Thirsty for Clarity – Brand Confusion In The Beverage Category

The Trademark Trial and Appeal Board often consider wine, beer, and non-alcoholic beverages related when determining the likelihood of confusion despite there being no per se rule on the matter. Scott Hervey and Jamie Lincenberg discuss the TTAB’s long-standing opinion on this episode of The Briefing.

Read Scott’s article on the IP Law Blog. Watch this episode on the Weintraub YouTube channel here.

Show Notes:

Scott:
In October 2014, I wrote an article for our law firm’s blog, remember those? That discussed the Trademark Trial and Appeal Board’s tendency to find wine, beer, and non-alcoholic beverages related for the purpose of determining likelihood of confusion. Now, the T-TAB has repeatedly said that there is no per se rule that all beverages are related for Section 2D refusal purposes. But really? Now, most consumers see wine, beer, and non-alcoholic beverages as unrelated products and would not believe, even if they shared a similar trademark element, like a similar word or design, that they’re related or that they emanate from the same source. However, the Trademark Trial and Appeal Board seems to always find otherwise.

I’m Scott Hervey from Weintraub Tobin, and I’m joined today by my colleague and frequent Briefing contributor, Jamie Lincenberg. I thought it would be interesting to revisit this topic ten years later. So today, we’re going to take an updated look at beer, wine, water, and likelihood of confusion on today’s episode of The Briefing.

So, Jamie, welcome back.

Jamie:
Thank you, Scott. I’m happy to be here and to revisit this topic with you.

Scott:
Great. So, like all, one of the things I think the best place to start is at the beginning, and that’s with the 1992 decision in In re Saler Brew, Fron Salier. That case seems to be the first time that the Trademark Trial and Appeal Board showed that it was receptive to the argument that wine and beer are related for 2D likelihood of confusion purposes. In that case, the Trademark Trial and Appeal Board found that the marks Christopher Columbus for beer, confusingly similar to the mark Cristobal Cologne and Design for Sweet Wine. The T-TAB found persuasive third-party registrations introduced by the Trademark Examiner, showing that a number of companies have registered their marks for both beer and wine.

Jamie:
Following that case, the T-TAB adjudicated a number of non-precedential cases in which the T-TAB found beer and wine related. For example, in In Re Stone Street, LLC, the T-TAB found the mark Buckeye for wine, confusingly similar to the Mark Buckeye sparkling dry for beer. Similar to In Re Saylor Brow, the T-TAB found persuasive third-party registrations covering both beer and wine. The applicant in Stone Street argued that another federal circuit case regarding the Mumm champagne brand required a finding that beer and wine are not related. However, the T-TAB was not persuaded. The record in Mumm demonstrated the Mumm brand champagne to be a premium sparkling wine marketed by one of France’s top quality champagne producers. The record in Stone Street lacks any such distinction.

Scott:
Then, in 2011, the T-TAB issued a presidential opinion on the continuing conflict of beer and wine. Now, that case involved a refusal to register the Mark HP for wine based on the likelihood of confusion with the Mark HP and design for beer. The T-TAB found persuasive third-party registration submitted by the trademark examiner that covered both beer and wine, as well as third-party web pages for companies that make and sell both beer and wine. The T-TAB stated as follows: the third-party registration evidence and the website evidence together amply demonstrate the relatedness of beer and wine and show that consumers if they encounter both goods sold under confusingly similar marks, are likely to believe that they emanate from the same source.

Jamie:
Then 2013 was when the T-TAB began expanding the scope of goods related to wine and also likely beer to include water. In the case of Joel Gottwines versus Von Gott, the T-TAB addressed Gottwines’ opposition to Von Gott’s application for got light, for flat and carbonated drinking water, coconut water, and flavored mineral water, on the grounds that the applicant’s mark was confusingly similar to Joel Gott’s mark, Gott, G-O-T-T, for wine.

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

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

Scott:
Now, here we are in 2022. Well, I guess here we are a couple of years ago in 2022, the case of In re Rockaway drinks. Even though it’s a non-precedential case, it seems to firmly establish that beer, wine, non-alcoholic beverages, including sparkling waters of any kind, are related for likelihood of confusion purposes. In that case, both marks included the term Rockaway, although the cited mark was Rockaway Brewing Company with Brewing Company disclaimed. The T-TAB said that because both marks begin with the identical term Rockaway, it is agreed that the marks are similar in sound, appearance, connotation, and commercial impression.

Jamie:
Now, turning to the relatedness of the good. The T-TAB evaluated whether non-alcoholic water-based beverages and beer are similar enough to cause confusion among consumers. The board referenced the DuPont factors, specifically the second and third factors, which deal with the similarity of the goods and the channels through which they’re sold.

Scott:
Whether the goods are related for likelihood of confusion purposes hinges on whether consumers could be led to believe that the products come from the same source, even if they are not identical or are not directly competitive. The T-TAB examined evidence of breweries that sell both beer and non-alcoholic beverages like soda and sparkling water under the same brand names. For example, brands like Appalachian Brewing Company and Saint Arnold not only offer craft beers but also root beers and sodas. That showed that the market often blurs the lines between alcoholic and non-alcoholic beverage offerings.

Jamie:
The board also considered third-party registrations, where trademarks were registered for both beer and various non-alcoholic beverages. This supported the idea that these products might be perceived as related by the public, increasing that likelihood of confusion. Ultimately, the T-TAB’s decision emphasizes that it’s not just the nature of the goods, but also how they’re marketed and perceived by consumers that can create a likelihood of confusion. Even distinct products like beer and sparkling water might be seen as related when they’re sold under similar branding in the same venues.

Scott:
Ten years later, it seems that the relatedness creep within the beverage category continues. I think it’s fair to say that all types of beverages, whether they be non-alcoholic sparkling water, energy drinks, canned soft drinks, beer or wine, would probably be considered related, at least by the Trademark Trial and Appeal Board when it comes to refusing registration for likelihood of confusion. Also, it’s a reminder that when it comes to trademark law, it’s not just about what you’re selling, but about how your goods are positioned in the marketplace. The boundaries between product categories are often more fluid than they appear, and this can have real implications for trademark disputes and your trademark registration application.

Jamie:
All beverages are certainly not related in my mind, but for trademark purposes, I do think that these positions make sense.

Scott:
Yeah, it’s an important thing to remember that sometimes, the way consumers see the relatedness of products is not necessarily the way the Trademark Trial and Appeal Board sees the relatedness of those same products.

Jamie:
Right. Thanks, Scott.

Scott:
That’s all for today’s episode of The Briefing. Thank you, the listener or the viewer, for tuning in. We hope you found this episode to be informative and enjoyable. If you did, please remember to subscribe, leave us a review, and share this episode with your friends and colleagues. If you have any questions about the topics that we covered today, please leave us a comment.