Just in time for the holiday season, we present our second annual Trademark Year in Wine and Beer. Whether you are planning a holiday party or just having some friends over, you are probably in the market for some liquid holiday cheer. Sure, you could make your beverage purchases based only on taste or price, but instead why not mix it up this year and pick a drink that was the subject of a recent notable trademark dispute? It’s a win-win: you will indirectly offset the costs of litigation, and in return you’ll get a conversation icebreaker, or at least you’ll have something to say to your guests besides “here, drink this.”
Our scope covers trademark and trademark-ish suits brought in U.S. Courts, proceedings before the Trademark Trial and Appeal Board (“TTAB”), arbitrations pursuant to the Uniform Domain Name Dispute Resolution Policy (“UDRP”) and a few other tidbits, dating back to December 2014, when we published our last edition. We generally stayed away from matters in their very early stages unless something about them caught our eye. The guide is organized alphabetically by disputed mark, so you can bring it to your local liquor store and compare it with their inventory. If an injunction has issued, we suggest you hurry.
John P. Sutton brought a pro se complaint against the Williamsburg Winery over its use of the ADAGIO mark for wine. The Eastern District of California found that, although Sutton had long ago registered ADAGIO, the evidence of his use of the mark consisted in large part of his affixing it to some bottles of a friend’s homemade wine, and that was apparently many years before the suit was filed. Finding therefore that Sutton had abandoned the mark, the Court granted Williamsburg’s motion for summary judgment. The Ninth Circuit affirmed in September. Sutton v. Williamsburg Winery, Ltd., 2015 U.S. App. LEXIS 17145 (9th Cir. 2015).
ADELLA & DELLA Wine
Sonoma County winery Adella Vineyards filed suit in the Northern District of California against Domaine Della Dale for trademark infringement. Adella alleged that Domaine Della Dale sold wine under the DELLA mark (registered with the USPTO in 2014), which infringed the ADELLA mark (registered in 2009 with the state of California). The parties reached a settlement fairly quickly, resulting in dismissal of the case and Domaine Della Dale’s voluntary cancellation of the DELLA registration. Adella Vineyards v. Domaine Della Dale LLC, Case No. 3:15-cv-00572 (N.D. Cal.).
ALAMO & TEXIAN Beer
We’ve previously reported on the spat between the Alamo Beer Company and the Texian Brewing Company. Both claimed the right to use the roof outline of the Alamo on their respective beer labels, but then the State of Texas intervened with the winning argument: Hey, that’s our roof. In April, the matter was finally settled and a consent order issued prohibiting both companies from further use of Alamo-related marks. Alamo Beer subsequently negotiated a license with the state, while Texian has changed its logo. Alamo Beer Company LLC. v. Old 300 Brewing LLC, Case No. 5:14-cv-285 (W.D. Tex.).
A Maine resident, who lives on Allagash Road in the town of Allagash, filed an application to register ALLAGASH WILD for jellies and jams. The Allagash Brewing Company of Portland, Maine opposed the registration on account of its own prior registrations for beer marks, including ALLAGASH WHITE, ALLAGASH BLACK, ALLAGASH TRIPEL and ALLAGASH CURIEUX. The TTAB sustained the opposition, finding that the marks were similar and that Allagash Brewing’s marks were strong (there was no evidence that any other food or beverage companies were using the name). The TTAB also found that the goods were related, citing evidence of other marks covering beer and also jellies or jams, and observing that “craft beer is commonly associated with food.” Allagash Brewing Company v. Pelletier, 2015 TTAB LEXIS 383 (Trademark Trial & App. Bd. Sept. 22, 2015).
ANCHOR STEAM & DROP ANCHOR Beer
The Drop Anchor Brewery started operations only in mid-2014, but the product really took off, rapidly becoming available in sixty locations in Washington state. However, this success attracted the notice of the Anchor Brewing Company of San Francisco, which is also known by the ANCHOR STEAM BEER mark, and which has been using ANCHOR-related marks since 1896. When Anchor senior contacted Drop Anchor junior about the issue, Drop Anchor felt it was “a compliment that we have gotten their attention,” and then quickly decided to change the name. On May 16, 2015, Drop Anchor’s first birthday, the brewery announced that it was rechristening itself the RIVER MILE 38 BREWING COMPANY.
APPLEWOOD Wine & Spirits
The family owners of the Applewood Winery of Warwick, New York were not amused when they found out that their new next door neighbor planned to call itself the Applewood Distillery. They must have been even less happy when, after they told the Distillery to knock it off, the Distillery took to Facebook and tried to spark a cyber-backlash against the Winery in order to shame it into abandoning its legal position. This had the opposite effect. In June, the Winery filed suit in the Southern District of New York against the Distillery, alleging trademark infringement and defamation. Since then, the case has been voluntarily withdrawn, the Winery is now selling vodka, and the Winery also appears to be running the “Applewood Distillery” Facebook page. We are assuming that this all points to an advantageous settlement for the Winery. Applewood Winery, LLC v. Applewood Distillery, LLC, Case No. 7:15-cv-04445 (SDNY).
APOTHEOSIS & APOTHIC Wine
The Ernest and Julio Gallo Winery, which has been marketing the gothic-themed APOTHIC brand wines since 2010, opposed the Occasio Winery’s application to register APOTHEOSIS for wine. The TTAB held that APOTHIC was not a famous mark, but was nevertheless “fairly strong.” The TTAB also agreed with Occasio that the marks had different meanings: “Apotheosis” means “the perfect form or example of something” while “Apothic” purportedly refers to a semi-mythical 13th Century wine storehouse called “Apotheca.” However, on balance the TTAB found that the marks in their entirety were “more similar than dissimilar,” especially where they will appear on identical goods, and sustained the opposition. E. & J. Gallo Winery v. Kinney Family Vintners LLC, 2015 TTAB LEXIS 84 (Trademark Trial & App. Bd. March 10, 2015).
ARMADA Sherry & ARMADALE Vodka
The AV Investment Group applied to register ARMADALE for vodka, and the application was opposed by Geo. G. Sandeman Sons on the ground that it was likely to be confused with ARMADA for sherry. Sandeman argued that, because sherry and vodka often appear together in recipes for certain drinks, they were related goods for trademark purposes. The TTAB was not persuaded by these recipes alone, but nevertheless found the goods to be related. Ultimately, however, the TTAB held that there was no likelihood of confusion and dismissed the opposition. Although the marks were similar in some respects, the TTAB found that consumers would recognize “armada” as an ordinary word meaning a fleet of ships, while “Armadale” was an unusual word with no common meaning that suggested an obscure geographical location. Geo G. Sandeman Sons & Co. v. AV Investment Group LLC, 2015 TTAB LEXIS 43 (Trademark Trial & App. Bd. Feb. 20, 2015).
The Bureau National Interprofessionnel du Cognac, a wing of the French ministry of agriculture, brought suit in the Central District of California against Prowood Wine & Spirits of Los Angeles, alleging trademark infringement, false advertising and related claims. The gist of the complaint was that Prowood’s ARMAN cognac is not really cognac, but rather a run-of-the-mill brandy. The parties reached a settlement in October. Bureau National Interprofessionnel due Cognac v. Prowood Wine & Spirits, Inc., Case No. 2:15-cv-03598 (C.D. Cal.).
The Atlas Brewing Company of Chicago opposed Atlas Brew Works’ application to register ATLAS for beer. The Opposer alleged that “Atlas” was primarily descriptive of a geographic area within Washington D.C., which is where the Applicant is located (“Atlas” is apparently an unofficial nickname of the H Street District). The TTAB rejected this argument, finding that consumers were unlikely to make the connection. The TTAB agreed with the Opposer that there was a likelihood of confusion between the marks, but it found that the Applicant was the senior user (the TTAB did not accept the launch dates of the Opposer’s Twitter and Facebook accounts as establishing priority). The petition was dismissed. Atlas Brewing Company, LLC v. Atlas Brew Works LLC, 2015 TTAB LEXIS 381 (Trademark Trial & App. Bd. Sept. 22, 2015).
BAD SPANIELS & JACK DANIEL’S
In 2014, 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. Presumably in order to make sure the dogs were not confused, the toys came with the disclaimer that “this product is not affiliated with Jack Daniel’s.” The whiskey company, which has a reputation as a polite trademark enforcer, 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 non-distinctive. As of this writing, VIP’s motion for summary judgment is pending. Other alcohol-themed VIP dog toys include Jose the Perro (shaped like Jose Cuervo tequila), Blue Cats Trippin (Pabst Blue Ribbon) and Heini Sniffn (Heineken). VIP Products LLC v. Jack Daniel’s Properties, 2015 U.S. Dist. LEXIS 64736 (D. Ariz. 2015).
BANDANA & RED BANDANA Wine
The Rutherford Wine Company, which owns the RED BANDANA mark for alcoholic beverages, filed a petition to cancel Cape Wine Ventures’ BANDANA mark. The TTAB agreed that the BANDANA mark should be canceled because the marks were confusingly similar and the goods were identical. Round Hill Cellars v. Cape Wine Ventures, LLC, 2015 TTAB LEXIS 385 (Trademark Trial & App. Bd. Sept. 23, 2015).
BARE BOTTLE Beer and Wine
The Bare Bottle Brewing Company of San Francisco got wind of the existence of the BareBottle winery in Napa Valley, which was using the domain name <barebottle.com>, and brought suit in the Northern District of California, alleging trademark infringement and cybersquatting. The matter was presumably settled quickly, because the case was dismissed and the disputed domain name now resolves to a website for the newly dubbed BARREL & INK winery. Bare Bottle Brewing Company, Inc. v. Bare Bottle Corporation, Case No. 4:15cv2585 (N.D. Cal.).
Conscious Cultures of Virginia applied to register the BAREFOOT BUCHA mark for its line of organic craft kombuchas. In July, the E. & J. Gallo Winery opposed the application, arguing that it was confusingly similar to eight registered marks associated with its BAREFOOT wines. The matter is pending. E. & J. Gallo Winery v. Conscious Cultures LLC, Opposition No. 91222763 (Trademark Trial & App. Bd.).
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 tried again by filing an application to register THE BEACHOUSE, A WINE BY DOUGLAS GREEN, and then allegedly threatened to bring legal action unless Beach House Winery signed a declaration that the newly applied-for mark was distinctive. Beach House Winery instead filed its own suit in the Southern District of California, alleging trademark infringement, dilution, injury to reputation and unfair business practices. The complaint also alleged actual confusion in the form of consumer complaints it has received about DGB’s wine. This case, as well as related proceedings before the TTAB, are ongoing as of this writing. Beach House Winery v. DGB Ltd., Case No. 3:15-cv-01228 (S.D. Cal.)
In October, Anheuser-Busch settled a class action matter that had been brought in the Southern District of Florida in 2013. The plaintiffs alleged that Anheuser-Busch deceptively marketed Beck’s beer as if it were made in Germany, and as having “German Quality,” when in fact it has been made in St. Louis since 2012. The terms of the settlement involved a payment to the class and a promise by Anheuser-Busch to include the phrase “Brewed in USA” on its product. Marty v. Anheuser-Busch Companies, LLC, Case No. 1:13-cv-23656 (S.D. Fla.).
BEER BARREL BOURBON
In May, Michigan’s New Holland Brewing brought a declaratory judgment action after having its application to register BEER BARREL BOURBON blocked by, and after receiving threats of a trademark infringement suit from, Denny’s Beer Barrel Pub, a restaurant in central Pennsylvania. The suit alleged that New Holland’s bourbon was in fact aged in beer barrels, and thus the descriptive name of the drink was fair use. The parties have since entered into a co-existence agreement, which has allowed New Holland to register its mark. New Holland Brewing Company, LLC v. Denny’s Beer Barrel Pub Inc., Case No. 1:15-cv-00477 (W.D. Mich.).
BELLA UNION & UNION Wine
The Oregon-based Union Wine Company sent a letter to FN Cellars complaining about its BELLA UNION mark for wine, and announcing that Union Wine may file a petition to cancel the mark. FN Cellars responded in May with a declaratory judgment action in the Northern District of California, alleging that there was no likelihood of confusion and that Union Wine, although it owned a registration for the UNION WINE COMPANY mark, did not actually use the name as a source identifier on its bottles. Union moved to dismiss for lack of subject matter jurisdiction, arguing that there was no case or controversy giving rise to jurisdiction over a declaratory judgment action, because its letter to FN Cellars was not a legal threat but a mere “professional courtesy.” The Court denied the motion. In October, the parties reached a settlement. FN Cellars LLC v. Union Wine Company, Case No. 3:15-cv-2301 (N.D. Cal.).
BETTY BLACK LAGER & BLACK BETTY STOUT
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. On Nebraska Brewing’s motion for summary judgment, the TTAB held that BLACK BETTY was distinctive as to beer, that Nebraska Brewing had priority, and that the marks were confusingly similar. However, the TTAB also found that there were genuine disputes of material fact with respect to Emerald City’s laches defense (Emerald City spent time and money promoting its mark in reliance on the lack of opposition to its registration), and recommended accelerated case resolution on this issue. Nebraska Brewing Co. v. Emerald City Beer Company, LLC, 2015 TTAB LEXIS 359 (Trademark Trial & App. Bd. Aug. 26, 2015).
BLACK DIRT Bourbon & Spirits
Black Dirt Distillery, a company spun off from the Warwick Valley Winery, brought suit against the Black Dirt Brewhouse restaurant, located about ten miles up the road, where you might go on a Saturday night to listen to music by the Black Dirt Bandits. Both parties are located in New York’s Black Dirt region, an area containing extremely fertile soil left over from a glacial lake bottom, which was once famous for the “black dirt” onions produced by Eastern European immigrant farmers. The Distillery’s complaint is focused on the restaurant’s promotion of “Black Dirt” cocktails containing “local” spirits, which allegedly confused customers into thinking they were drinking Black Dirt Distillery products. The matter settled quickly, and it appears both parties are still using the geographically descriptive moniker. Black Dirt Distilling, LLC v. Netsirk, LLC, Case No. 7:15-cv-01502 (SDNY).
BLACK FLAME Beer
In February, Three Floyds Brewing of Indiana filed an intent-to-use application for the BLACK FLAME mark for a limited-run imperial stout. This news made its way to the owners of the White Flame Brewing Company in Michigan, who also had an imperial stout called BLACK FLAME. Instead of filing an opposition, the White Flame guys got in the car and drove down to Indiana to talk it out with Three Floyds. Three Floyds bought lunch, and everything was resolved over a beer and a handshake. Three Floyds will not be bringing back its BLACK FLAME after this year.
BLACKHAWK Wine and BLACK HAWK STOUT
A Trademark Examining Attorney refused registration of BLACKHAWK for wine sold by Sonoma Estate Vintners, in light of the prior registration of BLACK HAWK STOUT for beer, which is one of several hawk-themed beers sold by the Mendocino Brewing Company. Sonoma Estates argued that the goods were not related, and submitted numerous examples of similar marks for wine and beer co-existing on the Principal Register, such as SLEEPING DOG WINES and SLEEPING DOG STOUT. The TTAB found that this evidence was relevant, but not persuasive, and affirmed the refusal. In re Sonoma Estate Vintners, LLC, 2015 TTAB LEXIS 304 (Jan. 9, 2015).
BLISHEN’S FIRE WHISKY and LUCKY MOONSHINE
In January, Warner Brothers (makers of the Harry Potter films) applied to register THE KING OF WHISKIES BLISHEN’S FIRE CINNAMON FLAVOURED WHISKY HANDCRAFTED 35% ALC. BY VOL. (70 PROOF) 750 ML. The fictional whiskey, previously available only to the over-21 set in Hogsmeade, is now on sale at the real-life Wizarding World of Harry Potter in Orlando. But one muggle distiller wasn’t so thrilled to see life imitating art. In May, the Kentucky Peerless Distilling Company requested an extension of time to oppose the application. We’re not sure why Kentucky Peerless was considering an opposition, but it may have had something to do with its “Cinnamon Fire” LUCKY MOONSHINE. In any event, nothing came of it and the extended time period expired, followed by a notice of allowance.
BLUE MOON Beer
In April, California resident Evan Parent, a “beer aficionado and home brewer,” brought a putative class action in California Superior Court against MillerCoors, which removed the matter to the Southern District of California. Parent alleged that MillerCoors had engaged in false advertising by representing on the bottles of Blue Moon beer that it was a “craft beer” produced by the “Blue Moon Brewing Co.” The complaint also alleged that the small Blue Moon Brewing Company facility, located within Coors Field in Colorado, is essentially a Potemkin brewery, and not the location where the beer is actually made. Parent claimed that he would have paid less for the beer had he known its true source. The Court granted MillerCoors’ motion to dismiss, noting that the company’s website prominently displays the Blue Moon product and that a reasonable consumer could not think that the words “craft beer” on the website indicated an “independently brewed, hand-crafted beer.” The Court gave Parent leave to amend his complaint in light of the ruling, and a new complaint was filed at the end of November. Parent v. MillerCoors LLC, 2015 U.S. Dist. LEXIS 145071 (S.D. Cal. 2015).
BOCK NESS MONSTER Beer
In January, Sierra Nevada’s application to register the BOCK NESS MONSTER mark for beer was opposed by the Monster Energy Company, which argued that the mark would be confused with the dozens if not hundreds of its MONSTER-related marks. Sierra Nevada apparently didn’t think the pun was worth the fight, because it abandoned the application a few days later. Monster Energy Company v. Sierra Nevada Brewing Co., Opposition NO. 91220176 (Trademark Trial & App. Bd.)
BOSTON 2024 Beer
In May, the Boston Beer Company (makers of Samuel Adams beer) may have jumped the starter’s pistol by filing an application for BOSTON 2024 for beer (presumably in anticipation of the 2024 Summer Olympics). The application made the rounds in the local media because the beer maker had only had a “very preliminary conversation” with the local Olympic committee, which was also called BOSTON 2024. But the issue soon became moot: Boston Beer abandoned the application in July, around the same time Boston abandoned its Olympic bid.
The Brooklyn Brewery, which has been using the BROOKLYN mark for beer since 1987, filed a UDRP action against Tobias Lenza of Staten Island, after Lenza registered the domain name <brooklynbrews.com>. Lenza argued that the word “brews” refers to a much larger category of beverages than beer, and that he was starting a blog about “fermented beverages of all types” made in Brooklyn, including kombucha, tea, cider and coffee. However, the panel found that there was no evidence that Lenza had taken any steps to create the blog prior to the UDRP complaint (the site had resolved to a list of pay-per-click links). The domain was ordered transferred to Brooklyn Brewery, and Lenza’s request for a finding of reverse domain name hijacking was denied. The Brooklyn Brewery Corporation v. Lenza, 2015 UDRP LEXIS 1117 (WIPO Oct. 21, 2015).
In a separate proceeding decided the same day, the Brooklyn Brewery was also successful in obtaining transfer of the domain <brooklynale.com> from a registrant who failed to answer the complaint. The Brooklyn Brewery Corporation v. Fisch, 2015 UDRP LEXIS 1109 (WIPO Oct. 21, 2015).
But Brooklyn Brewery was not able to achieve a UDRP hat trick. A few days later, a WIPO panel refused to transfer the domain <brooklynbeer.com>, even though it was admittedly being used as a pay-per-click site. The registrant had two basic arguments. First: lots of beer is made in Brooklyn. Second: Brooklyn Brewery used to own the <brooklynbeer.com> domain and voluntarily abandoned in 2002, so it was not in a position to complain that someone else registered the domain in bad faith, especially now that a dozen years have passed. The panel agreed with this latter argument. Although the domain was confusingly similar to Brooklyn Brewery’s mark, and although the registrant had no legitimate interest in the domain (the first two elements required for transfer), the panel could not find that it was registered in bad faith (the third element). One of the three panelists concurred in this result, but dissented because he also wanted to find that Brooklyn Brewery had engaged in reverse domain name hijacking, in light of the fact that Brooklyn Brewery’s complaint failed to disclose its own past ownership and subsequent abandonment of the domain name. The Brooklyn Brewery Corporation v. Matthews, 2015 UDRP LEIS 1138 (WIPO Oct. 28, 2015).
Rounding out Brooklyn Beer’s year, the brewery filed a trademark infringement action in November 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 has already refused registration of the BLACK OPS BREWING mark). Brooklyn Brewery’s motion for a preliminary injunction is pending as of this writing. The Brooklyn Brewery Corporation v. Black Ops Brewing, Inc., Case No. 1:15-cv-01656 (E.D. Cal.).
The Brutopia Brewery & Kitchen in Cranston, Rhode Island applied to register BRUTOPIA BREWERY for beer and “Pub” services. The Trademark Examining Attorney refused registration in light of the prior registration of the mark BREWTOPIA for beer festivals. The TTAB affirmed the refusal with respect to the BRUTOPIA mark for beer, because beer is complementary to the beer festival services offered by BREWTOPIA, at which festivals BRUTOPIA beer might be sold and cause confusion. However, the TTAB found no such problem with BRUTOPIA for pub services, noting that the record contained no evidence of a confusion-causing relationship between pubs and beer festivals. In re Grill 505 LLC, 2015 TTAB LEXIS 310 (Trademark Trial & App. Bd. March 31, 2015).
BUFFALO TRACE & BISON RIDGE Whiskey
Last year, the Sazerac Company, owner of the Buffalo Trace Distillery, filed a trademark infringement action in the Western District of Kentucky against the Crosby Lakes Spirits Company, complaining that Crosby’s BISON RIDGE whiskey was packaged so as to mimic BUFFALO TRACE’s trade dress. Crosby’s motion to transfer the case to its home turf of Minnesota was denied, and the parties proceeded to discovery. In February, the parties settled and stipulated to a dismissal of the case. Sazerac Company, Inc. v. Intercontinental Packaging Company, Case No. 3:14-cv-00205 (W.D. Ky.).
In October, Sazerac made similar claims against Fetzer Vineyards in the Northern District of California, alleging that Fetzer’s 1000 STORIES wine label infringed the BUFFALO TRACE trade dress because it contained a “confusingly similar buffalo.” Sazerac Company, Inc. v. Fetzer Vineyards, Case No. 3:15-cv-04618 (N.D. Cal.)
BUZZBALLZ & BOOZEBOX
Plaintiff BuzzBallz, which makes BUZZBALLZ premixed alcoholic beverages sold in cool little rounded cans, alleged that a former employee delivered certain trade secrets to competitor Jem Beverage Company, which then began marketing similar products under what BuzzBallz alleged to be the confusingly similar BOOZEBOX mark and trade dress. BuzzBallz sought an injunction in the Northern District of Texas. The Court held that the marks were not similar enough to indicate that BuzzBallz had a likelihood of success on the merits, and denied the motion. BuzzBallz, LLC v. JEM Bev. Co., LLC, 2015 U.S. Dist. LEXIS 83652 (N.D. Tex. 2015).
CANNONBALL Wine & CANNONBLAST Rum
In April, Diageo North America’s application to register CANNONBLAST for alcoholic beverages (as part of its CAPTAIN MORGAN rum line) was opposed by the Cannonball Wine Company, owner of the CANNONBALL mark for wine. The parties entered into settlement negotiations and, by October, came to an arrangement whereby Diageo amended its specification of goods to rum-based and malt-based beverages only. Cannonball Wine & Spirits, LLC v. Diageo North America, Inc., Opposition No. 91221647 (Trademark Trial & App. Bd.).
CAPTAIN MORGAN Rum
Speaking of Captain Morgan, Diageo North America also brought trademark and copyright infringement claims against California’s Captain Amsterdam, which describes itself as a maker of nutritional supplements and homeopathic remedies. The dispute focused on Captain Amsterdam’s adoption of a mascot character with more than a passing resemblance to Diageo’s Captain Morgan mascot. The matter was settled and voluntarily dismissed in October, and the good Captain Amsterdam has now sailed away from the pages of the defendant’s website. Diageo North America, Inc. v. Prep Enterprises LLC, Case No. 1:15-cv-06322 (SDNY).
Florida resident John Michael Brack has been trying to register ORANGECELLO-related marks for some time. He successfully canceled Sazerac’s 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, he had to abandon the mark after the TTAB affirmed refusal, finding that it 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 the TTAB affirmed the refusal to register this mark because Brack had failed to sign and verify the application. In June, Brack filed another application (presumably signed and verified) for SIMPLY ORANGECELLO. Most recently, the Trademark Examining Attorney has issued an office action refusing registration once again in light of the CARAVELLA ORANGECELLO mark. In re John Michael Brack, 2014 TTAB LEXIS 69 (Trademark Trial & App. Bd. March 31, 2015).
CAROLINA’S SUMMER HUMMER
B&B Spirits applied to register the CAROLINA’S SUMMER HUMMER mark for a vodka and citrus juice combination that had been concocted by two South Carolina residents (Bill & Birney) while stuck inside during the Blizzard of ‘78. A Trademark Examining Attorney refused registration, and the TTAB affirmed. There was no serious dispute that “Carolina” was geographically descriptive, but B&B argued that “Summer Hummer” was inherently distinctive, and called to mind a variety of summer-related meanings such as a hummingbird and a fastball pitch in baseball. But the TTAB, pointing to a half-dozen “Summer Hummer” recipes on the internet, found that the term was highly descriptive of the ingredients of a generally-known cocktail, and affirmed the refusal. In re B&B Spirits LLC, 2015 TTAB LEXIS 428 (Trademark Trial & App. Bd. Oct. 21, 2015).
In August, the French government’s Institute National de L’Origine et de la Qualite, guardian of the CHAMPAGNE brand, opposed the Vermont-based Mariposa Vineyards’ application to register CHAMPLAGNE for honey wines. Mariposa failed to respond to the opposition by the date appointed and, as of this writing, the TTAB has issued a notice of default. Institute National de l’Origine et de la Qualite, Comite Interprofessionnel du Vin de Champagne v. Luce, Opposition No. 91223493 (Trademark Trial & App. Bd.).
CHATEAU DIANA & VINEYARD CREEK “Wine Product”
In February, Vineyard Creek of Scarsdale filed suit against Chateau Diana of California in the Southern District of New York. Both parties make “wine product,” which under New York law is a beverage combining wine and other ingredients (such as fruit juice, water, sugar, etc.) and containing no more than 6% alcohol by volume. The complaint alleges that in late 2014, Chateau Diana altered its trade dress so as to resemble Vineyard Creek’s trade dress. This brand makeover, the complaint implies, was prompted by an incident in which television personality Hoda Kotb described a glass of Chateau Diana as “rancid” while appearing on the “Morning Joe” show. The matter settled in June, just before a scheduled preliminary injunction hearing. Vineyard Creek LLC v. Chateau Diana, LLC, Case No. 7:15-cv-01403 (S.D.N.Y.).
CHATEAU LAFITE ROTHSCHILD 1945
In September, the Second Circuit affirmed a jury’s fraud verdict (and a million dollar judgment in compensatory and punitive damages) against defendant Eric Greenberg. The case revolved around the two dozen bottles of supposedly valuable (but allegedly counterfeit) wine that Greenberg sold to billionaire Bill Koch, including a purported bottle of Chateau Lafite Rothschild 1945. Greenberg claimed that Koch could not reasonably have relied on his representations because he had disclaimed the provenance and authenticity of the wine before selling it. However, the Second Circuit held that the jury could have found that Greenberg possessed (but did not disclose) evidence that would have led Koch to discover that the wines were counterfeit. Koch v. Greenberg, 2015 U.S. App. LEXIS 17174 (2d Cir. 2015).
CHK Kosher Wines
The Vaad Hakashrus Crown Heights holds the registered certification mark CHK, which it uses to certify that restaurants, food and beverage products are kosher. In October, the organization filed an infringement suit in the Eastern District of New York against about a dozen businesses it alleges use unauthorized CHK certifications. Some of the defendants are liquor distributors that have allegedly wrongly affixed the mark to various wine labels. The matter is pending. Vaad Hakashrus Crown Heights, Inc. v. Braun, Case No. 1:15-cv-05857 (E.D.N.Y.).
COCOMO Tequila & KOKOMO Wine
The TTAB affirmed refusal of Proximo Spirits’ application to register COCOMO for tequila on the ground that it was likely to cause confusion with Kokomo Winery’s mark for KOKOMO wine. Both marks are pronounced the same way and differ only in the use of the letter “C” versus the letter “K.” The applicant argued that Kokomo was a specific geographical location, while “Cocomo” suggested a more tropical theme. However, the TTAB found that nobody would recognize KOKOMO as a real location (sorry, Kokomo, Indiana) and it was more likely consumers would see both marks as a reference to coconuts or cocoa. The TTAB also found the goods to be related and to travel in similar channels, and noted the existence of several registrations covering both wine and tequila. Sadly, the TTAB made no mention of the Beach Boys song. In re Proximo Spirits, Inc., 2015 TTAB LEXIS 72 (Trademark Trial & App. Bd. Mar. 16, 2015).
The Institute National et de l’Origine et de la Qualité opposed the application of Winery Associates Southeast to register DOMAIN CHARLEMAGNE for sparkling wines. The Institute alleged that CHARLEMAGNE and CORTON-CHARLEMAGNE were well-known French appellations of origin, understood by wine drinkers for centuries to signify wine from a specific sub-region of Burgundy. Thus, the opposition argued, the DOMAIN CHARLEMAGNE mark will cause confusion as to the source of Winery Associates’ products (which appear to come from North Carolina). Winery Associates defaulted, and the opposition was sustained. Institute National et de l’Origine et de la Qualité, Syndicat de defense des terroirs de Corton v. Winery Associates Southeast, Inc., Opposition No. 91223261 (Trademark Trial & App. Bd).
COW CREEK Beer & BULL CREEK Beer
A Trademark Examining Attorney refused Twisted X Brewing Company’s application to register the COW CREEK mark for beer on the ground that it was likely to cause confusion with the BULL CREEK BREWING word mark and logo. Twisted X argued that the overall commercial impressions given by the marks were different, in part because everyone knows that a bull is male and a cow female. However, the TTAB affirmed the refusal because the purchasers of these identical goods were likely to be unsophisticated, because both names referred to a creek named after a bovine animal and because, in some dictionaries, the definition of “cow” extends to “a domestic bovine animal regardless of sex.” In re: BWBC, Inc., 2015 TTAB LEXIS 145 (Trademark Trial & App. Bd. May 19, 2015).
Last Year, Beckstoffer Vineyards of California brought a trademark infringement action against Natural Selection 357 in the Northern District of California. The case involved competing claims to the legacy of Dr. George Belden Crane, a 19th Century Napa Valley viticulturist. Beckstoffer alleged that it owns most of the vineyard where Crane started farming in 1858, and it uses the marks OLD CRANE, OLD CRANE RANCH and DR. CRANE. The complaint further alleged that Natural Selection 357, which is selling wine under the G.B. CRANE mark, is a Georgey-come-lately that only recently purchased another portion of Crane’s original holding. The matter settled in July of this year. Salvestrin Wine Company, LLC v. Natural Selection 357, LLC, Case No. 3:14-cv-05409 (N.D. Cal.).
CRITERION COLLECTION Wines
In May, the Winery Exchange, a private brand wine maker, registered the CRITERION mark for wine without opposition. However, when the wines were actually sold at Whole Foods, they were called the CRITERION COLLECTION. A home video distributor, also called Criterion Collection, demanded that the name be changed. When demand letters didn’t work, the video distributor filed a trademark infringement action in the Southern District of New York. In late October, the parties announced a settlement on undisclosed terms. The Criterion Collection, Inc. v. Whole Foods Market, Inc., Case No. 1:15-cv-07132 (S.D.N.Y.).
CROWN ROYAL & CROWN CLUB Whiskey
At the time we published our 2014 Trademark Year in Wine and Beer, a jury trial was taking place in the Southern District of Texas with respect to trademark infringement claims by Diageo North America, maker of CROWN ROYAL whiskey, against Mexcor, the maker of TEXAS CROWN CLUB whiskey (and other state-themed drinks). Diageo alleged that both its name and its velvet drawstring bag trade dress were infringed by Mexcor’s products. On December 16, 2014, the jury returned a verdict in favor of Diageo, including damages of over four hundred thousand dollars. The Court subsequently issued a permanent injunction, and Mexcor has filed an appeal with the Fifth Circuit. Diageo North America v. Mexcor, Inc., Case No. 4:13-cv-00856 (S.D. Tex.).
When the Daredevil Brewing Company of Indianapolis went to register domain names, it found that <daredevilbrewing.com> had been already been snapped up by a Canadian resident. Daredevil brought a UDRP complaint before the National Arbitration forum, asking that the domain be transferred. Daredevil alleged that the registrant, who did not respond to the complaint, is in the business of developing “artificial value for domain names and selling them for profit” in bad faith, in other words, a professional squatter. The panel found that the domain was confusingly similar to Daredevil’s trademark. However, the domain was registered prior to Daredevil’s earliest trademark filing, so there was insufficient evidence from which to infer bad faith. The domain remained with the registrant. Daredevil Brewing Company, LLC v. O’Brien, 2015 NAFDD LEXIS 439 (NAF April 23, 2015).
DARK ‘N STORMY
In September, Gosling Brothers Limited of Bermuda filed a trademark infringement action in the District of Massachusetts against Pernod, alleging infringement of Gosling’s family of DARK ‘N STORMY marks. The complaint claimed that the Dark ‘N Stormy cocktail has its origins in a post-World War I ginger beer factory located in the Royal Naval Officer’s Club in Bermuda. The ginger beer was combined with Gosling’s Black Seal Rum, a local favorite in Bermuda since shortly after 1806, when the merchant ship carrying businessman James Gosling veered off course on its way to Virginia. The basis for the suit was Pernod’s promotion of a “Dark ‘N Stormy” recipe in association with its Malibu Rum brand. The matter was settled in November, and the case dismissed. Gosling Brothers Limited v. Pernod Ricard USA, LLC, Case No. 1:15-cv-13360 (D. Mass.).
DARK HORSE Whiskey & Beer
Although the Kansas-based Dark Horse Distillery knew about Michigan’s Dark Horse Brewing Company before it named itself, it barreled ahead under the assumption that nobody would be confused because beer and whiskey are different drinks. But the Brewery didn’t agree and brought suit in the Western District of Michigan. After denying the Distillery’s motion to dismiss for lack of personal jurisdiction, the Court found that there was a genuine issue of material fact as to the relatedness of beer and whiskey. A jury later determined that the products were related, and concluded that the Distillery had infringed the Brewery’s trademark. After the verdict, the parties entered into a settlement agreement allowing the Distillery to sell off its remaining inventory before the end of 2015. Mor-Dall Enters. v. Dark Horse Distillery LLC, 2015 U.S. Dist. LEXIS 22243 (W.D. Mich. 2015).
In April, Joseph Phelps Vineyards filed a trademark action alleging that Moet Hennessy was infringing its registered DELICE mark for wine by marketing a new sweet sparkling wine called DÉLICE. The matter was settled in July, and Moet Hennessy has abandoned its application to register the mark. Joseph Phelps Vineyards LLC v. Moet Hennessy USA Inc. et al., Case No. 2:15-cv-02803 (C.D. Cal.)
Dogfish Head Marketing held a registered trademark for DOGFISH HEAD in connection with beer and beer-related goods and services. Dogfish maintains a website at <dogfish.com>, but it also wanted <dogfish.net>, which was being used to provide links to hunting sites. After Dogfish filed a UDRP complaint, a National Arbitration Forum panel found that the domain was confusingly similar to Dogfish’s mark. However, there was no evidence that the registrant was targeting Dogfish’s customers or providing beer-related links, nor was there evidence that the registrant made a habit of buying up domain names with brand marks. Therefore, there was insufficient proof of bad faith and the transfer of the domain was denied. Dogfish appears to have purchased the domain from the registrant since then. Dogfish Head Marketing, LLC v. Steitieh, 2015 NAFDD LEXIS 559 (NAF May 27, 2015).
DOUBLE BARRELED & DOUBLE BARREL BOURBON
Prichard’s Distillery in Nashville was involved in two disputes this year over its DOUBLE BARRELED mark for bourbon. First, it filed a complaint against Yellow Rose Distilling of Houston, maker of YELLOW ROSE DOUBLE BARREL Bourbon. That matter resolved in April with Yellow Rose agreeing to a permanent injunction against its continued use of the phrase. Prichard’s Distillery, Inc. v. Yellow Rose Distilling, Inc., Case No. 3:14-cv-02155 (M.D. Tenn.).
Prichard’s also picked a fight with the Sazerac Company, a far less pliant defendant, over Sazerac’s “A. Smith Bowman Limited Edition Double Barrel Bourbon Whiskey.” Sazerac’s motion for summary judgment is pending. Prichard’s Distillery, Inc. v. Sazerac Company, Inc., Case No. 3:14-cv-01646 (M.D. Tenn.).
DRINK OUTSIDE THE BOX
Last year, the sustainability-minded Bonfire Wines applied to register the slogan DRINK OUTSIDE THE BOX for its pouch containers of wine. After the mark was published for opposition, the owners of the Croxley’s Ale House chain spoke up and argued that it infringed Croxley’s registered mark DRINK . . . OUTSIDE THE BOX for restaurant services. Bonfire has since abandoned its application. A percentage of Bonfire’s profits go to the distribution of these cool vests for the transport of clean drinking water. Croxley’s AH, Inc. v. Bonfire Wines, LLC, Opposition No. 86408948 (Trademark Trial & App. Bd.).
DUFF BEER & MILTONDUFF Whiskey
In September, Twentieth Century Fox opposed the application of Allied Domecq Spirits & Wine to register MILTONDUFF for alcoholic beverages except beer. The entertainment giant alleged that the mark will be confused with its Simpsons-related marks for beverages, including DUFF, DUFF BEER, DUFF LIGHT, DUFF DRY and CAN’T GET ENOUGH OF THAT WONDERFUL DUFF. Fox has promoted various beverages under these marks since 2007 (including actual beer and an energy drink), but claims priority back to 1990, when the fictional DUFF mark first appeared on the series. Milton Duff Whisky claims to have a much longer history, established as an independent distillery in 1824 and acquired by a series of companies along the way. However, it appears that one of those companies let an earlier registration for MILTON-DUFF expire in 1993. The matter is pending. Twentieth Century Fox Film Corporation v. Allied Domecq Spirits & Wine Limited, Opposition No. 91224005 (Trademark Trial & App. Bd.).
ERNEST & JULIO GALLO Winery
The Ernest and Julio Gallo Winery complained to the National Arbitration Forum, in accordance with the UDRP, about the registration of the domain name <galloglass.com>. In a short opinion, the arbitrator declared the respondent to be in default and ordered the domain transferred to the wine maker. It is now used for Gallo Glass Co., the winery’s bottle-making subsidiary. E. & J. Gallo Winery v. Domain Administrator, 2014 NAFDD LEXIS 4835 (NAF Dec. 8, 2014).
FINCA AUREA & AUREA Wine
The TTAB affirmed the refusal to register the name of Argentinian winery FINCA AUREA (the translation of which is “Golden Vineyard”) in view of the AUREA mark for wine, previously-registered by Mary Agee’s Aurea Estate Wines. The Applicant argued that Agee’s mark already co-existed with other “Aurea” marks for wine, such as DOMUS AUREA, so why not one more? But the TTAB rejected this argument because the other marks were not properly made part of the record. Evidentiary technicalities notwithstanding, the architectural design of the Finca Aurea is worth a peek. In re Roberto Oreste Antonio Busnelli, 2015 TTAB LEXIS 34 (Trademark Trial & App. Bd. Feb. 20, 2015).
FIREBALL & TENNESSEE FIRE Whiskey, FIREFLASK Malt Beverage
In August, the Sazerac Company brought a trademark infringement action in the Western District of Kentucky against Stout Brewing of North Carolina. The complaint alleged that Stout was using similar packaging and a similar name to pass off its confusingly similar FIRE FLASK malt beverage as Sazerac’s FIREBALL cinnamon whiskey. The matter settled in September and the case was dismissed. Stout has kept the name but changed the packaging. Sazerac Company, Inc. v. Stout Brewing Company, LLC, Case No. 4:15-cv-00107 (W.D. Ky.).
On November 23, 2015, Sazerac filed a complaint against Jack Daniel’s, alleging trademark infringement and false advertising, and asserting that Jack Daniel’s improperly used Sazerac’s FIREBALL word mark in the text of online ads in order to redirect consumers to its competing product, TENNESSEE Fire Whiskey. The matter is pending. Sazerac Brands, LLC v. Jack Daniel’s Properties, Inc., Case No. 3:15-cv-00849 (W.D. Ky.).
The Waiwera company of New Zealand applied to register GINGERELLA for vodka with a “nose of fresh ginger and a soft tone of orange and gingerbread.” The Application was refused because of an existing GINGERELLA mark for carbonated soft drinks, owned by a different New Zealand company. Waiwera argued on appeal that the earlier GINGERELLA mark, which consisted of the generic word ginger and the common diminutive “-ella,” was weak and “highly suggestive,” so it should not be protected beyond identical goods. But the TTAB affirmed the refusal, holding that likelihood of confusion should be avoided even among weak marks, and that the goods (vodka and soft drinks) were complementary in the minds of consumers because they were commonly used together to prepare mixed drinks. In re Waiwera LLC, 2015 TTAB LEXIS 143 (Trademark Trial & App. Bd. May 15, 2015)
GREAT MINDS DRINK ALIKE
The Great Divide Brewing Company of Denver registered its GREAT MINDS DRINK ALIKE slogan in 2002, and last December it took exception when the “Lager Heads” pub in Virginia Beach began using the slogan “Great Minds Eat & Drink Alike.” Great Divide filed suit in the District of Colorado, and Lager Heads moved to dismiss for lack of personal jurisdiction. Lager Heads had no restaurant or other business in Colorado, but Great Divide argued that it should be subject to the Court’s jurisdiction because the Lager Heads website allowed Internet users across the country to view “infringing phrases,” to sign up for a mailing list, and to buy gift cards (including one that had been sold to an IP address located in Colorado). The Court allowed the motion to dismiss, finding that the website was insufficient for specific personal jurisdiction because nothing on the site manifested an intent to do business in Colorado. In so ruling, the Court doubted whether the Zippo interactivity test for personal jurisdiction applied in the Tenth Circuit, and in any held that it would not apply in this case because “something more” was lacking. Great Divide Brewing Co. v. Gold Key/PHR Food Servs., LLC, 2014 U.S. Dist. LEXIS 115493 (D. Colo. 2015).
GREAT WHITE & MAD BEACH Beer
As we reported last year, Lost Coast Brewery’s shark-infested infringement action in the Northern District of California against the Aviator Brewing Company was dismissed for lack of personal jurisdiction. Aviator then filed a declaratory judgment action in its home court, the Eastern District of North Carolina, seeking a declaration of non-infringement. The dispute concerned two beer labels that the Court found “looked nothing like” except that both had a picture of a shark. Nevertheless, the Court refused to grant early summary judgment for Aviator because Lost Coast represented, pursuant to Fed. R. Civ. P. 56(d), that it needed additional discovery. However, the Court warned Lost Coast that it likely would be on the hook for both parties’ attorneys’ fees if it went ahead with this discovery and did not ultimately prevail. Lost Coast likely saw its own blood in the water and worked out a stipulation of dismissal. Aviator Brewing Co. v. Table Bluff Brewing, Inc., 2015 U.S. Dist. LEXIS 99232 (E.D.N.C. 2015).
We’ve previously discussed the dispute between Door Peninsula Winery and Illinois River Winery over the HALLOWINE mark for an apple-spiced seasonal beverage. We noted last year that Illinois River’s product appeared still to be for sale, even after the Seventh Circuit had affirmed the grant of Door Peninsula’s motion for an permanent injunction. Well, Door Peninsula noticed it too, and brought a motion for contempt, which the Eastern District of Wisconsin granted in October. C&N Corp. v. Kane, 2015 U.S. Dist. LEXIS 144179 (E.D. Wisc. 2015).
HARLEM BREWING & HARLEM BLUE Beer
In 2013, the “Neighborhood Original” Harlem Brewing Company registered the HARLEM BREWING COMPANY mark for beer, which it claimed to have been using since 2001. In late 2014, rival Harlem Brew House registered its own HARLEM BLUE PREMIUM BEER mark and then petitioned to cancel the HARLEM BREWING COMPANY mark, arguing that it is geographically misdescriptive because the Harlem Brewing Company beer is actually bottled in Saratoga Springs. In August, the cancellation proceeding was suspended pending the outcome of a civil action between the parties in the Southern District of New York. As of this writing, both matters are pending. Harlem Brewing Company, LLC v. Riley, Case No. 1:15-cv-03081 (SDNY); Harlem Brew House LLC v. Harlem Brewing Company, LLC, Cancellation No. 92060813 (Trademark Trial & App. Bd.).
HEAVEN HILL & HILHAVEN Whiskey
In 2001, film producer Brett Ratner purchased the Hilhaven Lodge, a famous Beverly Hills home built in the 1920’s, which over the years has served as the residence of Ingrid Bergman, the locus of “chemically altered” parties hosted by Allan Carr, and the site of Ratner’s own star-studded celebrity photo booth. Ratner filed an intent-to-use application for the marks HILHAVEN LODGE and THE HILHAVEN for alcoholic beverages, and then entered into negotiations with Diageo North America to market a HILHAVEN whiskey. Heaven Hill Distilleries of Kentucky learned of these plans and sent a cease and desist letter on Christmas Eve (really, Heaven Hill?), claiming that the new product would be too confusingly similar to its HEAVEN HILL-branded beverages. Ratner responded by filing suit in the Central District of California, seeking a declaration of non-infringement. The Court ushered the parties into early mediation and, in July, they announced a settlement. Ratner v. Heaven Hill Distilleries, Inc., Case No. 2:15-cv-00849 (C.D. Cal.).
Staatliches Hofbräuhaus is a state-owned brewery in Bavaria, founded in 1589 by Duke Wilhelm V. In June, the brewery filed a UDRP complaint with WIPO, seeking transfer of the domain <hofbraubeer.com>, which the registrant had offered to sell for $6,500. The registrant did not formally answer the complaint, but did send WIPO an email stating: “I have settled this issue with Fred . . .” (apparently referring to Fred Schumacher, the president of the brewery’s American subsidiary). The panel did not regard this as a formal notice of settlement and trudged ahead anyway. It found that the domain, which resolved to sponsored links for other beer makers, was registered in bad faith, and ordered that it be transferred to the brewery. Staatliches Hofbräuhaus v. Bindal, 2015 UDRP LEXIS 848 (WIPO Aug. 31, 2015).
HOPPER’S DELIGHT, HOPPERS & DELIGHT Beer
Three Spirits Brewery of North Carolina sought registration of HOPPER’S DELIGHT for beer, which the Trademark Examining Attorney refused in view of the already-registered HOPPERS and DELIGHT marks for beer. On appeal, Three Spirits argued that its mark created a distinct commercial impression because it was a parody of the well-known song “Rapper’s Delight.” The TTAB acknowledged that the “song has some popularity in the U.S.,” but the association with the song was not as obvious as, say, the WRAPPER’S DELIGHT mark. The TTAB affirmed the refusal, finding that there was a likelihood of confusion with the HOPPERS mark, and also that consumers might think HOPPER’S DELIGHT is just a “hoppier” form of DELIGHT beer, made by the Hudepohl Brewing Company of Cincinnati (where it is actually known as “Hudy Delight”). A few days after the decision, another application for a mark incorporating HOPPER’S DELIGHT was filed, this one by Mad Scientists Brewing Partners of Brooklyn. In re Three Spirits Brewery LLC, 2015 TTAB LEXIS 224 (Trademark Trial & App. Bd. July 15, 2015)
A Trademark Examining Attorney refused an application to register HOUSE BEER for retail beer sales because it was likely to cause confusion with the identical HOUSE BEER mark, owned by California’s House Brewing company, which had been registered while the Applicant’s application was pending. The Applicant argued that its application should have been allowed to proceed to publication first because the House Brewing application, although filed first, was subsequently amended to seek registration on the Supplemental Register. Therefore, the effective filing date of House Brewing’s application should have been amended to whenever an allegation of first use was filed, pursuant to 37 C.F.R. § 2.75(b), which occurred much later. Are you following this? The TTAB agreed with the Applicant’s analysis but nevertheless held that the Examining Attorney’s refusal was appropriate despite this “procedural mishap.” The TTAB stated that the appropriate remedy for the Applicant would be first to seek cancellation of the House Brewing mark in an inter partes challenge, but it also stated that the Applicant would probably lose such a challenge because a mere error in the examination procedure would not be grounds for cancellation. In re House Beer LLC, 2015 TTAB LEXIS 66 (Trademark Trial & App. Bd. March 27, 2015).
The Tropical Isle restaurant is the “home of the Hand Grenade, New Orleans’ most powerful drink,” a melon-flavored concoction with an otherwise secret recipe. The Hand Grenade is served in grenade-shaped cups, the trade dress of which is a registered mark. Tropical Isle took exception to the House of Auth’s grenade-shaped energy drink, sold under the GURRNAID mark, and in January filed a trademark infringement action in the Eastern District of Louisiana. House of Auth moved to dismiss for lack of personal jurisdiction; although it sold its product on the Internet, the only sale into Louisiana had been to a private investigator hired by Tropical Isle. The Court agreed that there were insufficient contacts with the jurisdiction, and dismissed the case. 721 Bourbon, Inc. v. House of Auth, LLC, 2015 U.S. Dist. LEXIS 141760 (E.D. La. 2015).
INNOVATION BREWING & INSPIRED BREWING
The owners of INNOVATION BREWING, a hipster mom and pop microbrewery in North Carolina, applied to trademark its name, but the application was opposed by Bell’s Brewery of Michigan, which uses INSPIRED BREWING as its slogan. The dispute went semi-viral this year when, in true millennial fashion, Innovation took to Facebook and posted what was later dubbed “6 things Innovation Brewing wants you to know about Bell’s Brewery trademark dispute,” including “2. We do not believe that any human on earth would confuse Innovation Brewing with Bell’s Brewery, despite their slogans.” Innovation arguably has already come away the winner in the court of public opinion with its “David v. Goliath” theme, but the TTAB matter is still pending. Bell’s Brewery, Inc. v. Innovation Brewing, Opposition No. 91215896 (Trademark Trial & App. Bd.).
KAH & SANGRE DE VIDA Tequila
Tequila makers Elements Spirits (Kah Tequila) and Iconic Brands (Sangre de Vida Tequila) both sell their product in bottles resembling “calaveras,” the folk art skulls associated with the Mexican Day of the Dead. The similarities between the bottles were less coincidental than you might think, because it turns out that the CEO/Founder of Iconic was once the CEO/Founder of Elements until she was forced out. Elements sued for trademark infringement and moved for a preliminary injunction, alleging that it owned the rights in the bottle’s trade dress, irrespective of who founded the company. Not so fast, said Iconic, and whipped out the copyrights to the bottle designs, ownership of which the CEO/Founder allegedly retained when she left. The Court held that, on the one hand, ownership of a copyright was no defense to trademark infringement but, on the other hand, a trademark consisting entirely on another’s copyrighted work was invalid. Because there were unresolved factual issues about the validity of the intellectual property and the terms of a certain license agreement, the Central District of California found that Elements had not established a likelihood of success on the merits and denied the motion for injunctive relief. The parties recently engaged in court-ordered mediation. Elements Spirits, Inc. v. Iconic Brands, Inc., 2015 U.S. Dist. LEXIS 75986 (C.D. Cal. 2015).
KAHLUA & KAHFUA
The Absolut Company manufactures the rum and coffee liqueur that has been sold under the brand name KAHLUA since 1938. In June, Absolut filed a trademark counterfeiting and infringement action against Happy Hearts Wine, an importer of Israeli beverages, for selling KAHFUA, also a coffee liqueur sold in a remarkably similar-looking bottle. The Court granted Absolut’s motion for a preliminary injunction, and Happy Hearts has ceased selling the product. The docket reflects that the parties have been engaged in settlement discussions. The Absolut Company Aktiebolag v. Happy Hearts Wine, LLC, Case No. 1:15-cv-3224 (EDNY).
KARMA Champagne & Beer
The Karma Craft Brewing Company’s application to register KARMA CRAFT BEER was opposed by Karma Champagne, maker of CALIFORNIA KARMA BRUT and other KARMA-branded drinks. The TTAB found that the marks created similar overall commercial impressions, that both products were alcoholic beverages, and that they moved in the same channels of trade. The opposition was sustained. Karma Fine Beverages, Inc. v. Goetz, 2015 TTAB LEXIS 45 (Trademark Trial & App. Bd. Feb. 19, 2015).
KENTUCKY MIST MOONSHINE
In March, the Kentucky Mist Moonshine distillery applied to register the mark KENTUCKY MIST MOONSHINE for t-shirts, hats and the like. The application prompted a cease and desist letter from the University of Kentucky, which owns KENTUCKY marks for athletic wear and alumni tchotchkes. Kentucky Mist responded in early November with a complaint filed in the Eastern District of Kentucky, seeking cancellation of the University’s marks and a declaration of non-infringement. The first judge assigned to the case recused himself because he was an alum, and the matter has been reassigned. Kentucky Mist Moonshine Inc. v. University of Kentucky, Case No. 5:15-cv-00328 (E.D. Ky.).
KINKY & FLIRTY liqueurs
Minnesota’s Crosby Lake Spirits Company markets KINKY liqueur, which the bottle describes as a “naughty fusion of super premium vodka . . . with succulent mango, blood orange and passion fruit.” In February, Crosby filed a trademark infringement action in the Western District of Wisconsin against Global Distillers, the Barbados entity that markets FLIRTY, which is described on its similar bottle as a “flirty marriage of our super premium vodka with luscious mango, blood orage and passion fruit flavours.” Global Distillers filed a counterclaim for a declaration of non-infringement and invalidity of the KINKY trade dress. The parties settled the matter in July. Intercontinental Packaging Company v. Global Distillers SRL LLC, Case No. 3:15-cv-00070 (W.D. Wisc.).
KNOTTY BRUNETTE & NUTTY BREWNETTE Beer
The Twin Restaurant company was refused registration of its KNOTTY BRUNETTE mark for beer because of the already-registered NUTTY BREWNETTE for beer. On appeal, Twin Restaurant argued that KNOTTY BRUNETTE would be sold in a unique channel of trade, namely in its own “Twin Peaks” restaurants by its “sexy wait staff.” The TTAB rejected this argument and presumed that the two beers traveled in the same channels of trade (in fact, NUTTY BREWNETTE is also sold in restaurants, albeit perhaps by a less skimpily-dressed wait staff). Nevertheless, the TTAB reversed the refusal to register, primarily because the marks had different connotations: NUTTY BREWNETTE indicated a nutty flavored beer, while KNOTTY BRUNETTE suggested the phrase “naughty brunette, that is to say, a dark-haired woman displaying a playful type of sexiness.” In other words, because each mark was telling a different joke, their commercial impressions were different. Get it? Excuse me one second; I just need to hit the snooze button on my misogyny alarm. Now, where were we? Oh yes. One panelist dissented on the ground that “inside a noisy bar, as the night wears on . . . any aural differences . . . will likely not be readily distinguishable – and especially to southern ears.” The dissent also criticized the majority for assuming that “the average bar patron will retain fine connotations from one tavern visit to the next . . . Let’s see, was that dark-haired female of several weeks ago an extremely difficult personality (“knotty” ), strange (“nutty” ), or playfully sexy (“naughty” )?” Twin Peaks’ other selections include DIRTY BLONDE, DROPDEAD REDHEAD and GOLD DIGGER. In re Twin Rest. IP, LLC, 2015 TTAB LEXIS 200 (Trademark Trial & App. Bd. June 24, 2015).
LAGUNITAS IPA & HOPHUNTER IPA
In January, the California-based Lagunitas Brewing Company raised a whole lot of eyebrows when it brought suit against Sierra Nevada Brewing. Lagunitas sought a temporary restraining order and alleged that its LAGUNITAS IPA mark was infringed by Sierra’s IPA HOP HUNTER beer. In essence, the complaint asserted that the similar use of “IPA” on both labels was likely to cause confusion. The social media backlash against Lagunitas was so immediate and harsh that Lagunitas withdrew the suit within forty-eight hours after filing, and the Lagunitas CEO issued an apology to his customers via Twitter: “Today I was seriously schooled and I heard you well…” The Lagunitas Brewing Company v. Sierra Nevada Brewing Co., Case No. 4:15-cv-00153 (N.D. Cal.).
LEFT NUT Beer
The Left Nut Brewing Company’s application to register LEFT NUT BREWING was refused on the ground that it was “immoral or scanadlous,” because “LEFT NUT” as a unit is “clearly limited to the vulgar meaning refering to the left testicle.” On appeal, the TTAB turned to the Urban Dictionary and determined that “left nut” had a variety of slang meanings, including as a figure of speech for “something of great value.” It also recounted some “equally suggestive “nut” marks which have registered, including:” MY HUSBAND’S NUTS, SMELL MY NUTS, and HAVE SOME GUTS . . . CHECK YOUR NUTS. The refusal was reversed. In re Left Nut Brewing Company, Inc., Serial No. 85935569 (Trademark Trial & App. Bd. November 13, 2015)
In August, it was reported that the Pigeon Hill Brewing Company of Muskegon, Michigan had received a cease and desist letter from the band LMFAO, complaining about the brewery’s new LMFAO STOUT beer. The lawyers apparently talked it over and, in September, the brewery announced on its Facebook page that the parties had reached an agreement, that LMFAO’s lawyer is “awesome,” and that “LMFAO Stout is here to stay . . . THE END.”
LODI RED & LODI ESTATES Wine
In September, the Michael David Winery filed a trademark infringement action in the Eastern District of California against the Oak Ridge Winery. Michael David, the seller of LODI RED wine for three decades, alleged that Oak Ridge has been marketing a LODI ESTATES wine. Oak Ridge hit back hard with an answer and counterclaims, asserting that “Lodi” is the name of a government-approved American Viticultural Area which by law can be used by any winery within the area. Oak Ridge also alleged that Michael David has violated federal Alcohol and Tobacco Bureau regulations by using the LODI RED mark before it obtained a certificate of label approval. The matter is pending. Michael David LLC v. Oak Ridge Winery, LLC, Case No. 2:15-cv-01874 (E.D. Cal.).
The French Institute National de L’Origine et de la Qualite opposed the application of Leah Jorgensen Cellars to register the mark LOIREGON for wine. The Institute argued that the name is a false appellation of origin because it falsely suggests that LCJ wines were products of the Loire Valley region of France, when in fact the application mentioned no geographical restrictions (and the wine comes from Oregon). Leah Jorgensen failed to respond, and in November a default judgment was entered. Institute National de L’Origine et de la Qualite v. LJC Wine Co., Inc.,Opposition No. 91223451 (Trademark Trial & App. Bd.).
MAKER’S MARK Whisky & JIM BEAM Bourbon
Late last year, a putative class action was filed against Beam Suntory in the Northern District of Florida. The complaint alleged false advertising in that Maker’s Mark Whisky, although promoted as “handmade” using antique methods, is in fact made by machines in a modern factory, nary a “hand” to be seen. In May, the Court dismissed the case because the “plaintiffs have been unable to articulate a consistent, plausible explanation of what they understood “handmade” to mean in this context.” The Court found that no reasonable consumer “could believe a bourbon marketed this widely at this volume is made entirely or predominantly by hand.” Salters v. Beam Suntory, Inc., 2015 U.S. Dist. LEXIS 62146 (N.D. Fla. 2015).
Another class action was brought against Beam Suntory in the Southern District of California, alleging that Jim Beam Bourbon is not really “handcrafted.” The case was dismissed in August on similar grounds. Welk v. Beam Suntory Imp. Co., 2015 U.S. Dist. LEXIS 111164 (S.D. Cal. Aug. 21, 2015).
MASQUERADE Wine & MASCARADE Liqueur
The USPTO refused the 8 Vini company’s application to register MASQUERADE for wine because it was likely to be confused with the already-registered MASCARADE for mixed beverages containing alcohol and fruit juice. On appeal, the TTAB first held that the doctrine of foreign equivalents was not applicable because the French term “mascarade” could mean either “masquerade” or “farce,” and thus the translation to English was not “unambiguously literal and direct” under TMEP § 1207.01(b)(vi)(B). The TTAB then conducted a “traditional” comparison of the marks and determined that they would make the same overall commercial impression. As to the similarity of the goods, the TTAB held that, while there is no per se rule that all alcoholic beverages were related, here the applicant’s wine may be perceived as emanating from the same source as the existing mark. Therefore, the refusal was affirmed. In re 8 Vini, Inc., 2015 TTAB LEXIS 5 (Trademark Trial & App. Bd. Jan. 16, 2015).
MAYARI & MAYA Wine
Kissos Wines’ application to register MAYARI for wine was opposed by Dalla Valle Vineyards, holder of the MAYA mark for wine. Because the products and channels of trade were essentially the same, the dispute came down to the marks themselves. The TTAB found that the marks resemble each other in part because they share the first four letters. The TTAB was not impressed by Kissos’ evidence of other registered wine marks using the same letters, such as MAYACAMAS and TAMAYA. However, the TTAB ultimately held that confusion was unlikely because the parties’ marks were pronounced differently and because they would be perceived to have different meanings (“Maya” is a proper name with religious connotations while “Mayari” apparently is gobbledygook). Oakville Hills Cellar v. Georgallis Holdings LLC, 2015 TTAB LEXIS 228 (Trademark Trial & App. Bd. July 16, 2015).
MILLBROOK Bourbon & Wine
The Millbrook Distillery’s application to register its name was refused on the ground that it resembled the MILLBROOK mark for wine. On appeal, the TTAB found that the marks were similar and that whiskey and wine were related goods, as evidenced by third-party registrations covering both products and third party companies that — according to their websites — appear to operate both wineries and distilleries. Therefore, there was a likelihood of consumer confusion and refusal was affirmed. In dicta, the TTAB reversed the Examining Attorney’s alternative ground for refusal pursuant to Section 2(e) because Millbrook was too obscure to be geographically descriptive. Millbrook has since changed its name to the Taconic Distillery. In re Millbrook Distillery, LLC, 2015 TTAB LEXIS 39 (Trademark Trial & App. Bd. Feb. 9, 2015).
MISSISSIPPI BLUES TRAIL ALE
The Mississippi Blues Commission, whose members are state appointees, administers the Mississippi Blues Trail, a set of markers throughout the state that tell the stories of legendary musicians. The Commission had an opportunity to have the Yalobusha Brewing company create an official beer for the trail, but didn’t know if it had the authority to license the state’s intellectual property, so it asked the Mississippi Attorney General for an opinion. The AG answered that the Commission had broad authority and discretion to promote Mississippi blues culture, and this included reasonable licensing of IP assets. However, the AG emphasized that its approval of the licensing deal was not necessarily approval of the rest of the plan, which included labeling the product as “beer … for drinking on the Mississippi Blues Trail.” The trail includes public roads where driving under the influence is presumably prohibited. Opinion of the Attorney General, 2015 Miss. AG LEXIS 71 (April 17, 2015).
Montussan Aperitifs, located in Montussan, France, filed an application to register Montussan for fruit-based cordials and liqueurs. The Trademark Examining Attorney refused the registration on the ground that the mark was primarily geographically descriptive of its goods. The Examining Attorney proffered internet evidence that Montussan was a place known to the public, but the TTAB found that this evidence showed just the opposite: that Monstussan was a town of 2991 inhabitants containing a few vineyards and one bed and breakfast, “very much an obscure location [that] would likely be unknown to the relevant American consumer.” Mere proximity to the famous city of Bordeaux was not enough to make Montussan well-known. The refusal was reversed. In re Montussan Aperitifs SAS, 2015 TTAB LEXIS 270 (Trademark Trial & App. Bd. Aug. 12, 2015).
MOONSHINE REDEFINED & REDEFINING VODKA
Rabbit Hole Spirits of Louisville, Kentucky applied to register MOONSHINE REDEFINED for distilled spirits. The TTAB affirmed the refusal to register the mark in light of a prior registration for REDEFINING VODKA, owned by Purity Vodka AB of Sweden. The marks were different in many respects, but the TTAB found that the overall commercial impression of both marks was the same: an alcoholic beverage, redefined. The TTAB held that the terms “Vodka” and “Moonshine,” because they are generic, would not serve to distinguish the marks in the eyes of consumers. The TTAB also rejected Rabbit Hole’s arguments that consumers of distilled spirits are discriminating in their purchases; even if true, the fact that a consumer would not confuse these products for each other does not mean there is not a likelihood of confusion as to whether they emanated from the same source. In re Rabbit Hole Spirits, LLC, 2015 TTAB LEXIS 171 (Trademark Trial & App. Bd. June 11, 2015).
MOOSE & MOOSEHEAD Beer
Last year, Moosehead Breweries, which has made MOOSEHEAD beer since 1931, successfully blocked a trademark application by the Adirondack Pub & Brew Company to register MOOSE WIZZ for soft drinks. After the refusal, Adirondack was still selling its MOOSE WIZZ root beer in bottles featuring a moose profile allegedly reminiscent of the Breweries’ labels, so Moosehead filed suit against Adirondack in the Northern District of New York. The parties were unable to reach a resolution at a court-ordered settlement conference, and have headed into discovery. Moosehead Breweries Limited v. Adirondack Pub & Brewery, Inc., Case No. 1:15-cv-00260 (NDNY 2015).
Myrcene is the name of a fragrant oil found in hops so, back in 2011, Odell Brewing registered the name MYRCENARY for its high-myrcene content Double IPA. Earlier this year, Odell learned about the start-up Mercenary Brewery & Distillery, and sent the new company a cease and desist letter. In April, Mercenary announced that it was changing its name to the Maplewood Brewery & Distillery, and then hosted a “We-were-going-to-be-sued-so-we-had-to-change-our-name-party” at Chicago’s Kaiser Tiger Beer Garden.
NAKED WINES & Beers
In November, the Naked Winery of Oregon filed a decidedly PG-13 complaint in the Eastern District of Pennsylvania, alleging trademark infringement against the Prism Brewing Company. Naked distinguishes itself in the marketplace by using a series of double and single entendre marks such as NAKED, PENETRATION, MISSIONARY, BOOTY CALL, CLIMAX, HOOK UP and DOMINATRIX, as well as burlesque puns like SIP INTO SOMETHING MORE COMFORTABLE, CIRQUE DU RISQUE and BLAZING STRADDLE. The complaint alleges that Prism has infringed some of these sexy marks with its line of beers, including NAKED RED, NAKED BLONDE, NAKED BRUNETTE and NAKED PALE. The matter is pending. Naked Wines LLC v. BREW4YOU Inc., 2:15-cv-05951 (E.D. Pa.).
NATTY GREENE’S & NATURAL LIGHT Beer
Anheuser-Busch opposed the Natty Greene’s Brewing Company’s registration of NATTY GREENE’S (presumably named after the revolutionary war general) for beer. Anheuser-Busch claimed that the name may be confused with its own previously registered beers marks: NATTY LIGHT, FATTY NATTY and NATTY DADDY (all commercial nicknames for Natural Light beer). After several months of settlement negotiations, Anheuser-Busch withdrew the opposition with prejudice. Anheuser-Busch, LLC v. Natty Greene’s Brewing Company, LLC, Opposition No. 91216945 (Trademark Trial & App. Bd.).
NICKEL & NICKEL, THREE NICKELS Wine
In November, FN Cellars filed a trademark infringement action against Rodney Strong Vineyards, alleging that the Rodney Strong’s newly registered THREE NICKELS mark for wine infringed FN Cellars’ NICKEL & NICKEL mark. Rodney Strong has not answered the complaint, but it has filed a Surrender of Registration for Cancellation of its mark. FN Cellars, LLC v. Klein Foods, Inc., Case No. 4:15-cv-05158 (N.D. Cal.).
NIGHT TRAIN Beer & Wine
The O’so Brewing Company of Plover, Wisconsin announced in September that it was changing the name of its “Night Train” porter to “Night Rain” porter, after receiving a legal demand from an unnamed beverage maker. This report speculated that the issuer of the demand was E. & J. Gallo, on account of its NIGHT TRAIN EXPRESS wine.
NORTH COAST Beer & Spirits
North Coast Brewery filed a complaint in the Northern District of California against the fledgling North Coast Distillery of Oregon, alleging infringement of its NORTH COAST mark. This matter settled quickly, and the distillery is now called Pilot House Spirits. North Coast Brewing Co., Inc. v. North Coast Distilling, Case No. 3:15-cv-03918 (N.D. Cal.).
NORTHSTAR Wine & Beer
In April, Ste. Michelle Wine Estates of Washington filed a trademark infringement action against the Twisted Pine Brewing Company of Colorado. Ste. Michelle owns the registered mark NORTHSTAR for wine, and took exception to Timberline’s marketing of its seasonal NORTHSTAR beer. The matter was voluntarily dismissed by the winery in June; presumably as the result of a settlement. Ste. Michelle Wine Estates Ltd. v. Timberline Brewing Co., Case No. 2:15-cv-00678 (W.D. Wash.).
NUT SACK DOUBLE BROWN ALE
The Engine 15 Brewing Company’s application to register the NUT SACK DOUBLE BROWN ALE mark was refused by a Trademark Examining Attorney on the ground that it included “immoral or scandalous” matter that was “offensive to a substantial composite of the general public.” On appeal, the TTAB was not willing to accept Engine 15’s argument that the mark was entirely innocuous, but it did find that “the word “Nut” will clearly describe a flavor or style of ale, rather than being an obvious reference to testicles.” Ultimately, the TTAB found that the record was mixed as to the offensive nature of the mark: while it might be “somewhat taboo in polite company,” it was “not so shocking or offensive as to be found scandalous within the meaning of the statute.” The refusal was reversed. In re Engine 15 Brewing Co., LLC, 2015 TTAB LEXIS 454 (Trademark Trial & App. Bd. Oct. 29, 2015).
OLD OX Beer
In January, energy drink giant Red Bull opposed the Virginia-based Old Ox Brewery’s application to register its name and logo. Red Bull claimed that the ox and the bull “both fall within the same class of ‘bovine’ animals and are virtually indistinguishable to most customers.” Old Ox responded with an answer in the TTAB, but also with a running commentary on its blog, through which it made settlement offers (it promised NEVER to produce an energy drink), announced that Red Bull was being “extremely uncool,” and opined that the arguments in Red Bull’s opposition were “Red Bulls**t.” The matter has led to something of a critical backlash against Red Bull, but it is still pending before the TTAB. Red Bull GmbH v. Old Ox Brewery, LLC, Opposition No. 91220413 (Trademark Trial & App. Bd.).
OLD PEPPER & JAMES E. PEPPER Bourbon
The Georgetown Trading Company of Washington D.C. connects its distilling lineage directly with the famous Pepper family, which began distilling in 1776 at Old Pepper Springs, Kentucky and sold its product as OLD PEPPER WHISKY in the 19th century (when it was drunk by the likes Ulysses S. Grant, Andrew Jackson, Daniel Webster and William Henry Harrison). Georgetown owns a literal “family” of registered marks related to its product, including ELIJAH PEPPER (the name of the founder), OSCAR PEPPER (his son) and JAMES E. PEPPER (his grandson). Back in 2014, Georgetown successfully opposed Venturi Brands’ application to register OLD PEPPER BOURBON. But after the opposition was sustained, Venturi allegedly continued with its operation, including selling OLD PEPPER BOURBON and planning to set up shop inside the national historic landmark in Lexington where the James E. Pepper distillery used to be headquartered. Late last year, Georgetown brought claims in the Southern District of Florida, Venturi’s home district, for trademark infringement, unfair competition and cybersquatting. In March, the Court rejected a motion to dismiss brought by the individual owners of Venturi. The matter is currently in discovery. Georgetown Trading Co., LLC v. Venturi Brands LLC, Case No. 0:14-cv-62277 (S.D. Fla.).
OLD RASPUTIN Beer & RASPUTIN Malt Whiskey
North Coast, the California brewery responsible for OLD RASPUTIN beer, brought suit in the Northern District of California against the Tennessee distiller Corsair Artisan, maker of RASPUTIN malt whiskey. North Coast alleged that it had about two decades of priority over Corsair, and the matter settled quickly. It appears that Corsair is now selling the same malt whiskey under the BUCK YEAH mark. North Coast Brewing Co., Inc. v. Corsair Artisan LLC, Case No. 5:15-cv-03302 (N.D. Cal.).
OLD TAYLOR Whiskey
The Sazerac Company owns several marks related to OLD TAYLOR whiskey, a reference to a “founding father” of the distilling industry, Colonel E. H. Taylor. In late October, Sazerac filed a trademark infringement suit against the Peristyle company in the Eastern District of Kentucky. Peristyle, a Frankfort-based event-hosting company, purchased Colonel Taylor’s abandoned factory in order to rent it out for events. The building, put up in 1887 and apparently unused since 1971, still bears the “Old Taylor Distillery” sign, and Peristyle has every intention of keeping that sign right where it is. Peristyle answered the complaint in November, claiming that its use of “Old Taylor Distillery” is fair use of an historical landmark and that it is “generic as a geographic descriptor.” Peristyle also filed counterclaims for cancellation of Sazerac’s marks and a declaration of non-infringement. Sazerac Brands, LLC v. Peristyle, LLC, Case No. 3:14-cv-00076 (E.D. Ky.).
Canadian company Domaines Pinnacle sought to register the mark DOMAINE PINNACLE for apple-based non-alcoholic beverages. Franciscan Vineyards opposed the registration, alleging a likelihood of confusion with its PINNACLES mark for wine. The TTAB dismissed the petition on the ground that goods were not sufficiently related so as to cause confusion. The Federal Circuit affirmed. In re Franciscan Vineyards, Inc. 593 Fed. Appx. 997 (Fed. Cir. 2014).
POLLENATOR Beer & POLLINATOR Mead
In April, it was reported that the Long Trail Brewing Company of Vermont, owner of the POLLENATOR mark for honey-flavored beer, had accused the Ohio-based Crafted Artisan Meadery of trademark infringement because it was marketing POLLINATOR mead, a dry-hopped blackberry honey wine. Crafted Artisan now sells the product as POLLEN-NATION, which also comes in a chipotle-flavored variety.
PUZZLE Beer & THE PUZZLE Wine
The Puzzle Brewing Company in California was refused registration of PUZZLE BREWING COMPANY for beer on the ground that a registered THE PUZZLE mark already existed (owned by Newton Vineyard). Based on third-party registrations and “representative internet evidence,” the TTAB affirmed, holding that the marks were confusingly similar, the products were related, and the term “brewery” would not sufficiently distinguish the mark because there were many breweries selling “beer-wine hybrids.” In re Puzzle Brewing Co.,2015 TTAB LEXIS 255 (Trademark Trial & App. Bd. July 27, 2015)
RAGING BITCH Pale Ale
In celebration of its twentieth anniversary, the Hunter S. Thompson-inspired Flying Dog Brewery created a new Belgian-style India Pale Ale called RAGING BITCH, featuring art by Thompson’s illustrator buddy Ralph Steadman, which depicted “a wild dog presenting human female genitalia as well as possessing semblances of human breasts.” However, the Michigan Liquor Control Commission refused regulatory approval of the product because “the proposed label which includes the brand name ‘Raging Bitch’ contains such language deemed detrimental to the health, safety, or welfare of the general public.” Flying Dog brought an action pursuant to 42 U.S.C. § 1983 for violation of its First Amendment rights. A Michigan Federal District Court held that the Commission enjoyed a qualified immunity, but the Sixth Circuit reversed and remanded the matter for a determination of whether Flying Dog’s First Amendment rights had been violated. The parties stipulated to dismissal of the action before that determination could be made. Flying Dog Brewery, LLP v. Michigan Liquor Control Commission, 597 Fed. Appx. 342 (6th Cir. 2015).
RAVENSWOOD Wine & Rye
In July, Michigan’s Journeyman Distillery announced that it had changed the name of its “Ravenswood Rye” after receiving a cease and desist letter from the Ravenswood Winery. The Distillery didn’t feel like fighting it out, so it sold off its remaning inventory and then changed the label to “Last Feather Rye.”
RED WHALE Beer, WHALE Beer & BLUE WHALE Vodka
The TTAB affirmed refusal of the RED WHALE mark for beer in light of two prior registrations. The prior WHALE mark for beer is owned by the Six Row Brewing Company in St. Louis, which sells WHALE ALE. The TTAB found that the addition of the term “RED,” which often is used to describe a style of red ales, did not prevent the marks from giving the same overall commercial impression. The TTAB also found that the other prior mark, BLUE WHALE VODKA (with Vodka disclaimed), was sufficiently similar to create a likelihood of confusion despite the use of a different color, because some manufacturers use colors to differentiate goods within a product line (e.g., Johnnie Walker Red, Black, Blue, etc.). The TTAB did not find persuasive the applicant’s evidence that everyone and their mother is putting whales on beer and on everything else, because said evidence did not include registered marks with respect to similar goods. In re Red Whale, LLC, 2015 TTAB LEXIS 339 (Trademark Trial & App. Bd. August 24, 2015).
Remy Martin brought a UDRP complaint before the WIPO Arbitration and Mediation Center for domain name transfer, alleging that it owned the Chinese trademark rights to its name in Chinese (人头马). The respondent, a resident of Nanjing, had incorporated Remy’s Chinese name into certain domain name registrations, including <人头马.公司> and <人头马. 网络>. The Respondent did not answer the complaint, the panel made a finding of bad faith, and the domains were transferred. E. Remy Martin & Co. v. 李伟, 2014 UDRP LEXIS 1644 (WIPO December 15, 2014).
In a separate proceeding, Remy Martin also successfully argued for the transfer of <rentouma.club>. “Ren Tou Ma” is the transliteration of 人头马, the company’s Chinese name, which translates back to English as (“Man Head Horse”). E. Remy Martin & Co. v. Liu Yu, 2015 UDRP LEXIS 947 (WIPO September 24, 2015).
Remy Martin’s parent company, Remy Cointreau, also managed to wrestle the domain <remycointreau.wang> from a Chinese resident whose unsuccessful argument to the WIPO panel was “first come first serve.” Remy Cointreau v. du biao, 2015 UDRP LEXIS 968 (WIPO September 25, 2015).
In October, the Exxon Mobil Corporation brought a trademark infringement action in the Southern District of Florida against the makers of ROXX Vodka. The cruxx of the complaint is simple: don’t draw your XX like our XX. The defendants have not yet responded as of this writing. Exxon Mobil Corporation v. Nielsen Spirits, Inc., Case No. 1:15-cv-24022 (S.D. Fla.).
ROYAL ELITE & STOLICHNAYA ELIT Vodka
Classic Liquor’s applications to register its “primary house mark,” ROYAL ELITE, 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, which asserted that the mark would infringe four marks owned by Spirits for its STOLICHNAYA ELIT product. Classic brought a declaratory judgment action in the Southern District of New York, claiming that the bottles look nothing alike and seeking a declaration of non-infringement. As of this writing, Spirits’ motion to dismiss is pending. Classic Liquor Importers, Ltd. v. Spirits International B.V., Case No. 1:15-cv-06503 (SDNY).
Danish beverage maker Royal Unibrew filed a UDRP complaint with WIPO over a Chinese resident’s creation of the domain <royalunibrew.net>. The registrant did not respond and there was no evidence of a bona fide offering of goods or services under the mark by the registrant, so the panel ordered that the domain be transferred. Royal Unibrew A/S v. Fang Lin, 2015 UDRP LEXIS 933 (WIPO September 23, 2015).
REUBEN’S BREWS & RUBENS Wine
Reuben’s Brews of Seattle applied to register its REUBEN’S BREWS name and logo (with “BREWS” disclaimed), but the Trademark Examining Attorney refused registration on the ground that it confusingly resembled the RUBENS mark for wine, owned by a Spanish vineyard. The TTAB found that the goods were related (it remarked that it was aware of no case in which beer and wine were found not to be related), and that the two marks were identical in sound. However, the TTAB found that they had very different meanings. On the one hand, REUBEN was known as the biblical son of Jacob and also as a grilled corned beef sandwich. On the other hand, the most prominent meaning of RUBENS was the Flemish painter Peter Paul Rubens (in fact, the RUBENS mark was displayed on wine labels alonside Baroque-style paintings). Therefore, the the TTAB saw the overall commercial impressions of the marks as different, and the refusal to register was reversed. In re Reubens Brews LLC, Serial No. 86066711 (Trademark Trial & App. Bd. Oct. 27, 2015).
SESSION Beer, JOINT SESSION ALE & SUDS SESSION Ale
In August, the Full Sail Brewing Company of Oregon, maker of “Session Lager” and owner of several SESSION marks for beer, opposed the Virginia-based Bird Brain Brewing Company’s attempt to register JOINT SESSION ALE, arguing a likelihood of confusion between the products. Bird Brain responded with counterclaims to cancel Full Sail’s marks, arguing that “session” is a generic term that originated in the United Kingdom to refer to beers with low alcohol content. The matter is pending. BC Marketing Concepts Inc. v. Bird Brain Brewing Co., LLC, Opposition No. 91222531 (Trademark Trial & App. Bd.).
Full Sail has also filed a petition to cancel the SUDS SESSION mark, owned by Speakeasy Ales & Lagers in San Francisco, which was registered on the Supplemental Register late last year. BC Marketing Concepts Inc. v. Speakeasy Ales & Lagers, Inc., Cancellation NO. 92061715 (Trademark Trial & App. Bd.).
SEXY BEAST & SEXY Wine
Australian Vineyard Two Hands Wines’ application to register SEXY BEAST for wines was opposed by the Portuguese vineyard Fita Preta, which markets SEXY wines. The matter is currently suspended while the parties engage in settlement discussions. The Monster Energy Company has also waded in with a separate opposition alleging likelihood of confusion with its UNLEASH THE BEAST and PUMP UP THE BEAST marks. Monster Energy Company v. Two Hands Wines Pty. Ltd., Opposition No. 91222662 (Trademark Trial & App. Bd.); Fita Preta Vinhos, LDA, LLC v. Two Hands Wines Pty. Ltd., Opposition No. 91220488 (Trademark Trial & App. Bd.).
SHE, THE QUEEN OF BEER
The She Beverage Company plans to release a “Sexy Hot Erotic” beer called THE QUEEN OF BEER. Anheuser-Busch opposed She Beverage’s application to register the mark, arguing that it would be confused with its KING OF BEERS marks for Budweiser. In response to the opposition, She Beverage argued that Anheuser-Busch “had plenty of time” to register THE QUEEN OF BEER, but it chose not to. In other words: you snooze, you lose. As of this writing, the matter is pending before the TTAB. Anheuser-Busch, LLC v. SHE Beverage Company, Opposition No. 91223396 (Trademark Trial & App. Bd.).
In 2010, Marcus Rogerson of Ocean City, Maryland made up some bumper stickers to give away that read “Shorebilly Surf’n Life.” The term “shorebilly,” the District of Maryland explained, is the “seashore context equivalent of hillbilly,” and had already been in use by several businesses in the Ocean City area. When locals expressed a fondness for the bumper stickers, Rogerson started selling t-shirts with the same design and applied to register the SHOREBILLY mark. In 2011, Rogerson learned that the defendant was opening a “nano-brewery” on the Ocean City Boardwalk called “Shorebilly Brewery.” After some letter writing, Rogerson filed suit for trademark infringement. Shorebilly Brewery voluntarily changed its name to Backshore Brewing to avoid the hassle, but Rogerson wanted to maintain the hassle and persisted with his claims. The Court, clearly frustrated with Rogerson’s aggressive pursuit of a largely moot claim, issued judgment for Backshore Brewing on the merits, held that Rogerson’s trademark registration was not enforceable because he had made “false statements” to the PTO about his first use in commerce, and ordered Rogerson to pay Backshore Brewing over $30K in attorneys’ fees. Rogerson initially filed a notice of appeal but the matter subsequently settled. Teal Bay Alliances v. Southbound One, Inc., 2015 U.S. Dist. LEXIS 10940 (D. Md. 2015).
SILVER TRAIL Moonshine & Wine
The Kentucky-based Silver Trail Distillery’s application to register its logo was refused by the Trademark Examining Attorney on the ground that it was confusingly similar to the SILVER TRAIL mark for wine, owned by Eagle Rock Investments of California. The TTAB found that the marks were similar, despite differences in the overall design, and that the goods were related. The refusal to register was affirmed. In re Balencorp, Inc., 2015 TTAB LEXIS 397 (Trademark Trial & App. Bd. Sept. 28, 2015).
A consumer brought a putative class action in the District of New Jersey against the makers of Skinny Girl Cocktails, alleging that the “all natural” label on Skinny Girl’s margarita drink was false because the product contains sodium benzoate. The Court denied class certification because the proposed method of identifying class members (having them submit unverified and unverifiable affidavits describing past purchases) was insufficient to satisfy the Third Circuit’s “ascertainability” requirement. The case was subsequently dismissed with prejudice. Stewart v. Beam Global Spirits & Wine, Inc., 2015 U.S. Dist. LEXIS 74116 (D.N.J. 2015).
SLOW RIDE Beer
New Belgium Brewing of Colorado brought suit against the Oasis Texas Brewing Company in the District of Colorado, seeking a declaration that it was the sole owner of the SLOW RIDE mark for beer. New Belgium argued that the Court had personal jurisdiction over the matter because Oasis had once participated in a beer festival in Colorado. However, SLOW RIDE beer was not on offer at that festival, and Oasis’ motion to dismiss for lack of personal jurisdiction was granted. New Belgium has refiled the matter in Texas. Some of you may think the main issue in the case will be priority, but of far more concern to me is how on earth the lawyers are going to keep that Foghat song out of their heads. New Belgium Brewing Co. v. Travis Cnty. Brewing Co., LLC, 2015 U.S. Dist. LEXIS 58085 (D. Colo. 2015).
Sparta Beverage LLC applied to register a logo for beer consisting of the word SPARTAN over a shield and helmet. The application was refused on the ground that it was likely to cause confusion with a preexisting registration for entertainment services that was identical in every way except the addition of an “S.” The TTAB reversed on this ground because, although the marks were virtually identical, there was no evidence of any relationship between the goods and services. However, the TTAB affirmed refusal on other grounds. No explanation was provided by the TTAB for the near identical appearance of the marks, but we found the same logo on this clip art site, and being used as the badge for soccer teams in the UK and Singapore, a Florida baseball team, and the Pleasant Grove High School football team. If you know the backstory here, please let us in on it! In re Sparta Beverage LLC, 2015 TTAB LEXIS 146 (Trademark Trial & App. Bd. May 20, 2015).
SPODEE RED & VASA DI MARINA Wine
The Portalupi Wine Company sells wine in a glass container resembling an old-fashioned milk bottle, and has registered this trade dress with the USPTO. In May, Portalupi brought suit in the Northern District of California against Philadelphia’s Keystone Libation Company for allegedly copying the bottle design for its “Spodee Red” product. The parties have agreed to postpone the start of discovery while they try to negotiate a settlement. Portalupi Wine Company, Inc. v. Keystone Libation Company, LLC, Case No. 3:15-cv-1977 (N.D. Cal.).
SUGARLANDS Wine & Moonshine
In late November, the TTAB affirmed in part and reversed in part a Trademark Examining Attorney’s refusal to register the SUGARLANDS DISTILLING COMPANY mark for “craft moonshine beverages.” The Examining Attorney found that the mark was primarily geographically descriptive of its goods, because Sugarlands is a generally-known valley in the Great Smoky Mountains, only 25 miles from the distillery. However, the TTAB found that the Examining Attorney’s evidence of this assertion, which consisted “solely of an excerpt from one Wikipedia entry,” was insufficient, and therefore reversed this ground for refusal. However, the TTAB affirmed refusal on the ground that the mark was confusingly similar to the SUGARLAND CELLARS mark for wine. In re Sugarlands Distilling Company, LLC, Serial No. 85818277 (Trademark Trial & App. Bd. Nov. 20, 2015).
Minnesota’s Summit Brewing brought suit against The Grand Lake Brewing Company of Colorado, alleging that its SUMMIT marks were infringed by Grand Lake’s SUMMIT COLORADO PALE ALE product, which is brewed in part using Summit hops. The case settled rapidly, and Grand Lake now sells this product under the name “1881 Colorado Pale Ale.” Summit Brewing Company v. The Grand Lake Brewing Company, LLC, 1:15-cv-440 (D. Colo.).
TERRY HOAGE & TH Wine
Terry Hoage Vineyards, owner of the TH VINEYARDS mark, filed a petition to cancel the TH mark for wine, which had been registered by Viña Undurraga S.A. of Chile. The TTAB determined that Terry Hoage’s mark had priority, and that there was a likelihood of confusion between the marks. Viña Undurraga argued that it also owned the TH TERROIR HUNTER mark for the same product, which was registered before TH VINEYARDS. The TTAB held that this “prior registration” defense (or “Morehouse defense”) could not prevail because it had not been plead and, even if it had, the TH TERROIR HUNTER mark was not “essentially the same” mark as TH alone, so the defense did not apply. The petition to cancel was granted. Serine-Cannonau Vineyard, Inc. v. Viña Undurraga, 2015 TTAB LEXIS 425 (Trademark Trial & App. Bd. Oct. 16, 2015).
THREE-EYED RAVEN Beer and RAVENSWOOD Wine
Home Box Office entered a deal with the Ommegang Brewery of Cooperstown, New York to produce a Game of Thrones-inspired ale called THREE-EYED RAVEN. But when HBO applied to register the mark, Franciscan Vineyards opposed on the ground that the beer will be confused with its RAVENSWOOD marks for wine. The matter is still pending while the parties negotiate. Franciscan Vineyards, Inc. v. Home Box Office, Inc., Opposition No. 91221878 (Trademark Trial & App. Bd.). On a personal note, I’m a fan of HBO and of Ravenswood wine, and respect your respective IP rights, but for gosh sake can everyone just stop doing things that might distract George R.R. Martin from finally finishing the damn books?! Thanks.
3-WAY IPA & 4-WAY IPA
Sierra Nevada began marketing its 4-WAY IPA in 2014, but by that time Oregon’s Fort George Brewery had already been selling 3-WAY IPA for about a year. Fort George opposed registration of Sierra Nevada’s mark, and in October Sierra Nevada withdrew its application. Cervesia Gratis, Inc. v. Sierra Nevada Brewing Co., Opposition No. 91221178 (Trademark Trial & App. Bd.).
TITO’S HANDMADE VODKA
Fifth Generation has recently been a favorite target of class action lawsuits claiming that its TITO’S HANDMADE VODKA is not really handmade and in general is not the authentic aw-shucks product it claims to be. This September, one case in Alabama was voluntarily dismissed, Wilson v. Fifth Generation, Inc., Case No. 3:15-cv-00561 (M.D. Ala. 2015), and an Illinois court granted a motion to dismiss a similar suit because the plaintiff class representative’s allegations failed to include the “who what when, where, or how” of the alleged misrepresentations. Aliano v. Fifth Generation, Inc., 2015 U.S. Dist. LEXIS 128104 (N.D. Ill. 2015). However, a federal judge recently denied Fifth Generation’s motions for summary judgment in two cases in California, holding that the government’s prior regulatory approval of the “handmade” labels did not bar subsequent consumer claims. 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.). Similar cases are pending in federal courts in Florida, Massachusetts, New Jersey, Nevada and Ohio.
TOMMY GUNS Vodka
Saeilo Enterprises, a firearms manufacturer, makes the Thompson submachine gun (popularly known as the “Tommy Gun”) and various related promotional items. Saeilo brought trade dress claims against – get this – Alphonse Capone Enterprises, which was marketing “Tommy Guns Vodka” in a bottle shaped like a Tommy Gun. Saeilo’s arguments focused on its own plans to move into the alcohol business, as well as the assertion that the defendant had at some point abandoned its mark. The Northern District of Illinois found that Saeilo had a “better than negligible chance of prevailing” on both arguments and issued a TRO requiring the defendant to cease marketing alcohol in Tommy Gun-shaped bottles. The case settled earlier this year. Saeilo Enters. v. Alphonse Capone Enterprises, 2014 U.S. Dist. LEXIS 168551 (N.D. Ill. 2015).
The most popular beer sold by 612Brew in Minnesota was reportedly its “RATED R” Rye India Pale Ale, so the brewery applied to register the mark. The application was met with a cease and desist letter from the Motion Picture Association of America. 612Brew, not willing to make a federal case out of it, changed the beer’s name to UNRATED.
VAMPIRE Wine and Tacos
TI Beverage Group owns a raft of vampire-themed trademarks such as VAMPIRE for wine, VAMPYRE for vodka and VAMPIRE for restaurant services. The company playfully claims that its products are the favorite of actual vampires, explaining on one label that “the reason no one hears stories about vampires attacking humans anymore is because Vampires have been drinking Vampire wine instead.” In April, TI Beverage filed a trademark infringement action in the Central District of California, alleging that Yard House USA’s restaurants had begun marketing VAMPIRE TACOS and other foods in a way that infringed TI’s marks. The matter is pending. TI Beverage Group, Ltd., v. Yard House USA Inc., 2:15-cv-02583 (C.D. Cal.).
WHITE BIRCH Wine and Vodka
White Birch Vineyards sought registration of its name, WHITE BIRCH, for wines. The Trademark Examining Attorney refused registration on account of the KPO Marketing Company’s marks for WHITE BIRCH Vodka. In November, the TTAB affirmed the refusal, in light of the similarity of the marks and record evidence of third parties that offer both wine and vodka under the same brand name. In re White Birch Vineyards, LLC, 2015 TTAB LEXIS 447 (Trademark Trial & App. Bd. Nov. 4, 2015).
WHITE OAK Wine and Vodka
White Oak Spirits’ application to register the WHITE OAK PREMIUM VODKA mark was refused by the USPTO in 2014, but it kept using the mark anyway. So the White Oak Winery of California, which has been using the WHITE OAK mark for over 30 years, filed a complaint in the Central District of California and moved for a preliminary injunction, which the Court allowed. This year, the parties agreed to the terms of a permanent injunction, and the defendant’s product has been rebranded as WATER OAK vodka. White Oak Vineyards & Winery LLC v. White Oak Spirits, LLC, Case No. 2:13-cv-09830 (C.D. Cal.).
WINEBUD Wine and BUDWEISER Beer
In the most talked-about TTAB beverage decision of the year, Anheuser-Busch opposed Australian company Innvopak Systems’ application to register the WINEBUD mark for “alcoholic beverages except beer,” on the ground that it would cause confusion with its BUD and BUDWEISER beer marks, which have been in use since 1895 and 1876 respectively. Innvopak argued that the parties’ marks create different commercial impressions because, while WINEBUD referred to the bud of the grape vine, BUD was short for BUDWEISER, a town in the Czech Republic whose residents are famed for brewing but from whom nobody in their right mind would purchase wine. However, the TTAB wasn’t buying the notion that consumers saw BUD by itself as geographically suggestive. Because the dominant element in both marks was BUD, and because the products were related, the TTAB found that there was a likelihood of confusion and that the WINEBUD registration should be refused. Anheuser-Busch LLC v. Innvopak Sys. Pty Ltd., 2015 TTAB LEXIS 260 (Trademark Trial & App. Bd. Aug. 17, 2015).
XO, G and JAM JAR Wines
Stacked Wines of California developed a nifty packaging system for wine (called “Stack Tek”) consisting of four 187 milliliter plastic wine glasses that are designed to snap together vertically to form the equivalent of a 750 milliliter bottle. Stacked sells the wine under the mark XO, G, a product endorsed by celebrity Giuliana Rancic. Cape Classic Brands complained that the diamond design on the XO, G packaging infringed a similar design on Cape Classic’s JAM JAR line of wines. Stacked Wines filed suit in the Central District of California, seeking a declaration of non-infringement. The case settled in April on undisclosed terms. Stacked Wines LLC v. Cape Classic Brands LLC, Case No. 8:15-cv-00088 (C.D. Cal.).
That’s it! Deep breath. Have a great holiday season and see you next year!
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