For years, the TTAB has affirmed refusals of similar marks covering food and beverage offerings—finding such goods and services to be related. This includes many TTAB decisions finding that alcoholic and non-alcoholic beverages are related (see the TTABlog for a nice overview).
Patrón Spirits International AG v. Conyngham Brewing Co., Case No. 91226939 (TTAB June 8, 2018) on its face appeared to chart a different course.
In Patrón, the TTAB held in a non-precedential decision that registration of PIRATE PISS for “beer, ale and lager” in Class 32 was permissible, despite Patrón’s prior registrations for PYRAT and PYRAT RUM for “distilled spirits” and “rum” in Class 33. Does this mean that beer and distilled spirits such as rum are unrelated? Not so fast.
There are two factors unique to this case that may have heavily influenced the Board’s decision to dismiss the opposition: insufficient evidence and marks with distinct meanings.
1. Insufficient Evidence. According to the TTAB, the evidence proffered by Patrón was not substantial. The Board stated, “there is insufficient evidence of third parties using the same mark in connection with beer and rum, or evidence that a maker of rum also actually produces beer.” It continued by writing, “Opposer cannot evade its burden to prove relatedness by bootstrapping upon previous factual findings made in other decisions on different records.
The Board also noted evidentiary issues in the context of establishing the strength of the PYRAT mark. According to the Board’s decision, there were no declarations attesting to the strength and notoriety of the PYRAT mark—only “awards, advertisements, recipes…online retail stores…etc.” Without substantiation of any kind, the Board could “only rely on these materials for what they show on their face.
To the TTAB's point, Patrón submitted only 13 third-party registrations covering both beer and rum, and only six (6) of them were use-based registrations. Since non-use-based registrations are not considered by the Board, this amounted to a statistically insignificant number of third-party registrations. In a search of the PTO’s database on June 18, 2018, we located 25 live registrations covering Classes 32 and 33 that (a) include both “rum” and “beer” in the identifications and (b) are currently registered under Section 1(a) (use-basis). While some of these live registrations may not have been ideal candidates to submit, there were likely more use-based registrations that could have been included. Perhaps additional submissions would have improved Patrón’s position and helped to prove this important opposition factor.
2. Distinct Meanings. In an opposition proceeding, it’s important that opposers demonstrate that the marks at issue evoke similar meanings. Meaning is critical to the likelihood of confusion analysis to determine whether a consumer will be confused when encountering the two marks in the marketplace. Here, the Board found that PYRAT for rum “simply conjures a feeling of nostalgia for ‘pirates’ or ‘piracy,’…inasmuch as there is a strong association between rum and pirates.” In contrast, the Board found that PIRATE PISS for beer “conjures the vulgar image of urine from a pirate” and is “a humorous, self-deprecating description of a quality or strength of the beer.”
This case serves as a reminder of how the addition of a single, short term can significantly change the overall impression of a composite mark in the minds of the purchasing public. An overlapping term—even one that is the distinctive portion of a mark (PYRAT vs. PIRATE)—does not necessarily mean that an opposition will be a slam-dunk. There are other factors to consider, including how the introduction of differing additional terms (like PISS) can change the meaning of the mark as a whole.
When the facts specific to this case are considered, Patrón does not indicate sweeping changes in how food and beverage marks are viewed by the TTAB. And the fact that the Board opted not to make this case precedential emphasizes that food and beverage brand owners should not rely on this case to indicate that the Board is moving away from previous precedential decisions. Instead, we should continue to look to precedential decisions to assess how the TTAB generally approaches these cases.
In a precedential 2017 decision, the TTAB cancelled a federal trademark registration for TAO VODKA in connection with “alcoholic beverages except beers” on the grounds that it was likely to cause confusion with the TAO brand of restaurant and nightclub services. See Tao Licensing, LLC v. Bender Consulting Ltd. d/b/a/ Asian Pacific Beverages, 125 U.S.P.Q.2d 1043 (TTAB 2017). While non-use was also alleged, the TTAB noted that each ground provided “an independent basis to cancel [the] registration.” When evaluating the relatedness of the goods and services in Tao, the Board noted several factors, including:
- TAO restaurant and nightclub promoted and sold alcoholic drinks featuring vodka that included the brand in the name, “such as the ‘Tao-tini,’ ‘Tao-hito,’ [and] ‘Tao-apolitan’…;”
- TAO restaurant and nightclub “engages in joint promotional events at the TAO venues with vodka manufacturers;” and
- TAO restaurant and nightclub offers “bottle service” of vodka and other spirits.
Ultimately, the TTAB held that “consumers are accustomed to encountering alcoholic beverages…together with restaurant and nightclub services…under the same mark” and held that the goods and services were related, and the TAO VODKA mark and alcoholic goods created a likelihood of confusion with TAO mark and restaurant/nightclub services. The Tao decision is in line with a growing line of cases that acknowledge the relatedness of food and beverage goods and services.
Tip: The food and beverage industry remains a competitive area for brands. Before adopting a new food or beverage trademark for goods or services, it is important to conduct a clearance search to ensure your proposed brand will not conflict with an earlier user or registrant’s rights. Because food and beverage brands tend to be sold in the same stores within close physical proximity to one another, it is particularly important that trademarks be vetted before they are adopted to avoid unnecessary legal and rebranding costs.