Rare Loss for Plaintiff in Alcoholic Beverages TTAB Case

"Thunder Road whiskey bottle wins at TTAB"

Breweries, distilleries, and wineries that are defendants in Trademark Trial and Appeal Board cases have not fared well this year. More often than not, alcoholic beverage defendants foolishly cling to overly broad goods descriptions that ultimately prove to be their downfall. The scene was set for another plaintiff victory in a recent TTAB case, but in a rare turn of events the defendant prevailed because it properly offered sufficient third-party use evidence to establish the term in common with the plaintiff’s mark was conceptually weak.

Thunder Road Brands, LLC applied to register the mark THUNDER ROAD (in standard characters) for “alcoholic beverages, namely, Tennessee sour mash whiskey and moonshine.” E. & J. Gallo Winery opposed the registration of the THUNDER ROAD mark based on its prior registered mark THUNDERBIRD for the broad description “alcoholic beverages except beers.” Thunder Road Brands did not bring a motion to narrow E. & J. Gallo Winery’s broad description to the actual THUNDERBIRD product, which is a flavored fortified wine.

Accordingly, with the goods being legally identical – thus less similarity between the marks required for a likelihood of confusion to exist – and the marks sharing the THUNDER term in the first position, things were not looking good for Thunder Road Brands. Its only hope was to convince the TTAB that the THUNDER term was so incredibly weak that the difference between ROAD and BIRD was enough to avoid a likelihood of confusion.

E. & J. knew this and offered evidence of its commercial strength:  (1) continuous use since 1957 (over 60 years); (2) sales volume and revenue from 2009-2016; (3) advertising expenses from 2009-2015; (4) two YouTube videos showing a THUNDERBIRD television advertisement; and (5) third-party publicity in two songs, one by ZZ Top and the other by The Beastie Boys. The TTAB was unpersuaded by this evidence because it was stale and showed a downward trend. Strength or fame must be determined at the time of trial.

Similarly, E. & J. relied on two stale brand awareness studies, but more importantly E. & J. failed to properly authenticate the studies. Nevertheless, while the evidence did not establish fame for likelihood of confusion purposes, the Board did find that the evidence demonstrated the THUNDERBIRD mark was entitled to broader than normal scope of protection. However, based on what happened next, “broader than normal” probably means THUNDER used with a bird name.

Thunder Road Brands offered 25 third-party registrations and 13 Internet examples of THUNDER formative marks mostly for beer. These examples were relevant because the Board found that beer, wine, and spirits are related goods. The Board held that these third-party examples were enough to outweigh the evidence of commercial strength offered by E. & J. to the degree that it concluded the THUNDER term for alcoholic beverages is overall a weak term.

What makes trademark issues deceptively simple is the interplay between the likelihood of confusion factors, which are generally overlooked by attorneys that merely dabble in trademark law. In this case, because the Board found the THUNDER term was weak, the difference between ROAD and BIRD was sufficient to distinguish the marks despite the goods being legally equivalent.

How to Standout When the Search Reveals a Saturated Market

"mascot sitting in crowded stands showing a saturated market"

As trademark searchers, one thing we need to be on the look out for is a saturated market. In a trademark context, a saturated market exists when multiple trademarks share the same element for related goods or services. We know this is important because it tells us that either the entire mark or a portion of it is conceptually weak and that consumers are likely to rely on something else to distinguish between goods or services.

Unfortunately, the Trademark Trial and Appeal Board and the District Courts have not given much guidance on what changes are sufficient to avoid a likelihood of confusion with one of the marks in the saturated market. Nevertheless, that does not stop trademark owners from asking the question and expecting a firm answer about what changes they can make to avoid a dispute with another member of the saturated market.

As a trademark searcher, you should never tell a trademark owner that if they make a change that no harm will come to them because there is no such thing as a perfect trademark search. Additionally, litigation in general is unpredictable and you cannot forecast with any real certainty how another member of the field will react to the trademark. But if the trademark owner asks the question, you can’t refuse to answer. Here are some things to consider when formulating your answer:

  1. There are degrees to the saturated market, and not all saturated markets are the same. First assess whether the saturated market as a few or numerous members;
  2. Saturated markets with few members require more distinctive changes. Stay away from adding descriptive terms; and
  3. Saturated markets with numerous members generally require less distinctive changes. It may be possible to add a descriptive term to distinguish the mark from the others in the market. However, adding a distinctive term is always the safer bet.

As always, if the possibility of a rebrand within at least the first five years of using the trademark would result is big setback for the trademark owner’s business, then avoid the saturated market all together and choose a new name.

Heisman Trophy Trust Sues Owners of Heisman Watch Website

"Heisman watch website with disclaimer not affiliated with Heisman Trophy Trust"

The Heisman Trophy is awarded to the most outstanding player in college football. Unlike other most valuable player awards, the Heisman Trophy winner is spotlighted. ESPN, for example, has the Heisman Watch, but not the MLB, NFL, NBA, or NHL most valuable player tracker.

Chase Leavitt, Joseph Middleton, and Kimball Dean Parker are Utah residents and operate a website at the <heismanwatch.com> and <heismancandidates.com> websites. The website uses a regression model to identify statistical influencers that drive the Heisman votes. For example, it predicted with almost certainty that Baker Mayfield would win the Heisman Trophy in 2017. The website is purely informational.

The Heisman Trophy Trust sued Chase, Joseph, and Kimball in New York for, among other claims, federal trademark infringement. The Trust alleged that it licensed ESPN to use the HEISMAN mark in connection with the Heisman Watch offering on its website, and that the boys from Utah do not have the same authorization. In this case, the Trust has the upper hand, just not in New York.

There is nothing illegal about using another party’s trademark provided that use refers to the trademark owner. In legal terms, this is called nominative fair use. In this case, the boys from Utah could have called their calculator something else, but said that it predicts the likely winner of the Heisman Trophy. In the context, HEISMAN is clearly being used to refer to the Trust. However, the moment the term was included the trademark for the calculator, a line was crossed.

But the Trust will have a difficult time keeping the case in New York. A passive website does not confer personal jurisdiction in every state simply because the website is accessible by people in every state. And the <heismanwatch.com> website is a totally passive website. Its only purpose is to provide information about the Heisman Trophy race. Rather than fighting the battle in New York, Chase, Joseph, and Kimball should make the Heisman Trust fight the battle in Utah.

Electric Bicycles and Bicycle Apparel Confusable as to Source

"Luna Cycle electric bicycle related to women's bicycle apparel"

Luna Cycle filed a trademark application to register the mark LUNACYCLE in standard character form for electric bicycles and replacement parts for electric bikes. The United States Patent and Trademark Office refused registration of Luna Cycle’s mark on the ground that it was likely to cause confusion with the prior registered mark LUNA & Design for women’s bicycle apparel and accessories.

When it comes to assessing the relatedness of the goods, the issue is not whether purchasers would confuse the goods, but rather whether there is a likelihood of confusion as to the source of these goods. Electric bicycles are human-powered bicycles with integrated electric motors to provide a cyclist with additional power and speed. They are marketed towards recreational cyclists.

The Trademark Office offered evidence from brick-and-morter and online retail bicycle stores offering for sale electric bicycles and women’s bicycle apparel. These retailers are not big box retailers but speciality bicycles stores, which the Board found persuasive evidence to conclude that the goods at issue were complimentary.

With respect to the similarity of the marks, Luna Cycle argued that its mark is a telescoped word LUNACYCLE composed of LUNACY and CYCLE. The Trademark Manual of Examining Procedure defines a telescoped word as one that comprises two or more words that share letters (e.g., SUPERINSE or HAMERICAN). And while the Board found that the LUNACYCLE mark is likely to be perceived as a telescoped form it nonetheless found that consumers would treat it like compound word comprising LUNA and CYCLE. The Board hypothesized a scenario where Luna Cycle emphasized the letter “L” in Luna and letter “C” in Cycle because standard character drawing was claimed, and then backed it up with Luna Cycle’s own specimen of use that showed very emphasis the Board assumed could happen. Because the dominant portion of the marks was LUNA, the Board found the marks created overall similar commercial impressions.

Maybe, Luna Cycle would be able to salvage a win by demonstrating the prior registered LUNA & Design mark was weak; thus, entitled to a narrow scope of protection because of the numerous third-party registrations for LUNA. Luna Cycle submitted 100 third-party registrations for marks displaying the LUNA term in International Class 25 for some form of apparel. Several of these third-party registration were for women’s clothing. But because none of these registrations were for women’s bicycle apparel, the Board discounted all of the 100 third-party registrations, which seems like a harsh result.

Protecting Your Brand Reputation in Cyberspace

"iPhone show social media icons with great brand reputation"

Brand protection is part of a company’s success in maintaining, extending, and expanding its brand reputation in a rapidly changing media environment, including the reliance on social media and online dissemination of advertising campaigns. The growing use of social and digital media increases the speed and extent that information or misinformation and opinions can be shared. Negative posts or comments about a company, its brands, products or services on social or digital media can irreparably damage a company’s brand reputation or brand image, which makes having a sound brand protection strategy critical to a company’s success.

But try to enforce your rights on platforms such as FaceBook, Twitter, Etsy, eBay, Amazon, etc. and the first question you will encounter is “What is your trademark registration number?” If you don’t have a registration number, there is no way to complete the form and your complaint will never be submitted. At that point, the only other way to get some remedial action from these platforms is to present a Court Order.

There are a lot of benefits to obtaining a federal trademark or service mark registration, but online enforcement is key and the starting point to obtaining a federal registration is conducting a trademark search.  At a minimum, a trademark search must include the United States Patent and Trademark Office database because a federal registration entitles the owner to nationwide priority even if it is not offer its goods and services nationwide. Assuming the United States Patent and Trademark Office search clears, any additional searching depends on the trademark owners intentions for the goods for services.

But it is a good idea for the search to include a review of the popular social media platforms. Not only is it good to see if there are other goods or services being offered under a similar mark, but it also allows the owner to see what reaction – positive or negative – is being attributed to the proposed mark.

GRAY DUCK Vodka Application Flies By GREY GOOSE

"Gray duck vodka logo similar to grey goose vodka mark"

Last year, the Minnesota Vikings started a national debate after celebrating a touchdown against the Chicago Bears by playing a quick game of Duck Duck Gray Duck, or is it Duck Duck Goose? ESPN reported that Minnesota is the only state in the union that calls the game duck duck gray duck.  Well one group of Minnesotans decided to capitalize on this distinction and produced a gluten-free vodka called GRAY DUCK vodka.

When we hear Chad Greenway – former Minnesota Viking linebacker – promoting GRAY DUCK vodka on The Power Trip morning show our initial reaction was that this brand is going to be short lived. Grey Goose vodka would certainly object to this mark. The goods are identical, so less similarity between the marks is necessary for a likelihood of confusion to exist. The different spelling of GRAY versus GREY is a small difference that is unlikely to overcome the identical nature of the goods and so is the substitution of DUCK for GOOSE.

The one saving grace for the GRAY DUCK mark would be in the dilution that GREY GOOSE has allowed to creep into the market. The GREY GOOSE brand peacefully co-exists with GRAY WHALE vodka, GREY WHALE vodka, and GRAYCLIFF vodka. GRAY DUCK thought it belongs on this list as well and so it filed a trademark application for its mark.

Surprisingly, the GRAY DUCK application sailed through the examination phase and did not receive a single Office Action from the Trademark Office. On June 26, 2018, the GRAY DUCK application was published for opposition. Bacardi & Company Limited did not oppose the registration of the GRAY DUCK application and on August 21, 2018 the Trademark Office issued the Notice of Allowance, which starts a six month period to submit evidence of use of the GRAY DUCK mark to the Trademark Office. Once this evidence is submitted, the registration certificate will issue.

This does not mean that GRAY DUCK vodka is out of the woods. The brand is vulnerable to a cancellation proceeding for five years after the registration certificate issues.

Wine Spectator Sues Weed Spectator Claiming Confusion

"woman drinking wine dispute between wine spectator and weed spectator"

Cannabis is undoubtedly a polarizing subject. Some people like Anheuser Busch heir Adolphus Busch V are jumping in head first starting cannabis companies. Other companies want nothing to do with plant and will fight to ensure prospective purchasers do not mistakenly associate it with any type of cannabis company.  M. Shanken Communications Inc., the publisher of Wine Spectator magazine, is on the later side of the cannabis spectrum, and sued Modern Wellness Inc. for using the mark WEED SPECTATOR for a website that provides information about cannabis and cannabis-based products.

Wine Spectator alleged in the lawsuit that Weed Spectator not only adopted a confusingly similar trademark, but that it also copied its 100-point rating system. In fact, Wine Spectator alleged that this was a “classic case of passing off.” In addition, Wine Spectator filed a letter of protest against Modern Wellness’ pending applications for WEED SPECTATOR in connection with “providing on-line digital publications in the nature of education in the field of cannabis via the Internet.”

A letter of protest is a way to object to a pending application before the application is published for opposition. The party submitting the letter of protest is not allowed to make any arguments about the registrability of the pending mark. You are only allowed to submit evidence the party believes supports a refusal to register the pending mark. If accepted, that evidence will be used as a basis to refuse registration of the applied for mark. Letters of protest are not always accepted though.

This case raises an interesting point for trademark searchers. We have talked a lot about the importance of the relatedness of goods factor and that prior case law is the best indicator for assessing whether certain goods or services are related. But what do you do when there is not a lot of case law to turn to? Cannabis is still a banned substance federally, but has recently been legalized in some states. There has not been an opportunity for a court to decide the issue of whether wine and weed are related goods.

In these situations, trademark searchers need to look to other context to see what other type of products have been found to be related. The context of the Weed Spectator website is to inform individuals about something they could use in a social setting much like alcoholic beverages are used in a social setting. Therefore, it would be reasonable to compare how the Trademark Office has treated alcoholic beverages and cigars, for example, to assess how the relatedness of goods factor will shake out. However, overtime, a body of case law will develop around cannabis and cannabis-based products.