[E-trademarks] FW: Heck Freezes Over: USPTO Fails to Prove Gin Related to Beer Under Section 2(d)

Kevin Grierson kgrierson at cm.law
Mon Dec 23 18:49:37 UTC 2024 

Sorry, not precedential, but do keep in mind the following, which have proved helpful in similar situations to yours:

Third-party registrations in the nature of house marks used for a wide variety of items are of little value by themselves to show that the various goods for which they are registered are all related.  Similarly, here where the website evidence shows house marks used on a wide variety of goods, it is not so probative of this factor.
In re Marko Schuhfabrik GmbH, Serial No. 79040612 (T.T.A.B. December 23, 2009) (non-precedential).
And (thanks, Bob Reynolds): In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261 (TTAB 2011)). They’re only in footnotes, but they are precedental:

Foot 5: “Although a registration that covers a large number of goods and services in many classes has limited probative value because the inclusion of many disparate goods and services does not show that all of these items would generally emanate from a single source under a single mark, there is an intrinsic connection between food and beverage products.”

And

Foot 8:  “ As stated previously, we have not considered any registrations that are not based on use in commerce, are not active, or list a wide range of unrelated goods.”

Finally, TMTKO’s Thorcheck service may prove useful as well to show separate ownership of the same marks for the cited “related” services.




Kevin Grierson​​​​

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From: E-trademarks <e-trademarks-bounces at oppedahl-lists.com> On Behalf Of Sam Castree via E-trademarks
Sent: Monday, December 23, 2024 12:20 PM
To: For trademark practitioners. This is not for laypersons to seek legal advice. <e-trademarks at oppedahl-lists.com>
Cc: Sam Castree <sam at castreelaw.com>
Subject: Re: [E-trademarks] FW: Heck Freezes Over: USPTO Fails to Prove Gin Related to Beer Under Section 2(d)

EXTERNAL EMAIL
Is this precedent?  Please tell me that this is precedent.  Last week, I got what I consider to be a very stupid office action, in which my client's application for video games was rejected based on a registration for a customer loyalty rewards program.  The examiner found a few everything-and-the-kitchen-sink applications that include both of these items, a couple that (fair enough) were more narrow, and, infuriatingly, one that included games but didn't actually include loyalty programs.

Cheers,

Sam Castree, III

Sam Castree Law, LLC
3421 W. Elm St.
McHenry, IL 60050
(815) 344-6300



On Mon, Dec 23, 2024 at 11:14 AM Kevin Grierson via E-trademarks <e-trademarks at oppedahl-lists.com<mailto:e-trademarks at oppedahl-lists.com>> wrote:
Interesting decision by the TTAB.  Although as a general matter I am not a fan of the PTO’s “three websites” relatedness arguments, it seems to me that at some point the Board’s numerous decisions about the relatedness of beer, wine, and other alcoholic beverages ought to serve as persuasive precedent even if the examiner makes a hash of the evidentiary record.


Kevin Grierson​​​​

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Subject: Heck Freezes Over: USPTO Fails to Prove Gin Related to Beer Under Section 2(d)

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The USPTO fumbled the ball here in what should have been a fairly easy run for a touchdown. The Board reversed a refusal to register the mark shown below left, for "gin, " finding that the USPTO failed to prove confusion likely with the mark on the ...
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Heck Freezes Over: USPTO Fails to Prove Gin Related to Beer Under Section 2(d)<http://thettablog.blogspot.com/2024/12/heck-freezes-over-uspto-fails-to-prove.html>
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  *   Heck Freezes Over: USPTO Fails to Prove Gin Related to Beer Under Section 2(d)
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The USPTO fumbled the ball here in what should have been a fairly easy run for a touchdown. The Board reversed a refusal to register the mark shown below left, for "gin," finding that the USPTO failed to prove confusion likely with the mark on the right, for various beers. The Board found the marks to be "more similar than dissimilar," but the USPTO's feeble evidentiary showing regarding the relatedness of gin and beer led the Board to weigh the second DuPont factor as dispositive in favor of Applicant Cobblestone Brands. In re Cobblestone Brands Ltd<http://ttabvue.uspto.gov/ttabvue/ttabvue-97453097-EXA-8.pdf>, Serial No. 97453097 (December 19, 2024) [not precedential] (Opinion by Judge Lawrence T. Stanley, Jr.).
[https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiYDkvscfhcX80qPRPdkIxPAoPi1LUOSxLX325IqGXY18Hrmd6n_gI15TeoaakeAkbIRABqvWECwJ6ELRkZuocenTiJpI5Mdz5PO_HRUsdGoTFYaRgK9ajJbQ1U-avziynBFpK2nQ4p7quzH4RgT8-Y8sgKta04vlyYnlyLlDOQvuCOSnuAbgDN/w252-h138/FOUR%20CORNERS%202.jpg]<https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiYDkvscfhcX80qPRPdkIxPAoPi1LUOSxLX325IqGXY18Hrmd6n_gI15TeoaakeAkbIRABqvWECwJ6ELRkZuocenTiJpI5Mdz5PO_HRUsdGoTFYaRgK9ajJbQ1U-avziynBFpK2nQ4p7quzH4RgT8-Y8sgKta04vlyYnlyLlDOQvuCOSnuAbgDN/s432/FOUR%20CORNERS%202.jpg>

The Marks: Applicant disclaimed AMERICAN GIN, while the cited registration includes disclaimers of BREWING CO and DALLAS TX. Cobblestone argued that the design elements of the marks are the dominant features but the Board gave that assertion a bumpy ride, finding FOUR CORNERS to be dominant in both. Although the design elements are "noticeable," "it will be the words rather than colors or designs in the marks that will be used to call for and discuss Applicant’s and Registrant’s goods."
Although we recognize that there are differences between the marks when viewed on a side-by-side basis, when compared in their entireties we find them more similar than dissimilar in appearance, sound, meaning, and commercial impression due to presence of the identical dominant phrase FOUR CORNERS in both marks.

The Goods: The Office relied on "a smattering of third-party Internet evidence" to show the relatedness of gin and beer: a mere three websites offering the goods under the same mark. The Board found that evidence "unconvincing."
While there is no threshold number, three examples are a relatively small amount given the number of breweries and distilleries in the United States and the Internet resources for research easily available on the subject to examining attorneys. *** [O]n the record before us, there is simply insufficient evidence of third parties using the same mark in connection with beer and gin, or evidence that a maker of gin also actually produces beer, or that the goods are complementary.

The Examining Attorney pointed to prior Board decisions finding various alcoholic beverages related, but the Board was unimpressed: "Put simply, the Examining Attorney cannot evade the burden to prove relatedness by bootstrapping upon previous factual findings made in other decisions on different records." In any event, the evidence here "pales in comparison to the evidence in those cases."

Trade Channels: The Office also failed to prove that the trade channels overlap. "Although the consolidation of production, distribution, and/or sale in the beer, wine, and spirits markets suggests that there may be some overlap in trade channels, we cannot make such a finding on this record." [Seems like the Board could take judicial notice that gin and beer are sold in the same retail stores. - ed.].

Conclusion: The applicant wins! The applicant wins!

Read comments and post your comment here<https://www.blogger.com/comment/fullpage/post/9072179/5344228739086636993>.

TTABlogger comment: As I recently said in my comment on the JERSEY GIRL case [TTABlogged here<http://thettablog.blogspot.com/2024/12/jersey-girl-whiskey-for-distilled.html>], "In these alcoholic beverages case, an applicant's principal hope seems to be the weakness of the Office's evidence of third-party registration and use."

Text Copyright John L. Welch 2024.
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