TTAB Hint Into How Similar Wine and Beer Marks Can Co-Exist

"Tempus beer bottles can't co-exist with Tempus Two wine"

The case law is legion at the Trademark Trial and Appeal Board that “wine” and “beer” are related goods. Nevertheless, time and time again, breweries and wineries attempt to persuade the TTAB that wine and beer are different only to meet the same fate over and over again. The story was the same in a recent TTAB decision and so was the fate, but this time the TTAB provided a potential common ground where similar beer and wines marks may be able to co-exist.

Cerveceria Primus, S.A. de C.V. sought to register the mark TEMPUS for “beer.” The Trademark Office refused registration of the TEMPUS mark based on a prior registered mark for TEMPUS TWO for “wines,” and Cerveceria Primus S.A. de C.V. appealed.

Cerveceria Primus lost the conceptual weakness argument by offering only three third-party registrations, seven less than the 10 minimum. The marks were also found to be similar because both shared the TEMPUS term. The central issue was the relatedness of the goods.

Cerveceria Primus started down the right path by attacking the context of the Trademark Office’s evidence. A majority of the Examining Attorney’s third party evidence did not show the same party producing both wine and beer under the same mark. Instead, it showed the same retail outlet selling both wine and beer. However, in this case, as opposed to recent TREK case, the Board discounted the retail store evidence.

Cerveceria Primus then attempted to put into context the remaining evidence by arguing the examples represent .1% of microbreweries in the U.S. With such a small percentage, the evidence did not demonstrate that enough consumers were exposed to wine and beer appearing under the same mark.

However, the goods descriptions in the case contained no limitations. The descriptions remained broadly “beer” and “wine.” Had the descriptions been narrowed to “beer produced by a microbrewery” or a similar limitation on a winery. Had those limitations been made, then Cerveceria Primus’ evidence concerning the small representative sample of microbreweries would have carried more weight.

This is the path breweries and wineries will need to take if they are going to co-exist given that the industry becomes more and more saturated.

Consumers Likely to Confuse Coffee and Energy Drinks

"Kick Ass coffee can related to energy drinks"

In a second case this year the Trademark Trial and Appeal Board looked beyond the identifications of goods descriptions to determine whether two goods were related. David John Critchley registered the mark KICK ASS (in standard characters) for, among other goods, energy drinks. Kicking Horse Coffee Co. Ltd. petitioned to cancel Mr. Critchley’s registration based on its prior rights in KICK ASS for coffee.

The Trademark Trial and Appeal Board found that the marks were similar and Mr. Critchley failed to produce more than 10 third-party registrations for coffee or goods related to coffee to establish that Kick Ass Coffee’s rights in KICK ASS were limited to coffee. The disputed factor was the relatedness of the goods.

The Board stated as it always does that the relatedness of goods is determined based on the goods or services as described in the application or registration. In this case, coffee and energy drinks are not technical goods in nature, nor are these words vague. An “energy drink” is defined as “any of various types of beverage that are considered a source of energy, especially a soft drink containing a high percentage of sugar and/or caffeine or other stimulant.” It is common knowledge that coffee contains caffeine and is consumed for a source of energy.

Coffee falls squarely within the definition of an “energy drink.” Nevertheless, the Board considered evidence of the real world marketplace to determine if identical marks were used on coffee and on energy drinks. Because there were numerous examples showing this, the Board concluded that coffee and energy drinks are related.

On May 5, 2006, David John Critchley filed a trademark application for KICK ASS in connection with, among other goods, energy drinks. Then for 8 years Mr. Critchley battled to acquire his registration going all the way through an ex parte appeal. His KICK ASS application was published for opposition on April 8, 2014 and matured into a registration on June 24, 2014. Then, shortly after his registration issued, on September 10, 2014 Kicking Horse Coffee Co. Ltd. petitioned to cancel his registration.

What is amazing about this prosecution history is that the application was filed on intended use of the mark in the United States. Why someone would fight for 12 years over a mark that is not even being used in the United States is peculiar. The amount of money spent by the applicant is simply not justified.

A New Trend for the Relatedness of Goods or Services Factor?

"White Horse Auto dealership related goods or services to car washes"

A recent Trademark Trial and Appeal Board decision involving car dealerships and car washes may signal a change in how the Board will assess the relatedness of goods or services likelihood of confusion factor. White Horse Auto, LLC filed a service mark application to register the mark WHITE HORSE AUTO (in standard characters) for “automobile dealerships.” White Horse Wash, LLC opposed the registration of White Horse Auto’s application on the ground of priority and likelihood of confusion.

Not surprisingly, the Board found that the marks were virtually identical. And White Horse Auto failed to demonstrate that the WHITE HORSE phrase was diluted for automobile related goods and services. Ultimately, this case came down to whether the services at issue were sufficiently related to likely cause confusion.

The Board held that providing automobile-related services by the parties was not enough by itself to establish the services at issue were related. “A finding that the goods are similar is not based on whether a general term or overarching relationship can be found to encompass them both.” This a departure from cases the TTAB decided as early as last year. For example, in the SONIA SONI LIFE IS A RECIPE, the broad description “spices” was enough for the Board to conclude that the applicant’s goods covered the registrant’s goods. The only time the Board departed from this interpretation was when the goods or services descriptions at issue were vague or involved technical goods.

In the present case, there is nothing vague nor technical about “automobile dealerships” or “car washes,” nor is either description vague. Nevertheless, the Board looked at the real world marketplace to determine what the actual services were. And based on the similarities the Board found in the circumstances surrounding the marketing of the two marks, the Board concluded the services at issue were related. Unfortunately for White Horse Auto, its application was denied registration. But if at first you don’t succeed, it’s okay to try again.

More importantly for trademark searchers, could we be seeing a change in how the Board assesses the relatedness of the goods and services factor? This is definitely an issue to watch in 2019 as the Board decides more cases because the relatedness of goods or services factor is critical to not only conducting trademark searches but also assessing whether a likelihood of confusion exists between two marks.

Limitations in Goods Descriptions Must be Meaningful to be Effective

"Richard Rawlings' Garage goods descriptions limitation was not meaningful"

You do not have to look far to find a Trademark Trial and Appeal Board decision that says the Board will not read a limitation into a goods descriptions where an express limitation does not exist. In fact, we have several blog posts this past year that touch on or directly address this principle. By now, readers of this blog know that broad goods descriptions cannot stand in the wake of a dispute with another mark. In order to succeed, the goods descriptions in the marks at issue must conform to the market place reality of the goods being offered.

The Board recently reiterated the importance of making meaningful limitations in goods and services descriptions in order to avoid potential disputes. Richard Rawlings’ Garage, LLC applied to register the mark RICHARD RAWLINGS’ GARAGE (in standard characters) for “headgear, namely, hats, caps, bandanas and beanies; hooded pullovers; hooded sweatshirts; jackets; pullovers; sweatshirts; t-shirts; tank tops; socks; underwear; all of the aforementioned goods bearing ornamental designs that associate the goods with the persona of Richard Rawlings or his business.”

The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark RAWLINGS for various sports-related apparel. Richard Rawlings Garage’s primary argument against the refusal was that the limitation included in its application sufficiently distinguished its clothing from the sports-related clothing offered under the cited RAWLINGS mark. The Trademark Trial and Appeal Board disagreed.

Nothing in Richard Rawlings Garage’s identification stated that its goods cannot, or will not be sold, or worn as sporting apparel. Further, even though some of the owner of the cited mark’s goods were clearly for athletic purposes, not all of the goods were specifically sports-related. The Board must consider separately each item listed in an identification of goods. The fact that some of the  goods may be sports related by their nature does not limit other goods which are of more general use.

Additionally, the restriction had no bearing on the nature of the goods, classes of consumers, or channels of trade. The restriction simply restated what the applied for RICHARD RAWLINGS’ GARAGE mark was going to do, which was to indicate that Richard Rawlings Garage, LLC is the source of the identified goods. Because the restriction did not add a meaningful limitation to the goods description (not to mention the failure of not having a corresponding limitation in the cited marks), the Board affirm the registration refusal.

How to Win the Relatedness of Goods Argument

"jar of Sonia Soni Life is a Recipe spices which won the relatedness of goods factor against Mexican sauces"

Once again we see a trademark applicant trying to win the relatedness of goods argument without first narrowing the descriptions, and trying to win the conceptual weakness argument by not hitting the 10 third-party registration threshold. If you intend to make a real world marketplace argument, then the identifications of goods and services must reflect the real world. Unfortunately, this was a lesson Productos Verde Valle, S.A. de C.V. learned the hard way.

Productos Verde Valle applied to register the mark SONIA (in standard characters) for “sauces; chili sauce; hot sauce.” The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark SONIA SONI LIFE IS A RECIPE (in standard characters) for, in relevant part, “spices, spice blends; spice rubs.”

The Trademark Office offered evidence showing the same mark being used for both sauces and spices. This evidence was sufficient to put the Tradmark Office in the first position to win the relatedness of goods argument. Productos Verde Valle argued the goods are unrelated because its sauces are sold as a Mexican food product whereas the SONIA SONI LIFE IS A RECIPE spices were sold as an Indian food product. However, the identification of goods descriptions were unrestricted as to a type of cuisine and an applicant may not restrict the scope of its goods or the scope of the goods covered in the cited registration by extrinsic argument or evidence.

The Trademark Trial and Appeal Board also noted that certain spices may be used in both Mexican and Indian cuisine. What this last sentence tells is the level of detail that may be required in order to differentiate the goods. In this case, for example, it would have been sufficient to say “Mexican sauces” and “Indian spices.” To win the relatedness of goods argument, it may be necessary to get very detailed about the real world marketplace. This requires examining the goods and services at issue in detail including not only the nature of the goods, but where they are marketed and who the target consumers are.

When it came to the conceptual weakness factor, Productos Verde Valle did not find any SONIA mark only marks that shared the letters “S”, “O”, “N”, and “A.” Unlike what happened in the CARDITONE case a few days ago where the Board refused to give any weight to the 69 CARDIO third-party registrations because the mark at it issue was CARDI, the Board gave some weight to the third-party registrations offered by Productos Verde Valle. Nevertheless, Productos Verde Valle was only able to find four third-party registrations to support its conceptual weakness argument. Accordingly, the Board did not find that the SONIA mark was weak.

Even if it was found to be a weak term, Productos Verde Valle’s mark was incorporated in its entirety in the SONIA SONI LIFE IS A RECIPE mark. If you are going to make the conceptual weakness argument, you must have something to point to that distinguishes your mark from the other mark that shares the weak term. Therefore, the Board affirmed the registration refusal.

Reinforcement that Trademark Classes are Irrelevant

"woman putting postits on a wall showing that trademark classes are irrelevant"

The Trademark Trial and Appeal Board has said before that trademark classes are irrelevant to determining likelihood of confusion. A recent decision involving the SWISS certification mark reinforces this point. Pearl 9 Group, LLC filed a trademark application to register the mark I.W. SUISSE for “clocks and watches; parts for watches; watch bands and straps; ***; timepiece dial faces, and parts for timepieces ***” in International Class 14. The Trademark Office refused registration of Pearl 9’s mark on the ground that it was likely to cause confusion with the prior registered certification mark SWISS for “horological and chronometric instruments, namely, watches, clocks and their component parts and fittings thereof” in Class A.

The Board held that the classification as a certification mark has very little effect on our determination as to whether or not there is a likelihood of confusion. Because the certification mark owner does not itself use the mark, the question of whether there is a likelihood of confusion is based on a comparison of the mark as applied to the goods or services of the certification mark users.

Using trademark classes in a trademark search only helps to narrow the universe of marks that trademark searchers need to evaluate. From there, the trademark searcher is left to sift through the results using only intuition to determine whether anyone of those marks is likely to prevent the registration of the proposed mark being searched.

And any software program that includes only the similarity of the marks and irrelevant International Class numbers yet provides a “score” for the search results begs the question of what that score represents. If all the search is telling is that there are similar marks registered with the United States Patent and Trademark Office, that information is largely unhelpful and something you can discover by yourself and for free.

And over reliance on trademark classes will result in overlooked trademarks that may be consequential marks in the likelihood of confusion analysis. That may have been the case in the Pearl 9 case. Focusing solely on International Class 14 where jewelry and watches are classified, would have resulted in missing the SWISS certification mark in Class A.

Perplexing Trademark Office: Clothespins Related to Scissors

"man getting a haircut with scissors that were found to be related to clothespins"

A recent Trademark Trial and Appeal Board decision where the Board found clothespins related to scissors again demonstrates that relying on International Class numbers in a trademark search rather than prior case decisions involving the relatedness of goods factor will lead to wrong search results. Ing. Monika Norkova filed a request for extension of protection of her International Registration to the United States for the mark ZIPZAP (in standard characters) for “drying racks for laundry; clothes[pins]” in International Class 12. The Trademark Office refused registration of this mark.

The Trademark Office argued that Ms. Norkova’s ZIPZAP mark was likely to cause confusion with a prior registered mark ZIPZAP (also in standard characters) for – are you ready – “scissors, in particular hair cutting scissors, manicure scissors, sheet-metal scissors, poultry shears, cable scissors; tree pruning shears; nippers, nail nippers, cuticle nippers; files; utility knives and pliers” in International Class 8.  While it is true that when the marks at issue are identical, less similarity is necessary in order for a likelihood of confusion to exist, one would like to think that hair cutting scissors or tree pruning shears are sufficiently different from drying racks and clothespins that confusion is unlikely.

Despite citing the rule that the words “in particular” clarify and narrow overly broad goods or services descriptions, none of the used based evidence offered by the Trademark Office involve any of the specific types of goods identified in the cited registration. Nevertheless, the Board found that because some scissors are marketed under the same brand as a laundry drying rack, then all scissors must be related in the minds of consumers to laundry drying racks and clothespins.

And what’s even more important is that it does not matter if you agree with the decision or not. In fact, we guess that most people reading this post disagree with the decision. But it’s a decision that is not going to be overturned and that could produce a negative outcome for a naming decision if you are focused on International Class Numbers and not prior case decisions involving relatedness of goods or services findings. In fact, the USPTO does not identify International Class 12 as a Coordinated Class to International Class 8.

TACOLAND Live Music Concerts Are Related to Restaurants

"TACOLAND sign where live music was found to be related to restaurants"

If you read enough decisions from the Trademark Trial and Appeal Board involving restaurant services, you would get the impression that restaurants do everything. A recent decision from the TTAB stayed with this trend. TacoLand Holdings, LLC d/b/a TacoLand (standard characters) filed a service mark application for TACOLAND in connection with “entertainment, namely, live music concerts” in International Class 41 and “bar and cocktail lounge services” in International Class 43.

The Trademark Office refused registration of the TACOLAND mark based on a prior registered mark for TACO TIERRA & Design for “restaurant services ” in International Class 43. TACO TIERRA is a traditional Mexican-American restaurant and does not advertise any live entertainment.

The Trademark Office offered three, third-party websites for establishments that served food and advertised live music, and several use-based third-party registrations for live music entertainment and restaurant services. In all the examples offered by the Trademark Office, the live musical performances are ancillary to the restaurant aspect of the establishments. In the case of TACOLAND, the live musical entertainment is the primary business and any food service is ancillary to this main business. Nevertheless, because the Trademark Office does not consider the marketplace reality, it found that the services at issue were related.

Which raises two important issues. First, if you were focusing only on Class Numbers when doing a trademark search, you would have missed that live musical concerts are related to restaurants. This why focusing on related goods instead of class numbers is so critical when doing a trademark search.

Second, when dealing with goods or services that could be offered at a restaurant, it is critical to focus a trademark search or response to an office action on what the restaurants are known for. If the evidence shows that something is merely offered at the restaurant, that needs to be your focal point because that is where you will have the best chance at overcoming a refusal.

With the services being related and TIERRA being the Spanish word for LAND, TacoLand had to make the conceptual weakness argument. Unfortunately for TacoLand, it was only capable of producing three TACO-formative third-party registrations, which is seven less than the magic number 10 we believe needs to be hit before the Board will conclude a crowded field exists.

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.

Handbags and Jewelry Related In The Confusion Analysis

"Mansur Gavriel handbag related to Phillip Gavriel jewelry"

Mansur Gavriel is a luxury handbag brand that sells in store like Neiman Marcus for $395 to $1,295. In 2013, a trademark application was filed for MANSUR GAVRIEL in connection with “handbags; tote bags; purses; wallets.” Except for some minor issues, the MANSUR GAVRIEL application sailed through the examination phase of the registration process and was published for opposition.

Royal Chain, Inc. filed a Notice of Opposition against the registration of the MANSUR GAVRIEL mark on the ground that it was likely to cause confusion with its prior registered mark PHILLIP GAVRIEL for “diamonds; jewelry; precious and semi-precious stones; precious metals and their alloys; precious metals, namely, gold, silver, platinum; real and imitation jewelry; synthetic diamonds; synthetic precious stones.” Phillip Gavriel pieces sell for  about $100 to under $10,000, but not in high-end department stores like Neiman Marcus.

During the pendency of the dispute, Royal Chain neglected to maintain the PHILLIP GAVRIEL registration by filing the required Section 8 Declaration of Continuous Use. The PHILLIP GAVRIEL registration was canceled and the Trademark Trial and Appeal Board gave consideration only to PHILLIP GAVRIEL’s common law rights. Royal Chain failed to produce competent evidence of its date of first use; therefore, its opposition was dismissed because it did not satisfy its burden to prove priority. But for completeness, the Board addressed the likelihood of confusion factors.

The Board found that jewelry and handbags are “accessories to a woman’s fashion ensemble;” thus, the goods are complimentary. The evidence of record also demonstrated that the same brand is used to sell both jewelry and handbags. This evidence reinforced the Board’s finding that jewelry and handbags are related goods.

Although the retail channels for the MANSUR GAVRIEL handbags and PHILLIP GAVRIEL jewelry are different, those differences were not reflected in the identification of goods descriptions. Therefore, the Board was forced to find that the channels of trade and classes of consumers overlap.

Nevertheless, the Board found that because it is common for fashion brands to use surnames, prospective purchasers would be able to distinguish MANSUR GAVRIEL from PHILLIP GAVRIEL.