Beer and wine are related goods for trademark purposes. Right? We’ve seen that truism announced by the Trademark Trial and Appeal Board (TTAB) time and time again. So, do you really have to prove it from scratch in every trademark proceeding?
Yes, you do. Sure, it may seem obvious that consumers expect beer and wine to emanate from the same source. After all, they are both beverages, they both serve similar societal purposes, they are often made by the same companies, they are sold in the same places, they are often advertised the same way, and they are subject to similar regulatory regimes.
However, even if all of that makes the similarity of beer and wine an obvious fact to you, the key word here is “fact.” Facts are subject to proof; they are not assumed as a matter of law. That means, according to the TTAB’s recent decision in Justin Vineyards Winery LLC v. Crooked Stave, LLC, that you have to meet your evidentiary burden of relatedness every time.
Crooked Stave is a Colorado company that produces a range of artisan beverages, including beer, wine, spirits and non-alcoholic Kombucha. In 2015, the company applied to register the HOP SAVANT mark for beer (with HOP disclaimed). The application was opposed by Justin Vineyards, owner of the registered SAVANT mark for wine, which it affixes to an upscale Cabernet/Syrah blend. Justin Vineyards argued that there was a likelihood of confusion between HOP SAVANT for beer and SAVANT for wine.
The TTAB issued its decision last week. It held that many of the DuPont factors supported Justin Vineyards’ assertion that there was a likelihood of confusion: the SAVANT mark for wine was conceptually and commercially strong; the parties’ marks were similar; the channels of trade (restaurants, convenience stores, bars, etc…) were similar; and both goods were subject to impulse buys as opposed to careful purchases. In fact, by the TTAB’s count, six of the eight factors favored likelihood of confusion, and a seventh (evidence of actual confusion) was more or less neutral.
But Justin Vineyards’ opposition was dismissed anyway. Why?
Similarity of the Goods
The problem for Justin Vineyards was the second DuPont factor, the similarity of the goods. As proof of what it considered the obvious point that beer and wine are similar goods, Justin Vineyards pointed to a quarter-century of prior TTAB and federal court decisions finding precisely that, i.e., that beer and wine were similar or related goods. Based on these legal citations, Justin Vineyards argued that “there is no question that the goods at issue (wine and beer) are related.”
Turns out, there was still a question – a question of fact. The likelihood of confusion analysis is a question of law, but it is based on underlying facts, and the party with the burden must prove those facts. Here, Justin Vineyards, as the opposing party arguing likelihood of confusion, had the burden to prove the facts necessary for that analysis to take place. Instead, Justin Vineyards relied only on other cases where the burden was met by other parties, and put forward in the present case “no evidence supporting a conclusion that beer and wine are sufficiently related that consumers expect them to emanate from the same source under the same mark.”
No big deal, right? Most of the other factors supported the likelihood of confusion argument, so you might think that the TTAB would find a likelihood of confusion anyway. Nope. The TTAB argued that the second DuPont factor is one of the two “key” factors, and then cited the Federal Circuit for the proposition that “a single DuPont factor may be dispositive in any particular case.” With that legal backdrop, the TTAB dismissed Justin Vineyard’s opposition altogether.
The Lesson: Restate the Obvious
At the risk of stating the obvious, the lesson of course is to restate the obvious. Every time you advance a likelihood of confusion argument, you have to meet your burden to prove as a factual matter that the goods in question are similar or related. There are various ways to do this, including by:
- Introducing in evidence third party registrations in which the same mark is registered for both beer and wine;
- Pointing to advertisements containing both goods being marketed together;
- Finding news articles demonstrating that the goods are used together by the same purchasers; and
- Coaxing admissions from your opponent (especially where your opponent, like Crooked Stave, actually sells both types of goods);
- Offering web pages showing that other companies make and sell both types of goods.