As the number of craft breweries and craft beer brands grow, many breweries are finding it increasingly difficult to register their marks, not necessarily because there are many new beer trademarks filed with the USPTO (which there are), but because there is a winery or distillery that already has the same or similar trademark registered. The USPTO often exhibits a knee-jerk reaction to these cases, finding that beer and wine, or beer and distilled spirits, are closely related goods and therefore similar marks for such goods are likely to cause confusion as to source. But a more nuanced approach may be needed
Similarity of The Marks: 5 GOLDEN RINGS v. GOlD RING
As to the marks themselves, the Board found that they were similar despite the fact that The Bruery’s mark had a “5” and the plural form of “RING” was used. While The Bruery also argued that its mark referred to the Christmas carol, “The Twelve Days of Christmas,” and therefore the mark had a very different commercial impression than the cited GOLD RING marks (in fact, The Bruery has registered or applied to register related marks such as “3 FRENCH HENS”), the Board rejected this argument on the grounds that The Bruery had not submitted evidence of this during the prosecution of the mark but only later during the appeal, and therefore it was untimely. This underscores the importance of submitting evidence during the prosecution of the application before an appeal, though one wonders if evidence was really needed to state that the mark invoked the Christmas carol.
Similarity of The Goods: Beer v. Wine
As to the similarity of the goods, the Board found that beer and wine were closely related goods in part because there are beverage makers that produce both beer and wine, under the same mark. The USPTO Examining Attorney had not only submitted evidence showing that there were 19 registrations indicating that the same entity had registered a single mark for both beer and wine, or beer and another alcoholic beverage, but had also submitted Internet evidence of several companies that produced both beer and wine under a single mark such as the Village Vintner and Hometown Cellars Winery. The Bruery had not submitted any contrary evidence, but did argue on appeal that its products were limited to craft beer. The Board, however, rejected this argument since the identification of goods for the application did not use “craft beer” but just “beer; malt liquor.” Perhaps using “craft beer” in the identification of goods will help future brewery trademark applicants overcome similar Section 2(d) refusals. The Board therefore concluded that the:
evidence demonstrates [that] it is not uncommon for craft/ microbreweries to also produce wine, and sometimes under the same house mark. This constitutes further evidence that consumers may expect to find both Applicant’s and Registrant’s goods as identified in the involved application and cited registration GOLD RING as emanating from a common source, and as such, the goods are closely related. (Emphasis added).
But is this really accurate? Is it really “not uncommon” for craft breweries to also produce wine, or vice versa (wineries to produce beer)? If one looks at the registrations submitted by the Examining Attorney, many did not cover both beer and wine, but beer and some other alcoholic beverage product. Also, most of the beer registrations were for obscure beer brands such as WORK TRUCK (by Contadini), BEERHATTAN, and SWEET JESUS (not DuClaw Brewing’s SWEET BABY JESUS). None of these three beers can be found on the BeerAdvocate online database. Had evidence been submitted showing that these marks have relatively weak commercial strength in the marketplace, then one could argue that consumers do not think it is common for a brewery to also produce wine or a winery to also produce beer despite the existence of these marks.
In addition, while the Examining Attorney did submit some Internet evidence of companies that produce both beer and wine under the same house mark, there was no evidence as to what percentage of alcohol beverage makers produce both beer and wine under the same mark. Many consumers probably could not readily identify a company that makes both beer and wine, under the same mark. It may in fact be uncommon. As Erik Pelton has pointed out in a 2011 blog post, of the approximately 3,600 registrations for beer trademarks and 7,900 for wine trademarks existing at that time, only 32 were for both beer and wine. And there exist more than 40 instances where one entity has registered a mark for beer while another has registered a similar mark for wine. While such figures may not be dispositive, they suggest that the number of entities that make both beer and wine, under the same mark, is relatively small.
Furthermore, as the Board has pointed out in an analogous context, there is no per se rule that all alcoholic beverages are related. In In Re White Rock Distilleries, 92 U.S.P.Q.2d 1282, 1285 (TTAB 2009), the Board stated that although vodka and wine are both alcoholic beverages, this alone is insufficient to establish that the goods are related. The question of the relatedness of beer and wine is still open to evidentiary argument as there is no per se rule of relatedness, and a stronger evidentiary showing could lead to a different result in other similar cases.
Notably, the strength or continued use of the cited mark GOLD RING was also questionable. Although the mark may be inherently distinctive, the GOLD RING wine does not appear on The Rutherford Wine Company’s website, is not found in the www.wine-searcher.com database, and a Google search for “gold ring wine” only finds a few hits for the wine, one of which states “I couldn’t find much on this wine.” The Board does not normally expect the Examining Attorney to raise strength of a mark as an issue in an appeal (see TMEP 1207.071(d)(ix)), but the apparent commercial weakness of the mark may suggest it could be subject to cancellation for non-use, or at least an argument that it is a weak mark. On the other hand, where the cited wine mark is a relatively strong or famous house mark for wine, such as KENDALL-JACKSON, then likelihood of confusion may exist with a KENDALL-JACKSON beer. Conversely, consumers might believe a FAT TIRE wine is from the same company (New Belgium) that makes FAT TIRE beer since that brand, although not a house mark, is distinctive and one of the better-known craft beers. So evidence of the commercial strength or weakness of the cited brands may also be important to submit in certain cases.
As craft breweries continue to push the boundaries of brewing and branding, it will be important for breweries seeking trademark registration to submit actual evidence to support their arguments when dealing with Section 2(d) refusals citing a wine mark.
(Eugene Pak tweets on legal issues and news in the beer industry at @BeerAttorney. He serves as outside general counsel to craft breweries and spoke on trademark law issues at the Brewers Association’s Craft Brewers Conference in Denver, Colorado)..