TailGate Beer Boulevard Brewing Crossroad of Images and Words

"tailgate beer boulevard brewing"

TailGate Beer is a craft brewery in Nashville, TN. Obviously, the name of the brewery is TAILGATE and some of their beers show the design of the backend of a pickup truck with the tailgate down. According to their website, their beer is available in Middle Tennessee only. Tailgate Beer sued Boulevard Brewing Co. over its use of an image of a pickup truck with the tailgate down.

Boulevard Brewing Co. was founded in 1989 and is headquartered in Kansas City, MO. They claim to be the largest specialty brewer in the Midwest and according to their website sell beer in Tennessee. However, again according to their website, do not sell the Pale Ale in Tennessee that is the subject of TailGate Beer’s lawsuit.

This case raises interesting questions for trademark searches; namely, when will an image prevent the registration of word and should images be included in a trademark search for a word. With respect to an image preventing the registration of word, this occurrence is rare because the word needs to be the exact term for the image. For example, if you attempt to register the mark RAILROAD for beer and another brewery has the picture of RailRoad tracks on its beer label, there may be an argument that consumers could confuse the source of the word and image.

However, vary the mark even slightly so that it is not essentially the identical word for the image, and you avoid the likelihood of confusion issue. For example, add to the mark PALE ALE so the mark reach RAILROAD PALE ALE. The terms PALE ALE are clearly generic for the type of beer, but even generic terms are considered when assessing the overall commercial impression of a mark in the likelihood of confusion analysis. This also means that you have varied the word enough to avoid an issue with an image that the word describes.

Boulevard Brewing Co.’s image is not just of a tailgate, it is the image of an entire truck with the tailgate down. So the likelihood of Tailgate Brewing winning on the word/image confusion factor is low. It is also unlikely that they win on the image of truck with its tailgate down being recognized by consumers as their exclusive trademark. Beer and the act of tailgating with a pickup truck is ubiquitous.

But more importantly, on the trademark claims, there is no basis to bring the lawsuit unless Tailgate Beer knows of Boulevard Brewing Co.’s plans to sell its PALE ALE beer in Tennessee. Until that exists, Dawn Donut would prevent the suit from going forward on the trademark claims. This is a good example that not every potential trademark action needs to be pursued and how some trademark attorneys can convince trademark owners to sue out cases that do not deserve to be sued out. As a trademark owner, make sure you interview prospective trademark counsel for their philosophy on enforcement before agreeing to engage them. And you don’t have to use the trademark attorney that works in your corporate attorney’s office. Make sure you find a trademark attorney that understands the business objectives of being a trademark owner.

As trademarks searchers, it is generally unnecessary to include designs in the trademark search. The only time it makes sense to include designs is when the client is contemplating using only a common word in an uncommon way.

Toy Figures and Plush Toys are Similar Goods

"Pint Size Heroes toy figures and plush toys similar goods"

Intuitively, toy figures and plush toys appear to be similar goods. Whether they are in fact similar goods is what the Trademark Trial and Appeal Board had to decide. The similar goods likelihood of confusion factor was the deciding factor in the In re Funko, LLC case. In disputes before the Trademark Office, the 13 factor DuPont test is applied. The Trademark Office will consider each DuPont factor for which there is evidence or argument. However, it is important to highlight that of the 13 DuPont factors, only two are considered to be dispositive of the likelihood of confusion finding. Those two DuPont factors are:  (1) the similarity of the marks; and (2) the similarity of the goods or services. Because these two factors can be dispositive, it is imperative that both are included in a trademark search.

Funko, LLC applied to register the mark PINT SIZE HEROES (Stylized) for “collectable toy figures.” The Trademark Office refused registration of this mark on the ground that it was likely to cause confusion with the prior registered mark PINT SIZE PRODUCTIONS & Design for “plush toys; stuffed and plush toys; stuffed toy animals.” The Trademark Trial and Appeal Board had to decide the marks were being used in connection with similar goods. Pint Size Productions does not sell a branded stuffed animal. Instead, it is an online retailer that sells stuffed animals associated with the Boynton children’s book series.  It does not sell any brand of toy figure.

The Trademark Trial and Appeal Board focused on the evidence in the record that showed toy manufacturers selling both a plush toy and toy figure under the same mark. What was lacking from the record was any evidence that online or brick and mortar retailers not only sell other branded plush toys and toy figures, but also plush toys and toy figures branded with the store’s name. And it does not appear that Funko made this argument.

Instead, the Trademark Office went back to the well for its standard line that the determination of relatedness must be based on the descriptions contained in the application and registration at issue. Where the goods in an application or registration are broadly described, they are deemed to encompass all the goods of the nature and type described therein. In this case, the Board found that “collectable toy figures” can encompass plush toys. Therefore, all the Board waded into the real world marketplace waters, its decision was based on the tried and true presumptions that apply to broad identification of goods descriptions.