Precedential No. 10: TTAB Denies Section 18 Petition to Restrict Beer Registration to Micro-Brewed Craft Beer

In an attempt to side-step a Section 2(d) refusal of the mark shown below, for "gin," Petitioner Iron Balls International petitioned to restrict Respondent Bull Creek's registration for the mark IRON BALLS for "beer" to "“micro-brewed craft beer." The Board concluded that the proposed restriction would not avoid a likelihood of confusion, and so it denied the petition. Iron Balls International Ltd. v. Bull Creek Brewing, LLC, 2024 USPQ2d 1004 (TTAB 2024) [precedential] (Opinion by Judge David K. Heasley).

Section 18 of the Trademark Act, in pertinent part, gives the Director of the USPTO the authority to "modify the application or registration by limiting the goods or services specified therein, [and] otherwise restrict or rectify with respect to the register the registration of a registered mark." See Embarcadero Techs., Inc. v. RStudio, Inc., 2013 WL 2365029, at *2 (TTAB 2013).

A party seeking to restrict a registrant’s broadly worded identification of goods under Section 18 must plead and prove “(1) that the registrant is not using its mark on goods or services that would be excluded by the limitation, and (2) that the limitation would result in the avoidance of a finding of a likelihood of confusion.”

Issue Preclusion?: An earlier application filed by petitioner for the same mark, also for gin, was refused registration in view of the same registration at issue here, and the TTAB affirmed that refusal. The Board agreed with Bull Creek that, as a result, issue preclusion applied to the issue of the similarity of the marks; however, petitioner’s proposed restriction of goods "raises new issues as to other DuPont factors."

In assessing Petitioner’s Section 18 claim, we must consider precisely the issue we did not decide in the ex parte proceeding, namely, whether “gin” is related to “micro-brewed craft beer.” As Petitioner argues, its proposed restriction from “beer” to “micro-brewed craft beer” could also affect other DuPont factors, such as the channels of trade, the relevant consumers’ sophistication and care, the commercial strength of Respondent’s mark, and the extent of potential confusion. The doctrine of issue preclusion does not bar litigation of these issues.

Micro-brewed Craft Beer?: The Board next turned to the question of whether Respondent Brew Creek's goods are micro-brewed craft beer. Sifting through the evidence, the Board found significant the fact that Bull Creek represented itself as a "craft brewery" and displayed the "Independent Craft Brewer Seal" on its labels. The Board concluded that relevant purchasers would see respondent as a "brewer with a limited, small batch output" and would consider it to be a "craft microbrewery" and its goods "micro-brewed craft beer."

Avoid Likely Confusion?: The final and key question was whether the requested restriction of the goods identified in the registration would avoid a finding of likelihood of confusion. As stated above, issue preclusion barred re-litigation of the first DuPont factor: the similarity of the marks. 

Turning to the strength of Bull Creek's registered mark, the Board found the term IRON BALLS to be arbitrary and conceptually strong. As to commercial strength, petitioner failed to provide evidence of any weakness in the mark but, the Board noted, "even if strong that does not appreciably affect the likelihood of confusion analysis." The Board concluded that the mark is "entitled to the normal scope of protection to which inherently distinctive marks are entitled."

As to the goods, the Board observed that the proposed restriction to micro-brewed craft beer "does not affect the nature of the beer Respondent produces; it simply means that it is provided by a small producer." "Even with the restriction, an average consumer encountering Petitioner’s and Respondent’s similarly-branded alcoholic beverages in overlapping channels of trade could still mistakenly assume that the goods had a common origin."

Furthermore, the proposed restriction would not "change the class of customers for the parties' goods: adult members of the general public who purchase and consume alcoholic beverages," nor would it alter the trade channels for the goods. The respective identifications of goods do not set any price points, so there is no basis on which to conclude that consumers of the goods "will be particularly sophisticated, discriminating, or careful in making their purchases."

Conclusion The Board concluded that "even if Respondent’s goods could be characterized as 'micro-brewed craft beer,' and even if its identification of goods were so restricted, the restriction would not avoid a likelihood of confusion."

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TTABlogger comment: Although the Board referred to the petition as one for partial cancellation, I think that is a misnomer: a petition under Section 18 seeks restriction of a registration, not removal (or cancellation) of any items from the registration. See the TTABlog post here. - ed.].

Text Copyright John L. Welch 2024.