Craft Beer at the Trademark Trial and Appeal Board

By John DiGiacomo

On February 19, 2015, the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (the Board) denied the registration of the mark KARMA CRAFT BEER because it was found to be likely confused with KARMA FINE BEVERAGES. The Board’s written opinion also touched on many procedural deficiencies with the case, which reminds trademark applicants that the process of registering a mark is not easy, and help from an experienced IP attorney is advisable.

Procedural Notes

The first procedural note the Board touched upon was evidence attached to the Opposer’s brief.[1] While the Opposer thought it was helping the Board out by attaching evidence to its Brief of Opposition, the opposite was true. The Board made clear that evidence should not be attached to briefs because all of the relevant evidence is contained in the case file accessible to the Board during its decision-making period. By including evidence with its brief, the Opposer was actually creating more work for the Board in that it would have to double check that the evidence attached to the brief was identical to the evidence in the case file. In this case, the Board refused to do that and ignored the evidence attached to the brief.

The Board also took issue with Opposer’s submission of a copy of its original mark registration certificate. The Board made clear that pleadings including proof of registration need to include a printout from the USPTO’s electronic database to show the current status of the registration, not the original status.[2] The same is required of a Notice of Reliance.

Next, the Board addressed Opposer’s argument that it was wronged by the Applicant when the Applicant failed to respond to some of Opposer’s written discovery requests. Citing voluminous case law, the Board held that because Opposer did not file a motion to compel discovery, it could not then argue that it was wronged when its requests were not responded to. However, the Board did note that requests for admission, if not responded to, will be admitted—and it admitted one of Opposer’s exhibits pursuant to that ruling.

The Board then addressed an application for the mark KARMA CALIFORNIA BRUT submitted by Opposer. Because the evidence was simply an application, and not a registration certificate, the Board held that it was not probative in this case. It wrote that “[p]ending applications are evidence only that the applications were filed on a certain date; they are not evidence of use of the marks.”[3]

Finally, the Board addressed the issues of standing and priority. Standing requires an injury that can be shown by a “real interest” in a proceeding. The Board held that Opposer showed a “real interest” in opposing the Applicant’s registration because the marks were similar and that the Applicant knew of the Opposer’s marks before filing his application. Therefore, the Opposer had standing to oppose. Priority, on the other hand, is essentially the establishment of which party had the mark first. Using the aforementioned admission by the Applicant that he knew of Opposer’s mark before filing his own application, the Board held that Opposer had priority.

Likelihood of Confusion

While the procedural elements of its opinion are important to bear in mind for potential registrants, the Board’s decision actually hinged on the substantive, likelihood of confusion determination. When a mark is opposed based on likelihood of confusion, the Board looks to several factors laid out in the du Pont case. The full list of factors can be seen here [link to Millbrook summary]. In this case, the Board focused on the three most important and commonly debated factors and determined that consumers would likely be confused if both marks existed simultaneously.

Factor One

The first du Pont factor asks the Board to consider “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.” The Board noted that it had to determine the word marks in their entirety;[4] therefore, it had to compare KARMA (Opposer’s mark) to KARMA CRAFT BEER (Applicant’s proposed mark). However, the Board also noted that (1) CRAFT BEER is a descriptive term and thus carries little weight and (2) the first word of the mark should be given more weight regardless.[5] In effect, the Board ended up comparing KARMA to KARMA, holding that the marks were identical, and therefore similar under factor one.

Because factor one was so conclusive—identical marks are as similar as marks can get—the remaining marks did not have to be as conclusive to support a finding of likelihood of confusion.[6]

Factor Two

The second du Pont factor asks the Board to consider “the similarity or dissimilarity and nature of the goods . . . described in an application or registration or in connection with which a prior mark is in use.” Essentially, the second factor tries to find a similarity between the types of goods or services each mark represents, with a higher similarity leading to a higher likelihood of confusion. In this case, the Board easily ruled that beer, as an alcoholic beverage, is similar to the alcoholic beverages sold by Karma Fine Beverages. Because of the similarity, the second factor also swung towards a likelihood of confusion.

Factor Three

The final du Pont factor that the Board explicitly analyzed was the third factor, which asks the Board to consider “the similarity or dissimilarity of established, likely-to-continue trade channels.” Like the second factor, the third factor seeks to establish a connection between the goods or services at issue by analyzing where and how those goods and services are sold. In this case, the Board again easily determined that beer and fine beverages were almost exclusively sold in the same place—namely bars and liquor stores. Because the channels of trade were the same, the third factor also supported a finding of a likelihood of confusion.

Conclusion

Like all oppositions to trademark registrations based on a likelihood of confusion, Karma Fine Beverages argued that if the USPTO were to register the Applicant’s mark, it would be damaged because consumers would be confused by the source of the drink they bought. One of the foundations of trademark law is to protect the identity and identification of businesses and tradesmen because consumer recognition has enormous value. In this case, the Board determined that the marks were too similar and would cause confusion in the market, and would weaken Opposer’s mark.

[1] The “opposer” in this case was actually made up of two parties each with marks already registered that were opposing the Applicants request to register his similar mark.

[2] See Motion Limited v. NBOR Corporation, 92 USPQ2d 1926, 1928 (TTAB 2009).

[3] See Nike Inc. v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007).

 

[4] See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014).

[5] See Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB 1988).

[6] See generally In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).

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