TTABlog Test: Is OTTO'S for Soda Pops Confusable With OTTO'S OATMEAL STOUT for Beer?

The USPTO refused to register the mark OTTO'S for "soda pops," finding confusion likely with the registered mark OTTO’S OATMEAL STOUT for “beer” [OATMEAL STOUT disclaimed]. Applicant C&D Brewing argued that the marks differ in sound, appearance, and connotation, and C&D pointed to "83 pairs of registrations that contain identical or nearly identical marks where one in the pair is registered for beer and the other for soda pop/soft drinks (from distinct owners)." How do you think this appeal came out? In re C&D Brewing Ventures, Inc., Serial No. 88935220 (March 26, 2024) [not precedential] (Opinion by Judge Wendy B. Cohen).

The Marks: The Board found the word OTTO’S to be the dominant portion of the cited mark both because it appears first in the mark and because it has a stronger source-identifying significance than the other elements of the mark. "Consumers familiar with Registrant’s mark, OTTO’S OATMEAL STOUT, who encounter Applicant’s mark, OTTO’S, could perceive OTTO’S as indicating that the brewers of OTTO’S OATMEAL STOUT have added a non-alcoholic beverage to their product line."

C&D argued that "in the context of the marketing environment in which the mark of the Cited Registration is found, OTTO’S OATMEAL STOUT indicates that OTTO’S may be the name of a dog rather than a person”; and that Registrant’s beer is “sold under the house mark III Dachshunds Brewing … which has a picture of a dachshund” leading a consumer to assume that OTTO’S is the name of the dog." Irrelevant, said the Board, pointing out once again that "Contrary to Applicant’s arguments, 'the likelihood of confusion issue before us involves the marks as shown in [the] registration certificate and Applicant’s application.'"

The Goods: Examining Attorney Rebecca Ruiz submitted website evidence of nine third-parties that offer both beer and soda under the same or very similar marks, along with an Internet article discussing multiple entities that offer both beer and soda. She also provided ten third-party use-based registrations for both beer and soda under the same mark.

[T]he Examining Attorney’s third-party evidence demonstrates that several third-party entities offer beer and soda under the same or very similar marks suggesting that consumers are accustomed to seeing a single mark associated with a source that sells both beer and soda.

Pointing to its 83 third-party registrations, C&D argued that the evidence "suggests that soda pops are instead the types of goods that are typically sold under the same mark … by distinct owners" and "overwhelmingly suggests that the respective industries have agreed that soda pop/soft drinks and beer are not related."

The Board noted that more than 50 of the pairs include marks that differ by additional wording, design or stylization features that distinguish the marks. Furthermore, there was no supporting evidence of any use of any of the marks that comprise the pairs. "There is also an absence of proof, such as by declaration or submission of copies of the relevant file histories, that no licenses or coexistence agreements are in place between any of the paired registrants; or that they do not coexist because of limited geographic areas of actual use known to the owners of the involved registrations."

[T]he fact that the Examining Attorney did not submit more third-party examples does not detract from the fact that this evidence reveals that beer and soda are often offered by the same party under the same mark. The Court of Appeals for the Federal Circuit and Trademark Trial and Appeal Board have long recognized that "the PTO is an agency of limited resources" for obtaining evidence when examining applications for registration; the practicalities of these limited resources are routinely taken into account when reviewing a trademark examining attorney’s action.

And so, the Board affirmed the refusal to register.

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TTABlogger comment: I believe that the most popular brands of "soda pops" do not also sell beer. Wouldn't that affect the consuming public's perception regarding relatedness?

Text Copyright John L. Welch 2024.