The USPTO Trademark Trial and Appeals Board (TTAB) recently issued three relevant decisions to the wine, beer, and spirits industries. The decisions are summarized below.

• In In re Harlequin Enterprises Limited, Serial No. 86761280 (September 7, 2017) [not precedential], Applicant (Harlequin Enterprises Limited, a purveyor of romance novels) sought to register a design mark (similar to a book spine) that contained the terms VINTAGES BY HARLEQUIN (with the term “VINTAGES” disclaimed) for wine in International Class 33. The Examining Attorney originally issued a refusal under 2(d) of the Trademark Act on the grounds that Applicant’s mark resembled prior registration for the mark HARLEQUIN for liqueur. Applicant appealed to the TTAB and argued that its fame in connection with romance novels made the potential confusion between Applicant’s wine and Registrant’s liqueur unlikely. The Board found that the evidence presented by Applicant was “impressive and undisputed” in regard to the fame of the mark HARLEQUIN with respect to romance novels. See id. at 3. While the Board accepted and did not dispute that Applicant’s fame for the mark HARLEQUIN for romance novels, the Board argued that fame did not make confusion unlikely. Further, the Board said that the marks and devices used in promoting Applicant’s wine (which were not reflected in the drawing page for the proposed registration) were irrelevant to the Board’s analysis. The Board then entered a lengthy discussion in regard to whether or not a likelihood of confusion existed for HARLEQUIN (liqueurs) and VINTAGES BY HARLEQUIN (wines) by reviewing the similarities and dissimilarities of the marks, the relation of wine and liqueur, the amount of third-party registrations that produce both wine and liqueur under the same trademark registration. In the end, the Board found that confusion was likely because the marks were so similar and moved in similar trade channels. The 2(d) refusal to register was thus affirmed.
• In re Iron Hill Brewery, LLC, (September 8, 2017) Serial No. 86684857 [not precedential], Applicant (Iron Hill Brewery, LLC) sought to register the mark CRUSHER in standard characters for beer in International Class 32. The Trademark Examining Attorney originally refused registration for the mark under 2(d) on the grounds that Applicant’s mark resembled a mark for the registration THE CRUSHER on the Principal Register in standard characters for wines in International Class 33 and that registration would likely cause confusion, mistake, or deception. Applicant appealed and the Board quickly jumped into a likelihood of confusion analysis, detailing the similarities and dissimilarities of the marks and the similarity of the goods/channels of trade/consumers. Not surprisingly, the Board found that the marks were “nearly identical in sound, appearance, and commercial impression” thus weighing heavily in favor of finding a likelihood of confusion. In regard to the similarity of goods/channels of trade/consumers discussion, Applicant determined that a central issue was whether or not there is a “de facto” rule that wine and beer are the same for trademark registration purposes. Id. at 6. Both the Board and the Examining Attorney struck this down, but quoted In re Shell Oil Co. by reasoning that the use of an identical mark can lead to an assumption that there is a common source even when the goods are not competitive or intrinsically related. Id. In short, the Board found that there was a likelihood of confusion between Applicant’s and Registrants marks and thus affirmed the refusal of the Examining Attorney.
• In In re Fowles Wine Pty Ltd., Serial (September 15, 2017) No. 79157017 [not precedential], Applicant (Fowles Wine Pty Ltd.) sought to register FARM TO TABLE in standard characters for wine in International Class 33. The Trademark Examining Attorney refused registration, reasoning that FARM TO TABLE was merely descriptive of a feature or characteristic of the identified goods and that FARM TO TABLE did not function as a trademark to indicate the source of the goods. Applicant appealed and the Board. Examining Attorney submitted a significant amount of evidence using the phrase “farm to table” in connection with wines. See id. at 2–7. Applicant provided evidence of third-party registrations before the USPTO with respect to other food products that used the phrase FARM TO TABLE or similar. See id. at 9–10. The Board argued that some of the registrations were only issued on the  Supplemental Registrar (not the Principal) and that some of the TSDR printouts did not include, e.g., information on whether or not a mark had acquired distinctiveness under Section 2(f) or if any of the wording had been disclaimed. However, the Board considered much of the table as evidence at face value since the Examining Attorney did not previously object. The Board turned to the more substantial question of whether or not the applied-for mark served as a source identifier with respect to Applicant’s goods. In doing so, it noted that the “central question in determining whether Applicant’s proposed mark functions as a trademark is the commercial impression it makes on the relevant public.” Id. at 12. Upon review of the evidence, the Board agreed with the Examining Attorney that the proposed mark failed to function as a trademark. The Board reasoned that the phrase is used as a statement or slogan by many third parties to indicate local origin of a food or wine and that consumers are accustomed to seeing this phrase used on or in connection with food or wine from many different sources, which cut against the purpose of a trademark (i.e., to identify a single commercial source). After a discussion of mere descriptiveness, the Board ultimately determined that FARM TO TABLE failed to function as a mark as defined by the Trademark Act and was merely descriptive of the wines identified in Applicant’s application. Id. at 21. Thus, the Board affirmed the Examining Attorney’s refusal to register the mark.

For more information on wine law, alcohol law, or trademark law, please contact Lindsey Zahn.

DISCLAIMER: This blog post is for general information purposes only, is not intended to constitute legal advice, and no attorney-client relationship results. Please consult your own attorney for legal advice.