Is the same company capable of producing beer and vodka? Is it common to see a liquor brand cross the aisle into the beer or wine space? A few years ago the intuitive answer would be no. But the alcoholic beverage industry is becoming more and more experimental. Breweries are dabbling in distilling. Wineries are dabbling in brewing. And collaborations between distilleries and breweries is becoming more common. Recently, the Trademark Trial and Appeal Board considered whether beer and vodka are related.
In In re Marshall Brewing Company, LLC, Marshall Brewing applied to register the mark VOLKS PILS for “beer; lager.” The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the mark VOLK for “vodka.” The Board held that “while beer/lager and vodka are different products and not interchangeable, such products nonetheless may be related even if they are not identical, competitive or complementary. [G]oods that are neither used together nor related to one another in kind may still ‘be related in the mind of the consuming public as to the origin of the goods. It is this sense of relatedness that matters in the likelihood of confusion analysis.’” Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d 1238 (Fed. Cir. 2004). And because VOLK vodka and VOLK PILS beer share the dominant VOLK word, less similarity between the goods is required to support a likelihood of confusion finding.
The Trademark Examining Attorney submitted 12 use-based trademark registrations for both beer and vodka to show that those goods are commonly registered by a single entity under a common mark. The Examining Attorney also offered Internet evidence showing the same entity selling beer and vodka under the same mark. Finally, the Examining Attorney offered articles that discussed breweries expanding into distilling.
Marshall Brewing tried to counter this evidence by putting it in context that more companies either brew beer or distill vodka, but do not manufacture both. The Trademark Office was not persuaded by this. The fact that the Trademark Office found some breweries that also distilled vodka was enough to convince the Board that beer and vodka are related in the minds of consumers. This case highlights the critical importance of including the relatedness of goods factor in the trademark search equation and the best way to determine relatedness is to review prior court decisions.