Heck Freezes Over: USPTO Fails to Prove Gin Related to Beer Under Section 2(d)

The USPTO fumbled the ball here in what should have been a fairly easy run for a touchdown. The Board reversed a refusal to register the mark shown below left, for "gin," finding that the USPTO failed to prove confusion likely with the mark on the right, for various beers. The Board found the marks to be "more similar than dissimilar," but the USPTO's feeble evidentiary showing regarding the relatedness of gin and beer led the Board to weigh the second DuPont factor as dispositive in favor of Applicant Cobblestone Brands. In re Cobblestone Brands Ltd, Serial No. 97453097 (December 19, 2024) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).

The Marks: Applicant disclaimed AMERICAN GIN, while the cited registration includes disclaimers of BREWING CO and DALLAS TX. Cobblestone argued that the design elements of the marks are the dominant features but the Board gave that assertion a bumpy ride, finding FOUR CORNERS to be dominant in both. Although the design elements are "noticeable," "it will be the words rather than colors or designs in the marks that will be used to call for and discuss Applicant’s and Registrant’s goods."

Although we recognize that there are differences between the marks when viewed on a side-by-side basis, when compared in their entireties we find them more similar than dissimilar in appearance, sound, meaning, and commercial impression due to presence of the identical dominant phrase FOUR CORNERS in both marks.

The Goods: The Office relied on "a smattering of third-party Internet evidence" to show the relatedness of gin and beer: a mere three websites offering the goods under the same mark. The Board found that evidence "unconvincing."

While there is no threshold number, three examples are a relatively small amount given the number of breweries and distilleries in the United States and the Internet resources for research easily available on the subject to examining attorneys. *** [O]n the record before us, there is simply insufficient evidence of third parties using the same mark in connection with beer and gin, or evidence that a maker of gin also actually produces beer, or that the goods are complementary.

The Examining Attorney pointed to prior Board decisions finding various alcoholic beverages related, but the Board was unimpressed: "Put simply, the Examining Attorney cannot evade the burden to prove relatedness by bootstrapping upon previous factual findings made in other decisions on different records." In any event, the evidence here "pales in comparison to the evidence in those cases."

Trade Channels: The Office also failed to prove that the trade channels overlap. "Although the consolidation of production, distribution, and/or sale in the beer, wine, and spirits markets suggests that there may be some overlap in trade channels, we cannot make such a finding on this record." [Seems like the Board could take judicial notice that gin and beer are sold in the same retail stores. - ed.].

Conclusion: The applicant wins! The applicant wins!

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TTABlogger comment: As I recently said in my comment on the JERSEY GIRL case [TTABlogged here], "In these alcoholic beverages case, an applicant's principal hope seems to be the weakness of the Office's evidence of third-party registration and use."

Text Copyright John L. Welch 2024.