Just in time for the holiday season, we present our third annual Trademark Year in Wine and Beer, a wrap-up of alcohol-related trademark and trademark-ish disputes dating back to December 2015, when we published our last edition. Our scope includes lawsuits brought in U.S. Courts, actions before the Trademark Trial and Appeal Board (“TTAB”), arbitrations pursuant to the Uniform Domain Name Dispute Resolution Policy (“UDRP”), and a few other tidbits.
The Trademark Year in Wine and Beer was devised as a lawyerly holiday icebreaker for awkward yuletide festivities, and it may be especially useful in 2016. Are you looking to avoid talking about politics at your annual seasonal gathering with friends or (especially) family? We’ve got you covered, with over 150 diversionary legal anecdotes about the beverages atop your bar. Simply choose an item from our list and start drinking. Then, as soon as someone brings up the election, just barge in with: “Funny story about this drink …” After that, you’re on your own. Good luck.
21ST AMENDMENT Beer
The 21ST AMENDMENT at La Louisiane is a French Quarter bar named for the repeal of prohibition, located inside a 19th Century building that has hosted restaurants called “La Louisiane” since 1881. The establishment was once operated by the notorious New Orleans crime boss Carlos Marcello, and before that by the flamboyant restauranteur Diamond Jim Moran, whose obsession with diamonds apparently included occasionally cooking them into the meatballs. Notwithstanding this history, the restaurant was denied registration of its name and logo for bar and restaurant services on account of the preexisting registration of 21ST AMENDMENT for ale and beer, owned by a California brewery and restaurant. The TTAB agreed with the applicant that the term “21st Amendment” was somewhat weak, but on balance found that there was a likelihood of confusion owing to the identical nature of the services offered, and the fact that the dominant portions of both marks were the same. In re 730 Rue Bienville, L.L.C., 2016 TTAB LEXIS 185 (Trademark Trial & App. Bd. May 11, 2016).
518 SESSION Beer
The Shmaltz Brewing Company, maker of HE’BREW THE CHOSEN BEER, CIRCUM SESSION ALE and several other Jewish-themed gems, is located in the part of upstate New York where the local area code is “518.” Earlier this year, the United States Patent and Trademark Office (USPTO) published Shmaltz’s application to register 518 SESSION in connection with its “locals only” line of session beers and its THINK NEW YORK, DRINK NEW YORK tagline. The application was opposed by the Full Sail Brewing Company of Oregon, maker of “Session Lager” and owner of several SESSION marks for beer. In November, Shmaltz decided that it didn’t need the aggravation and withdrew the application. BC Marketing Concepts, Inc. v. Cowan, Opposition No. 91227682 (Trademark Trial & App. Bd.).
In April, Dr. Henry Vazquez filed a putative class action lawsuit against Anheuser-Busch in the Southern District of Florida. Vazquez claimed that he was deceived because the packaging and marketing materials for Anheuser-Busch’s Leffe Beer include phrases like “Abbey Ale,” “since 1240,” and “750 years of Belgian tradition,” thus falsely implying that Leffe beer has been brewed in the Abbey of Leffe since the 13th Century, which would be impossible since the abbey was destroyed during the French Revolution (although it did in fact house a brewery for about 500 years before that). The matter was voluntarily dismissed in October. Vazquez v. Anheuser-Busch Companies, LLC, 1:16-cv-21181 (S.D. Fla.).
ABOMINABLE WINTER ALE
As reported here, the Hopworks Urban Brewery in Portland, maker of ABOMINABLE Winter Ale (which it calls “Arrrganic beer”) learned that Seattle’s Fremont Brewing Company was selling the similarly-named ABOMINABLE ALE. The parties apparently got on the phone and determined that Hopworks used “Abominable” first, so Fremont took to Twitter and announced that it was removing the word from its brew’s name. In response to its fan questions, Fremont tweeted: “Litigation is for suckers, craft beer is for lovers.”
AFTERNOONER and NOONER Beer
A Trademark Examining Attorney refused the Crow Hop Brewing Company’s application to register AFTERNOONER for beer on the ground that it too closely resembled Sierra Nevada Brewing Company’s NOONER mark for beer. The TTAB affirmed, finding that there was a likelihood of consumer confusion and rejecting the applicant’s argument that craft beer drinkers “are more discerning than average beer drinkers” and will exercise more care in making their purchases. The TTAB also rejected the applicant’s argument that alcoholic beverages are less susceptible to confusion as to source because federal regulations require that all beer labels contain the name and address of the bottling entity. In re Crow Hop Brewing, Ltd., 2016 TTAB LEXIS 436 (Trademark Trial & App. Bd. Sept. 1, 2016).
Each of the Miller’s Ale House chain’s approximately 70 restaurants bears a sign consisting of the phrase “Ale House” preceded by the geographic location of the restaurant in red capital letters, and in many cases also preceded with “Miller’s” in italics, for example “Miller’s ORLANDO ALE HOUSE.” Miller’s brought a trademark infringement suit in the Middle District of Florida, claiming that a bar in Davenport, Florida called “Davenport’s Ale House” was likely to be confused as part of the Miller’s chain, because it used the phrase “Ale house” in capital letters preceded by the geographic location in italics. Davenport’s argued that the term “Ale House” is generic, as adjudicated by both the Fourth and Eleventh Circuit in prior cases which Miller’s had brought against other restaurants. The Middle District of Florida agreed and granted summary judgment to Davenport’s because the use of “Ale House” in red block letters did not merit trademark protection, and because in any case Miller’s had not consistently used the same formatting in its signage. Miller’s Ale House, Inc. v. DCCM Rest. Grp., LLC, 2016 U.S. Dist. LEXIS 33821 (M.D. Fla. March 16, 2016).
Plaintiff, owners of the Carolina Ale House restaurant chain, brought suit in the Western District of North Carolina against the operator of the ALE YEAH! craft beer stores in Georgia. Both parties claimed ownership of the ALE YEAH mark for beer. The defendant filed a motion to dismiss for lack of personal jurisdiction. The Court agreed that the defendant’s advertising in a national trade magazine was not a business activity directed into North Carolina. However, the Court denied the motion because of evidence that the defendant had agreed to license the mark for online use to a third party based in North Carolina, and this was sufficient to confer specific personal jurisdiction in the forum state. Discovery in the matter is ongoing. LM Rest. Inc. v. Ale Yeah!, Inc., 2016 U.S. Dist. LEXIS 11571 (W.D.N.C. Feb. 1, 2016).
ALPHA OMEGA and ALFA & OMEGA Wines
Late last year, the Alpha Omega Winery of California filed a trademark infringement action in the Eastern District of Pennsylvania against Richard Adamek of Doylestown. The complaint alleged that Adamek was running a business under the copycat mark ALFA & OMEGA Winery. The matter quickly settled, and Mr. Adamek is now doing business as Vivat Alfa Winery. Alpha Omega Winery, LLC v. Adamek, Case No. 2:15-cv-05676 (E.D. Pa.).
In March, the Sixth Circuit Court of Appeals affirmed dismissal of a collection of class action lawsuits alleging that Anheuser-Busch had overstated the alcohol content on the labels of various malt beverages, including Budweiser, Michelob, King Cobra and Black Crown. The plaintiffs alleged that Anheuser-Busch intentionally added extra water to dilute the alcohol content and save money. Anheuser-Busch moved to dismiss because the complaint failed to allege that the alcohol content ever diverged from the label by more than .3%, which is within the amount of divergence allowed by the relevant federal statute. The Sixth Circuit agreed with Anheuser-Busch, rejecting the plaintiffs’ argument that the federal statute applied only to unintentional divergence. In re Anheuser-Busch Beer Labeling Mktg., 644 Fed. Appx. 515 (6th Cir. 2016).
As a “cheeky thank you” to its guests, Warner Leisure Hotels was distributing bottles of ANTI-AGIN gin, a beverage “for people who want to stay young but don’t want to give up alcohol.” The label, which expressly described the product as “tongue and cheek,” claimed that it “rejuvenates the skin while you drink” and boasted a “host of age defying botanicals” to prevent scars, wrinkles and other signs of aging. The National Advertising Division (NAD) of the Better Business Bureau initiated an investigation and asked the drink’s manufacturer, Bompass & Parr, to substantiate the claims. When Bompass & Parr suggested that the NAD get a sense of humor, the NAD ruled that it had none (actually, it “held that humor does not diminish an advertiser’s obligation to make truthful and accurate advertising claims”). The product has been voluntarily discontinued.
In our 2015 edition, we discussed how the Atlas Brewing Company of Chicago was unable to stop the trademark application of the Washington D.C.-based Atlas Brew Works. The TTAB ruled that the D.C. Atlas had priority, because its trademark application had been filed in June 2012, a month before the Chicago Atlas started selling beer in July 2012. The Chicago Atlas changed its name to BURNT CITY Brewing and, according to the Cook County Record, has filed a malpractice action against its trademark prosecution firm. The Chicago brewer alleged that, had the law firm filed an intent-to-use application when it was first retained in April 2012, instead of waiting until the first beer sales in July 2012, the outcome of the TTAB proceeding would have been different. Atlas Brewing Company, LLC v. Atlas Brew Works LLC, 2015 TTAB LEXIS 381 (Trademark Trial & App. Bd. Sept. 22, 2015). Oh, and perhaps this is a coincidence, but we couldn’t help noticing that BURNT CITY Brewing is now featuring a DICK THE BUTCHER pale ale – he’s the murderous ruffian who uttered, “The first thing we do, let’s kill all the lawyers” in Act IV of Shakespeare’s Henry VI.
BAD SPANIEL v. JACK DANIEL’S
In 2013, VIP Products introduced a dog toy called “Bad Spaniels,” a “durable rubber squeaky novelty dog toy” with the look of a Jack Daniel’s whiskey bottle. The toys came with a disclaimer that “this product is not affiliated with Jack Daniel’s,” presumably so that the dogs would not be confused. Nevertheless, the whiskey company threatened to take action against VIP, and VIP reacted by filing a complaint in the District of Arizona, seeking a declaration of non-infringement, and asserting that the trade dress of the Jack Daniel’s bottle was functional and not distinctive. Jack Daniel’s filed Lanham Act counterclaims, and both parties subsequently moved for summary judgment. This September, the Court rejected VIP’s nominative fair use and first amendment arguments, ruling that VIP’s use of the mark was commercial rather than expressive, and that consumers are likely to be confused as to the source of the toy. The Court also granted Jack Daniel’s motion for partial summary judgment, holding that the bottle trade dress and design are non-functional. A trial is scheduled for June 2017. VIP Products, LLC v. Jack Daniel’s Props., 2016 U.S. Dist. LEXIS 133387 (D. Ariz. Sept. 27, 2016).
Conscious Cultures of Virginia applied to register the BAREFOOT BUCHA mark for its line of organic craft kombucha. In July 2015, E. & J. Gallo Winery opposed the application, arguing that the mark was confusingly similar to eight registered marks associated with Gallo’s BAREFOOT wines. Gallo followed up its opposition with a trademark infringement suit in the Eastern District of Virginia. News reports indicated that the parties were working on a coexistence agreement, and the matter settled this July. Gallo voluntarily dismissed the infringement case, and Conscious Cultures has withdrawn its trademark application. E. & J. Gallo Winery v. Conscious Cultures LLC, Opposition No. 91222763 (Trademark Trial & App. Bd.).
BAYOU BOOTLEGGER Hard Root Beer
In July, Bootlegger’s Brewery of California filed a trademark infringement complaint in the Central District of California against Abita Brewing Company of Louisiana, alleging that Abita’s new “hard root beer” called Bayou Bootlegger is likely to cause confusion. The Bayou Bootlegger beverage was inspired by Jean Lafitte, the legendary French pirate-turned-hero during the War of 1812. Bootlegger’s Brewery’s motion for a preliminary injunction has been postponed multiple times, and the last time we checked the docket it was scheduled for hearing in December 2016. Bootlegger’s Brewery, LLC v. Abita Brewing Company, Inc., Case No. 8:16-01390 (C.D. Cal.).
BEACH HOUSE Winery & THE BEACHHOUSE Wine
South African company DGB sells wine under THE BEACHHOUSE mark, but its application to register that mark was refused in light of the BEACH HOUSE WINERY mark, owned by the Beach House Winery of San Diego. DGB sought to overcome the refusal by adding its house mark (DOUGLAS GREEN). However, the application for THE BEACHOUSE, A WINE BY DOUGLAS GREEN was also refused. In April, the TTAB affirmed refusal of the application, holding that the addition of a house mark (“A WINE BY DOUGLAS GREEN”) was insufficient to overcome the likelihood of consumer confusion. In re DGB (PTY) Ltd., 2016 TTAB LEXIS 166 (Trademark Trial & App. Bd. April 29, 2016).
BEACH BLONDE ALE
In November 2015, the California Brewing Company filed an action in the Eastern District of California against Florida’s 3 Daughters Brewing, alleging infringement of its registered BEACH BLONDE ALE mark. In April of this year, the Court denied 3 Daughters’ motion to dismiss for lack of personal jurisdiction, noting that 3 Daughters had sold products to retailers in California. Cal. Brewing Co. v. 3 Daughters Brewing LLC, 2016 U.S. Dist. LEXIS 52344 (E.D. Cal. Apr. 18, 2016). California Brewing then moved to strike certain of 3 Daughters’ affirmative defenses. The Court struck the defense that California Brewing had lied to the USPTO about its date of first use (2007), because 3 Daughters failed to plead fraud with any particularity. The Court also struck several other defenses as insufficiently pled, but granted leave to amend them. Cal. Brewing Co. v. 3 Daughters Brewing LLC, 2016 U.S. Dist. LEXIS 97614 (E.D. Cal. July 25, 2016). In August, 3 Daughters filed an amended answer and counterclaims, but California Brewing failed to answer the counterclaims due to a “calendaring error.” In September, a clerk entered a default, but that default was set aside by the Court in November. Cal. Brewing Co. v. 3 Daughters Brewing LLC, 2016 U.S. 160444 (E.D. Cal. Nov. 18, 2016). A related TTAB matter is also pending. Cal. Brewing Co. v. 3 Daughters Brewing LLC, Opposition No. 92061411 (Trademark Trial & App. Bd.).
Meanwhile, the Grayton Beer Company, also of Florida, has applied to register the same mark for t-shirts, and the California Brewing Company’s opposition to that application is pending. California Brewing Co. v. Grayton Beer Company LLC, Opposition No. 91229961 (Trademark Trial & App. Bd.).
BEER BELLY Restaurants of California filed a trademark infringement action in the Northern District of New York against the BMT Management Group of Albany, alleging that the name of BMT’s new drinking establishment, “The Beer Belly,” was confusingly similar to its registered mark. The matter appears to have settled quickly, and BMT’s establishment is now called “Albany Ale and Oyster.” Beer Belly, Inc. v. BMT 1110, LLC, Case No. 1:16-CV-0506 (N.D.N.Y.).
BEER & BEAR REPUBLIC
The Atlanta-based BEER REPUBLIC Brewing Company’s application to register BEER REPUBLIC was opposed by the BEAR REPUBLIC Brewing Company, which owns a slew of BEAR REPUBLIC-related marks. BEAR REPUBLIC alleged likelihood of confusion, as demonstrated in part by the fact that Google can’t tell the difference between the two companies (type in each name and you get basically the same results). BEAR REPUBLIC also alleged that it has priority of use, as evidenced by BEER REPUBLIC’S website, which contains little more than the statement that “we are all citizens of the Beer Republic,” which is “opening in Atlanta soon” after its owners fill out a “huge pile of government paperwork.” After receiving the opposition, the BEER REPUBLIC quickly seceded from the TTAB and abandoned the application. Bear Republic Brewing Company v. Beer Republic Brewing, Case No. 91228917 (Trademark Trial & App. Bd.).
BETTY BLACK Lager & BLACK BETTY Stout
Last year, the Nebraska Brewing Company, makers of BLACK BETTY IMPERIAL STOUT and BLACK BETTY RUSSIAN beer, petitioned to cancel the Emerald City Beer Company’s BETTY BLACK LAGER mark. Nebraska Brewing did not own any registered marks, but alleged that its common law use began in 2009, two years before Emerald City’s use. In June, the parties settled their dispute. Emerald City withdrew its application and transferred its rights to Nebraska brewing for a nominal sum and the option to take a geographically-limited royalty free license. Nebraska Brewing Co. v. Emerald City Beer Company, LLC, Opposition No. 92059264 (Trademark Trial & App. Bd.).
BIG HOP and BIG HOPS Beer
In 2015, the USPTO rejected an application by the East End Brewing Company of Pittsburgh to register BIG HOP for one of its beers, on account of the already-existing registration for BIG HOPS, owned by a bar and restaurant in San Antonio. The parties’ attempted to work out a coexistence agreement, but those efforts failed and Big Hops filed suit in the Western District of Texas. East End filed a motion to dismiss for lack of personal jurisdiction. Big Hops opposed the motion, arguing that the interstate correspondence in connection with the failed coexistence agreement gave rise to specific personal jurisdiction. The Court disagreed and dismissed the case for lack of personal jurisdiction, noting that the cause of action (for trademark infringement) did not arise from the settlement correspondence but from East End’s actions trademark use within Pennsylvania. Thus, Big Hops failed to demonstrate that the case arose directly from East End’s forum-related contacts. J & J Martindale Ventures, LLC v. East End Brewing Co., 2016 U.S. Dist. LEXIS 55906 (W.D. Tex. Apr. 27, 2016).
BLACK OPS Beer
Late last year, Brooklyn Brewery filed a trademark infringement action in the Eastern District of California against Black Ops Brewing. According to the complaint, Brooklyn Brewery has been selling a BROOKLYN BLACK OPS beer since 2007, while Black Ops Brewing was established only in 2014 (which is why the USPTO had already refused registration of the BLACK OPS BREWING mark). In January, the Court granted Brooklyn Brewery’s motion for a preliminary injunction, rejecting Black Ops’ argument that the term was descriptive of beer (‘Black’ referring to the color of the beer and ‘Ops’ suggestive of the ingredient hops). Black Ops Brewery is now “Tactical Ops Brewery.” The Brooklyn Brewery Corporation v. Black Ops Brewing, Inc., Case No. 1:15-cv-01656 (E.D. Cal.).
BLUE BLOOD Beer
An application to register BLUE BLOOD RIVALRY for beer was refused on account of the already-registered BLUE BLOOD BREWING COMPANY mark. The applicant argued that the marks conveyed different meanings, because BLUE BLOOD RIVALRY referred to the storied college basketball rivalry between Duke University and the University of North Carolina, whereas the BLUE BLOOD BREWING COMPANY connotes a brewery owned by a rich person (in fact, it’s actually a reference to the fact that its founder used to be a police officer). The TTAB rejected this argument and affirmed the refusal. In re Pinto, 2016 TTAB LEXIS 213 (Trademark Trial & App. Bd. May 20, 2016).
BLUE COLLAR Beer
A Pittsburgh brewing company initially applied to the USPTO to register BLUE COLLAR BREWERY for the beer making kits it was already selling, and also for beer on an intent to use basis. It later amended its application to delete beer, leaving only the beer making kits. A New York brewery using the same name opposed the application on the grounds of fraud (because the original description of goods was incorrect) and because the term “brewery” was deceptively misdescriptive of a business that did not in fact brew beer. The TTAB granted summary judgment against the fraud claim, but let the deceptive misdescriptiveness claim survive. Blue Collar Brewery, Inc. v. Blue Collar Brewery, LLC, 2015 TTAB LEXIS 522 (Trademark Trial & App. Bd. Dec. 28, 2015).
BLUE MOON Beer
Last year, we reported on the dismissal (with leave to amend) of Evan Parent’s putative class action lawsuit against MillerCoors in the Southern District of California, alleging that Blue Moon beer was falsely labeled as “craft beer” that was “independently brewed” and “hand-crafted.” This year, the Court dismissed the amended complaint, holding that the advertisements identified by the plaintiff (which allegedly promoted the “wholesale fiction” of an independently brewed craft beer) were non-actionable puffery. The Court also determined that MillerCoors could not be liable for alleged misrepresentations by retailers because California unfair competition claims cannot be predicated on vicarious liability. This time, the Court denied leave to amend. Parent v. MillerCoors LLC, 2016 U.S. Dist. LEXIS 78764 (S.D. Cal. June 16, 2016)
In April, Conopco, Inc., a division of Unilever and owner of the POPSICLE mark, opposed Liquid Evolutions’ application to register BOMSICLE for alcoholic beverages, apparently a new flavor of its BOMBOM chocolate and coconut rum drink. Conopco alleged that the registration would harm its “SICLE” family of marks. By July, Liquid Evolutions had abandoned the application. Conopco, Inc. v. Liquid Evolutions LLC, Opposition No. 91227389 (Trademark Trial & App. Bd.).
Applebee’s, which has used the mark BREWTUS to refer to a 23 ounce serving of beer since 1992, opposed the application by Vermont’s COLD BREWTUS Coffee Company to register its name. Applebee’s claims that the marks are confusingly similar, including because COLD BREWTUS coffee is sold in a “beer shaped bottle” and because the term “cold” invokes the temperature at which Applebee’s BREWTUS beer is served. The matter is pending. Applebee’s Restaurants LLC v. Cold Brewtus Coffee Roasters, Inc., Opposition No. 91231123 (Trademark Trial & App. Bd.)
BREXIT Hard Cider
Following the United Kingdom’s vote to leave the European Union, The Boston Beer Company applied to register the mark BREXIT for hard cider. A trademark examiner issued an office action refusing the mark on the grounds that it is not a source-identifier but “merely conveys an informational social and political message,” similar to previously refused marks such as NO MORE RINOS! and DRIVE SAFELY. The application is still pending. If the company is able to register the mark, it may eventually have to contend with Ribble Brewery in Preston, Lancashire, which has been selling “Brexit English Pale Ale” (with the tagline: “because staying in is hard to swallow”) since before the vote.
BKLYN and BROOKLYN Beer
Brooklyn Brewery petitioned the USPTO to cancel the BKLYN mark for beer, owned by Sixpoint Craft Ales of Brooklyn, alleging that BRKLYN was a common nickname for “Brooklyn” and thus likely to cause confusion with the BROOKLYN BREWERY registered marks. The parties apparently worked out some sort of arrangement. Sixpoint voluntarily surrendered its registration in July and the mark was canceled. The Brooklyn Brewery Corporation v. Mad Scientists Brewing Partners, LLC, Opposition No. 92063049 (Trademark Trial & App. Bd.).
This year, Brooklyn Brewery also wrapped up another of the many UDRP proceedings initiated by the entity. This one concerned the domain , which was registered by a graphic designer for use in connection with a Brooklyn coffee bar. The graphic designer never got around to opening the coffee bar, but he did use the website to sell Brooklyn-themed clothing. The arbitration panel found this explanation to be plausible, and therefore the domain was not registered in bad faith. Brooklyn Brewery’s request that the domain be transferred was denied. The Brooklyn Brewery v. Schamann, 2015 UDRP LEXIS 1353 (WIPO Dec. 10, 2015).
BROOKLYN DEFENDER ALE
Brooklyn Brewery found itself on the other end of a TTAB opposition when the Haymarket Brewing Company of Chicago opposed Brooklyn Brewery’s application to register BROOKLYN DEFENDER ALE, the super hero-themed official beer of New York Comic Con. Haymarket alleged that Brooklyn Brewery’s mark was likely to be confused with its common law trademark rights in its award-winning THE DEFENDER American Stout. The parties came to some sort of arrangement, and the opposition was withdrawn in September. Haymarket Brewing Company LLC v. The Brooklyn Brewery Corporation, Opposition No. 91229506 (Trademark Trial & App. Bd.).
A New Hampshire man’s application to register BUB for non-alcoholic beer was met with a swift opposition by Anheuser-Busch, which claimed that the name would cause confusion with its BUD and other marks. The applicant defaulted, and the application has been refused. Anheuser-Busch v. Boyle, Opposition No. 91226025 (Trademark Trial & App. Bd.).
BUCK Bourbon and WILD BUCK Whiskey
NJoy Spirits’ application to register WILD BUCK WHISKEY was met with opposition by Frank Lin Distillers, owners of the registered BUCK mark for Kentucky Bourbon. In response, NJoy filed a petition to cancel Frank Lin’s BUCK registration on the grounds that it was merely descriptive of a cocktail containing bourbon, ginger ale and citrus juice. NJoy cited to prior USPTO Office Actions in which the names of other cocktails (e.g., “Cosmopolitan,” “Zombie,” “Sidecar,” “Stinger,” and “Mexican Boilermaker”) were refused registration for similar reasons. The TTAB agreed and held that, even though Frank Lin’s product is sold with the image of a BUCKing horse, BUCK was nevertheless descriptive of Kentucky bourbon that could be used to make a “buck” cocktail. The TTAB ordered further proceedings to determine whether Frank Lin’s use of the descriptive mark had acquired secondary meaning, but the parties decided not to continue down this path of mutually assured destruction: NJoy dismissed its petition to cancel the BUCK mark and Frank Lin withdrew its opposition to the WILD BUCK WHISKEY mark. Frank Lin Distillers Prods. v. NJoy Spirits, LLC, 2016 TTAB LEXIS 56 (Trademark Trial & App. Bd. Feb. 5, 2016).
Since 1977, the Sandshaker Lounge in Pensacola, Florida has been selling the Bushwacker, a milkshake-like concoction of rum, Kahlua, cream of coconut and crème de cacao. The drink became so popular that other establishments throughout the region started selling their own version of it, including at least one establishment just across the street, owned by Quietwater Entertainment. Both Sandshaker and Quietwater also used the “Bushwacker” moniker for music events and, in 2005, Quietwater registered the BUSHWACKER mark for music festivals. Sandshaker petitioned to cancel Quietwater’s mark, but the petition was refused on the grounds that BUSHWACKER had become generic for a type of drink, and that Quietwater had priority rights in the term as applied to music events. Sandshaker appealed this ruling in the federal courts and, in 2015, the Eleventh Circuit Court of Appeals reversed, holding that whatever rights Quietwater might have had, it slept on them by allowing other music events to use the BUSHWACKER name for decades. Thus, there was “no prior user.” On remand this February, the Northern District of Florida granted summary judgment for Sandshaker and ordered the BUSHWACKER mark canceled. Sandshaker Lounge & Package Store, LLC v. Quietwater Entertainment, Inc., 2016 U.S. Dist. LEXIS 91973 (N.D. Fla. Feb. 24, 2016).
CALIFORNIA BLONDE Ale
In September, the Eel River Brewing Company of Fortuna, California filed a trademark infringement action against San Diego’s Duck Foot Brewing Company in the Central District of California. Eel River alleged superior rights in the CALIFORNIA BLONDE mark for beer. The matter was promptly resolved, and Duck Foot’s ‘The Looker California Blonde Ale’ is now called ‘The Looker Blonde Ale.’ Eel River Brewing Co. Inc. v. Duck Foot Brewing Co. LLC, Case No., 2:16-cv-06873 (C.D. Cal.).
The TTAB affirmed the refusal to register CAOS for tequila in light of the already-registered alcohol marks CHAOS ON THE ROCKS and CHAOS COCKTAIL for vodka-based drinks made by Sarkesian Ventures. The TTAB rejected the applicant’s argument that, because the term “CAOS” was not actually an English word, it would not give the same commercial impression or connotation as the word “chaos.” In re Theyson, 2015 TTAB LEXIS 486 (Trademark Trial & App. Bd. Dec. 4, 2015).
California’s Tied-House Law
Business and Professions Code Section 25503(f)–(h) forbids alcoholic beverage manufacturers and wholesalers from compensating retailers for advertising their products. For example, you cannot pay a liquor retailer to hang your sign in a window instead of a competitor’s sign. Enacted in the wake of prohibition, this “tied-house” statute is designed to prevent large liquor manufacturers from controlling saloons and other retail outlets, because such control was thought to foster monopolies, encourage commercial bribery and lead to an unwanted proliferation of drinking establishments. A previous First Amendment challenge was rejected in 1986 on the grounds that the statute directly advanced legitimate government interests. In 2011, the Retail Digital Network brought a new challenge to the statute following the Supreme Court’s decision in Sorrell v. IMS Health, Inc., 131 S. Ct. 2653 (2011), which held that heightened scrutiny should be applied to the review of regulations prohibiting non-misleading commercial speech regarding lawful products. The District Court rejected this challenge, but in January 2016 the Ninth Circuit reversed, holding that the heightened standard did indeed apply and that, on remand, the government would have to show that the statute is a reasonable and proportional “fit” with the interest being advanced. In November, the Court granted the government’s petition for an en banc rehearing. Retail Digital Network v. Appelsmith, 810 F. 3d 638 (9th Cir. 2016).
In February 2016, Florida-based Big Storm Brewery launched a new line of Belgian beers, with the alcohol by volume (ABV) of each product described using a facsimile of the Saffir-Simpson Hurricane Wind Scale, including Category 1 (Belgian Single – ABV 6.0), Category 2 (Belgian Dubbel – 6.6 ABV), Category 3 (Belgian Tripel – 9.2 ABV), Category 4 (Quadrupel – 10.6 ABV) and the upcoming Category 5 (Belgian Quintupel – ABV to be decided). After receiving a cease and desist letter from Due South Brewing (which sells CATEGORY 3, CATEGORY 4 and CATEGORY 5 IPAs), Big Storm brought a declaratory judgment action of non-infringement in the Middle District of Florida. Big Storm alleged that it is not using the “Category” designations as trademarks, and that many other brewers use hurricane “Category” designations to describe beer strength, including Zea Rotisserie’s “Category 5 Ale,” Anheuser-Busch’s “Hurricane Category 5” malt liquor, and Holy City Brewery’s “Category 2 IPA.” Due South has moved to dismiss, and that motion is pending while the parties pursue mediation. Big Storm Brewery, LLC v. Due South Brewing Co. Inc., Case. No. 8:16-cv-02405 (M.D. Fla.).
A Nevada resident’s application to register CHAMPLEASURE for sparkling wines was opposed by the Institut National de L’Origine et de la Qualite, the French government entity charged with protection of the CHAMPAGNE brand. An opposition by the Institut, a frequent TTAB litigant, is often enough to cause applicants to abandon their marks, but this applicant lawyered up and filed an answer, perhaps buoyed by the recent ruling of an English court allowing a local brewer to use the CHAMPALE mark for a beer “produced using the traditional method for the production of sparkling wines.” Institut National de L’Origine et de la Qualite v. Burden, Opposition No. 91229292 (Trademark Trial & App. Bd.).
CHAPMAN CRAFTED BEER COMPANY
A trademark examiner refused registration of the mark CHAPMAN CRAFTED BEER COMPANY for beer on the grounds that “Chapman” is primarily merely a surname and there was no showing of acquired distinctiveness. The applicant argued that the mark did not refer to a surname (none of its employees had the name “Chapman”) but rather to an old-fashioned term for a merchant or a peddler. The TTAB held that although this definition of “Chapman” was accurate, it was too archaic to be useful in establishing what the average consumer would recognize it to be. For the same reason, the TTAB was not persuaded by evidence that “Chapman” was also the name of a type of bird, a musical instrument, a mathematical formula and an automobile suspension device. The refusal to register was a affirmed. In re Chapman CBC, LLC, 2016 TTAB LEXIS 501 (Trademark Trial & App. Bd. Sept. 30, 2016)
The French Chapoutier family has been making Rhone Valley wines since the 1800’s, including Côte-Rôtie, L’Hermitage and Côtes du Rhône. Maison Chapoutier, the entity currently running the family business, has secured most of the important top level domain names related to its name (e.g., , , etc.), but it was inevitable that a few slipped through. In August, Chapoutier filed a UDRP complaint requesting transfer of and several other “chapoutier” domains recently created by a Chinese registrant. The registrant responded: “first-registered, first-served,” but the panel determined that the registrant did not have any legitimate interest in the mark, and ordered that the domains be transferred. M. Chapoutier v. Lan Quin Tian, 2016 UDRP LEXIS 1265 (WIPO Oct. 24, 2016).
Back in November 2015, concerns arose about the authenticity of certain wines about to be offered at an auction organized by Gil Lempert-Schwarz, a wine consultant and head of the Las Vegas-based Wine Institute. The wines in question included a 1945 Chateau Margaux (which Winsearcher reports can fetch over $6,000 a bottle) and a 1937 Cheval Blanc that supposedly had been sitting in an unnamed Swiss nobleman’s cellar. Lempert-Schwarz removed the items from the auction, but wine fraud consultant Maureen Downey, who operates winefraud.com, wrote that Lempert-Schwarz “only removed them because he is busted. Gil has been caught in a blatant lie about the provenance” of the wines. According to the complaint, the parties have been involved in a long-running feud, often via Twitter, involving Downey’s challenges to the integrity of wine authentications made by Lempert-Schwarz. Lempert-Schwarz filed a defamation lawsuit against Downey in Clark County, Nevada, and Downey removed the matter to the District of Nevada. Days later, Lempert-Schwarz voluntarily dismissed the claim on the purported grounds that Downey was judgment-proof so the suit was not worthwhile. However, Downey has claimed that she is ready to support her accusations and has called the short-lived lawsuit a “PR Stunt.” Lempert-Schwarz v. Downey, Case. No. 2:16-cv-00075 (D. Nev.).
Purely Driven Products’ application to register CHILLAVINO for its wine bottle display system was opposed by Chillovino LLC, which owns the CHILL’O mark for wine racks. The parties have been fighting it out before the TTAB since 2015, but this year Purely Driven upped the ante by filing a declaratory judgment complaint in the Central District of California. Purely Driven alleges that it has been selling its products under the CHILLAVINO mark since March 2014 and that Chillovino didn’t come into existence until June 2014. Chillovino moved to dismiss, arguing that the mere filing of an opposition with the TTAB does not give rise to standing to bring a declaratory judgment action. The Court agreed, and dismissed on the ground that it lacked subject matter jurisdiction. Purely Driven Products LLC v. Chillovino LLC, Case No. 15-00982 (C.D. Cal. March 22, 2016). The TTAB matter has been resumed and is scheduled for trial in 2017. Chillovino LLC v. Iavarone, Opposition No. 91221017 (Trademark Trial & App. Bd.).
Beer Church Brewing Company’s application to register the BEER CHURCH BREWING mark for beer was met with an opposition filed by The Church Brew Works. The applicant is a brewery located inside a Civil War era church in New Buffalo, Michigan, where you can take away a 32 oz. PONTIUS PILATE IPA, among other selections. The opposer is a picturesque Pittsburgh restaurant located inside an old Catholic church building (with a microbrewery located where the altar used to be). The matter is pending, although reportedly the parties have been meeting to work out a settlement. Lawrenceville Brewery, Inc. v. Big Brother Holding Company LLC, Opposition No. 91230102 (Trademark Trial & App. Bd.).
COAST GUARD CITY Beer
In July, Michigan’s Grand Armory Brewing Company announced on Twitter and Facebook that it was selling cans of its Coast Guard City Pale Ale. Shortly after that, the Department of Homeland Security filed an opposition to Grand Armory’s pending trademark application for COAST GUARD CITY. The beer’s name derives from the fact that Grand Haven, home of the brewery, was the first “Coast Guard City, USA,” an honorary designation that the Coast Guard started conferring in 1998. However, the Department claimed that the registration would cause confusion with its registered marks, including UNITED STATES COAST GUARD 1790. Grand Armory didn’t respond to the opposition, and the application has been refused. Department of Homeland Security v. Armory Brewing Company, Opposition No. 86899300 (Trademark Trial & App. Bd.).
In 2015, Vintage Wine Estates acquired the Sonoma County-based B.R. COHN WINERY brand, which had been owned by father and son Bruce and Daniel Cohn. Daniel Cohn assisted with the transition to new ownership, but after that he started competing with B.R. Cohn by offering a DANIEL COHN Cabernet Sauvignon. Vintage filed a complaint in the Northern District of California, asserting trademark infringement and other counts, based on Daniel Cohn’s use of the COHN mark and the alleged false statement that the new wine was made in Sonoma (when in fact it is made in Healdsburg). The Court ordered mediation in August, and the parties stipulated to dismissal of all claims in October. Vintage Wine Estates, Inc. v. Cohn, Case No. 5:16-cv-00988 (N.D. Cal.).
In October, the Institut National de l’Origine filed oppositions to prevent Celeb LLC from registering the name and logo COGNAC QUARTS CARAMEL BLOND as a trademark for soaps and hair coloring, alleging that “COGNAC” is an appellation of origin referring specifically to the brandy made in the Cognac region of France. The Institut further alleged that the Celeb mark is therefore geographically deceptive and would dilute its COGNAC certification mark. The matter is pending. Institut National de l’Origine v. Celeb LLC, Case No. 91230697 (Trademark Trial & App. Bd.).
In 1995, the owner of the Columbus Brewing Company leased space in his Columbus Brewery District building to a new restaurant. As a condition of its lease, the restaurant adopted the name “Columbus Brewing Company Restaurant” and was required to buy a certain amount of beer from its brewery building-mate. By about 2007, the individuals who agreed to this arrangement were out of the picture, but the two business continued to co-exist under the same roof for nearly another decade. In 2015, when the Brewery made plans to move out of the building and open up its own food services operation elsewhere, it filed a complaint in the Southern District of Ohio, seeking to stop the Restaurant from continuing use of its similar name and logo. The Court agreed with the Restaurant’s argument that the Brewery had acquiesced to its use of the mark, but it found that this acquiescence was overcome by voluminous proof of actual confusion. The Court granted preliminary relief in April, and the restaurant is currently operating under the name “CBC Restaurant,” but the matter is still scheduled for trial in 2017. Dist. Brewing Co. v. CBC Rest., LLC, 2016 U.S. Dist. LEXIS 46539 (S.D. Ohio Apr. 6, 2016).
In February, Joaquin Lorenzo of Miami filed a putative class action lawsuit against MillerCoors for false advertising. Lorenzo alleged that Coors has advertised its beers over the years as “brewed with pure Rocky Mountain spring water” and that, even though this may have been the case at one point, the beer is now brewed at multiple locations. Nevertheless, the complaint alleges, MillerCoors falsely states or implies that Rocky Mountain water is still an ingredient through such taglines as “Proudly Brewed in our Rocky Mountain Tradition,” “What Would We Be Without Our Mountains?” and “Born in the Rockies.” MillerCoors removed the matter to the Southern District of Florida and moved to dismiss, arguing that the complaint failed to plausibly allege a deceptive statement. In September, the Court agreed and dismissed the action with leave to amend. Lorenzo has appealed. Lorenzo v. MillerCoors LLC , Case No. 1:16-cv-20851 (S.D. Fla. Sept. 22, 2016).
In August, GMYL, the company behind Francis Ford Coppola’s winery, filed a trademark infringement action in the Central District of California against Copa Di Vino, an Oregon company. GMYL alleged that Copa Di Vino’s “Copa” wine and packaging infringed GMYL’s COPPOLA mark for wine and its “Black Label Trade Dress,” including the same color combination on the label, a similar gold netting over the bottle, and similar depictions of golden grapes and grape vines. Copa Di Vino has answered and moved for judgment on the pleadings. According to Copa Di Vino’s motion, GMYL included in its complaint poor quality photographs of the respective goods. If the Court simply looks at the higher quality images included with Copa Di Vino’s motion, Copa Di Vino argues, it will see that many of GMYL’s allegations about the similarity of the marks are bunk. For example, the complaint alleged that both bottles use a vertical rectangular label, but the high quality images attached to the motion show that Copa Di Vino bears a label in the shape of wristwatch. Copa Di Vino also claims that, contrary to the allegations of the complaint, the Copa Di Vino bottle simply does not depict grapes. The matter is pending. GMYL L.P. v. Martin, Case No. 2:16-cv-06518 (C.D. Cal.).
GMYL also resolved a matter brought in the Northern District of California against Peter Coppola Beauty and its line of COPPOLA beauty products. Peter Coppola allegedly had taken to dropping the “Peter” and using the standalone COPPOLA mark for various products. GMYL alleged that this would cause confusion with the COPPOLA brand, which includes other luxury goods besides wine, such as soaps and personal care products. In May, Peter Coppola’s representative left a settlement conference with the Judge before it was over, but Peter Coppola’s counsel remained and purportedly had been given full settlement authority. A deal was reached that day, but it turned out that Peter Coppola’s counsel may not have had full settlement authority after all, and the company refused to sign the agreement. The Court ordered sanctions in the amount of a couple of thousand dollars for the wasted time. Nevertheless, the parties appear to have ultimately reached terms and the case was dismissed. GMYL L.P. v. Copomon Enterprises, LLC, Case No. 3:15-cv-03724 (N.D. Cal. Aug. 10, 2016).
In March, another case brought by GMYL ended in a stipulated injunction. GMYL alleged that Cinema Wines, a Spanish winemaker, was infringing its rights by using the name CINEMA (which GMYL has registered for wines) and a similar “wraparound label” (also registered) resembling a strip of 35mm film. The terms of the injunction prevent further importation of the Spanish wine into the United States. GMYL L.P. v. Cinema Wines, Case No. 7:15-cv-07023 (S.D.N.Y. 2016).
CRAFT BEER ATTORNEY
The Craft Beer Attorney, a boutique law firm, applied to register the mark CRAFT BEER ATTORNEY and was opposed by no less than ten competing law firms on various grounds, including the argument that CRAFT BEER ATTORNEY is a generic term for an attorney who provides services to craft beer makers. The proceedings have been consolidated and the matter is pending before the TTAB. The firm already owns the mark C.B.A. for legal services. The Craft Beer Attorney v. Martin, Frost & Hill, P.C. et al, Serial No. 86504533 (TTAB).
CROWN ROYAL & CROWN CLUB Whiskey
This long-running dispute is the only case to make every edition of our annual posting. Two years ago, a jury found that Mexcor, the maker of TEXAS CROWN CLUB (and other state-themed whiskey) had infringed Diageo’s CROWN ROYAL velvet drawstring bag trade dress, and awarded over four hundred thousand dollars in damages. The Court subsequently issued a permanent injunction. Mexcor appealed the denial of its motion for judgment as a matter of law and motion to amend the judgment. In September, the Fifth Circuit Court of Appeals affirmed the outcome, but held that the scope of the injunction was too broad, including because it forbade Mexcor from activities that even Diageo had conceded were not infringing, such as using an unlabeled drawstring bag depicting the Texas flag. Diageo North America, Inc. v. Mexcor, Inc., 2016 U.S. App. LEXIS 16297 (5th Cir. Sept. 2, 2016).
A New York wine distributor, which registered its CRUSH WINE CO. mark in 2006, brought suit in the District of Massachusetts against a New Bedford wine store and tasting bar, alleging that the defendant had recently adopted the infringing CRUSH FINE WINE mark and logo. Apparently, the New Bedford company originally agreed to change its name without legal intervention, but it wasn’t moving fast enough for the New York company’s tastes. The parties filed a stipulated permanent injunction in May, and the New Bedford company has changed its name and logo (the new name appears to be CRUSH NEW BEDFORD). 336 Liquor Store, Inc. v. Crush Wine Beverage Company, Case No. 1:16-cv-10093 (D. Mass.).
CRYSTAL HEAD & KAH Vodka
Comedy legend Dan Aykroyd’s CRYSTAL HEAD vodka comes in a skull-shaped glass bottle, while Elements Spirts sells KAH tequila in ceramic skull-shaped bottles. Back in 2010, Crystal Head began a long-running dispute with Elements in the Central District of California, in which it argued that two heads were not better than one and alleged that the skulls would be confused for one another. During closing arguments at trial in 2013, Elements’ counsel referred to a document not in evidence (which contained information about a Mexican trademark dispute), and implied that Crystal Head had hidden that document from the jury. The jury subsequently issued a verdict in favor of Elements, finding that there was no infringement. The District Court rejected Crystal Head’s argument that the verdict should be disregarded because of Elements’ counsel’s misconduct during closing arguments, but in February of this year the Ninth Circuit reversed in part and affirmed in part. The Ninth Circuit found that this was a “close case” on the merits with substantial evidence supporting the verdict. However, the Ninth Circuit also felt the that verdict was tainted by the misconduct. The parties are preparing for a new trial as of this writing. Globefill Inc. v. Elements Spirits, Inc., 640 Fed. Appx. 682 (9th Cir. 2016).
Since 1984, Sazerac has marketed DIESEL spirits, a pure grain clear alcohol also known as a “grain neutral spirit,” which comes in varieties up to 190 proof. This year, Sazerac opposed Boundary Oak Distillery’s application to register ARMORED DIESEL in connection with its “American Spirits Collection” of moonshine, specifically a Kentucky Amber honoring General George S. Patton. Shortly after Sazerac’s opposition was filed, Boundary Oak decided to withdraw its application and file a new one, this time for PATTON ARMORED DIESEL. It has not yet been opposed. Sazerac Brands LLC v. Hinton, Opposition No. 91230171 (Trademark Trial & App. Bd.).
DOMAINE DE LA ROMANÉE-CONTI
In 2011, 78 bottles of Domaine de la Romanée-Conti, valued at $736,500 and supplied by wine dealer Rudy Kurniawan, were withdrawn from auction after experts questioned their authenticity. These and other incidents led to an FBI investigation which, among other things, revealed email correspondence in which Kurniawan was allegedly making arrangements for another collector to ship to him empty bottles of Domaine de la Romanée-Conti (the same wine he later tried to sell at auction) after a particularly expensive dinner party. There was also evidence that Kurniawan had been acquiring other empty bottles and purchasing the glue, ink and paper necessary to make fake wine labels. On March 5, 2012, the FBI executed an arrest warrant for Kurniawan at his California home. During the arrest, an agent spotted a box of wine bottles in plain view just inside the front door, and subsequently obtained a search warrant. Kurniawan moved to suppress the fruits of the search on the grounds that no nexus between his home and his alleged illegal activity was shown. The Southern District of New York denied the motion, ruling that there was sufficient probable cause for the warrant even without the plain view evidence (for example, the aforementioned empty wine bottles were shipped to his home). Kurniawan was convicted and sentenced to 120 months imprisonment. Late last year, the Second Circuit Court of Appeals affirmed. United States v. Kurniawan, 627 Fed. Appx. 24 (2d Cir. 2015).
DON’T WORRY. DRINK NAKED
The TTAB affirmed the refusal to register DRINK IT NAKED for tequila, on the grounds that it was too similar to Diageo’s registered DON’T WORRY, DRINK NAKED mark for distilled spirits, which Diageo uses in conjunction with THE NAKED TURTLE white rum. The applicant argued that, in contrast to the registered mark, DRINK IT NAKED referred not to nudity but to a lack of added ingredients. The TTAB rejected this argument, reasoning that “while the phrase ‘drink naked’ may suggest an image of someone consuming an alcoholic beverage unclothed, we see no reason why the phrase ‘drink it naked’ could not also evoke such an image.” In re Castaneda & Anderson, 2016 TTAB LEXIS 13 (Trademark Trial & App. Bd. Jan. 13, 2016)
DOUBLE BARRELED Bourbon
Last year, Prichard’s Distillery of Nashville picked a fight with the Sazerac Company over Sazerac’s “A. Smith Bowman Limited Edition Double Barrel Bourbon Whiskey,” which Prichard’s claimed was likely to be confused with its BENJAMIN PRICHARD’S DOUBLE BARRELED BOURBON and DOUBLE BARRELED marks for bourbon. Sazerac counterclaimed to cancel Prichard’s mark and for a declaratory judgment that the term “Double Barreled” is a generic description of the bourbon production process. In March, the Court granted Sazerac leave to amend its counterclaims to allege that at least one of the registered marks was void ab initio because it was defectively registered by an individual who never used or intended to use the mark in an individual capacity before assigning it to the plaintiff. The parties’ cross-motions for summary judgment are pending. Prichard’s Distillery, Inc. v. Sazerac Co., 2016 U.S. Dist. LEXIS 42304 (M.D. Tenn. Mar. 30, 2016).
DRAMBUIE, manufactured by the Glenfiddich Distillery in Dufftown, Scotland, traces its origins back to about 1746, when the fugitive Bonnie Prince Charlie supposedly gave clan chief John MacKinnon the secret recipe to his favorite liqueur as a thank you gift for helping him escape from the Isle of Skye. The name derives from the Gaelic “an dram buidheach,” for “a drink that satisfies.” In January 2016, Glenfiddich sent a cease and desist letter to the Australian man who had registered . The registrant demanded £300 to transfer the domain, then he quickly registered and demanded a total of £600 to transfer both domains. After Glenfiddich offered to pay only the registrant’s out of pocket costs (about £6), the registrant registered a third domain, and offered to transfer that too for a fee. Glenfiddich filed a UDRP complaint and the arbitration panel found that the request for payment and the registration of domains after the demand letter made it “abundantly clear” that the respondent was acting in bad faith. The panel ordered that the domains be transferred. William Grant & Sons v. Jackson, 2016 UDRP LEXIS 148 (WIPO March 24, 2016).
DUE SOUTH BREWING
DUE SOUTH BREWING sought to register its name in standard characters for “bar services.” DUE SOUTH BREWING was able to register the same mark for beer earlier this year, but the “bar services” mark was refused on the grounds that it too closely resembled Virginia’s DUE SOUTH PIT COOKED BBQ pig logo design mark for restaurant services. DUE SOUTH BREWING argued that there was little likelihood of confusion because it didn’t sell food and the BBQ restaurant didn’t serve alcohol. However, a majority of the TTAB panel determined that bar and restaurant services were related, and that evidence of what the two business were actually selling was irrelevant because the registration and application were not similarly limited. DUE SOUTH BREWING further argued that the most distinctive portion of the registrant’s mark was the pig, but the majority held that since the pig logo was descriptive (of a restaurant serving pork), the only distinct element of either mark were the identical words, “DUE SOUTH,” and thus consumers were likely to see the respective services as emanating from the same source. The refusal to register was affirmed, but a dissenting TTAB panel member pointed out that the marks were not similar when viewed in their entireties, particularly as one was a the name of a brewery in standard characters and the other was, you know, a great big pig. In re Due South Brewing Co., Serial No. 86183992 (Trademark Trial & App. Bd. Nov. 23, 2016).
DUO Wine and Beer
Uinta Brewing Company’s application to register DUO for beer was rejected on the grounds that it too closely resembled Franciscan Vineyards’ DUO mark for wine. The TTAB affirmed, noting the identical nature of the marks and similarity of the goods. In re Uinta Brewing Company, Serial No. 86333439 (Trademark Trial & App. Bd. June 29, 2016).
EL TORO and TORO ALTENO Tequila
Productos Finos De Agave of Mexico owns the mark TORO ALTENO (or “HEIGHTS BULL”) for tequila, registration for which was issued in 2009. Last year, Sazerac petitioned to cancel the mark, arguing that it is confusingly similar to its own EL TORO mark for tequila, which has been registered since 1960. The matter is now pending before the TTAB, and the docket indicates that the parties have been engaged in prolonged settlement discussions. Sazerac North America, Inc. v. Productos Finos De Agave, S.A. DE C.V., Cancellation No. 92061331 (Trademark Trial & App. Bd.).
The Empire State Building
Michael Liang sought to register a logo for NYC BEER featuring an architectural silhouette resembling the Empire State Building. The company that owns and operates the actual Empire State Building opposed the registration on the grounds that it would cause dilution by blurring of its registered design marks in the exterior of the structure. The TTAB affirmed the refusal to register the mark, determining that the design of the building was indeed famous and that Liang’s use was likely to cause dilution. ESRT Empire State Bldg., L.L.C. v. Liang, 2016 TTAB LEXIS 270 (Trademark Trial & App. Bd. June 17, 2016)
In May, the Salvatore Ferragamo company filed a trademark infringement action in the Southern District of New York against former NFL quarterback Vince Ferragamo, who opened up the Ferragamo Winery in about 2010. The fashion company takes issue with the winery’s prominent use of the same name, especially since the fashion company actually owns the mark FERRAGAMO for wines, which it registered in 2006. A pre-motion letter filed by the winery’s attorneys alleged that, although the fashion company may have registered the mark for wine, it has never sold wine in the United States and has not demonstrated an intent to do so. The letter also argued that there was no personal jurisdiction in New York because the only sale made by the defendant into the jurisdiction was to the plaintiff, who allegedly purchased a bottle just to set up the lawsuit. The docket indicates that the parties were engaged in settlement discussions as of August, but there has been no activity since then. Ferragamo S.p.A. v. Ferragamo, Case No. 1:16-cv-03313 (S.D.N.Y.).
FIREMAN and FIREMAN’S Beer
The most popular beer made by Real Ale Brewing of Texas is its FIREMANS #4, named after the bicycle company with which Real Ale co-sponsors promotional races. Real Ale has sold the beer since 2002, but in June of this year it learned that a brewery in California had been selling beer under the FIREMAN’S BREW mark since 2004, and was starting to make inroads into Texas markets. In fact, the makers of FIREMAN’S BREW are real former Los Angeles fire fighters and the only brewery licensed to display the logo of the National Fallen Firefighters Foundation. However, the Texas brewery apparently had priority rights and, when it filed a trademark infringement complaint to stop the sale of FIREMAN’S BREW in Texas, the California brewery didn’t put up much of a fight. In November, the parties filed a consent judgment and stipulated injunction barring the California brewery from the continued sale of FIREMAN’S BREW in the Lone Star state. Humulus Lupulus Enterprises, Inc. v. Fireman’s Brew, Inc., Case No. 1:16-cv-00963 (W.D. Tex.).
FOLINO and FOLIN Wines
The Folino Estate winery applied to register its name and logo for wine, wedding and catering services. The application was refused on the ground of likely confusion with the registered mark for FOLIN CELLARS, an Oregon winery. The TTAB reversed, holding that the designs were distinct, and that although the words “Folino” and “Folin” were similar, the former projects an “Italian look and sound” which the latter lacks. In re Folino Estate, LLC, 2016 TTAB LEXIS 461 (Trademark Trial & App. Bd. Aug. 19, 2016)
FOSTER’S, Australian For Beer
Last December, Leif Nelson filed a Flputative class action in the Eastern District of New York against MillerCoors, asserting false advertising claims in connection with FOSTER’S Beer. William and Ralph Foster allegedly began brewing the beverage in Australia in 1887, and it was first imported into the United Stated in those iconic 25.4 ounce cans in 1972. Since 2011, the FOSTER’S beer on the U.S. market has been brewed at a MillerCoors facility in Fort Worth, Texas, but the complaint alleges that the company nevertheless deceptively continues to market the product as if it were imported, including by using slogans such as “Australian for Beer” and by depicting Australian national symbols on the can (like the kangaroo and the Southern Cross constellation from the nation’s flag). The parties are currently engaged in discovery, and MillerCoors’ motion to dismiss is pending. Nelson v. MillerCoors LLC, Case No. 1:15-cv-07082 (E.D.N.Y.).
G Wiliquors of North Dakota applied to register GEE WILLIQUORS for retail liquor services. G-Will Liquors, a chain of liquor stores in Minnesota, opposed the application, claiming priority common law rights and likelihood of confusion. The TTAB found that the Minnesota chain did have priority dating back to 1982, and rejected the North Dakota store’s argument that its mark is pronounced as a cluster (i.e., “geewilliquors”) whereas the Minnesota mark is pronounced with pauses (i.e., “g-will-liquors), thus creating a different commercial impression. The refusal to register was affirmed. The refusal to register was affirmed. WCR Liquors, Inc. v. Gee Williquors, Inc., 2016 TTAB LEXIS 77 (Trademark Trial & App. Bd. Feb. 24, 2016). A few months after the refusal, G-Will Liquors filed a trademark infringement action in the District of Minnesota against the North Dakota store. That matter is pending. WCR Liquors, Inc. v. Gee Williquors, Inc., Case No. 0:16-cv-02536 (D. Minn.).
In addition to its successful bid to protect the DRAMBUIE trademark against cyber-squatters, the Glenfiddich Distillery had two more easy UDRP wins this year. In one case, the distillery was able to secure transfer of from a Canadian man who had also registered several other liquor names as .club domains. The fact that the registrant had resolved these domains to pay-per-click sites served as evidence that he was a domain name speculator without a legitimate interest in the marks. William Grant & Sons Limited v. Chandler, 2016 UDRP LEXIS 222 (WIPO April 17, 2016). In another UDRP proceeding, the arbitrator ordered the transfer of and also . William Grant & Sons Limited v. Sri, 2016 UDRP LEXIS 766 (WIPO July 14, 2016).
GOLDEN BEAST Cognac
The litigious Monster Energy Company opposed the Sazerac Company’s application to register THE GOLDEN BEAST for cognac-based alcoholic beverages, alleging that it is likely to be confused with Monster’s various UNLEASH THE BEAST marks. The matter is pending. Monster Energy Company v. Sazerac Company, Opposition No. 91230307 (Trademark Trial & App. Bd.).
GOOSE GREEN Vodka
Bacardi, maker of Grey Goose vodka, opposed an application to register the GOOSE GREEN mark for vodka, filed by In the Spirits Global Group. The applicant’s mark was presumably a reference to a battle during the Falklands war, but that theory was never tested because the parties settled the matter in August, and the application was withdrawn. Bacardi & Company Limited v. In the Spirits Global Group, Opposition No. 91227409 (Trademark Trial & App. Bd.).
Thacher Winery of Paso Robles, California alleges that it has been using its grasshopper logo in connection with wine since 2004, and that it registered its name/logo combination in 2008. In March, Thacher brought a trademark infringement action in the Central District of California against Field Recordings Winery, also of Paso Robles, that had been using a grasshopper on its label as a source identifying mark since only 2013. The parties settled the matter relatively quickly, and the case has been dismissed. Thacher Winery and Vineyard Inc. v. Sans Liege Inc., Case No. 2:16-cv-01959 (C.D. Cal.).
In January, the ORIGINAL GRAVITY Brewing Company of Milan, Michigan filed a trademark infringement action in the Eastern District of Michigan against the FINAL GRAVITY Brewing Company of Decatur, Michigan. ORIGINAL GRAVITY alleged that FINAL GRAVITY had initially been called “Decatur Tastings” but had recently rebranded itself, causing actual confusion among consumers at beer festivals. Days after the complaint was filed, it was reported in the local press that the owners of the two companies had a “great conversation” which resulted in dismissal of the lawsuit. The actual terms of the settlement are not available, except that the plaintiff’s owner announced that “everyone’s going to be happy.” Last time we checked, both parties have retained their Newtonian nomenclature. Original Gravity Brewing Company, L.L.C. v. Decatur Tastings LLC, Case No. 2:16-cv-10047 (E.D. Mich.).
721 Bourbon Inc. owns several French Quarter establishments in New Orleans, including the Tropical Isle restaurant, which advertises itself as the “home of the HAND GRENADE,” a powerful melon-flavored drink with an otherwise secret recipe, served in a grenade-shaped cup. The cup itself is a registered trade dress owned by 721 Bourbon (as are the word marks GRENADE and HAND GRENADE). In June, 721 Bourbon filed suit in the Eastern District of North Carolina against “Bourbon Street Wilmington,” a French Quarter-style restaurant in North Carolina. The owners of Bourbon Street Wilmington allegedly purchased large quantities of 721 Bourbon’s iconic souvenir yard cups and drink mix from its online store, and then used them to sell “counterfeit cocktails falsely designated as” HAND GRENADES. 721 Bourbon asserts that this is not only trademark infringement, but a violation of the terms of sale that come with products purchased from the online store. The matter is pending. 721 Bourbon, Inc. v. Bourbon Street LLC, Case No. 7:16-cv-141 (E.D.N.C.).
Cheers Wine & Spirits of Rochester, Michigan owns a bunch of trademark registrations for its Halloween wine series, including HAUNTED, HAUNTED GHOSTLY WHITE WINE, HAUNTED BLOOD RED WINE and HAUNTED UNDEAD RED. Last December, Cheers brought a trademark infringement action against the Lucky Girl Brewing Company of Grand Junction, alleging that Lucky Girl was improperly using the HAUNTED mark for beer. The complaint, which referenced only the HAUNTED word mark, did not explain why the two products appeared to be using not just similar but exactly the same imagery in their respective packaging. Lucky Girl’s answer and third party complaint provided a clue. It turns out that the two parties used to have the same owner, who may have hired the same designer for both products. In March, the case was dismissed, presumably after a settlement was reached. Cheers Wine & Spirits v. Lucky Girl Brewing, Case No. 2:15-cv-14342 (E.D. Mich.).
HAVANA CLUB Rum
This dispute, which has been going on so long it has now outlived Fidel Castro, is virtually impossible to summarize in a paragraph, but here goes a try. In 1960, the Cuban government seized (at gunpoint) the assets of the Jose Arechabala company, the owner of the HAVANA CLUB mark for rum. Cuba assigned the seized assets to a state-owned enterprise called CubaExport, which registered the mark with the USPTO in 1973. In 1994, Bacardi (successor to the Jose Arechabala company) filed an application to register HAVANA CLUB for rum (that application is still pending!), and in 1995 petitioned to cancel CubaExport’s registration. In 2004, after a zillion suspensions and extensions, the TTAB held that Bacardi had not shown that the CubaExport registration was obtained by fraud, and therefore the Cuban company’s registration would not be canceled. Bacardi responded later that year by filing a civil action in the District of Columbia, arguing that the TTAB’s decision should be reversed because the U.S. government should not recognize the confiscatory acts of the Cuban government. In 2006, while the federal case was pending, the U.S. Treasury Department withdrew the license that would allow the Cuban company to legally pay its registration renewal fee to the USPTO, and the mark was subsequently canceled for lack of payment. Both CubaExport’s request for a review of that USPTO decision and the federal court proceedings were stayed again and again for nearly seven years until this January, when the Treasury Department issued a new license and the TTAB reinstated CubaExport’s registration. This caused Bacardi to reignite the federal court action by filing an amended complaint. In April, CubaExport (now backed by Pernod Ricard) filed motions to dismiss and for summary judgment, which are pending. Bacardi & Company Limited v. Empresa Cubana Exportadora de Alimentos y Productos Varios, Case No. 1:04-cv-00519 (D.D.C.).
HERITAGE, PRIDE & STRENGTH Beer
In June, the Lumbee Tribe of North Carolina (present-day descendants of the Cheraw Tribe) filed a trademark infringement complaint against Anheuser-Busch, claiming that the company had created in-store advertisements using the Tribe’s HERITAGE, PRIDE & STRENGTH mark, as well as the Lumbee Tribe logo. The Tribe alleged that this use was creating confusion as to whether the Tribe is affiliated with the beer (it is not), and further alleged that this false affiliation is particularly offensive because “alcohol abuse is often associated with Native American culture.” Anheuser-Busch put a quick stop to this PR nightmare by securing a settlement that the Tribe reported involved a “sizable donation,” and the matter has been dismissed. Lumbee Tribe of North Carolina v. Anheuser-Busch, LLC, Case No. 7:16-cv-00148 (E.D.N.C.).
HOMMAGE and HOMAGE Wine
Solene, Inc. filed an application to register HOMMAGE À NOS PAIRS, the translation of which is “homage to our mentors,” in standard characters for wine. A trademark examiner refused the application in light of the registered mark for HOMAGE, the flagship Syrah of New Zealand’s Trinity Hill Vineyard. The TTAB affirmed, noting that the goods were identical and the marks were both dominated by similar words with the same meaning. In re Solene, Inc., 2016 TTAB LEXIS 517 (Trademark Trial & App. Bd. Oct. 5, 2016).
A trademark examiner refused the application by California company Homebrewer LLC to register HOME BREWING CO. for beer on the ground that it is merely descriptive. On appeal to the TTAB, Homebrewer argued that “Home” is suggestive of comfort and community, not descriptive of goods sold from retail locations. However, the TTAB disagreed, finding that the term “Home” was descriptive because it informed prospective purchasers that the target consumers for the goods are “home brewing” enthusiasts seeking a specific taste for their beer. In re Homebrewer, LLC, 2016 TTAB LEXIS 343 (Trademark Trial & App. Bd. July 19, 2016).
The Prescott Brewing Company of Arizona brought trademark infringement claims against its intrastate rival, the Arizona Hometown Brewing Company. Prescott alleged that it had been using the tagline PRESCOTT’S HOMETOWN BREWERY for twenty years before the defendant adopted the name “Hometown Brewing Company” for a new business a mere five minute walk away. The matter has been voluntarily dismissed, and the defendant has abandoned a related trademark application. Prescott Brewing Company v. Hometown Brewing Company, Case No. 3:16-cv-08156-GMS (D. Ariz.).
HOPNOTIC Beer and HPNOTIQ Liqueur
Heaven Hill Distilleries, owner of the HPNOTIQ mark registered in 2002 for a cognac and vodka blend liqueur, petitioned to cancel the HOPNOTIC mark for a beer sold by the Cricket Hill Brewery since 2004. The TTAB agreed with Heaven Hill that there was a likelihood of confusion, owing to the similar channels of trade, the penchant of beverage makers to expand into other beverage categories, and a study showing that Heaven Hill customers also consume beer. The TTAB also rejected Cricket Hill’s argument that HPNOTIQ was weak because it was merely descriptive of the intoxicating nature of the product: “Although being intoxicated can result in a person becoming sleepy (or even passing out!), it goes well beyond mental gymnastics to view ‘hypnotic’ for an alcoholic beverage as suggesting that the product will intoxicate.” Although the TTAB did not consider the HPNOTIQ mark to be famous, it did make note of Heaven Hill’s evidence of HPNOTIQ celebrity endorsements and product placement of the brand in over 150 songs (!). As to the unique spelling of the HPNOTIQ mark, the TTAB found that this did not distinguish the two marks because “many consumers will not even recognize that there is no consonant between the ‘H’ and the ‘P’ . . . or remember that [it] substitutes a ‘Q’ for the ‘C’.” The petition for cancellation of the HOPNOTIC mark was granted. Heaven Hill Distilleries, Inc. v. Cricket Hill Brewing Co., Inc., Cancellation No. 92060811 (Trademark Trial & App. Bd. Sept. 23, 2016).
IL CARNEVALE DI VENEZIA Wine
Taverna Imports brought suit in the Southern District of Florida against fellow Miami company A&M Wine & Spirits with respect to the mark IL CARNEVALE DI VENEZIA, which it claims to have been using since 2004. Plaintiff alleged that A&M came into existence only in 2008, and that therefore A&M and its owner, Mario Taverna, committed fraud when they told the USPTO that they had been using the mark since 2001. The fact that both parties share the name “Taverna” suggests a more complicated backstory and, sure enough, in January Mario Taverna moved to dismiss on the grounds that only he had standing to sue on behalf of Taverna Imports, and he didn’t feel like suing himself just now. Apparently, the dispute has arisen in connection with a struggle among members or ex-members of Taverna Import’s board of directors. The Court ordered the parties to mediate their dispute by this December. Taverna Imports, Inc. v. A&M Wine & Spirits, Inc., Case No. 1:15-cv-24198 (S.D. Fla.).
Northbound Smokehouse, a Minneapolis restaurant with an onsite craft brewery, has brought suit against the Inbound Brew Co., located about 5 miles down the highway, alleging that Northbound – not Inbound – is the priority user of the INBOUND mark for beer. Northbound’s evidence of actual confusion includes a Twitter conversation between two customers who arranged to meet at Northbound for a drink, but one went to Inbound by mistake. Inbound commented on the tweet: “first world brewery problems.” Inbound’s counterclaim alleges that it has actually been using the mark for several months longer than Northbound, as evidenced by a Minnesota state trademark filing. The matter is pending. Smokehouse Brewpub LLC v. Lucid Brewing LLC, Case No. 0:16-cv-02871 (D. Minn.).
IRIS NEBULA Wine
A trademark examiner refused registration of Mount Felix vintners’ IRIS NEBULA mark for wine due to a likelihood of confusion with Nexus Brand’s NEBULA organic blend of Syrah and Merlot. Mount Felix’s IRIS NEBULA name is meant to refer to the symbolic connection between Iris, the Greek Goddess of rainbows after whom the celestial body was named, and the water and light used to grow grapes. Mount Felix thus argued that the marks gave different commercial impressions, because IRIS NEBULA referred not to nebulas in general but to the specific type of nebula and its cultural connotations. However, the TTAB affirmed the refusal because the identical word “Nebula” was the dominant element of each word mark. The TTAB also dismissed Mount Felix’s argument that many of its consumers were sophisticated connoisseurs who would know the difference between the brands; the TTAB held that it must decide the matter based on the likely experience of the less discriminating off-the-shelf consumers. In re Mount Felix Holdings, 2016 TTAB LEXIS 415 (Trademark Trial & App. Bd. Aug. 23, 2016)
IT’S MILLER TIME
A California television production company applied to register IT’S MILLER TIME WITH GARRETT MILLER, for use in connection with a television series featuring musician Garrett Miller. MillerCoors opposed the registration on the ground that it would damage its rights in the IT’S MILLER TIME tagline that once dominated the beer brands’ advertising. The production company failed to answer the opposition petition, and the TTAB issued a default judgment, refusing the registration. MillerCoors LLC v. Eyes Wide Entertainment, Opposition No. 91225425 (Trademark Trial & App. Bd.).
JOHNNY LOVE Vodka
In the early 2000’s, bartender Johnny “Love” Metheny developed a line of flavored vodkas, called JOHNNY LOVE VODKA, each bottle bearing a pair of puckered lips colored to signify the flavor of the vodka inside. In 2010, Jim Beam entered the flavored vodka business with its PUCKER line, whose labels also featured pairs of lips of various colors, depending on the flavor. In 2011, JL Beverage, owner of the JOHNNY LOVE VODKA mark, filed a trademark infringement suit in the District of Nevada and moved for a preliminary injunction against Jim Beam. The Court refused to grant the injunction and later granted summary judgment for Jim Beam. On appeal this July, the Ninth Circuit reversed and remanded. The District Court used the wrong standard in granting summary judgment, holding JL Beverage to the same burden it had at the preliminary injunction stage. Additionally, the District Court erred in concluding that there was no genuine dispute as to three likelihood of confusion factors: the strength of the lip-shaped marks in the alcoholic beverages field, the similarity of the marks, and intent. The Ninth Circuit agreed with the District Court only on one factor: actual confusion. JL Beverage had submitted evidence of voicemails supposedly evidencing actual consumer confusion, but the Ninth Circuit agreed with the District Court that these voicemails, which included phrases such as “hey babes,” “dude” and “call me back hun,” appeared to have come from friends of JL Beverage employees, not from ordinary consumers. JL Bev. Co., LLC v. Jim Beam Brands Co., 828 F. 3d 1098 (9th Cir. 2016).
Phusion Products makes a line of fruity alcoholic beverages called FOUR LOKO, sold in packaging with a pronounced camouflage trade dress (and reportedly unofficially nicknamed “blackout in a can” on some college campuses). When Phusion found out that its rival, United Brands, was preparing to use a similar camouflage trade dress for its competing JOOSE product line, Phusion filed a trademark infringement action in the Northern District of Illinois. United Brands filed a motion to dismiss, arguing that it had never used the accused trade dress in commerce – apparently, it was just an internal marketing prototype that Phusion had obtained from an “unknown source.” Phusion voluntarily dismissed the suit this July. Phusion Products LLC v. United Brands Co., Case No. 1:16-cv-04131 (N.D. Ill.).
JUSTICE Vodka and Wine
In January, Vinolio Exports moved to cancel a recent registration for JUSTICE VODKA. Vinolio alleges that the mark is likely to cause confusion with its JUSTICE line of red wines, which include BLIND JUSTICE, POETIC JUSTICE and FRONTIER JUSTICE. This November, the parties came to mutually satisfactory settlement and the opposition was dismissed. Vinolio Exports and Imports v. Justice Beverages LLC, Opposition 92063027 (Trademark Trial & App. Bd.).
KENTUCKY MIST MOONSHINE
When the Kentucky Mist Moonshine distillery applied to register KENTUCKY MIST MOONSHINE for t-shirts and hats, the University of Kentucky, which owns the KENTUCKY registered mark for a range of goods, sent a cease and desist letter insisting that the distillery drop its pending application. The distillery responded with a declaratory judgment action in Kentucky state court. The University removed the matter to the Eastern District of Kentucky and filed a motion to dismiss. The Court dismissed the complaint, holding that the University enjoyed state sovereign immunity which had not been waived by removing the action to federal court. The Court also held that the distillery did not have standing to bring a declaratory judgment action because, although the University’s early letters may have been interpreted as threatening a lawsuit, the University later clarified that the distillery’s actual current use of the KENTUCKY MIST MOONSHINE mark (to sell moonshine) was not objectionable. Although this clarification came after the state court action was filed, it came before the matter was removed, which the Court held was the appropriate time to consider subject matter jurisdiction. The Court denied the distillery’s request to amend its complaint. Kentucky Mist Moonshine, Inc. v. University of Kentucky, 2016 U.S. Dist. LEXIS 81616 (E.D. Ky. June 23, 2016). The University has also opposed the distillery’s USPTO application, and that opposition is pending. University of Kentucky v. Kentucky Mist Moonshine, Inc., Opposition No. 91225884 (Trademark Trial & App.). The distillery, bloodied but unbowed, is selling snarky “NOBODY OWNS KENTUCKY” t-shirts through its online store.
LA GRAN SEÑORA Tequila
Before her death in 2012, singer Jenni Rivera, whose albums included “La Gran Señora” (“The Great Lady”), had apparently been planning her own brand of tequila, called LA GRAN SEÑORA. She had even applied for (and then abandoned) a USPTO application in 2011. In 2013, after her death, LA GRAN SEÑORA tequila was introduced to the market by her company, Jenni Rivera Enterprise. In the interim, however, Tequila Supremo of Mexico had applied for and registered the LA GRAN SEÑORA mark in the U.S. In 2016, Jenni Rivera Enterprises petitioned to cancel the Tequila Supremo registration. Tequila Supremo answered the petition with several arguments, including standing (Tequila Supremo claimed that the corporate entity “Jenni Rivera Enterprises” had been dissolved) and priority (Tequila Supremo’s application was already on file by the time Jenni Rivera Enterprises sold its first bottle). Jenni Rivera Enterprises attempted to withdraw its petition without prejudice. However, because the withdrawal was made unilaterally without Tequila Supremo’s consent, in violation of Trademark Rule 2.114(c), the TTAB dismissed the petition with prejudice. Jenni Rivera Enterprises, Inc. v. Tequila Supremo, Cancellation No. 92063115 (Trademark Trial & App. Bd.).
LAKE FRONT Beer
Late last year, Lakefront Brewery of Milwaukee brought a trademark infringement action in the Northern District of Ohio against Lake Front Brewing. The plaintiff alleged that, whereas it has been using the LAKEFRONT mark since 1987, the defendant had been using the similar LAKE FRONT mark only since 2015. The case settled quickly, and Lake Front has changed its name to GENEVA ON THE LAKE BREWING CO. Lakefront Brewery, Inc. v. Lake Front Brewing II LLC, Case No. 1:15-cv-02119-PAG (N.D. Ohio).
LAVINIA & LAVINEA Wine
The Kore Wine Company of Oregon was unable to register its LAVINEA trademark for wine because the LAVINIA mark had already been registered back in 2002 by Lavinia Seleccion, a Spanish liquor store, which had avowed its bona fide intent to use the mark in connection with wine and other alcoholic beverage products. Kore didn’t give up so easily, though, and did some internet snooping, after which it brought a cancellation action. Kore alleged that LAVINIA offers liquor retail services under the LAVINIA mark, but it doesn’t actually offer any LAVINIA-branded products, and it doesn’t appear to have ever had a bona fide intent to do so. What’s more, none of the LAVINIA stores are located in the U.S. Finally, Kore alleged fraud in connection with LAVINIA’s 2009 Statement of Use, the specimen for which did not contain any LAVINIA-branded products (it contained two photographs, one of a LAVINIA bag and another depicting someone else’s wine bottle sitting next to a box marked “Lavinia”). After a few months of negotiation, LAVINIA surrendered the trademark registration (it still owns the LAVINIA service mark for liquor retail services). Kore Wine Company v. Lavinia Seleccion, Cancellation No. 92062168 (Trademark Trial & App. Bd.).
LAZY MUTT Ale
Texas-based Braman Brands’ application to register MUTT for beer was refused because of its likelihood to cause confusion with Minhas Brewery’s LAZY MUTT mark for beer. The TTAB affirmed, noting that “Mutt” was the dominant element of each mark, and holding that that the applicant’s attempts to draw distinctions between different types of ale were irrelevant where no such distinctions were made in the application, which sought registration in the broad category of “beer.” Braman is still selling a dog-themed beer, but this one is called “Running Walker,” about as far from “lazy” as possible. In re JWB Wine LLC, Serial No. 86163390 (Trademark Trial & App. Bd. Feb. 24, 2016).
LEHMAN BROTHERS Whiskey
In the wake of the disastrous collapse of Lehman Brothers investment bank, James Green of London announced a LEHMAN BROTHERS whiskey. According to Green and the Lehman Brothers Whiskey website, there are currently three products in the LEHMAN BROTHERS line. SNAPFIRE, a whiskey that “almost offends the palate,” is “dry on the tongue” like “a trader’s mouth as he watches the ticker plummet.” ASHES OF DISASTER is a scotch with a “wicked suggestion of burning banknotes” that is “tempered with humility to demonstrate the lack of activity that followed the devastation.” Finally EVERGREEN has a bouquet of “grass freshly cut from perfectly manicured Long Island mansion lawns” and a finish that is “smooth and well rounded, redolent with the fruits of speculation.” Barclays Capital, which has acquired the Lehman Brothers intellectual property assets, has opposed several of Green’s applications to register LEHMAN BROTHERS for spirits, beer and restaurant services. Barclays claims that it is continuing to use the LEHMAN BROTHERS mark as a trade name for financial services, and that consumers will be confused as to the source of the whiskey. The matter is pending. Barclay’s Capital Inc. v. Tiger Lilly Ventures, Opposition No. 86081143 (Trademark Trial & App. Bd.).
When the founder of the Side Project Brewery in St. Louis was preparing to open for business, he allegedly told one of the owners of the neighboring Modern Brewery about his new project and the light bulb-shaped logo he planned to use. On the same day that Side Project sent its first light bulb-themed tweet, Modern registered the name “Side Project Brewing and Brewery” with the Missouri Secretary of State, and shortly thereafter announced its own new light bulb-shaped logo. After some demand letters failed to lead to a resolution, Side Project filed a trademark infringement action in the Eastern District of Missouri. I’m guessing there is an unpled backstory here that might shed some light (get it?) on what happened, but we may never know because the case has been referred to mediation to take place by early 2017. Fermented Projects, LLC v. The Modern Brewery, Inc., Case No. 4:16-cv-01163 (E.D. Mo.).
LOUIS XIII Cognac
Late last year, Remy Martin sent a letter to the Chinese registrant of , demanding transfer of the domain. “Luyishisan” is a phonetic spelling and Roman character transliteration of 路易十三, which is Chinese for Louis XIII, one of Remy Martin’s cognac brands. The registrant responded to the letter with: “say Chinese, no englsih [sic].” When Remy Martin provided the requested Chinese translation, the registrant promptly transferred the domain to another Chinese owner (which may have just been an alias), who did not respond to Remy Martin at all and then transferred the domain to a third owner. Remy Martin initiated a UDRP domain name dispute, and the arbitrator found that the multiple transfers “smack[ed] strongly of a case of cyberflight,” which was evidence of bad faith. The domain was ordered transferred to Remy Martin. E. Remy Martin & Co. v. Zhang, 2016 UDRP LEXIS 113 (WIPO March 18, 2016).
In a similar proceeding, the Chinese registrant of informed the WIPO panel that it was an authorized subsidiary of Remy Martin, so the whole thing was a big misunderstanding and there was no need to take away the domain. Since Remy Martin was denying that this was the case, and there was no other evidence supporting the registrant’s assertion, the panel ordered transfer of the domain. E. Remy Martin & Co. v. Zhang, 2016 UDRP LEXIS 185 (WIPO April 6, 2016).
Another Chinese registrant created ten different domains relating to LOUIS XIII, including , www.louisxiiicognac.vip and . The registrant’s response to Remy Martin’s UDRP complaint focused on the domain, which it claimed to have established in order to create a website about the historical king, and which indeed was resolving to a third party history website at the time of the UDRP proceeding. However, the WIPO panel rejected this argument because, even though “in other circumstances, a historical website devoted to a historical figure may give rise to some rights and legitimate interests, in this case where the Respondent has registered another nine disputed domain names which clearly are intended to refer to the Complainant . . . the Panel is not prepared to find that the Respondent has rights or legitimate interests in the dispute domain name.” The panel ordered that all ten domains be transferred to Remy Martin. E. Remy Martin & Co. v. Lan, 2016 UDRP LEXIS 1166 (WIPO Sept. 30, 2016).
Finally, a UDRP arbitrator also ordered transfer of (which translates to www.louisxiii.com). E. Remy Martin & Co. v. 游丹, 2016 UDRP LEXIS 260 (WIPO April 10, 2016). Finally, Several
Former New York Yankee and Louisiana native Ron Guidry was nicknamed the “Louisiana Lightning” by sports broadcaster Phil Rizzutto, on account of Guidry throwing a team record 18 strikeouts against the California Angels on June 17, 1978. In 2008, Guidry registered the LOUISIANA LIGHTNING mark for product endorsements. In 2013, Louisiana Lighting LLC (also located in the Pelican State) applied to register the same word mark for whiskey. Guidry opposed the registration and also filed suit for trademark infringement in the Eastern District of Louisiana, alleging that his reputation has been tarnished by being associated with the distribution of whiskey. The complaint also included a cybersquatting claim, on account of the whiskey maker’s 2012 registration of the domain. The Court denied the whiskey maker’s motion to strike the cybersquatting claim as time barred because the one year limitations period for cybersquatting claims does not begin to run until the alleged violation stops. The Court also denied a motion to strike Guidry’s allegations about how famous he was, rejecting the whiskey maker’s argument that Guidry’s personal fame was irrelevant to the fame of his LOUISIANA LIGHTNING mark. The matter is pending. Guidry v. Louisiana Lighting, LLC, 2016 U.S. Dist. LEXIS 72738 (E.D. La. June 2, 2016).
MÉNAGE À TROIS Wine and Beer
On November 28, 2016, the Shmaltz Brewing Company got hit a with a trademark complaint filed by the Sutter Home Winery in the Northern District of California. Sutter owns the MÉNAGE À TROIS mark for a series of wines, including the MENAGE A TROIS Gold, which Sutter says is “made from not one gorgeous grape, but three – oh my.” Sutter’s complaint objects to one of Shmaltz’s biblical-themed pun beers, specifically the MÁNNAGE À TROIS IPA 3-Way Variety pack. Apparently, Shmaltz started out with a beer called HOP MANNA, a reference to the divine substance that sustained the ancient Hebrews while wandering in the desert on the way out of Egypt. However, consumers couldn’t quite get the hang of the name and instead were asking for HOP MOMMA and HOP MANIA, beers that didn’t exist. So Shmaltz, never one to pass on a good joke or a bad pun, simply decided to create those non-existent beers and sell all three in a variety pack under the tagline: “You Mistakenly Asked For It . . . So We Decided To Make It!” Voila, le MÁNNAGE À TROIS! If creativity was a factor in the likelihood of confusion analysis, Shmaltz would win every case. But since priority of use is generally a lot more important, we’ll have to wait and see how this comes out. Sutter home Winery, Inc. v. Shmaltz Brewing Company, LLC, Case No. 3:16-cv-06835 (N.D. Cal.).
MARLEE’S GREEN TEA WHISKEY
In June, Fifty Six Hope Road Music, the company that owns the intellectual property rights related to reggae legend Bob Marley, opposed Whiskey Green LLC’s application to register MARLEE’S GREEN TEA WHISKEY for its flavor-infused whiskey product. Fifty-Six Hope Road claimed that this name would cause confusion with several registered MARLEY marks for beverage products, including MARLEY COFFEE and MARLEY’S MELLOW MOOD. In November, the parties came to an agreement: Whiskey Green amended its application to exclude “coffee flavored infusions” and Fifty-Six Hope Road dropped the opposition. Fifty Six Hope Road Music Limited v. Whiskey Green LLC, Opposition No. 91228313 (Trademark Trial & App. Bd.).
MAYARI and MAYA Wine
As we reported at greater length here, the Federal Circuit affirmed the allowance of Kissos Wine’s application to register MAYARI for wine, dismissing the opposition of Dalla Valle Vineyards, which owns the MAYA mark for wine. Dalla Valle argued, among other things, that customers who see a MAYARI bottle at an angle in a crowded bar may see only the first four letters and mistake it for MAYA, but the Federal Circuit found this argument too speculative. Dalla Valle also argued that the meanings of the terms were identical because both were named for goddesses: Maya being the name for a manifestation of the Hindu goddess Lakshmi and Mayari being the name of a goddess from Tagalog mythology. The Federal Circuit rejected this argument as too esoteric. To U.S. consumers, the Court held, “Maya” is a girl’s name and “Mayari” is meaningless, so their coexistence on the register is unlikely to cause confusion. Oakville Hill Cellars, Inc. v. Georgallis Holdings, LLC, 826 F.3d 1376 (Fed. Cir. 2016).
Mecca Grade Growers’ application to register MECCA GRADE for selling “malt for brewing and distilling,” and for grain processing services, was refused because the applicant would not agree to disclaim the word “grade.” The TTAB agreed with the examiner that “grade” was merely descriptive of the standard or quality of the grain or of the processing services, as evidenced by the applicant’s own use of the term on its website, and by other companies that use “grade” to describe the quality of brewing grains. In re Mecca Grade Growers, LLC, 2016 TTAB LEXIS 459 (Trademark Trial & App. Bd. Sept. 16, 2016).
MIAMI and M.I.A. Beer
In July, it was reported that M.I.A. Brewing Company head Eddie Leon had received a cease and desist letter from the Miami Brewing Company, owned by Peter Schnebly. Leon and Schnebly had known each other personally for years, and Leon thought they had a “gentleman’s agreement” that the companies’ names were not in conflict, but the letter alleged otherwise. “Quite honestly, it felt like a big stab in the back,” Leon told the Miami New Times, “I’m like, really? It was pretty shocking.” After the shock wore off, Leon changed the name of his company to the “M.I.A. Beer Company.” By the way, neither company is actually located in Miami, according to their websites.
MillerCoors filed a UDRP complaint requesting transfer of a bunch of domains containing incorrectly spelled versions of its name, including , , and . The registrant of these domains hid his or her identity behind two privacy services, but the panel found that “respondent’s business is clear: It registers domain names using subtle misspellings of a company’s well-known and valuable marks and uses those domain names to engage in an illegal phishing scam designed to defraud the company.” The panel did not fully explain the nature of the scam, but implied that the registrant was using the domains to pose as a MillerCoors employee in order to trick actual employees into providing either personal or internal company information . MillerCoors LLC v. VistaPrint Technologies Ltd., 2016 NAFDD LEXIS 351 (NAF April 20, 2016).
MONUMENTAL and MONUMENTOUS Beer
The Port City Brewing Company of Washington, DC, opposed the Coachella Valley Brewing Company’s application to register MONUMENTOUS for beer on account of Port City’s prior registration of MONUMENTAL for beer. Coachella argued that Port City’s mark was descriptive and weak, as shown by the Port City owner’s testimony that MONUMENTAL refers to the beer’s importance to the company and the fact that the District of Columbia is sometimes referred to as “The City of Monuments.” The TTAB disagreed that the MONUMENTAL mark was weak, and found that there was no record evidence that MONUMENTAL was anything other than arbitrary with respect to beer. The TTAB also held that the marks were substantially similar and likely to cause confusion, sharing the same number of syllables, the same root word, and the same connotation (even though MONUMENTOUS is not actually a word). The application was refused. North Lock LLC v. C.V. Brewing Co., 2016 TTAB LEXIS 468 (Trademark Trial & App. Bd. Sept. 16, 2016).
Last March, Moosehead Breweries brought a trademark infringement action against the Adirondack Pub & Brewing Company, alleging that Adirondack’s MOOSE WIZZ root beer infringed the Moosehead’s MOOSE family of marks, including MOOSE and MOOSEHEAD for beer. Moosehead alleged that the confusion caused by this infringement was compounded by Adirondack’s use of a similar Moose profile on its label. No dispositive motions were filed, and the case proceeded to trial this August. Adirondack emphasized the difference between alcoholic and non-alcoholic products, but the jury found that Adirondack had willfully infringed Moosehead’s mark, and awarded $8,800 in damages. In September, the parties entered a stipulated injunction under which Adirondack may no longer use the word “Moose,” or the image of a moose, in connection with the sale of root beer. Moosehead Breweries Limited v. Adirondack Pub & Brewery, Inc., Case No. 1:15-cv-00260 (N.D.N.Y.).
NAPA VALLEY Wine
Last December, the USPTO issued the first certification mark to a U.S. wine region, which was accomplished through the efforts of the 525-member Napa Valley Vintners trade association. The mark, as used by authorized persons, will certify that a wine product is derived from grapes grown in the Napa Valley Viticultural Area.
The value of the Napa Valley brand was highlighted this November in a criminal matter. According to the indictment, Jeffry Hill of the Hill Wine Company allegedly was trucking in grapes from outside Napa Valley, altering the shipping records, and then selling the wines derived therefrom as if they were grown in Napa Valley, defrauding customers of over $1.5 million. That matter is pending. United States v. Hill, Case No. 3:16-cr-00454 (N.D. Cal.).
The Napa Valley Vintners association also scored a victory in China this year, convincing the Beijing High People’s Court that a Chinese company’s registration of SCREW KAPPA NAPA for wine was confusing with respect to the geographical source of the product.
NOT YOUR FATHER’S and GRANDDADDY’S Hard Root Beer
The ironically named Small Town Brewery of Los Angeles makes the hard root beer product called NOT YOUR FATHER’S ROOT BEER, which has been on the market since 2012. About nine months after the Small Town product was introduced, according to the complaint, the Sprecher Brewing Company started marketing a competing product with the tagline “Not your granddaddy’s root beer.” Small Town filed a tradmeark infringement action in the Northern District of Illinois. In early November of this year, the parties notified the Court that they had settled the case, but have not yet finalized the terms. Small Town Brewery LLC v. Sprecher Brewing Co., Case No. 1:15-cv-10666 (N.D. Ill.).
Luca Mariano Distillery’s application to register OLD AMERICANA for alcoholic beverages was refused on the grounds that it too closley resembled the registered AMERICANA mark for vodka, and because the applicant refused to disclaim the word “old,” which the trademark examiner argued was merely descriptive of a characteristic of the goods. The TTAB reversed on the disclaimer issue: the word “old” was not descriptive (the drink itself was not old), but rather a suggestive modifier of “Americana,” evoking an earlier era in American culture (this is consistent with the distillery’s marketing materials, which boast the use of prohibition-era distilling recipes). However, the TTAB affirmed refusal due to likelihood of confusion with the AMERICANA mark. In re Luca Mariano Distillery LLC, 2016 TTAB LEXIS 276 (Trademark Trial & App. Bd. June 23, 2016)
OLD CROW Whiskey
Jim Beam brands, owner of the OLD CROW mark for whiskey, filed an opposition to the Teressentia Corporation’s application to register CROW’S NEST for distilled spirits. The OLD CROW brand, which is named for sour mash process inventor Dr. James C. Crow, has allegedly been in continuous use since 1835, and was served in the homes of Presidents Andrew Jackson, William Henry Harrison and Ulysses S. Grant. It was also apparently a favorite of Walt Whitman, Jack London and Mark Twain, among others. The matter has been suspended while the parties engage in settlement discussions. Jim Beam Brands Co. v. Terressentia Corporation, Opposition No. 91229536 (Trademark Trial & App. Bd.).
It looks like Florida resident John Michael Brack’s will finally get an ORANGECELLO-related mark registered. Brack previously successfully petitioned to cancel a Sazerac registration for ORANGECELLO on the ground that it was a generic name for a type of mixed drink. He then filed an intent to use application to register FLORIDA’S BEST ORANGECELLO for a pre-mixed alcoholic cocktail. However, the TTAB affirmed refusal of that application, finding that the mark was primarily geographically descriptive and that it might be confused with the CARAVELLA ORANGECELLO mark for orange-flavored liqueur, owned by a subsidiary of Sazerac. Brack then applied to register SIMPLY ORANGECELLO, but in March 2015 the TTAB affirmed the refusal to register this mark because Brack had failed to sign and verify the application. Brack tried again, and this time the SIMPLY ORANGECELLO mark was refused on account of likelihood of confusion with, yet again, CARAVELLA ORANGECELLO. The examiner argued that ORANGECELLO was the dominant term in both marks, and that SIMPLY was diluted as a mark for beverages, owing to several already-registered “SIMPLY” trademarks, including SIMPLY CABERNET, SIMPLY RED and SIMPLY CACTUS. But the TTAB reversed, holding that the first words (“Simply” and “Caravella”) were the dominant feature of each mark, and that “Caravella” (a surname) gave a different impression than “Simply.” In re John Michael Brack, Serial No. 86660122 (Trademark Trial & App. Bd. Aug. 5, 2016).
PABST BLUE RIBBON
In May, the Pabst Brewing Company took a novel approach to what it apparently perceived as trademark infringement by professional wrestler John Cena, who created a PABST BLUE RIBBON-esque logo to promote his personal brand. Pabst sent him a Tweet with a picture of the offending logo and the message: “We have a chokehold called the Cease & Desist. Pretty sure we see you,” followed by a middle finger emoji. The parties appear to have settled their differences the next month, when Cena sent a Tweet thanking the company for giving him the thumbs up instead of that other finger.
The company has been having a different kind of trademark issue in the TTAB, where it has previously asserted its common law rights in the initials PBR against attempts to register that mark for other goods bearing those initials (for example the Kenai River Brewing Company’s PENSINSULA BREWERS RESERVE). This year, Pabst finally applied to register these initials and also petitioned to cancel the PBR mark registered by Professional Bull Riders LLC. That matter is pending. Pabst Brewing Company LLC v. Professional Bull Rides LLC, Cancellation No. 92064372 (Trademark Trial & App. Bd.).
The Cointreau company of France filed a UDRP domain name dispute requesting transfer of . PASSOA is a liqueur flavored with Brazilian passion fruit (or “maracuja” in Portuguese). The French registrant defaulted, thus failing to contest Cointreau’s allegations of bad faith, and the domain was transferred. Cointreau v. Khalil, 2015 UDRP LEXIS 1354 (WIPO Dec. 4, 2015).
PATRON and CASA NOBLE Tequila
Patron Tequila opposed Constellation Brands’ application to register the trade dress for its Casa Noble tequila bottle. Patron alleged that the registered trade dress for its own distinctive and allegedly famous bottle design is nearly identical to the trade dress Constellation is trying to register. Patron also alleged that Constellation is using confusing ad copy to promote the product, because both companies use words like “perfection” and “crystal” in their marketing. The matter is pending. Patron Spirits International AG v. CB Spirits SARL, Opposition No. 91224686 (Trademark Trial & App. Bd.).
Patron also filed a trademark infringement complaint in the Northern District of Texas against its former ad agency, the Reindeer Group. The complaint alleged that, after Patron ended its relationship with the agency, Reindeer continued to advertise Patron as a client on its website and continued to retain and use domain names incorporating the Patron name. The complaint also alleged that Reindeer padded the bill in the last months of its engagement. As of November, the parties appear to be on the verge of a settlement, according to the docket. Patron Spirits International AG v. The Reindeer Group, Ltd., Case No. 4:16-cv-00918 (N.D. Tex.).
PAUL DOLAN Wines
Paul Dolan, a fourth generation winemaker, helped form and became president of the Mendocino Wine Group in 2004. Mendocino took advantage of Dolan’s pedigree by developing a wine to be sold under the PAUL DOLAN mark. In 2012, Dolan was ousted from the company, but Mendocino continued to use the PAUL DOLAN mark. Dolan filed suit for trademark infringement and violation of his right of publicity. Mendocino tendered the action to its insurer, which denied any duty to defend. Mendocino then sued the insurer, which moved to dismiss on the grounds that the right of publicity count (like the trademark count) was subject to the insurance policy’s intellectual property exclusion. Mendocino countered that the right of publicity was grounded in privacy rights, not intellectual property. The Court held that the parties were sort of both right, but the insurance company was more right: California recognizes on the one hand a common law right of privacy which protects against the personal and subjective harm caused by misappropriation of a name or likeness; and on the other hand a right of publicity, which recognizes the objective economic harm caused by the use of another’s identity, and which is more akin to an intellectual property right. Because this case was really more about the latter incarnation of the tort, it was in essence an intellectual property claim and the insurer had no duty to defend. Therefore, the Court dismissed the suit. Mendocino filed an amended complaint, attached to which were newspaper articles allegedly showing a subjective and personal component to the claim, including because Dolan’s departure from the company was apparently so heated that the local Sherriff had to be called in. However, the Court ruled that these articles did not shed light on Dolan’s mental state in relation to his right of publicity claim, and dismissed again, this time with prejudice. Mendocino Wine Grp., LLC v. QBE Ams., Inc., 2016 U.S. Dist. LEXIS 103615 (N.D. Cal. Aug. 5, 2016). Meanwhile the underlying dispute between Mendocino and Dolan has settled.
PEARL and PEARL NECKLACE Beer
Denver’s Flying Dog Brewery, purveyors of Pearl Necklace Oyster Stout (apparently brewed with actual oysters) applied to register PEARL NECKLACE for beer. The Pabst Brewing Company opposed the mark on account of its registered marks for PEARL LAGER BEER and PEARL (the name of a Texas subsidiary), the use of which dates back to the 1960’s. Flying Dog withdrew the application late last year. Pabst Brewing Company LLC v. Flying Dog Brewery LLP, Opposition No. 91222520 (Trademark Trial & App. Bd.).
Pernod Ricard scored two UDRP domain name victories since last year. In one case, the liquor giant wrestled from a registrant who used the domain to pose as the “Chairman and Chief Executive Officer” of Pernod Ricard and fraudulently demand payment for an invoice from an Indian subsidiary. Pernod Ricard v. VistaPrint Technologies Ltd., 2016 UDRP LEXIS 796 (WIPO July 25, 2016). The other domain, , was apparently used as part of a similar scheme. Pernod Ricard v. Richey, 2016 UDRP LEXIS 1085 (WIPO Sept. 9, 2016).
PIG SOOIE Beer
The University of Arkansas Razorbacks’ “Hog Call” is registered with the USPTO as a sound mark in connection with athletic events, specifically a sound consisting of “a crowd cheering the following words ‘Woooooooo. Pig. Sooie! Woooooooo. Pig. Sooie! Woooooooo. Pig. Sooie! Razorbacks!’” The University has also registered the word mark WOOOO PIG SOOIE for hats and t-shirts. In July, the University opposed the Dudes Brewing Company’s application to register PIG SOOIE for beer, alleging likelihood of confusion with and dilution by blurring and tarnishment of both marks. Dudes Brewing did not respond to the opposition, and in November the USTPO issued a notice of default. Board of Trustees of the University of Arkansas v. Dudes Brewing Company LLC, Opposition No. 91228811 (Trademark Trial & App. Bd.).
PRINCESS YUM YUM RASPBERRY ALE
The Denver Beer Company’s application to register PRINCESS YUM YUM RASPBERRY ALE was refused due to the previously registered YUM YUM mark for an American session ale sold by Three Floyds Brewing. Denver Beer argued to the TTAB that, whereas YUM YUM is just a phrase meaning tasty, PRINCESS YUM YUM is a character from the animated movie, the Thief and the Cobbler. The TTAB was doubtful whether consumers would recognize the name as derived from a relatively obscure film released in 1993 (and better known for its troubled production history than for its characters). However, the TTAB did agree with Denver Beer that customers will at least recognize the difference between (and take a different commercial impression from) a laudatory descriptor (YUM YUM) and what is clearly a reference to an individual, real or imagined (PRINCESS YUM YUM). The refusal to register was reversed. In re Denver Brewing, LLC, Serial No. 86515920 (Trademark Trail & App. Bd. Nov. 23, 2016)
PURPLE HAZE Liqueur
In February, Experience Hendrix LLC, the assignee of intellectual property rights related to music legend Jimi Hendrix, filed a trademark infringement action in the Southern District of Georgia against Tiger Paw Distributors. The complaint alleges that Experience Hendrix was founded by Hendrix’s father, who then passed control to Hendrix’s cousin Janie. Allegedly, Hendrix’ father expressly did not pass the business to Hendrix’s brother Leon, “for good reasons.” According to the complaint, the spurned Leon went on to market a HENDRIX-branded Vodka and, when that was enjoined, he formed Tiger Paw to market another “tasteless product,” this time called PURPLE HAZE LIQUEUR. Experience Hendrix asserted that this new product infringed its trademark rights in three ways: by using a confusingly similar Jimi Hendrix headshot logo on its packaging, by displaying Jimi Hendrix’s signature on its website, and by inserting the word “Jimi” alongside “Henrdix” in its social media profiles. The Court allowed in part and denied in part Experience Hendrix’s motion for injunctive relief. The Court disagreed with plaintiff that the clean shaven depiction of the musician in the plaintiff’s logo resembled the side-burned and mustachioed version on the defendant’s bottle. The Court did, however, find that the defendants were intending to create an association with Jimi Hendrix, and enjoined the defendant from marketing the beverage by using the word “Jimi” or Jimi Hendrix’s signature. The matter is pending. Experience Hendrix, LLC v. Tiger Paw Distribs., LLC, 2016 U.S. Dist. LEXIS 81089 (S.D. Ga. June 22, 2016).
Treasure Coast Spirits attempted to register PIRATE’S CODE for a range of beverages, including brandy and Korean Soju. Patron Spirits opposed the registration, alleging likelihood of confusion with its own PYRAT RUM mark. Treasure Coast argued that the marks were different because PYRAT is a fanciful word whereas PIRATE’S CODE refers to the historical codes written and lived under by actual pirates, but the TTAB found that overall the marks are too similar and sustained the opposition. Treasure Coast appears to have rebranded itself as THE CODE. Patron Spirits International AG v. Treasure Coast Spirits, Inc., 2016 TTAB LEXIS 124 (Trademark Trial & App. Bd. March 31, 2016).
In another proceeding, the TTAB sustained Patron’s opposition to an application to register IT’S PIRATE TIME for rum. Patron International AG v. Noyes, Opposition No. 91215615 (Trademark Trial & App. Bd. Oct. 28, 2016).
RAISON D’ETRE Wine and RAISON D’EXTRA Beer
Last December, Pahlmeyer Winery filed a declaratory judgment action in the Northern District of California against Dogfish Head Brewery. Pahlmeyer, a Napa Valley wine maker, had filed an application to register RAISON D’ETRE for wine. Dogfish, which owns the RAISON D’EXTRA mark for beer (an ale brewed with raisins), did not oppose the registration but did send the winery a cease and desist letter. After Pahlmeyer filed suit, Dogfish responded to the complaint by moving for injunctive relief, but the parties were able to settle the matter by September. Pahlmeyer LLC v. Dogfish Head Marketing, LLC, Case No. 3:15-cv-05519 (N.D. Cal.).
The Spoetzl Brewery of Shiner, Texas sought registration of SHINER RUBY REDBIRD for ale. A trademark examiner refused the registration on the grounds that mark was too close to the previously registered REDBIRD ALE and RUBY marks for beer. On review, the TTAB found that REDBIRD was a strong arbitrary term and SHINER, a geographical indicator, was relatively weak. Therefore, the TTAB agreed that there would be a likelihood of confusion with the REDBIRD ALE mark, but not with the RUBY mark. The TTAB also rejected the applicant’s argument that beer drinkers are sophisticated and discerning consumers not subject to impulse purchases. In re Spoetzl Brewery Inc., 2016 TTAB 127 (Trademark Trial & App. Bd. April 8, 2016).
RED STRIPE Beer
Plaintiff Aaron Dumas filed a putative class action in the Southern District of California, accusing Diageo-Guinness of misleading consumers into thinking that RED STRIPE beer is made in Jamaica, when in fact it’s been made in Latrobe, Pennsylvania since 2012. In April, the Court dismissed the complaint, finding that a reasonable consumer would not be misled by the packaging just because it includes phrases like “Jamaican Style Lager” and “The Taste of Jamaica.” The Court found that the latter slogan was just a “vague and meaningless phrase” because “who can say what Jamaica tastes like?” Dumas v. Diageo PLC, 2016 U.S. Dist. LEXIS 46691 (S.D. Cal. April 6, 2016).
The Remy Martin company has been using some variation of the REMY MARTIN name since 1724, and it was first registered as a trademark (in France) in 1877. The domain name was being passively held by a Vietnamese registrant who did not respond to Remy Martin’s UDRP complaint, but the arbitrator found that there was bad faith because the Remy Martin mark is so famous that “it is not possible to conceive of any plausible legitimate justification” for the registration of the domain by another party. E. Remy Martin & Co. v. Juan, 2016 UDRP LEXIS 247 (WIPO April 18, 2016).
The Winery Exchange’s application to register REVOLUTION HARBOR for beer was opposed by Revolution Brewing. The Winery Exchange asserted the affirmative defenses of laches, estoppel and acquiescence. Revolution Brewing moved for summary judgment on these defenses, arguing that they were irrelevant where the time for opposition is determined solely by publication of the application. The TTAB agreed with Revolution Brewing that the opposition was timely, and that the Winery Exchange had not alleged any affirmative act by Revolution Brewing, and therefore these equitable defenses were not available as a matter of law. The case has been slated for a decision on the merits in 2017. 2323 N. Milwaukee LLC v. Winery Exch., Inc., 2016 TTAB LEXIS 58 (Trademark Trial & App. Bd. Feb. 12, 2016).
The Mischief Brewing Company of Arizona claimed that its RICHTER Beer was named after the German word for “judge,” but a trademark examiner refused the registration on the ground that “Richter” is primarily merely a surname. On review, Mischief argued that there were several other readily recognizable meanings of “Richter,” including as a scale for measuring the magnitude of earthquakes, as a town in Kansas, and as an Argentinian electro-rock band. The TTAB determined that none of these other definitions prevented the finding that Richter was primarily a surname. As to the German word for “judge,” the TTAB found that this translation supported the notion that Richter was a surname, because many surnames of foreign origin are derived from words that originally signified an occupation. In re Mischief Brewing Co., LLC, 2016 TTAB LEXIS 502 (Trademark Trial & App. Bd. Sept. 29, 2016).
Oregon Brewing had been selling ROGUE-branded clothing as a complement to beer sales since the late 1980’s, but in about 2011 it made a serious entry into the retail clothing market, placing ROGUE-branded clothing at department stores. This caused the Excelled Sheepskin & Leather Coat Corporation, which has been selling ROGUE-branded clothing since 2000, to file a trademark infringement action. In 2014, the Southern District of New York granted summary judgment for Excelled, finding that the clothing company had a valid mark and priority rights over the brewery, at least when it came to channels of trade normally associated with clothing. Last year, the Court denied the brewery’s motion for reconsideration. This August, a magistrate found that the infringement was willful and recommended statutory damages in the amount of $1,000 plus attorneys’ fees. In September, the Court adopted the Magistrate’s recommendation and permanently enjoined Oregon Brewing from using its ROGUE mark on clothing other than where ROGUE-branded beer is also sold. Oregon Brewing has appealed, and the parties continue to wrangle over the amount of attorneys’ fees in the District Court. Excelled Sheepskin & Leather Coat Corp. v. Oregon Brewing Co., 2016 U.S. Dist. LEXIS 133568 (S.D.N.Y. Sept. 28, 2016).
In June, Oregon Brewing initiated another trademark action in the Central District of California against Le Vecke Corporation, which began marketing ROGUE COW whiskey cream liqueurs in 2014. According to the complaint, a trademark examiner had rejected Le Vecke’s application to register the ROGUE COW mark on account of likely confusion with Oregon Brewing’s ROGUE BEER mark, but Le Vecke continued to market the stuff anyway. The case has been referred to mediation. Oregon Brewing Co. v. Le Vecke Corporation, Case No. 5:16-cv-01306 (C.D. Cal.).
Last year, the Exxon Mobil Corporation bought a trademark infringement action in the Southern District of California against the makers of ROXX vodka, complaining that the beverage maker’s interlocking “XX” was too similar to the oil company’s interlocking “XX.” This October, the parties worked out a consent judgment under which ROXX agreed to keep its X’s from touching. Exxon Mobil Corporation v. Nielsen Spirits, Inc., Case No. 1:15-cv-24022 (S.D. Fla.).
ROYAL ELITE Vodka
Classic Liquor’s attempts to register ROYAL ELITE for vodka, and other marks related to its bottle design, were met with a cease and desist letter from liquor giant Spirits International, parent company of Stolichnaya Vodka and owner of the STOLICHNAYA ELIT mark, which demanded that it withdraw or limit its applications. Classic responded by filing a declaratory judgment action in the Southern District of New York, arguing that the bottles look nothing alike and that the marks were not likely to be confused for one another. Spirits moved to dismiss on the grounds that the suit was premature because Royal Elite wasn’t really on the market yet, and because the cease and desist letter didn’t expressly threaten litigation. Last December, the Court rejected these arguments and refused to dismiss the case. In August, the Court denied Classic’s motion for summary judgment. The Court found that there was a genuine dispute as to whether Spirits’ ELIT mark, which was self-laudatory and not inherently distinctive, had nevertheless acquired secondary meaning. The Court also found disputed issues of fact as to Classic’s good faith in adopting the mark. Classic claimed that it is owned by a native of Uzbekistan, which was once part of the empire of Tamerlane, who purportedly controlled a fighting force known as the “Royal Elite.” However, at deposition, the owner admitted that he didn’t know who Tamerlane was until after he had applied to register the ROYAL ELITE mark. The matter is pending. Classic Liquor Importers, Ltd. v. Spirits International B.V., 2016 U.S. Dist. LEXIS 110849 (S.D.N.Y. Aug. 19, 2016).
SAN ANTONIO and TENUTA SANT’ ANTONIO Wines
Last November, the 100 year old San Antonio Winery of California, owner of the SAN ANTONIO mark for wine, filed suit against UVE Enterprises, alleging that its TENUTA SAN’T ANTONIO mark for an Italian wine is confusingly similar. In August, the parties announced a settlement and the matter was dismissed. San Antonio Winery, Inc. v. UVE Enterprises, Inc., Case No. 2:15-cv-08826 (C.D. Cal. 2015).
SAN DIEGO SPIRITS
Aegis Software has been hosting the SAN DIEGO SPIRITS FESTIVAL, an annual specialty cocktail event, since 2009. In 2013, Aegis was approached by the 22nd District Agricultural Association, a public association formed pursuant to California statute. Aegis, thinking it had found a partner, shared certain inside information about its event, only to learn later that the 22nd District Agricultural Association was planning its own competing event called DISTILLED: SAN DIEGO SPIRIT & COCKTAIL FESTIVAL. Aegis filed suit in the Southern District of California and moved for an injunction. The Court denied the injunction, agreeing with the defendant that the plaintiff’s mark was likely generic because it failed the “who are you/what are you” test. According to the Court, a valid mark answers the question “Who are you?”, while a generic mark answers the question “What are you?” Here, the Court held, the name SAN DIEGO SPIRITS FESTIVAL is generic because it is an answer to the question: “What are You?” Aegis has not given up yet, however, and the matter is pending. Aegis Software, Inc. v. 22nd Dist. Agric. Ass’n, 2016 U.S. Dist. LEXIS 120923 (S.D. Cal. Sept. 6, 2016).
Lawyer and conservative darling Phyllis Schlafly opposed an application to register SCHLAFLY for beer, which had been filed by her nephew’s St. Louis Brewery. Phyllis Schlafly argued that SCHLAFLY is primarily merely a surname and that the applicant’s use had not acquired distinctiveness. However, the TTAB disagreed, finding that the St. Louis Brewery had been selling beer under the SCHLAFLY mark since 1991 and that, twenty-five years and tens of millions of servings later, it has come to serve as a source identifier. The registration was allowed. Schlafly v. St. Louis Brewery, LLC, 2016 TTAB LEXIS 381 (Trademark Trial & App. Bd. Aug. 2, 2016)
SLOW RIDE Beer
New Belgium Brewing of Colorado and the Oasis Texas Brewing Company both produce a SLOW RIDE beer. Last year, New Belgium’s trademark infringement action in the District of Colorado was dismissed for lack of personal jurisdiction over Oasis, so New Belgium packed its legal bags and filed a new suit in the Western District of Texas. After some contentious discovery skirmishes, the parties came to an arrangement and the matter was dismissed. The settlement reportedly allows Oasis to continue selling SLOW RIDE beer in Texas. Oasis informed the Austin Business Journal that the press coverage of the lawsuit was so good for sales that now “we can’t make [SLOW RIDE] fast enough.” Sadly, although the case resulted in two published opinions, the Foghat song that you now have in your head was not mentioned once. New Belgium Brewing Co., Inc. v. Travis County Brewing Company, LLC, 2016 U.S. Dist. LEXIS 169803 (W.D. Tex. Dec. 18, 2015).
SMOKESTACK LIGHTNING Beer
The Magnolia Brewing Company sought registration of SMOKESTACK LIGHTNING for beer, but the application was refused because of the preexisting SMOKESTACK SERIES mark for beer, owned by a Luxembourg company. Magnolia argued that the addition of LIGHTNING created a significant distinction in sound and sight, specifically because it refers to the title of a classic blues song by Howlin’ Wolf Burnett, and because it “conveys imagery of billowing smokiness impregnated by branches of powerful light.” The TTAB disagreed and held that the marks were similar enough such that SMOKESTACK LIGHTNING would be viewed by consumers as part of the SMOKESTACK SERIES. In re Magnolia Brewing Co., LLC, 2016 TTAB LEXIS 212 (Trademark Trial & App. Bd. May 18, 2016).
In 2010, Spindrift Soda’s application to register SPINDRIFT SODA was refused on account of the Small World Wine Company’s registration of SPINDRIFT for wine. The parties subsequently entered into a co-existence agreement that would allow the soda company to register its mark and start selling SPINDRIFT soda. Coexistence agreement in hand, the soda business expanded to include other products such as juice and seltzer water and, according to the complaint, the winery was kept informed of this expansion. However, in May 2015, the winery sent a cease and desist letter to the soda company, alleging that it was expanding its business outside the terms of the agreement, including by changing its name from “Spindrift Soda Company” to “Spindrift Beverage Company,” by selling “Ginger Beer” (which is non-alcoholic but sounds kind of alcoholic), and by making seltzer (the letter implies that the only use of seltzer water is as an alcoholic drink mixer, proving conclusively that the winery did not hire a New York attorney). The soda company responded last December by filing a breach of contract action in the District of Massachusetts. By April, the parties had worked things out, and the case was dismissed. Spindrift Beverage Co. v. Small World Wine Company, LLC, Case No. 1:15-cv-14195 (D. Mass).
Henrik Sargsyan sought to register SPIRITS SPRAY for a line of spray bottles containing vodka, cognac and other beverages. A brochure for the product depicted the spray bottles and described them as “the best choice of spirit for the population of 21+ ages, who feels uncomfortable to drink 40% alcohol, so they will just spray it into their mouth.” The application was refused on the ground that the mark was merely descriptive of the product, i.e., SPIRIT SPRAY is just a spray of spirits. On appeal to the TTAB, the applicant, despite already having provided the brochure to the examiner, asserted that “there is no evidence of record showing [Applicant’s] liquor is sold as a spray.” The TTAB responded with something like ‘ahem . . . the brochure’ and affirmed refusal. In re Sargsyan, 2016 TTAB LEXIS 107 (Trademark Trial & App. Bd. Mar. 24, 2016)
STAG’S LEAP and STAGS’ LEAP Wine
Stag’s Leap Wine Cellars and Stags’ Leap Winery are both located within the Stag’s Leap District of Napa Valley, which is a recognized American Viticultural Area. Both entities have been using their respective names since 1985 pursuant to a consent agreement, under which each party is required to place their apostrophe in a different place. In November, Wine Cellars brought a complaint in the Northern District of California alleging false advertising by the Winery. The basis for the complaint was the allegation that the Winery was about to start making a “cheaper, low quality” wine with “less prestigious” grapes from outside the Stag’s Leap District. According to Wine Cellars, this “spurious knockoff” vintage was to be deceptively named “THE STAG,” thus implying that the grapes were grown inside the Stag’s Leap District. In November, the Court dismissed the complaint because no actual sales or even marketing of the “THE STAG” had been alleged (Wine Cellars had learned about the new wine from a Certificate of Label Approval form filed with the federal government). The Court had little doubt, however, that there was indeed a present and existing controversy between the parties, and granted the plaintiff leave to amend. An amended complaint has already been filed, and the matter is pending. Stag’s Leap Wine Cellars, LLC v. Treasury Wine Estates Ams. Co., 2016 U.S. Dist. LEXIS 156438 (N.D. Cal.). In October, the Winery filed a separate complaint in the same court, requesting a declaratory judgment that “THE STAG” name and label will not violate the Lanham Act or California law. Wine Cellars has moved to dismiss based on the argument that the claims in the second case are compulsory counterclaims in the first case, and that motion is pending. Treasury Wine Estates Ams. Co. v. Stag’s Leap Wine Cellars, LLC, Case No. 3:16-cv-05764 (N.D. Cal.).
STELLA ROSA and STELLA ROSSA Wine
Last September, the San Antonio Winery filed suit in the Central District of California against the Red Star Italian Company of Philadelphia. San Antonio owns the STELLA ROSA mark for wine, which means “pink star” in Italian, while Red Star was allegedly marketing STELLA ROSSA wine, which means “red star.” The complaint also alleged breach of a prior settlement agreement. In January, the parties entered into a consent judgment under which Red Star agreed to stop using the STELLA ROSSA mark. San Antonio Winery, Inc. v. Testa Rossa Philadelphia LLC, Case. No. 2:15-cv-07194 (C.D. Cal.).
Allied Lomar, which registered the STITZEL mark for distilled spirits in 2006, took issue with Diageo’s alleged distribution of bourbon whiskey sold in association with the words “STITZEL-WELLER,” the name of the historic Kentucky distillery owned by Diageo since 1994. Allied Lomar filed suit in the Northern District of California, and Diageo moved to dismiss, arguing that the complaint failed to allege (and cannot allege) priority of use: The “STITZEL-WELLER” distillery has been in operation since 1935, while the complaint alleged only that the plaintiff had sold products under the STITZEL mark “for years.” The Court denied the motion to dismiss, but allowed Diageo to file an early summary judgment motion, which it did in May. In November, the parties reached a settlement. Allied Lomar, Inc. v. Diageo North America, Inc., Case No. 3:14-cv-03087 (N.D. Cal.). Allied Lomar has also withdrawn its opposition to the registration of the STITZEL-WELLER mark. Allied Lomar, Inc. v. Diageo North America, Inc., Opposition NO. 91222656 (Trademark Trial & App. Bd.).
STOLICHNAYA Vodka had been distributed by a Soviet government-affiliated company until the nation’s collapse in 1990, when the company assets fled the country and ended up in the hands of Spirits International. In 2004, Federal Treasury Enterprise, purported assignee of the Russian government’s rights, filed suit in the Southern District of New York seeking to reclaim the STOLICHNAYA mark from Spirits International. The District Court dismissed the trademark infringement claim on the grounds that a registered STOLICHNAYA mark owned by Spirit International had become incontestable. The Second Circuit vacated that decision in 2010, but on remand the District Court dismissed again on the grounds that Federal Treasury did not have standing to sue, since the Russian Federation itself had retained too great an interest in its rights to have effected a valid transfer to Federal Treasury. This time, the Second Circuit affirmed. The Russian government then executed a more complete assignment of whatever rights it had to Federal Treasury, which brought another suit in 2014. The District Court dismissed this suit too, on the grounds that the assignment was invalid under Russian law and that the claims were barred by res judicata. This January, the Second Circuit vacated in part on the grounds that the District Court did not have jurisdiction to invalidate a trademark assignment among the branches of government of a foreign sovereign. However, the Court did hold that Federal Treasury’s principal trademark infringement claims were barred by res judicata. This October, the Supreme Court denied certiorari. Certain other claims still survive, and the matter remains pending. Fed. Treasury Enter. Sojuzplodoimport v. Spirits Int’l B.V., 809 F.3d 737 (2d Cir. 2016).
SWILL Beer and SWELL SWILL Wine
10 Barrel Brewing’s application to register SWILL for beer was refused in light of likely confusion with Swanson Vineyards’ SWELL SWILL mark for wine. The applicant argued that SWELL SWILL creates a very different commercial impression because it is both a clever alliteration and an incongruous oxymoron (“swell” suggests a good drink while “swill” means a bad drink). However, the TTAB found that the applicant’s SWILL mark, standing alone, creates the same incongruous meaning because customers were likely to perceive both marks as good natured self-deprecation. The TTAB also found that the term “Swell” is likely to be perceived as conceptually laudatory of the goods. Thus, “swell” was a weak source identifier, which meant that the dominant element of both marks was the identical “swill.” The refusal was therefore affirmed. In re 10 Barrel Brewing, LLC, 2016 TTAB LEXIS 243 (Trademark Trial & App. Bd. May 31, 2016).
Tao Licensing, owner of TAO brand nightclubs in Las Vegas and New York, filed a petition to cancel the registration for TAO VODKA, owned by Honolulu-based Asia Pacific Beverages Company. Tao Licensing claims that because the bars in its nightclubs sell lots of cocktails, its TAO mark has built up substantial goodwill with respect to the sale of alcoholic beverages, including vodka. The matter is pending. Tao Licensing LLC v. Bender Consulting Ltd., Cancellation No. 92057132 (Trademark Trial & App. Bd.). Asia Pacific also has applied for the TAO OF VODKA mark.
TANG Distilled Green Tea Leaves
Last year, Bacardi announced the introduction of TANG, a first-of-its kind alcoholic beverage distilled from green tea leaves, which retails for about $260 a bottle in Hong Kong. Bacardi hopes to take some market share from baijiu, a popular Chinese liquor distilled from sorghum. When Bacardi applied to register the TANG logo as a mark, the Texas Rangers baseball team opposed, arguing a likelihood of confusion with the team’s stylized T logo. The matter is pending. Rangers Baseball LLC v. Bacardi & Company Limited, Opposition No. 91229825 (Trademark Trial & App. Bd.).
TANGLED BIRCH Grappa
A trademark examiner refused White Birch Vineyards’ application to register TANGLED BIRCH for spirits (principally grappa) on the grounds that it might be confused with the existing TANGLED TREE mark for a South African line of wines. The TTAB affirmed, noting that the marks were similar and communicated similar commercial impressions, especially since birch is a type of tree. In re White Birch Vineyards, LLC, 2016 TTAB LEXIS 72 (Trademark Trial & App. Bd. Feb. 19, 2016).
TAP IT Beer
The TAP IT Brewing Company opposed energy drink maker Tap or Nap LLC’s application to register TAP IT for non-alcoholic energy drinks. The energy drink maker counterclaimed to cancel the brewery’s TAP IT mark on the grounds that it was merely descriptive of beer, since a “tap” is a device for controlling the flow of beer and “tap it” is common slang for using a tap to start the flow. The energy drink maker also pointed to about a zillion other beer businesses using “tap” in their name. However, the TTAB dismissed the counterclaims because, while “tap” may be descriptive of the flow of beer (and other beverages), it was not descriptive of the beer product itself. As to the likelihood of confusion analysis, the TTAB focused on whether the goods and their channels of trade were related. The TTAB found that they were, based on (1) third party registrations which included both beer and soft drinks; (2) evidence that beer and soft drinks are often mixed as cocktails; (3) and evidence that many companies offered both beer and energy drinks, including the two parties: TAP IT Brewery sells energy drinks at its retail location and Tap or Nap’s original application actually included beer in its description of goods. Tap It Brewing Co. v. Tap or Nap LLC, Opposition No. 91208370 (Trademark Trial & App. Bd. Nov. 4, 2016).
Last year, the TTAB canceled the TH mark for wine, which had been owned by Chilean company Viña Undurraga, on the grounds that Terry Hoage Vineyards had priority rights. This year, Viña Undurraga sought to undo that decision by filing an action in the Central District of California. Terry Hoage moved to dismiss, but the Court found that the motion to dismiss had three major flaws: (1) it read more like a summary judgment briefing, as it cited to evidence regarding the likelihood of confusion analysis from the TTAB proceeding; (2) it made overbroad requests for judicial notice of things like issues of Wine Spectator magazine; and (3) it ignored the fact that a party appealing a cancellation proceeding to the federal courts may offer additional evidence. A jury trial has been scheduled for June 2017. Vina Undurraga S.A. v. Serine Cannonau Vineyard, Inc., 2016 U.S. Dist. LEXIS 82141, 118 U.S.P.Q.2D (BNA) 1724 (C.D. Cal. June 2, 2016)
THE SHED and BREW SHED Beer
THE SHED Brewery filed a trademark infringement complaint in the District of Vermont, alleging that GoodLife Brewing of Oregon was infringing its THE SHED marks for beer by selling the recently introduced BREW SHED ale. The matter ended rather quickly in a consent judgment, which forbid GoodLife from continuing to market its BREW SHED product. Otter Creek Brewing Company v. Noble Brewing Company, Case No. 2:16-cv-00130 (D. Vt.).
TIGER SHARK Beer
Heineken Asia Pacific, which owns the TIGER mark for beer, opposed registration of the TIGER SHARK mark for beer. In response to Heineken’s document requests, the applicant responded that he had no documents about his adoption of the mark, no labels with the mark, no advertising or marketing materials, no business plan and no documents concerning the making of the beer. In response to interrogatories, the applicant also stated that he did “not have any immediate plans as yet to market” the product and that “no specifics are yet in place.” Heineken moved for summary judgment on the ground that the applicant had no bona fide intent to use the mark in commerce. The TTAB granted summary judgment and refused the mark, finding that the applicant’s alleged “simple mental memorized plan” to make beer didn’t count as a bona fide intent. Heineken Pacific Pte. Ltd. v. Claypool, Opposition No. 91220927 (Trademark Trial & App. Bd. Sept. 26, 2016).
TIME TRAVELER Beer
Bay State Brewing Company tried to register TIME TRAVELER BLONDE for beer, but a trademark examiner initially refused the application because the mark so resembled the TIME TRAVELER mark for beer, owned by A&S Brewing. Bay State asserted that it had entered into a consent agreement with A&S Brewing, allowing it to use its TIME TRAVELER BLONDE mark, so everything’s cool, right? Not quite. The TTAB acknowledged that the existence of a consent agreement is frequently entitled to great weight, but also held that it was not determinative of the likelihood of confusion analysis. Here, the TTAB found that the consent agreement was outweighed by the similarity of the marks, in part because the terms of the consent agreement were inadequate. Among other things, the agreement placed geographical restrictions on only one party (thus allowing the confusing use of both marks in certain areas). Additionally, unlike other cases where concurrent use was allowed, here there had been no history of coexistence without confusion. In re Bay State Brewing Co., 2016 TTAB LEXIS 46 (Trademark Trial & App. Bd. Feb. 25, 2016).
TITO’S HANDMADE Vodka
The slew of class action false advertising lawsuits, alleging that TITO’S HANDMADE vodka is not really handmade, appears to be winding down. After surviving motions to dismiss last November, two companion cases in the Southern District of California were settled and dismissed in May. Cabrera v. Fifth Generation, Inc., Case No. 3:14-cv-02990 (S.D. Cal.); Hofmann v. Fifth Generation, Inc., Case No. 14-cv-2569 (S.D. Cal.). An identical case in Ohio was brought against the “Fifth Dimension” by mistake (someone better give Marilyn McCoo the bad news), which the Court noticed but never bothered correcting in the caption. Late last year, the Ohio plaintiff’s promissory estoppel count and her individual (but not her class) claim under the Ohio Consumer Sales Practices Act survived a motion to dismiss, but the matter settled in February. Terlesky v. Fifth Dimension, Inc., 2015 U.S. DIST. LEXIS 155236 (S.D. Ohio Nov. 17, 2015). A Nevada case was dismissed voluntarily around the same time, followed shortly by a Massachusetts action. Grayson v. Fifth Generation, Inc., Case No. 2:15-cv-00150 (D. NV.); Emanuello v. Fifth Generation, Inc., Case No. 1:15-cv-11513 (D. Mass.). A New Jersey case was dismissed in October. McBrearty v. Fifth Generation, Inc., Case No. 2:14-cv-07667 (D. NJ.).
In September, the Northern District of Florida granted summary judgment against another set of class action plaintiffs who alleged that they relied not only on the HANDMADE nature of the vodka, but on the label’s statement that the product is made in “an old fashioned pot still.” The Court, finding that the plaintiffs had not backed up a single assertion other than proving that the accused label existed, granted summary judgment for the defendant, while also explaining that TITO’S HANDMADE is indeed made in an old fashioned pot still (a device dating back to the civil war), as opposed to the more recently devised “column still” method. Pye v. Fifth Generation, Inc., Case No. 4:14-cv-00493 (N.D. Fla. Sept. 27, 2016).
The only one of these cases with an active federal docket at the moment is in New York. In January, the Northern District of New York rejected the argument that Fifth Generation was immune from suit because the TITO’S HANDMADE label had been approved by federal authorities, and therefore refused to dismiss the plaintiff’s claim of deceptive acts and practices under N.Y. Gen. Bus. Law § 349. That case is pending. Singleton v. Fifth Generation, Inc., 2016 U.S. Dist. LEXIS 14000 (N.D.N.Y. Jan. 12, 2016).
When TITOMIROV Vodka applied to register the TITOMIROV mark, the original grounds for refusal were that it was primarily a surname and because of likelihood of confusion with the TITO’S HANDMADE vodka mark. TITOMIROV Vodka responded in an aggressive fashion, accusing the trademark examiner of “ethnic bias” and “racist argumentation.” The examiner stuck to his guns and subsequently issued a final office action refusing the mark but, a few months later, the refusal was reversed “for reasons unknown,” and the mark was published for opposition. Fifth Generation, the makers of TITO’S HANDMADE vodka, have stepped in and filed an opposition, which is pending. Fifth Generation Inc. v. Titomirov Vodka LLC, Opposition No. 91226034 (Trademark Trial & App. Bd.).
TRES VIDAS Tequila
TRES VIDAS Organic (the name translates to “three lives”) applied to register its logo for a tequila infused with vitamins. A trademark examiner refused registration because of the already-registered DOS VIDAS (“two lives”) word mark for tequila. The TTAB affirmed the refusal, finding that the goods were the same, and that the dominant element of each mark was identical (notwithstanding the applicant’s additional design element). The TTAB rejected the applicant’s argument that TRES VIDAS will be understood as referring to the Mesoamerican religious concept of three worlds. In re Tres Vidas Organic, Inc., 2016 TTAB LEXIS 379 (Trademark Trial & App. Bd. Aug. 5, 2016)
In March, Cleveland’s Platform Beer Company revealed that it would be releasing a limited-edition American Pale Ale called UNCONVENTIONALALE in conjunction with the upcoming Republican National Convention. A few weeks later, the Thirsty Dog Brewing Company of Akron announced its own “conservatively hopped” UNCONVENTIONAL ALE, “best served in red states.” The owners of the breweries reportedly got together and determined that Thirsty Dog came up with the name first and had already filed with the USPTO. The Platform Beer Company announced that “it is what it is” and changed the name of its convention-themed beer to “Paletriotic.”
WALKING RED Wine
Robert Kirkman, creator of The Walking Dead graphic novels, opposed the Bruners Farm and Winery’s application to register THE WALKING RED for its Kentucky wines. Kirkman argued that the wine mark was adopted with the express intent of calling to mind his zombie franchise, and that there was a likelihood of confusion, particularly as he has already licensed the WALKING DEAD mark for beer (a reference to the Terrapin Beer Company’s “Walking Dead” IPA, the “official beer of the undead”). Bruners has abandoned the application. Robert Kirkman, LLC v. Bruners Farm and Winery LLC, Opposition No. 91228240 (Trademark Trial & App. Bd.).
WHAT EXIT Wines
Those of us with New Jersey connections know the answer to the query, “What Exit?” (for me, it’s Exit 127 from the Parkway and Exit 10 from the Turnpike to Perth Amboy). Old York Cellars of Ringoes, New Jersey decided to capitalize on this frequently asked question with its line of WHAT EXIT wines, which has labels you can personalize to include the name of your town. Although Old York has held the registered mark for WHAT EXIT wines since 2012, the New Jersey Turnpike Authority recently penned a cease and desist letter alleging infringement of the GARDEN STATE PARKWAY logo. Old York responded by filing a declaratory judgment action in state court, alleging non-infringement. Old York also asserted that the Authority’s trademark registration was unenforceable because its statutory mandate did not extend to intellectual property licensing or other activities unrelated to traffic. The Authority removed the matter to the District of New Jersey, and then filed an answer and counterclaims in late November. Old York has also initiated a “Save What Exit wines” Twitter campaign, encouraging its fans to use the “ImNotConfusedNJTA” hashtag. DW Vineyards LLC v. New Jersey Turnpike Authority, Case No. 3:16-cv-08251 (D. N.J.).
Moet Hennessey owns a registered three-dimensional bottle design mark, including a white bottle with gold lettering, a black and gold ribbon design, and a fading silver diamond pattern towards the base. In February, ACCA Global, which sells a hibiscus sparkling wine in a white bottle, petitioned to cancel the mark. ACCA argued that the doctrine of aesthetic functionality precluded Moet Hennessey from acquiring rights in a “white” or “black” bottle. ACCA also argued that white was naturally associated with ice, and therefore white was descriptive of the fact that the product is intended to be consumed with ice. Thus, the argument goes, the registration of the white bottle trade dress creates an unfair competitive barrier to other manufacturers who wish to use white descriptively to indicate that their beverage should be consumed with ice. Moet Hennessey moved to dismiss the petition on the grounds that the mark, which consisted not just of one or two colors but of a complex design, was not alleged to be functional “as a whole.” ACCA failed to oppose the motion and the petition was dismissed. ACCA Global, LLC v. Moet Hennessey USA, Inc., Cancellation No. 92063127 (Trademark Trial & App. Bd.).
In January, Wilson Vineyards of California, owner of the WILSON VINEYARDS mark registered in 2003, filed a UDRP complaint with the National Arbitration Forum, seeking to wrestle the domain from Zachary Wilson and his Pennsylvania-based WILSON VINEYARD. In February, the arbitrator denied the transfer because there was no showing that the Pennsylvania entity lacked a legitimate interest in the name, especially seeing as it had been running an actual vineyard with that moniker since 2010. Wilson Vineyards, Inc. v. Wilson, 2016 NAFDD LEXIS 163 (NAF February 19, 2016). In April, the California company tried a second bite at the apple and filed a complaint in the Eastern District of Pennsylvania, alleging trademark infringement and cyber-squatting. The matter was voluntarily dismissed in June, and Zachary Wilson’s Pennsylvania winery is now called WAYVINE. Wilson Vineyards, Inc. v. Wilson Vineyard LLC, Case No. 2:16-cv-01198 (E.D. Pa.).
WINE BY COUGARS
The Walla Walla Wine Club, doing business as “Alumni Wine Clubs,” is in the business of creating mail order wine clubs in conjunction with University alumni associations; the idea is that Walla Walla gets access to the alumni network and in return donates part of the proceeds back to the association. In 2015, Walla Walla successfully registered the word mark WBC WINE BY COUGARS.COM for wine clubs. This didn’t sit well with the alumni association of Washington State (home of the Cougars). The alumni association apparently had indeed partnered with Walla Walla to create the wine club in 2006, but considered the name of the club to be its own property. The alumni association had already registered the name with the State of Washington and didn’t think that Walla Walla had any business owning a federal registration in the identical mark. Walla Walla, presumably in order to avoid upsetting a customer, surrendered its registration. Washington State University Alumni Association v. Walla Walla Wine Club, Cancellation No. 92062701 (Trademark Trial & App. Bd.).
WORLD OF BEER
WORLD OF BEER, a Florida-based franchisor of retail alcohol establishments, filed suit against certain Arizona franchisees in the Middle District of Florida, alleging that the franchisees had failed to pay several thousand dollars in outstanding fees in breach of their franchise agreements, and therefore they were now infringing the WORLD OF BEER trademarks. The defendants counterclaimed that WORLD OF BEER had failed to provide the assistance and advice required by the agreements, but instead had used the Arizona stores as “vehicles for disruptive trial and error gambits,” including experimental food service models. In late November, the parties agreed to submit the matter to arbitration. World of Beer Franchising, Inc. v. Public House Tempe, LLC, Case No. 6:16cv1570 (M.D. Fla.).
YETI Imperial Stout
In June, the Denver-based Great Divide Brewing Company, maker of YETI IMPERIAL STOUT, claimed that the Red Yeti Brewing Company’s name and logo infringed its registered trademark rights. Red Yeti filed an odd counterclaim, alleging that Great Divide’s YETI marks should be canceled because they suggested a false association with the famous 1967 amateur film from which the iconic “Big Foot” pose derives. Great Divide moved to dismiss this counterclaim for lack of standing (i.e., “what does that film have to do with you?”), but the parties settled in November before the motion could be heard. Great Divide Brewing Company v. Red Yeti Brewing Company, Inc., Case No. 4:16cv84 (S.D. Ind.).
Prior editions of the Trademark Year in Wine and Beer are available at the links below: