Uinta Brewing Company (Applicant) filed an application before the United States Patent and Trademark Office (USPTO) to register on the Principal Register the mark DUO in standard characters for beer. The Trademark Examining Attorney refused registration under § 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), for the reason that Applicant’s mark (as used in connection with Applicant’s goods) resembled a registered mark DUO as likely to cause confusion. (The registered mark is for wine and is owned by a Chilean wine company named Alto de Casablanca, S.A. but was originally registered by Franciscan Vineyards in Rutherford, California.) When the Examining Attorney’s refusal was issued, Applicant brought an appeal before the Trademark Trial and Appeal Board (TTAB), and both the Applicant and Examining Attorney filed briefs. In re Uinta Brewing Company, Serial No. 86333439 (June 29, 2016) [not precedential]. As is standard in a likelihood of confusion analysis, the TTAB considered whether or not there were similarities between the marks as well as similarities between the goods at issue.
The Board first considered the similarity or the dissimilarity of the marks at issue with respect to the appearance, sound, meaning, and overall commercial impression. Without any discussion, the Board determined that the marks were identical and, thus, according to the du Pont factor of similarity or dissimilarity of the marks, weighs in favor of finding a likelihood of confusion. See id. at 2.
Next, the Board analyzed the similarity or the dissimilarity of the goods at issue. The Board noted that there is no per se rule that alcohol beverages be deemed as similar goods and each case must be decided on its own facts. Applicant argued that goods could fall within the same product category but move in distinct niches. Applicant noted that, in the past, the Board has recognized that when two products are of distinct sectors of a broad product category, such products can be considered to be “sufficiently unrelated” such that consumers would not likely associate that the product originated from the same mark. Id. at 3. Examining Attorney submitted evidence of eleven websites that showed that beer and wine can emanate from the same source, e.g., at a premise that is both a winery and a brewery, as well as third-party registrations that cover both wine and beer and are owned by the same registrant.
To counter the Examining Attorney’s evidence, Applicant provided evidence that USPTO’s TESS database indicates there are 18,119 registrations of marks for wine, 8,088 registrations of marks for beer, and only 71 registrations of marks for both wine and beer. Applicant further noted that “[o]f the 8,088 registrations for beer, less than 1% (only 0.87%) are also for wine. Of the 18,119 wine registrations, less than half a percent (only 0.39%) are also for beer.” Id. at 4. Applicant went on to suggest that “only the smallest minority” of registrations provide any suggestion that wine and beer are related and that the majority of such applications suggest otherwise. Id. at 4–5. Further, Applicant included copies of about ten registrations that showed identical or nearly identical registrations for marks that were owned by different individuals, suggesting that the presence of such thwarts the idea that beer and wine are related goods and can coexist. Id. at 5.
The Board went on to say they found the Examining Attorney’s evidence sufficient that some small wineries and microbreweries offer both beer and wine under a single mark and that the existence of marks covering both beer and wine “at least suggests an interest among producers of alcoholic beverages in combining the production of both types of beverages within a single business.” Id. at 5. The Board further noted that the fact that the evidence provided by the Examining Attorney only represents a small segment of the entire wine or beer market did not reduce the potential for a likelihood of confusion, “especially where the marks at issue are identical and distinctive.” Id.
When identical marks are involved, the Board continued, the degree of similarity between the goods that is needed to find a likelihood of confusion declines. “The fact that some unrelated beer producers and wine producers have registered identical marks does not prove, as Applicant suggests, that the goods are unrelated or that such marks can coexist in the marketplace.” Id. at 6. In regard to Applicant’s arguments, the Board stated that such did not demonstrate actual or current marketplace conditions. Thus, the Board found that the du Pont factor of similarity or dissimilarity of the goods favored a finding of likelihood of confusion.
In regard to trade channels, the Board noted that “[n]ormal trade channels for both beer and wine would include, at a minimum, liquor stores.” Id. at 6–7. In consideration of all of the above, the Board found in favor of a likelihood of confusion between the marks DUO for wine and DUO for beer and affirmed the refusal to register applicant’s mark under § 2(d).
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