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Attorneys

Clearing Marks In the Beverage Space Has Become Increasingly Complex

October 10 2014

By Scott Hervey

In this author’s opinion, I believe that most consumers see wine, beer and mineral water as unrelated products and would not believe that beer, wine or mineral water that share similar trademark elements (e.g., similar words or similar design) are related or emanate from the same source.  However, the TTAB has found otherwise.

Beginning with its 1992 decision in In re Sailerbrau Franz Sailer, the TTAB has been receptive to arguments that wine and beer are related.  In In re Sailerbrau, the TTAB found the mark CHRISTOPHER COLUMBUS for beer confusingly similar to the mark CRISTOBAL COLON and Design for sweet wine.  The TTAB found persuasive the third party registrations introduced by the trademark examiner showing that a number of companies have registered their marks for both beer and wine.

Following that case, the TTAB adjudicated a number of non-precedential cases in which the TTAB found beer and wine related.  For example, in In re Stonestreet, LLC, the TTAB found the mark BUCKEYE for wine confusingly similar to the mark BUCKEYE SPARKLING DRY (stylized) for beer.  Similar to In re Sailerbrau, the TTAB found persuasive third party registrations covering both beer and wine.  The applicant in In re Stonestreet argued that the Federal Circuit case of G.H. Mumm & Cie v. Desnoes & Geddes Ltd., required a finding that beer and wine are not related.  However, the TTAB was not persuaded.  The record in G.H. Mumm demonstrated the MUMM brand champagne to be a premium sparkling wine marketed by one of France’s top quality champagne producers.  The record in Stonestreet lacked any such distinction.

Then, in 2011 the TTAB issued a precedential opinion on the continuing conflict of beer and wine.  In re Kysela Pere et Fils, Ltd. involved a refusal to register the mark HB for wine based on the likelihood of confusion with the mark HB and Design for beer.  The TTAB found persuasive both the third party registrations submitted by the trademark examiner covering both beer and wine as well as third-party web pages for companies that make and sell both beer and wine.  The court stated:

The third-party registration evidence and the website evidence together amply demonstrate the relatedness of beer and wine, and show that consumers, if they encountered both goods sold under confusingly similar marks, are likely to believe that they emanate from the same source.

And now, it seems like the TTAB may be expanding the scope of goods related to wine (and likely beer) to include water.  In the recent case of Joel Gott Wines, LLC v. Rehoboth Von Gott, Inc., the TTAB addressed Gott Wine’s opposition to Von Gott’s application for GOTT LIGHT (stylized) for flat and carbonated drinking water, coconut water and flavored mineral water on the grounds that applicant’s mark is confusingly similar to Joel Gott’s mark, GOTT, for wine.

Addressing whether there is a likelihood of confusion between Von Gott’s mark and Joel Gott’s mark, having found the marks similar, the court focused on the relatedness of the covered goods, the trade channels and classes of purchasers.  First the court noted that the goods need only be sufficiently related that consumers would be likely to assume, upon encountering the goods under similar marks, that the goods originate from, are sponsored or authorized by, or are otherwise connected to the same source.  As such, the court found compelling the use-based, third-party registrations covering both water and wine submitted by Joel Gott.  The court noted that the use-based, third-party registrations have probative value in that they suggest that the goods listed therein are of a kind which may emanate from a single source.  Joel Gott also introduced  marketplace evidence demonstrating that wine and water are related goods. Joel Gott introduced testimony from a witness who purchased several different brands of water from different winery tasting rooms, each bearing the name of the winery at which wines under the same brands are sold.  The court found that this evidence “strongly favors a finding of likelihood of confusion with respect to the du Pont factor regarding the relatedness of the goods.”

As to the channels of trade, Von Gott contended that although both wine and water are sold in supermarkets, they are sold in different sections of the store; Von Gott argued that because goods can both be sold in a large store such as a supermarket would not alone be sufficient to show that consumers would be likely to encounter both in a shopping trip, or assume a common source merely because both types of goods can be found in such a store.   However, the court found compelling evidence submitted by Joel Gott which showed that wine and water are often sold in the same area of a store, as well as copies of online beverage menus from restaurant websites, showing that restaurants offer both water and wine for sale in the same menu section.  Based on the evidence submitted by Joel Gott, the court found that wine and water are sold through the same trade channels to the same classes of customers.

With the TTAB finding wine and water related goods that are sold through the same class of goods to the same classes of customers, one must ask what is next.  Soft drinks and energy drinks are also sold in the same area of a supermarket as water; spirits are usually sold on the next isle over.  The slow creep of product relatedness in the beverage category will make it increasingly difficult for brand owners in the space to select and clear trademarks.