CHICKEN SCRATCH. The Board concluded that the cited mark is not a conceptually weak when used in connection with Registrant’s identified restaurant services, and so it accorded the mark "the normal scope of protection afforded a registered mark."

Applicant argued that the marks, although identical, have different connotations, since the cited mark "conveys a strong commercial impression of a restaurant focused primarily on ‘chicken’ entrees made from ‘scratch.’" The Board noted the lack of evidence to support that assertion, but in any case,

we are left with (according to Applicant) Registrant’s CHICKEN SCRATCH mark being associated with chicken dishes and Applicant’s CHICKEN SCRATCH mark being associated with the commonality of the ingredients of Applicant’s beer and chicken feed. Thus, even according to Applicant, the respective marks have similar (or at least related) commercial impressions given their connection to “chicken.”

Turning to the goods and services, both applicant and the examining attorney placed heavy reliance on the CAFC's decision in In re Coors (wherein the CAFC reversed a Section 2(d) refusal to register the mark BLUE MOON & Design for beer in light of a registration for another BLUE MOON Design for restaurant services.). The Board closely compared the record in that case with the record in this case. It noted the "additional wording in the applicant’s mark as well as significant differences in the design and coloring elements between the two marks." and the evidence of numerous third-party uses of "Blue Moon” for restaurant services and its appearance in many registered marks for food and beverages.

Furthermore, in Coors, the applicant submitted evidence regarding the relatively small number of breweries in the United States selling beer and rendering restaurant services under the same mark, as compared to the number of United States restaurants as a whole. Here, there was no such comparative evidence. Examining Attorney Sharon A. Meier made of record 21 registrations covering beer and restaurant services, as well as excerpts from 18 active website of third-party restaurants that serve their own beer under the same mark as their restaurant establishment; either by way of on-premise brewing or under private label production.

The Board concluded that "the evidence provided in the present appeal shows a much closer relationship between beer and restaurant services as compared to the record described by the Federal Circuit 20 years ago in In re Coors," and it found the evidence sufficient to show the relatedness of applicant’s goods and registrant’s services.

Finally, the Board found that beer and restaurant services "travel in overlapping trade channels, and are promoted for sale to the same general class of consumers."

The Examining Attorney’s evidence shows “something more” than that beer is sold in restaurants, and thus Applicant’s goods and Registrant’s services are related, travel in overlapping trade channels, and are offered to overlapping target consumers. With the relatively recent growth of the “brewpub” market segment, consumers would expect that beer and restaurant services marketed and sold under the same mark would originate from the same source.

And so, the Board affirmed the refusal to register.

Read comments and post your comment here.

TTABlogger comment: Seems like the applicant put its eggs in the wrong basket in this appeal. Do you think the USPTO should have to prove that it is "common" for an entity to offer restaurants services and beer under the same mark? Should the USPTO have the burden to submit the "comparative evidence" that the applicant submitted in Coors?

Text Copyright John L. Welch 2023.


At 10:03 AM, Anonymous Anonymous said...

It's decisions like this and Rao's why Examining Attorneys have no clue how to treat similar marks for beverage alcohol products v restaurant services.

At 12:16 PM, Anonymous Anonymous said...

On Tuesday, TTABlog reported a decision reversing a refusal to register the same mark for wine and restaurant services.

Today (Friday), the report is about a decision affirming a refusal to register the same mark for beer and restaurant services.

The uncertainty on this issue is frustrating. Restaurant services can include a huge number of peripheral goods (in addition to beverages): condiments, dessert mixes, aprons, barware, t-shirts, salsas, hot sauces, soups and soup mixes, chef-cured meats and sausages, spice blends, cookbooks, keychains, dolls, sporting goods, coloring books, posters, art prints, downloadable mobile apps, etc. A Tex-Mex chain famously features hubcaps!

Where is the line? How do we advise our clients with confidence? How do businesses make decisions when the current timeframe for examination is two or three times longer than the "old" normal? Are we going to see refusals in Class 25 because some/many restaurants also sell t-shirts with their name/logo? Refusals in the technology classes because some/many restaurants also have apps?

It is particularly tough when the large field of restaurant registrations intersects with other crowded fields. I'll grant the likelihood of confusion over hubcaps with the same mark as the restaurant.

At 2:11 PM, Blogger Gene Bolmarcich, Esq. said...

OK, so I get that every case turns on the evidence of record BUT my big complaint with this case is that the Board simply dismissed the very strong argument that the connotations of the marks in relation to the different goods and services was significant. I agree 100%. For the beer, it had to do with the term "chicken scratch' referring to things that chickens eat, like barley, etc, ingredients from which the beer was made (as the photo in the case shows). For the restaurants, it was no surprise that they specialized in chicken dishes made from scratch. There was evidence in the record showing this. Without discussing the significance of such evidence (and whether it even could be admissible to determine the meaning of a term) they simply went with the dictionary definition of "chicken scratch" as 'scribbling' (a meaning that had NOTHING AT ALL to do wit with the beer or the restaurant) and ruled that the marks were identical in every way. Why is it they are allowed to use evidence of how a party uses a term to rule against them on a descriptiveness issue but not where a party is proffering it for the meaning of a term to try to avoid a finding of confusion? Everything goes in favor of a prior registrant in these ex parte cases to the point where people might as well just stop applying for trademarks (and I can retire)

At 2:15 PM, Anonymous Valerie N said...

Agree with Anonymous, seems like conflicting conclusions.

At 2:18 PM, Blogger Gene Bolmarcich, Esq. said...

To answer your question John, YES

At 2:28 PM, Blogger Gene Bolmarcich, Esq. said...

and furthermore, I take issue with this passage in the decision:

We find that the third-party registration, use and publications (articles and book) evidence provided by the Examining Attorney during prosecution shows “something more” than the fact that identical marks are used for beer and for restaurant services.

If third-party registrations and use evidence is NOT evidence of the "fact that identical marks are used for beer and for restaurant services" then what is it????

The something more test requires SOMETHING MORE than that type of evidence!! That's what it says and what the Board quoted. SO, in short, it was the articles and "book" that was the something more? That seems like something very less more.

At 2:43 PM, Blogger Gene Bolmarcich, Esq. said...

A great solution to this mess is to no longer accept "restaurant services" as an identification of services but instead to require an application to be very specific about the type of restaurant. Nobody uses a single mark for many different types of restaurants so this makes sense to require and does not inappropriately limit the rights of any restaurant owner (because there is no reason to own a mark for both a hamburger joint and a fancy French restaurant). If its a brewpub, then describe it as one and you're protected against similar marks for beer. And these examples of brewpubs (or winery/restaurants) that the Board accepts as probative does that apply to your "run of the mill" restaurant (or worse, Burger King)?

At 7:32 PM, Anonymous Anonymous said...

I propose that beer, wine, liquor etc., and restaurants are related if the beer, wine, liquor, etc., is sold in any single restaurant. The onus is on the owner of the beer, wine, liquor, etc., to sell in a single restaurant and provide such proof when needed. Get rid of this "something more" ridiculous rule.


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