The alcohol industry has seen a veritable explosion in trademark filings from craft and independent brewers, distillers and wineries. This upsurge means trademarks are coming into conflict more and more often in the competitive arena of wine, beer and spirits.
In recent years, the Trademark Trial and Appeal Board (the arm of the U.S. Patent & Trademark Office that decides disputes over trademark rights) and the Court of Appeals for the Federal Circuit have consistently found wine, beer and spirits to be related goods – even though they have simultaneously held that there is no bright-line rule for determining relatedness. In determining whether one competitor’s trademark infringes on another’s, relatedness is key. The test for infringement considers both the similarity of the marks and the similarity of the goods the marks identify. If goods are deemed closely related, chances are that similar marks for the goods will be found to cause a likelihood of confusion – the test for infringement.
Given this context, the coyness of the TTAB and courts concerning the lack of a bright-line rule can be difficult to swallow. But it’s hard to argue with the logic of one commonly cited TTAB decision that beer and wine are related because “a person may [Ed. Note: should] serve more than one kind of alcoholic beverage before or during a meal or at a party,” right? Salierbrau Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB 1992).
A recent non-precedential decision provides some balance. In Chatam Int’l Inc. v. M Chapoutier, Opp. No. 91228479, the TTAB emphasized the importance of not assuming the relatedness of spirits, wines and beers is a bright-line rule. In that case, Chatam instituted an opposition proceeding to block M Chapoutier’s registration of VIA SAINT JACQUES for wines with the appellation of origin Alsace in view of registrations for its JACQUIN (Reg. No. 435,863) and JACQUIN'S (Reg. No. 1,245,562) marks for brandy, gin, rum, and alcoholic cordials and liqueurs.
The TTAB found Chatam’s marks to be entitled to “a normal scope of protection” and gave heavy weight to the VIA SAINT portion of M Chapoutier’s mark in finding that the marks were not similar and had different commercial impressions. But importantly, the TTAB also addressed the relatedness of Chapoutier’s Alsatian wines and Chatam’s distilled spirits. It found that Chatam failed to show that the goods are related, and this weighed against a finding of likelihood of confusion. This finding is surprising given the numerous existing legal rationales previously provided to find wine and spirits related. The TTAB could have simply cited prior decisions such as the Salierbrau case above. Nevertheless, relatedness of the wine and spirits was not presumed, and Chatam’s apparent attempt to rely on this unwritten “bright-line rule” instead of presenting evidence to show relatedness backfired.
Alcohol manufacturers and their attorneys should pay attention. In actions at the TTAB and in the courts to enforce a competitor’s rights in its trademark, you should not merely assume a high degree of relatedness for different alcoholic beverages. Instead, you need to present evidence showing that the particular goods involved in your dispute are related.
On the other hand, competitors defending against an infringement action should point out any failure to produce evidence of relatedness, make the best case possible that the goods are not related, and remind the TTAB or court that no bright-line rule exists.