Category archives for “Intellectual Property”

Alcoholic Beverage Trademark Consent Agreements – Will the USPTO Be Scrutinizing Them More Closely?

March 10, 2016

It’s no secret to people in the alcoholic beverage business that finding a unique trademark to register is becoming increasingly difficult. A decade ago there were far fewer producers of alcoholic beverages and most had just one or two trademarks. Today there are thousands more wineries, breweries and distilleries – as well as importers – and many of them have not just one or two trademarks, but a portfolio of brands. This proliferation of products is great for consumers but has made it progressively harder to come up with a trademark that isn’t already in use on another alcohol product.

Compounding the problem is the fact that the U.S. Patent & Trademark Office (“USPTO”) considers all alcohol beverages to be essentially the same goods (as we previously blogged about here). When the goods are very similar, the USPTO requires less similarity between the marks to find that confusion is likely. As a result, a trademark registration for XYZ LAGER would probably prevent someone else from registering XYZ SPIRITS COMPANY or XYZ VINEYARDS, or even less similar variations, such as XYZ FABULOUS WINES or CHEZ XYZ.

One possible solution for a trademark applicant that gets a Section 2(d) refusal from the USPTO based on a similar trademark is to enter into a “consent agreement” with the owner of the registered trademark. If two parties with similar trademarks agree between themselves that they don’t think confusion is likely, or can be mitigated (e.g., by ensuring that the parties use dissimilar labels and not make the same products), they can enter into a consent agreement. The USPTO has historically given such agreements great deference and will typically withdraw a refusal to register if the parties provide a consent agreement. But a recent precedential opinion of the Trademark Trial and Appeal Board (“TTAB”) reminds us that consent agreements are not always effective in securing a registration.

In In re Bay State Brewing Company, Inc., the USPTO was not swayed by a consent agreement between the applicant for TIME TRAVELER BLONDE and the registrant of TIME TRAVELER – both for beer – and did not withdraw the refusal to register TIME TRAVELER BLONDE. Serial No. 85826258 (Feb. 25, 2016) (precedential). The applicant appealed and the TTAB affirmed the refusal.

Why did the TTAB reject the consent agreement? They raised a few issues, notably that the agreement contained geographic restrictions for the use of applicant’s mark to avoid confusion (use limited to New England and New York only) but registrant was free to use its mark everywhere, so the marks would be used in overlapping areas, despite the limitation on applicant’s use. The TTAB also noted that a registration creates a presumption of nationwide trademark rights, but applicant’s rights were geographically limited by the consent agreement, so an unrestricted registration would be misleading to the trademark-searching public. The TTAB raised a few other issues related to restrictions on the parties’ use of their respective marks, but it appears that the USPTO and the TTAB were simply not comfortable with two registrations for “virtually identical marks on identical goods that are subject to impulse purchase by ordinary consumers in the same geographical area,” and no amount of trade dress restrictions would convince them that confusion could be avoided.

What does this mean for future consent agreements? The TTAB acknowledged that consent agreements still may be afforded great weight, and it is unlikely that we’ll see the USPTO begin to ignore consent agreements in Section 2(d) analyses. But the Bay State Brewing case reminds us that consent agreements are not a guarantee of registration and they should be carefully drafted to assure the USPTO that the parties can adequately avoid consumer confusion.

If you have questions about a trademark application or consent agreement, contact one of the attorneys at Strike & Techel.


2015 at the TTAB: Are All Alcoholic Beverages Related Goods for Trademark Purposes?

January 25, 2016

In 2015, the Trademark Trial and Appeal Board (“TTAB”) continued the trend of finding different categories of alcoholic beverages to be related goods for purposes of a Section 2(d) likelihood of confusion analysis. Although there is no per se rule that all alcoholic beverages are related goods, trademark examiners at the Patent and Trademark Office (“PTO”), the TTAB, and reviewing courts routinely find that beer, wine, spirits, and other alcoholic beverages are related goods. For the average consumer or business owner, the grouping of all alcoholic beverages together as related goods for trademark purposes makes little sense. As the TTAB has stated, “[w]hile it is clear that tequila and wine are both beverages that contain alcohol, not even an unsophisticated purchaser would mistakenly buy one expecting the other.” In re Proximo Spirits, Inc., Serial No. 85865962 (Mar. 16, 2015) (not precedential). However, the question is not whether the goods are similar or competitive, but rather the question is whether a consumer encountering the goods in the market “would mistakenly believe that they share or are affiliated with or sponsored by a common source.” Anheuser-Busch, LLC v. Innvopak Systems Pty Ltd., 115 U.S.P.Q.2d 1816 (TTAB 2015) (precedential).

Why does the TTAB frequently find, when the marks are similar, that consumers would believe alcoholic beverages of different types originate from a common source? One reason is that some manufacturers produce multiple types of alcoholic beverages and sell those beverages under the same mark. In In re Sugarlands Distilling Company, LLC, the TTAB cited five examples of wineries also engaged in distillation and the sale of spirits, as well as “internet evidence show[ing] that there are a number of combination wineries and distilleries,” and that evidence alone was sufficient for the TTAB to find that the goods, wine and spirits, were related. Serial No. 85818277 (Nov. 20, 2015) (not precedential); see also In re Sonoma Estate Vintners, LLC, Serial No. 85842056 (Jan. 9, 2015) (not precedential) (citing fifteen registrations showing that various entities registered a single mark for wine and beer). The TTAB also typically finds that alcoholic beverages are sold in the same channels of trade, such as liquor stores and restaurants, and thus that consumers will encounter multiple types of alcoholic beverages in the same stores. In re Brent Theyson, Serial No. 85663894 (Dec. 4, 2015) (not precedential); In re Millbrook Distillery, LLC, Serial Nos. 85924732 and 85954556 (Feb. 9, 2015) (not precedential). Further, the TTAB commonly finds that alcoholic beverages of all types can be found at lower price points, and thus that consumers may purchase alcohol “without exercising great care.” In re Millbrook Distillery, LLC, Serial Nos. 85924732 and 85954556; Anheuser-Busch, LLC, 115 U.S.P.Q.2d 1816. These factors all tend to lower the bar for a finding of likelihood of confusion by the PTO and TTAB.

See below for examples of cases involving the relatedness of alcoholic beverages that were considered by the TTAB in 2015:

Contrary to the above trend, the TTAB reversed a refusal to register REUBEN’S BREWS (and design) in Class 32 for beer, despite the prior registration of RUBENS (and design) in Class 33 for wine. In re Reubens Brews LLC, Serial No. 86066711 (Oct. 27, 2015) (not precedential). The TTAB found the marks to be different in appearance, meaning, and commercial impression, although they were similar in sound. Considering evidence of manufacturers producing both beer and wine, an overlap in trade channels, and similar price points, the TTAB conceded that the “record establishes that there is some degree of relationship between beer and wine.” However, the TTAB acknowledged that the PTO “has in the recent past taken inconsistent positions when it comes to likelihood of confusion between marks for beer and wine,” and cited eighteen examples of similar or identical marks registered to different owners in beer and wine. The TTAB ultimately found in favor of the applicant, and reversed the refusal to register. However, the TTAB stressed that the finding was based on the “overall differences between the marks in their entireties.”

Notwithstanding the TTAB’s reversal in the REUBEN’S BREWS case, it would be premature to conclude that the PTO or the TTAB will increasingly recognize the potential differences between types of alcohol products, so it would be wise to consider trademarks in use on beverages of all types when evaluating a trademark for use with an alcoholic beverage product.

For specific trademark guidance, contact one of the attorneys at Strike & Techel.


Trademark Letters of Protest: The Early Bird Gets the Worm

April 05, 2012

Consumers don’t just buy products – they buy brands. Brand loyalty means that protecting ones trademarks is vital to a successful business. If a competitor registers a mark that is confusingly similar to one of your company’s registered marks, one clear way to challenge the registration is to wait until the mark is published for opposition and then file a Notice of Opposition with the United States Trademark Trial and Appeal Board. But you can also jump into the fray earlier, before the mark is published for opposition, by sending a Letter of Protest to the United States Patent and Trademark Office (USPTO). The Letter of Protest is a request for the attorney reviewing the proposed mark to consider certain information, which must be provided with the Letter of Protest, when deciding whether the mark should move forward in the registration process or not. If the USPTO believes the evidence provided has merit, the evidence, but not the cover letter itself, will be provided to the reviewing attorney. Thus, it is important that a broad, factually accurate, and objectively persuasive set of evidence is provided. The Letter of Protest may raise any grounds for rejection that are available to the examining attorney. The most popular issues raised tend to be likelihood of confusion with a registered mark, descriptiveness of the proposed mark, and arguments that the proposed mark is generic.

While a Letter of Protest can be filed after a proposed mark is published for opposition, the deadline is thirty days after the proposed mark’s publication. Additionally, the standard of review for examining the evidence provided increases after the proposed mark is published. If a Letter of Protest is filed prior to publication of the proposed mark, the USPTO reviews the evidence to see if it is relevant and supports a reasonable ground for denying registration of the proposed mark. But a Letter of Protest submitted after publication of the proposed mark will be reviewed to see if the evidence supports a prima facie case for refusal, meaning a case for refusal that is self-evident. This standard of review is much higher and more difficult to meet. Thus, if you are going to file a Letter of Protest, it is important to do so early in the examination process. The attorneys at Strike & Techel have filed successful Letters of Protest on behalf of clients before. Please feel free to contact one of our attorneys if you are interested in such a filing or need other trademark assistance.

Imbiblog is published for general informational purposes only and is not intended as legal advice. Copyright © 2012 · All Rights Reserved ·


Do You Have a License to Play That Song?  Appeals Court Affirms Win for Record Companies Against Cop

March 26, 2012

Restaurant and bar licensees that play music in their establishments should take notice of the Ninth Circuit Court of Appeals’ recent decision in Range Road Music, Inc. et al. v. East Coast Foods, Inc. et al., 2012 WL 502510 (9th Cir. 2012). In the opinion, which can be found here, the Court affirmed a lower court decision finding that East Coast engaged in copyright infringement through its unauthorized use of copyrighted songs in its southern California restaurant, Roscoe’s House of Chicken and Waffles, and the accompanying jazz club, the Sea Bird Jazz Lounge.

The plaintiffs in Range Road were several record companies, each members of the American Society of Composers, Authors, and Publishers (“ASCAP”). The court found that after East Coast opened Roscoe’s and the Sea Bird in 2001, the record companies repeatedly offered East Coast a license to play music owned by ASCAP members. East Coast failed to purchase a license for several years, and in 2008 the record companies independently investigated whether copyright infringement was occurring at Roscoe’s and the Sea Bird Lounge. The investigator discovered that the two establishments were playing CDs that included the record companies’ copyrighted songs and the record companies brought suit for copyright infringement. The court granted their motion for summary judgment, finding eight counts of copyright infringement, and assessing damages of $4,500 for each infringed work. The court also awarded the music companies attorney’s fees and costs in the amount of $162,728.22. The Ninth Circuit Court of Appeals affirmed both the finding of copyright infringement and the attorneys’ fees award, finding that East Coast “could have avoided liability by purchasing a valid license at any point during the seven years in which ASCAP importuned them to do so.”

Under the Copyright Act, copyright owners have the exclusive right, among other things, to perform the copyrighted work publicly. A plaintiff can establish a case for copyright infringement by showing 1) ownership of a valid copyright, and 2) copying of original elements of the copyrighted work, which includes performing a copyrighted work publicly. Statutory damages for copyright infringement range from $750 to $30,000 for each infringement.

Restaurant and bar owners who play recorded music or feature performances of live music should take notice of the Range Road decision and be aware of the basics of the Copyright Act. Letters from ASCAP or similar recording companies should not be ignored.

Imbiblog is published for general informational purposes only and is not intended as legal advice. Copyright © 2012 · All Rights Reserved ·


Trademark Scams: Don’t Trust Unknown Correspondence

February 29, 2012

Protecting your trademark is a key part of your business. And scam artists know that. Because trademark filings are public information, the United States Patent and Trademark Office (“USPTO”) databases and the Official Gazette, which is published weekly by the USPTO, are often mined by hucksters looking to earn a quick buck. Scams include requesting payment to be added to an alternate unofficial trademark registry or to secure foreign domain name rights, e.g. trademark.cn. The communications are often marketed with graphics like the American flag and variations on the USPTO name, such as USTRO or USTPA. Fraudulent companies often send frenetic correspondence regarding the need to renew a mark or face abandonment months before actual renewals become due, and hence months before valid correspondence from your law firm handling the trademark application would be received. If you receive any such correspondence, please read it carefully and contact the attorney handling your trademark affairs to avoid being fleeced by such frauds. Additional information from the USPTO about such scams is available here.

Imbiblog is published for general informational purposes only and is not intended as legal advice. Copyright © 2012 · All Rights Reserved ·


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