Category archives for “Trademarks”

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.


Do “Illegal” Alcohol Sales Create Trademark Rights? The Trademark Trial and Appeal Board Says Maybe

November 26, 2012

As more and more beverage brands are introduced into the U.S., it is becoming increasingly difficult for suppliers to come up with unique trademarks that do not infringe marks already in use by others. As a result, trademark disputes involving alcohol beverage brands are common. Such disputes typically come down to the issue of priority of use – if the marks and the products are very similar, i.e., both are alcoholic beverages – the party with first commercial use will have priority and will likely be entitled to register the trademark. One of the fundamental elements used to prove first-use for alcohol products and to establish priority over other users is the date on which a Certificate of Label Approval (“COLA”) was issued. As most alcoholic beverage producers and importers are aware, a COLA is required before alcohol products can be legally imported or sold in the U.S. Sales of such products without a COLA would constitute an illegal sale under 27 CFR 4.50 (wine) 5.51 (distilled spirits) and 7.41 (beer). Because sales of a product without a COLA are not legal sales, they do not constitute bona fide use in commerce and may not be relied upon in establishing trademark priority. At least, that’s what many of us thought. But a recent decision of the Trademark Trial and Appeal Board (“TTAB”) suggests otherwise.

In an opposition proceeding involving the PARLAY trademark, both parties were using the same trademark on wines and the parties disagreed on who had priority. The opposer argued that the earliest use date relied on by the other party was actually before the labels had been issued a COLA; therefore, they were unlawful and did not count for trademark priority. But the TTAB ruled against the opposer, noting that even if sales without a COLA were not strictly compliant with the federal labeling regulations, that was not sufficient to deny that user priority rights. Rather, the opposing party is required to show either: (1) that a court or regulatory body had made a formal determination of non-compliance, or (2) that the improper usage was so “tainted” it could not create trademark rights. In other words, if the labels were otherwise approvable and not misleading or deceptive to consumers, sales of those products without a COLA may still be used to establish priority, even though not technically legal. In the PARLAY case, the TTAB also noted the Draconian result of denying priority because of a regulatory lapse occurring several years before. The TTAB decision is non-precedential, so it’s not binding and future decisions of the TTAB may come out differently. But for those of us who frequently scan the TTB COLA registry to determine trademark priority, this decision is of great interest.

For trademark or COLA help, contact one of the attorneys at Strike & Techel.

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


New Rule Regarding Specimens for Trademark Registration

June 19, 2012

Effective this week on June 21, 2012, the United States Patent and Trademark Office (“USPTO”) will begin a two-year pilot program that allows them to require additional specimens in connection with various trademark filings.

The public relies on the USPTO’s database of registered trademarks to clear trademarks that they may wish to adopt or are already using. When a potential trademark applicant searches the database and uncovers a similar registered mark, that party may feel compelled to change its plans to use the mark, or may incur costs and delays in determining whether the registered mark is still in use. The potential applicant may also incur costs in resolving a dispute over the mark. If a registered mark is not actually in use in the U.S., or is not in use on all the goods/services recited in the registration, these potential problems and costs may be incurred unnecessarily. Thus, accuracy and reliability of the USPTO database is critically important to trademark applicants. But there is a growing sense among practitioners that the USPTO’s register of trademarks does, in fact, contain many registrations for marks not in use on the full range of goods/services claimed – or not in use at all.

In response to this concern, the USPTO will be experimenting with requiring additional evidence that applicants are actually using their trademarks in commerce as they claim on the documents they file with the USPTO. The USPTO is implementing a two-year study during which they will randomly select 250 cases per year for additional audit. In those randomly selected cases, the USPTO can require that the registrant provide up to two additional specimens for each class of goods and/or services for which a mark is registered. Currently, applicants and registrants need only provide one specimen and are not required to provide specimens for every class of goods or services covered by their registration. These additional requirements may be imposed at the time of filing a use-based application, or when a registrant files its Section 8/Section 71 affidavits on already registered marks. The registrant will have six months to respond to such requests from the USPTO. No additional fees will be required from the registrant. The USPTO hopes that the program will enable it to assess the accuracy of the trademark database in order to determine whether new policies are required in order to ensure the accuracy of the trademark register. The full text of the new rule is available here. If you have questions about trademark registrations, please feel free to contact Barry Strike or Katherine Robb at Strike & Techel.

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


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 ·


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 ·


Barry Strike Quoted in ABA Journal on Trademark Issues

August 09, 2011

Partner Barry Strike, who handles numerous trademark issues for clients in the alcoholic beverage industry, was quoted in the ABA Journal’s article on the popular beer Collaboration Not Litigation. Click here to read the full article. If you have alcoholic beverage trademark questions, please feel free to contact Barry Strike at .(JavaScript must be enabled to view this email address).

Imbiblog is published for general informational purposes only and is not intended as legal advice. Copyright © 2010-2011 · All Rights Reserved ·


Bottle Design: Trademark versus Patent?

July 19, 2011

Distinctiveness: It’s a core product feature. After putting in the time and money it takes to make your product distinguishable in the marketplace, how do you protect that investment? Alcoholic beverage producers are likely familiar with the concept of trademarks, which are used to identify products and protect consumers from being confused about the source of goods or services. Trademark rights exist for as long as the marks are used in commerce. They do not have to be registered with the United States Patent and Trademark Office, but registration is highly advisable to provide notice to others interested in the mark that it is already being used in commerce. Trademark laws also protect “trade dress,” meaning features of a product or a product’s packaging that are distinctive and not required for functionality, but rather are used to identify the product in the marketplace as being made by a certain producer. For example the color green in a stop light is functional and could not be protected by trade dress, while the color green used on a product bottle may be protectable under trademark law.

Patents, on the other hand, must be registered in order to secure protection in the market, and the protection exists for a certain time period even if the item or design registered is not used in commerce. A design patent protects the ornamental design for a functional item—such as a unique bottle design that is not explicitly tied to the overall functionality of the item. Depending on the uniqueness and importance of the bottle design, it may be worth the time and capital required to fully prosecute a design patent. Obtaining a design patent requires proof that the design is (a) novel, (b) useful, and (c) not obvious. While the shapes, sizes, and colors that are used to create an association in consumers’ minds between a product itself and the product’s manufacturer may be protectable as trade dress, they may also be protectable, for a limited period of time, by a design patent. For example, the distinctive curved bottle for Coca-Cola was once covered by a design patent. The design patent expired; however, the bottle is still protected under trademark law as trade dress. The process for prosecuting a patent is lengthy and often costly, but if a bottle design is a key product element, it might be worth investigating.

Imbiblog is published for general informational purposes only and is not intended as legal advice. Copyright © 2010-2011 · All Rights Reserved ·


CLOSE

Browse posts by category: