or type of  beverage”—if so, the mark is generic. With respect to the descriptiveness analysis, the Court clarified that an applicant’s evidentiary burden for proving acquired distinctiveness depends on whether the mark is merely descriptive or highly descriptive: the more descriptive the mark, the more evidence is needed to establish the mark has acquired A MARK distinctiveness. This new decision blurs the CAN NOW BE distinction between generic and FOUND GENERIC descriptive marks, potentially NOT ONLY WHEN IT broadening the scope of the “generic” classification to IS THE COMMON NAME encompass some marks that FOR A CLASS OF GOODS would have previously been OR SERVICES, BUT ALSO designated as “descriptive.” WHEN IT REFERS TO A Moving forward, it will be interesting to see how the FEATURE OR ASPECT OF USPTO and TTAB analyze THE GOODS OR SERVICES, generic and descriptive OR EVEN A SUB-GROUP marks. A mark can now be found generic not only when (OR A FEATURE OF THAT it is the common name for a SUB-GROUP) OF class of goods or services, but also THE GOODS AND when it refers to a feature or aspect SERVICES. of the goods or services, or even a subgroup (or a feature of that sub-group) of the goods and services. For descriptive marks, the evidentiary requirements for acquired distinctiveness will vary depending on whether the mark is “merely descriptive” or “highly descriptive.” When applying to register any sort of arguably descriptive trademark (e.g., “Coco Cocktail”), distillers should muster the strongest evidence possible to show the distinctiveness of the mark, such as the scope and size of advertising, sales revenues, and any media coverage of the applied-for mark to maximize the chances of registration and thus protection.
3. ALL ALCOHOL BEVERAGES ARE CONSIDERED RELATED…EXCEPT WHEN THEY’RE NOT An often-considered question by the USPTO and the TTAB is whether certain types of alcohol beverages (e.g., wine, vodka, beer etc.) are “related” when assessing likelihood of confusion. The question arises when a party applies to register a trademark for one type of alcohol beverage that is identical or similar to an earlier-filed application or registration for a different type of alcohol beverage. In many cases, the USPTO will refuse to register the applied-for mark or a third-party will oppose the application based on a likelihood of confusion with the earlier-filed application or registration. When assessing likelihood of confusion, the USPTO, TTAB, and courts analyze multiple factors. Often, however, the two most important factors are (1) the similarities of the marks and (2) the similarity or relatedness of the goods/services. The TTAB has WWW.ARTISANSPIRITMAG.COM
long held that there is no per se rule that all alcohol beverages are “related,” and cases have thus gone both ways. Recent case law highlights just how fact specific this inquiry really is, providing valuable insight to parties applying for, challenging, and protecting alcohol beverage trademark registrations. In In re Bear Creek Distillery, LLLP,4 decided in May 2018, the TTAB refused registration of BEAR CREEK DISTILLERY5 in connection with “Spirits; Spirits and liqueurs; Distilled spirits” due to a likelihood of confusion with BEAR CREEK for “wines.” The TTAB found that the marks were similar and that the facts showed that “consumers would be familiar with the fact that there are combination wineries and distilleries, or companies that produce both types of goods, such that they would assume a connection between the two products.” In response to Applicant’s evidence that many wineries do not produce spirits, the TTAB stated “the question is not whether consumers would expect to order spirits at a winery or wine at a distillery, but whether wine and spirits are so related that purchasers would expect these goods to emanate from the same source if they were sold under the same or confusingly similar marks.” Similarly, in May 2018, the TTAB cancelled a trademark registration for MASKED BANDIT for “beer” based on a likelihood of confusion with BANDIT for “wine” and “alcoholic beverages except beers.”6 The TTAB found the marks were similar, which weighed in favor of a likelihood of confusion. Likewise, the TTAB found that the goods were related, based on evidence of “at least 24 entities offering both wine and beer under the same mark,” four trademark registrations where the same mark was used for both wine and beer, and articles discussing entities that produce both wine and beer. In contrast, the TTAB recently found there was no likelihood of confusion between HOP SAVANT for “beer” and SAVANT for “wine.”7 Despite finding that the marks were similar, which weighed in favor of a likelihood of confusion, the TTAB ultimately dismissed the opposition because the SAVANT trademark registrant had not provided any evidence to show that the goods were related, choosing instead to rely only on past decisions from the TTAB and Federal Circuit determining beer and wine were related. The TTAB stressed that the relatedness of the goods must be determined by the facts and evidence in each particular case; prior decisions involving similar goods will not dictate the result in a future case. Likewise, in Patrón Spirits International AG v. Conyngham Brewing Co.,8 the TTAB dismissed an opposition to the registration of PIRATE PISS for “beer, ale and lager,” finding no likelihood of confusion with PYRAT for “distilled spirits” or PYRAT RUM for “rum” and stating once 4 Serial Nos. 87026602 and 87026770 (TTAB May 1, 2018). 5 Applicant filed two applications: one for BEAR CREEK DISTILLERY (word mark) and one for BEAR CREEK DISTILLERY and design. 6 Rebel Wine Co. v. Piney River Brewing Co., Cancellation No. 9206391, 2018 WL 2445463 (TTAB May 25, 2018). 7 Justin Vineyards & Winery LLC v. Crooked Stave, LLC, Opposition No. 91229132 (TTAB June 26, 2018). 8 Opposition No. 91226939 (TTAB June 8, 2018).
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