Too Late for Brooklyn Brewery to Pursue Brooklyn Brew Shop

In Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, [2020-2277] (October 27, 2021), the Federal Circuit affirmed in part, reversed in part; and remanded in part, a complicated cancellation and opposition proceeding brought by the Brewery against the Brew Shop.

Brewery registered BROOKLYN BREWERY for beer in 2006.  In 2009 Brew Shop began selling kits for making beer, as well as for wine and hard cider.  Between 2011 and 2015, Brewery and Brew Shop partnered on a number of projects, including the sale of co-branded beer making kits.  In 2011, Brew Shop registered BROOKLYN BREW SHOP for beer making kits.  In 2014 Brew Shop applied to register a stylized version of BROOKLYN BREW SHOP for beer making kits, and a wide variety of other products in classes 5 and 32, igniting the dispute.  Brewery then sought to cancel Brew Shop’s existing registration, and oppose Brew Shop’s pending application.

On appeal, Brew Shop challenged Brewery’s standing to appeal the dismissal of the opposition as to sanitizing preparations, and the Federal Circuit agreed, dismissing the appeal for lack of Article III standing.

Brewery contended that the Board erred by failing to enter judgment against Brew Shop on the Class 32 goods (including beer) that it deleted from its application, when it granted Brew Shop’s motion to amend.  Section 18 of the Lanham Act, 15 U.S.C. § 1068, gives the Board authority to, among other things, “modify the application or registration by limiting the goods or services specified therein.”  In determining whether to accept a proposed amendment to an identification that, while contested, is otherwise acceptable, the Board looks to see whether several circumstances are satisfied, including that the applicant consents to the entry of judgment on the grounds for opposition with respect to the broader identification of goods.  Brewery consented, but the Board did not, however, enter the judgment to which BBS consented. Its failure to do so appears to be inadvertent and is inconsistent with its practice.

The purpose of entering judgment on the deleted goods is to preclude Brew Shop from again seeking to register its mark for the deleted goods.  Brew Shop  mades no argument as to why entry of judgment on the deleted goods would be inappropriate, implying instead that formal entry of judgment is unnecessary, but the Federal Circuit remanded with direction for the Board to enter judgment in favor of Brewery.

On the cancellation of Brew Shop’s registration, the Board denied relief on grounds of laches and acquiescence.  Given Brewery’s delay, and awareness of, and participation in, Brew Shops sales of beer making kits. After what the Federal Circuit described as a thorough review of the evidence, the Board concluded that Brewery failed to establish inevitable confusion and dismissed the Section 2(d) claims in both the Cancellation and Registration as to the beer-making kits.

On appeal Brewery did not argue that the defenses of laches and acquiescence were unavailable, but rather that the Board erred in applying them.  In particular Brewery complained its acquiescence in the first registration, which disclaimed Brooklyn, should not affect the application.  Treating the marks as a whole, the Board found otherwise, and the Federal Circuit agreed.

Even if laches or acquiescence applied, Brewery argued that it overcame the defense by establishing inevitable confusion.  The Federal Circuit noted that a showing of inevitable confusion requires that there be no reasonable doubt as to likelihood of confusion.  In the end, the Federal Circuit found no legal error in the Board’s ultimate conclusion that Brewery failed to establish inevitable confusion as to the beer-making kits, and in the Board’s rejection of the likelihood-of-confusion claims.

Brewery also argued that the Board abused its discretion in refusing to consider its geographic descriptiveness claim.  However, the Board found that Brewery had not adequately pled the claim and warned that absent an amendment the case would go forward without the primarily geographically descriptive claim, and Brewery never amended its pleadings, so the Federal Circuit agreed with the Board’s refusal to address the claim.

Finally, Brewery argued that it adequately proved Brew Shop’s mark was merely descriptive.  The Board found that Brew Shop’s marks would not be perceived by prospective customers seeking brewing supplies and accessories as describing a quality, feature, function, or characteristic of the goods.  The Federal Circuit said that descriptiveness is not evaluated “in the abstract,” or broadly as to the class of goods that the applicant sells (brewing supplies), but rather it must be evaluated “in relation to the particular goods for which registration is sought.

The Federal Circuit said that BREW SHOP does not conjure up an image of a “beer-making kit” specifically. One can imagine any number of goods that might be purchased at a “place to buy brewing supplies,” including beer brewing equipment, testing and measuring devices, and beer ingredients. A “beer-making kit” does not immediately come to mind.

The Federal Circuit found that the Board’s conclusion that the presumption of inherent distinctiveness as to the registered mark was not overcome is supported by substantial evidence. The Federal Circuit did find that the Board erred in not considering whether Brew Shops mark had acquired distinctiveness, and remanding for the Board to determine whether Brew Shop had shown acquired distinctiveness. 

Descriptive Use or Infringement?

It was not April Fools joke — JaM Cellars, Inc. sued The Wine Group LLC for trademark infringement and unfair competition, complaining that Franzia’s BOLD & JAMMY boxed wine infringes their JaM trademark:

and Franzia’s RICH & BUTTERY wine infringed JaM’s BUTTER wine:

JaM’s name is a mash-up of the owner’s names:

while BOLD & JAMMY is arguably a description of Franzia’s wine, “jammy” (according to wikipedia) being a common descriptor: “Jammy: A wine that is rich in fruit but maybe lacking in tannins.” Is Franzia describing, infringing, or both?

Butter is arguably descriptive of JaM’s Butter Chardonay. JaM says:

According to wikipedia, Buttery, like jammy, is a common descriptor of wine: “Buttery: A wine that has gone through malolactic fermentation and has a rich, creamy mouthfeel with flavors reminiscent of butter.”

Again the question is whether Franzia is describing its product, infringing JaM’s marks, or both.

Franzia’s biggest vulnerability may come from the change in its packaging, which JaM attributes to an intent to trade off of JaM’s good will:

Both parties may need to brush upon

Both sides may need to brush up 15 USC 1115(b)(4), which provides:

That the use of the name, term, or device charged to be an infringement is a use, otherwise than as a mark, of the party’s individual name in his own business, or of the individual name of anyone in privity with such party, or of a term or device which is descriptive of and used fairly and in good faith only to describe the goods or services of such party, or their geographic origin

Use in Commerce for Infringement is Different than Use in Commerce for Registration

In Versatop Support Systems, LLC v. Georgia Expo, Inc., [2018-1208](April 19, 2019), the Federal Circuit reversed the district court’s finding that defendant’s advertising using plaintiff’s PIPE & DRAPE 2.0™ and 2.0™ trademarks did not constitute an infringement because advertising did not constitute a use in commerce.

Federal trademark infringement requires that the infringing mark be used in commerce. Relying on the definition of use in commerce in 15 USC 1127, which requires that the mark be placed on goods or containers, the district court concluded that defendant’s use of plaintiff’s marks in these advertisements:

did not constitute infringement because the plaintiff’s marks were not actually applied to products.

The Federal Circuit made quick work of this, first pointing out that the legislative history for the use in commerce definition expressly contemplated that it did not apply to infringement: “Clearly, how-ever, use of any type will continue to be considered in an infringement action.” The Federal Circuit noted that the Ninth Circuit has recognized the distinction between “use in commerce” as a requirement for federal trademark registration—as defined in Section 1127—and infringing uses of a mark. Treatises, such as McCarthy on Trademarks and Unfair Competition likewise recognizes that Section 1127 “defines the kinds of ‘use’ needed to acquire registerable trademark rights—not to infringe them.”

The Federal Circuit concluded that contrary to this precedent, the district court in this case incorrectly applied the definition of “use in commerce” that is included in the statute for purposes of trademark registration, instructing “[t]his definition does not apply to trademark infringement.”

Turning to the likelihood of confusion, the Federal Circuit found ample evidence infringement, so it not only reversed summary judgment, but entered judgment in favor of plaintiff.

Wipe that Smile Off Your Face, Cookie

On February 6, 2019, Eat’n Park Hospitality Group, Inc. sued Eleni’s NYC, Inc., in the Western District of Pennsylvania for infringing Eat’n Park’s registered smiley face trademark [Civil Action No. 2:19-cv-00131-MJH].

Eleni had previously licensed the smiley face from Eat’n Park, and the cookies on its website carry the registered design:

According to the Wikipedia and the Smithsonian Institution, the smiley face was created in 1963 by graphic artist Harvey Ross Ball, as a morale booster for the employees of State Mutual Life Assurance Company of Worcester, Massachusetts. The smiley, with a bright yellow background, dark oval eyes, full smile, and creases at the sides of the mouth, was imprinted on more than fifty million buttons and became familiar around the world.

While Eleni’s cookies appear to bear the registered mark, the question is whether consumers are likely to be confused. Eat’n Park has a federal trademark registration — several in fact — but they still have to prove a likelihood of confusion. Even though Eleni’s cookies use that design the answer may not be so clear, Given the ubiquity of the smilely as a decoration, and the fact that many cookies are decorated, would consumers perceive the smiley as trademark identifying the source or will they simply think it is a pretty cookie?

Given the popularity of the smiley, one would expect that Eat’n Park’s mark is very valuable, but like all trademark owners Eat’n Park needs to make sure that its mark is perceived as a mark and not merely a decoration. For this reason it is good idea for trademark owners to advertise their trademarks in addition to advertising their trademarked products.

Game of Groans

HBO, the producers of the popular television series GAME OF THRONES has filed an opposition [91244050] against two trademark applications filed by The Trustees of Rancho Santa Ana Botanic Garden to register the marks GAME OF THORNS and this stylized version:

HBO alleges that the Botanic Garden’s use of GAME OF THORNS is likely to cause confusion:

However unless the thought is that consumers won’t notice the difference between THRONES and THORNS, or are likely to believe that HBO misspelled its name, confusion seems unlikely.  HBO also alleges dilution:

It does not seem that a botanic garden is likely to tarnish the image of the world of Westeros and Essos, and as with the likelihood of confusion, tarnishment by blurring would seem to require that consumers won’t notice the difference between THRONES and THORNS, or are likely to believe that HBO misspelled its name.

The Botanic Garden is  clearly making a pun — one of those groan-inducing jokes based on words that sound similar but have dissimilar meanings.  While many regard puns as the lowest form of humor, are they prohibited by trademark law?  It seems that if most people get the joke, there can be no likelihood of confusion or dilution, because getting the joke relies upon knowing the difference between a throne and a thorn.  Not getting the joke, however, might indicate at last a possibility of confusion, and trademark law might apply.

While we don’t want trademark law interfering with good jokes, if it can stop bad jokes, that’s probably a good thing.  We will have to wait to see whether or not the TTAB gets the joke.

Beyoncé v. Feyonce — If Enough Consumers Get the Joke, There May not be a Likelihood of Confusion

In Beyoncé Giselle Knowles-Carter v. Feyonce, Inc., [16-CV-2532 (AJN)](September 30, 2018) the Southern District of New York denied summary judgment to plaintiff, the entertainer Beyoncé, against defendants for the sale of merchandise using the brand name “Feyonce” (rhymes with fiancé),  which defendants market to the engaged to be married.

There was no dispute that in marketing to fiance purchasers, defendants chose the formation “FEYONCE” in order to capitalize off of the exceedingly famous BEYONCE mark. However the district said that that alone does not establish a likelihood of confusion — the critical question was whether a rational consumer would mistakenly believe FEYONCE products are sponsored by or affiliated with BEYONCE products.

The court said: “A rational jury might or might not conclude that the pun here is sufficient to dispel any confusion among the purchasing public. Thus, there is a genuine dispute of material fact that requires denial of the motion for summary judgment.”

Intent to capitalize on fame is not enough, if enough rational consumers get the pun there may not be a likelihood of confusion.

The Real World is Irrelevant in Judging the Similarity Between DETROIT ATHLETIC CO. and DETROIT ATHLETIC CLUB

In In re Detroit Athletic Co., [2017-2361](September 10, 2018) the Federal Circuit affirmed the TTAB’s affirming the Patent and Trademark Office’s refusal to register
DETROIT ATHLETIC CO. for sports apparel retail services.

The Trademark Examiner refused registration of DETROIT ATHLETIC CO. in view of a prior registration on DETROIT ATHLETIC CLUB.  The TTAB affirmed, concluding that, “because the marks are similar, the goods and services are related, and the channels of trade and consumers overlap,” consumers are likely to be confused by the marks.   The Board considered four of the thirteen duPont factors relevant:  (A) similarity or dissimilarity of the marks; (B) similarity or dissimilarity and nature of the goods or services; (C) similarity or dissimilarity of trade channels; and (D) concurrent use without evidence of actual confusion.

On the similarity of the marks, the Federal Circuit found the TTAB’s finding that the marks “are nearly identical in terms of sound, appearance and commercial impression” was supported by substantial evidence.  The Federal Circuit undertook a detailed analysis of the marks, finding that when viewed in their entireties, the marks reveal an identical structure and a similar appearance, sound, connotation, and commercial impression.  The Federal Circuit rejected the argument that the difference between Co. and Club would allow consumers to distinguish the marks.  The Federal Circuit said that while the mere fact that “Co.” and “Club” were disclaimed from their respective does not give one license to simply ignore those words in the likelihood of confusion analysis, the TTAB did not err in focusing on the more dominant portions of the marks.  Moreover, the record showed that these terms did not serve source-identifying functions.

With respect to the similarity of the goods, the Federal Circuit agreed with the TTAB that while the goods and services are not identical, they substantially overlap, which weighs in favor of finding a likelihood of confusion. In response to applicant’s argument that consumers would have little problem distinguishing between DACo’s clothing store
and the Detroit Athletic Club’s private social club., the Federal Circuit said that the relevant inquiry in an ex parte proceeding focuses on the goods and services described in the application and registration, and not on real-world conditions.

With respect to trade channels, the Federal Circuit found that the Board’s determination that the Detroit Athletic Club’s clothing comprises the type of goods likely to be sold through applicant’s sports apparel retail services, was supported by substantial evidence.  Applicant argued that the Detroit Athletic Club sells clothing only to its club members and only in its gift shop located onsite, and thus this would prevent confusion among the public at large, but the Federal Circuit found this too, irrelevant, because confusion must be evaluated with an eye toward the channels specified in the application and registration, not those as they exist in the real world.  The Federal Circuit noted that to the extent applicant objects to the breadth of the goods or channels of trade described in the Detroit Athletic Club’s registration, that objection amounts to an attack on the registration’s validity, an attack better suited for resolution in a cancellation proceeding.

Finally, with respect to the lack of confusion during concurrent use, the Federal Circuit noted that the relevant test is likelihood of confusion, not actual confusion, so evidence
that the consuming public was not actually confused is legally relevant to the analysis, but it is not dispositive.  Further, the Federal Circuit’s analysis of applicant’s evidence did not establishe a lack of consumer confusion in commercially meaningful contexts.
The Federal Circuit therefore concluded that substantial evidence therefore supports the TTAB’s finding that the evidence purporting to show a lack of actual confusion was not sufficiently probative.

On balance, the factors supported a finding of likelihood of confusion.  The Federal Circuit rebuffed applicant’s argument that the Board erred by not addressing
all DuPont factors for which evidence was proffered, noting that it is well established that the Board need not consider every DuPont factor.  The Board is not required to expressly address each evidentiary item proffered by a party.





Don’t Try This at Home Boys and Girls — The TTAB is no Place for Amateurs

In Zheng Cai v. Diamond Hong, Inc., [2018-1688](August 27, 2018), the Federal Circuit affirmed the cancellation of the registration on WU DANG TAI CHI GREEN TEA” due to a likelihood confusion with Diamond Hong’s registered mark “TAI CHI.”

The TTAB found likelihood of confusion, giving limited consideration to Mr. Cai’s briefing because it “contraven[ed]” certain provisions of the Trademark Trial and Appeal Board
Manual of Procedure (“TBMP”).  Mr. Cai appealed the TTAB’s evidentiary ruling excluding evidence in his main brief, and its finding of likelihood of confusion.

The Federal Circuit reviews TTAB evidentiary rulings for abuse of discretion, and only reverses a TTAB ruling if it is (1) clearly unreasonable, arbitrary, or fanciful; (2) based on an erroneous conclusion of law; (3) premised on clearly erroneous findings of fact; or (4) the record contains no evidence on which the TTAB could rationally base its decision.

The TTAB considered the arguments presented in Mr. Cai’s Main Brief but did not consider the factual assertions and ‘figures’ displayed and discussed in Mr. Cai’s
brief, which “are not evidence introduced into the trial record.” The TTAB also did not consider Mr. Cai’s reply brief because the TMBP does not provide for such filings and gives the TTAB broad discretion in considering them.

Mr. Cai argued that the exclusive of his evidence was improper, but the Federal Circuit disagreed.  The Federal Circuit noted that although the procedural guidelines in the TBMP do not have the force of law, they are accorded a degree of deference to the extent that it has the “power to persuade,”  The TBMP provides that evidentiary
matters are resolved in accordance with the Federal Rules of Evidence, the relevant portions of the Federal Rules of Civil Procedure, the relevant provisions of Title
28 of the United States Code, and the rules of practice in trademark cases.   Mr. Cai’s Main Brief contained numerous assertions of fact, but this information is not evidence under any of the relevant rules.  With respect to his Reply Brief, the plain language of
the TBMP states that the TTAB is not required to permit a party in the position of defendant to file a reply brief.

One the substantive issue of likelihood of confusion, the Federal Circuit reviewed the applicable factors of the 13-factor du Pont test, and concluded that substantial evidence supports the TTAB’s findings with respect to each DuPont factor, and the TTAB did not
err as to its ultimate conclusion of likelihood of confusion.


Bad Vibes

A mobile marketing company has sued Kim Kardashian West’s fragrance company, KKW Fragrance, LLC in Chicago, claiming the celebrity’s VIBES line of perfume (left, below) infringes the company’s registered VIBES trademark and logo (right, below).

The marks are similar in both literal elements and display.  There are 500 registrations on marks including the word “vibes,” and 2532 registrations on marks containing thought or speech balloons, but plaintiff’s is the only one that contains both of these elements.  However, one wonders if plaintiff can make the case that consumers or perfume are likely to be confused by a mobile media company, or vice versa.  The Complaint references the use of mobile marketing to promote KKW’s fragrance, but is that enough to cause consumers to believe that the two businesses are in any way related.

If KKW was going to have a problem, one might have thought it would come from an owner of one of the 11 existing registration on VIBES for perfume, rather than a similarly named mobile marketing company.



Buc-ees’ Beaver Logo Infringed by Competitor’s Alligator Logo; The University of Florida and Lacoste Look Nervous

Buc-ee’s, Ltd. operator of a chain of convenience stores under the same name in Texas sued Shepherd Retail and several related competitors in the Southern District of Texas, alleging that the defendants’ Choke Canyon alligator logo infringed Buc-ee’s beaver logo.

In a jury trial that ended on May 22, Buc-ee’s succeeded in convincing the jury that the Choke Canyon’s alligator was confusingly similar to its beaver:

In what can only be attributed to “you had to be there,” the jury verdict is hard for the casual observer to comprehend, given the obvious differences in the logos.  Perhaps the incongruous result is attributable to the phrasing the jury instructions, which rather than directing an overall consideration and balancing of the applicable factors, suggests that each factor simply increases or decreases confusion.  For example, on the issue of similarity of the products or service, the instructions stated:

 This instruction tells the jury that the greater the similar between the products and services, the greater the likelihood of confusion.  This does not seem to be a correct analysis — the similarity of products or services alone does not increase the likelihood of confusion.  Since the parties are admittedly direct competitors, did this express instruction that similarity increases the likelihood of confusion, cause the jury to find otherwise dissimilar marks are confusingly similar?

It seems that post-trial motions and maybe even an appeal will be needed before we know whether or not an alligator is similar to an beaver.  Until then alligators everywhere cannot rest easy.