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Estta1072612 08/04/2020 in the United States Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA1072612 Filing date: 08/04/2020 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 91220846 Party Defendant Lawson's Finest Liquids, LLC Correspondence DANIEL CHRISTOPHERSON Address LEHRMAN BEVERAGE LAW PLLC 2911 HUNTER MILL RD, STE 303 OAKTON, VA 22124-1719 UNITED STATES Primary Email: [email protected] Secondary Email(s): [email protected], [email protected] 202-449-3739 x 708 Submission Brief on Merits for Defendant Filer's Name Daniel Christopherson Filer's email [email protected] Signature /Daniel Christopherson/ Date 08/04/2020 Attachments Applicants Main Brief - filing copy.pdf(514668 bytes ) IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD W. CLAY MACKEY, Opposer, Opposition No. 91220846 v. Application Serial No. 86/299,655 LAWSON’S FINEST LIQUIDS, LLC a Mark: CHINOOKER’D IPA Vermont limited liability company, Filing Date: 6/4/2014 Applicant, Counterclaimant v. W. CLAY MACKEY, Counterdefendant. APPLICANT’S OPENING BRIEF Daniel Christopherson Lehrman Beverage Law, PLLC 2911 Hunter Mill Rd, Ste 303 Oakton, VA 22124 (202) 449-3739 x708 Attorney for Applicant Lawson’s Finest Liquids, LLC Dated: August 4, 2020 TABLE OF CONTENTS I. DESCRIPTION OF THE RECORD ........................................................................................................ 8 (1) Applicant’s Evidence ......................................................................................................................... 8 (2) Opposer’s Evidence ......................................................................................................................... 10 II. PROSECUTION HISTORY .................................................................................................................. 11 III. STATEMENT OF THE ISSUES .................................................................................................... 12 IV. INTRODUCTION .......................................................................................................................... 12 V. RECITATION OF THE FACTS ........................................................................................................... 13 VI. OPPOSER’S MOTION TO STRIKE APPLICANT’S REBUTTAL EVIDENCE ........................ 15 VII. MOTION TO STRIKE OPPOSER’S EVIDENCE ........................................................................ 15 VIII. ARGUMENT .................................................................................................................................. 18 (1) The Marks are Substantially Dissimilar .......................................................................................... 20 A. Opposer’s Mark is Weak as to Beer ............................................................................................ 21 B. Applicant’s Mark and Opposer’s Mark Are Different in Appearance ........................................ 26 C. Applicant’s Mark and Opposer’s Mark Are Different in Sound ................................................. 26 D. Applicant’s Mark and Opposer’s Mark Have Significantly Different Connotations .................. 27 E. Applicant’s Mark and Opposer’s Mark Have Different Commercial Impressions..................... 29 (2) Beer and wine products are not related ........................................................................................... 29 A. Mackey’s Evidence Regarding Third Party Registrations Is Weak ............................................ 30 B. Mackey’s Internet Evidence Is Weak ......................................................................................... 33 C. Opposer’s Reliance on Non-Precedential Cases Is Faulty .......................................................... 36 D. Beer Sold Under CHINOOK-Formative Names Is Not Related to Wine ................................... 37 E. Real-World Reasons Why Breweries Do Not Sell Wine, and Wineries Do Not Sell Beer ........ 39 F. Several Similar Marks Are Used by Different Third-Parties for Beer and Wine ....................... 40 (3) The dissimilarity of established, likely-to-continue trade channels ................................................ 41 (4) The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing .......................................................................................................................... 42 (5) The fame of the prior mark .............................................................................................................. 45 (6) The number and nature of similar marks in use on similar goods ................................................... 45 (7) THERE HAS BEEN NO ACTUAL CONFUSION ........................................................................ 47 2 (8) The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion. .................................................................................................................. 48 (10) The market interface between the applicant and the applicant and the owner of a prior mark: Laches and estoppel attributable to owner of prior mark and indicative of lack of confusion ................ 48 (11) The extent to which applicant has a right to exclude others from use of its mark on its goods ...... 49 (12) The extent of potential confusion .................................................................................................... 50 (13) Any other established fact probative of the effect of use ................................................................ 51 IX. SUMMARY .................................................................................................................................... 51 3 TABLE OF AUTHORITIES Cases AMF Inv. V. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA)................... 30 B&B Hardware, Inc. v. Hargis Industries, Inc., 575 U.S. ___, 135 S.Ct. 1293, 113 USPQ2d 2045, 2049, 2056 (2015) ............................................................................................................................................. 19 Baroness Small Estates, Inc. v. American Wine Trade, Inc., 104 USPQ2d 1224, 1228 (TTAB 2012) ...... 35 Burns Philp Food Inc. v. Modern Prods. Inc., 24 USPQ2d 1157, 1158 n.2 (TTAB 1992) ........................ 46 Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1467 n.30 (TTAB 2014) ..... 34 D.C. One Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016) ........................................... 23 E & J Gallo Winery v. Consorzio del Gallo Nero, 782 F.Supp. 457, 465-66 (N.D. Cal. 1991) ................. 42 Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012) ........................................................ 20 G.H. Mumm & Cie v. Desnoes & Geddes, Ltd., 917 F.2d 1292, 1295 ....................................................... 44 Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-39, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015)20 Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1026 (TTAB 2009) ................................................ 20 H. Marvin Ginn Corp. v. Int'l Ass’n of Fire Chiefs, Inc., 782 F.2d 987, 990, 228 USPQ 528, 530 (Fed. Cir. 1986) ................................................................................................................................................ 21 In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978) ............................................. 24, 25 In re Adlon Brand GmbH & Co., 120 USPQ2d 1717, 1720 (TTAB 2016) ................................................ 46 In re Bayer Aktiengesellschaft, 488 F.3d 960, 964, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) ............ 21, 24 In re Binion, 93 USPQ2d 1531, 1534-1535 (TTAB 2009) ................................................................... 30, 37 In re Box Solutions Corp., 79 USPQ2d 1953, 1957-58 (TTAB 2006) ....................................................... 20 In re British Bulldog, Ltd., 224 USPQ 854, 856 (TTAB 1984) .................................................................. 29 In re Cent. Soya Co., 220 USPQ 914, 916 (TTAB 1984) ........................................................................... 20 In re Chamber of Commerce, 675 F.3d 1297, 1300, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012) ......... 21, 24 In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) ........................... 21 4 In re Country Music Association Inc., 100 USPQ2d 1824, 1830 (TTAB 2011) ........................................ 35 In re Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009) ................................................................ 27 In re Datapipe, Inc., 111 USPQ2d 1330 (TTAB 2014) .............................................................................. 24 In re DePorter, 129 USPQ2d 1298, 1299-1307 (TTAB 2019) .................................................................. 46 In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. (CCPA 1973). .......................... passim In re Eagle Crest, Inc., 96 USPQ2d at 1230 ............................................................................................... 23 In re EBS Data Processing, Inc., 212 USPQ 964, 966 (TTAB 1981) ........................................................ 28 In re FabFitFun,
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