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C. Opposer’s Reliance on Non-Precedential Cases Is Faulty ...... 36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
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(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
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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, Inc., 127 USPQ2d 1670, 1675 (TTAB 2018) ...... 45
In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010) ...... 20
In re Lord Lion Winery LLC. 83 TTABVUE 15, 30 (Opposer’s Main Brief p. 29) ...... 36
In re Morrison & Foester LLP ...... 36
In re N. C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1710 (Fed. Cir. 2017) ...... 24
In re Nat’l Data Corp., 753 F.2d 1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985) ...... 20
In re Nett Designs, Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001) ...... 24
In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859 (Fed. Cir. 1987) ...... 24
In re Sears, Roebuck & Co., 2 USPQ2d 1312, 1314 (TTAB 1987) ...... 29
In re Society of Health and Physical Educators, 127 USPQ2d 1584, 1587 n.7 (TTAB 2018) ...... 36
In re Sterotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089-90 (Fed. Cir. 2005) ...... 25
In re Styleclick.com Inc., 58 USPQ2d 1523, 1527 (TTAB 2001) ...... 25
In re Sydel Lingerie Co., 197 USPQ 629, 630 (TTAB 1977) ...... 29
In re the Dot Communications Network LLC, 101 USPQ2d 1062, 1067 (TTAB) 2011) ...... 30
In re the Procter & Gamble Co., 105 USPQ2d 1119, 1120-21 (TTAB 2012) ...... 36
In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574 (Fed. Cir. 2015) ...... 24
In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1461 (TTAB 1998)...... 23
In re White Swan, Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988) ...... 26
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Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millenium Sports, S.L.U., 797 F.3d
1363, 1373 (Fed. Cir. 2015), cert denied, 136 S. Ct. 982, 194 L. Ed. 2d 5 (2016) ...... 47
Juice Generation, 794 F.3d at 1338-39, 115 USPQ2d at 1674 ...... 21, 47
Midwestern Pet Foods, Inc., v. Societe Des Produits Nestle S.A., 685 F3d 1046, 1053, 103 USPQ2d 1435,
1440 (Fed. Cir. 2012) ...... 20
Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016) ...... 45
Nike Inc. v. Maher, 100 USPQ2d 1018, 1028 (TTAB 2011) ...... 30
Nike, Inc. v. WNBA Enterprises, LLC, 85 USPQ2d 1187, 1200 (TTAB 2007) ...... 30
Optimal Chemical Inc. v. Srills LLC, 2019 USPQ2d 338, 409, at *2 n.13 (TTAB 2019) ...... 34, 35
Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373, 73
USPQ2d 1689, 1693 (Fed. Cir. 2005) ...... 20, 21, 45
Patsy’s Brand, Inc. v. I.O.B. Realty, Inc., 317, F.3d 209, 219 (Fed. Cir. 2003) ...... 44
Po Folks, Inc. v. Kourtney Folks Rest., Inc., 231 USPQ 313, 315 (TTAB 1986)...... 46
Ricardo Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *3 (TTAB 2019) ...... 34, 35
Schiedmayer Celesta GmbH v. Piano Factory Group, Inc., 2019 USPQ2d 341894, at *3, *9 nn. 8, 15
(TTAB 2019 ...... 34
See Cordua,118 USPQ2d at 1637-38 (affirming the Trademark Trial and Appeal Board’s holding of
CHURRASCOS (a type of grilled meat) generic for restaurant services) ...... 22
See In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983)...... 27
See In re Thor Tech, 113 USPQ2d 1546 (TTAB 2015) ...... 40
Spiritline Cruises LLC v. Tour Management Services, Inc., 2020 USPQ2d 48324, at *2 (TTAB 2020) ... 34
TV Azteca, S.A.B. de C.V. v. Martin, 128 USPQ2d 1786, 1790-91 (TTAB 2018) ...... 34
UMG Recordings Inc. v. Matte, Inc., 100 USPQ2d 1868, 1874, 1879 n.12 (TTAB 2011) ...... 28
Zheng Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir. 2018) ...... 20
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STATUTES
27 U.S.C. § 211(a)(7) (2006) ...... 40
OTHER AUTHORITIES
Citation of Opinions to the Trademark Trial and Appeal Board, O.G. Notice (Jan. 23, 2007)...... 36
TTB Public COLA Registry Customer Page, available at https://www.ttb.gov/labeling/cola-public-
registry, last accessed 8/2/2020 ...... 48
United States Patent & Trademark Office, Examination Guide 3-19, Examination of Specimens for Use in
Commerce: Digitally Created or Altered and Mockup Specimens 1 (2019) ...... 31
RULES
74 F.Supp.2d 188, 195 (E.D.N.Y. 1999) ...... 43
Fed.R.Evid. § 701 ...... 15, 41
TBMP § 704.12(a) ...... 27
TBMP § 704.08(b) ...... 33
TREATISES
2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §11.91 (5th
ed. 2020) ...... 46
REGULATIONS
Qualification of a Brewery, 27 C.F.R. § 25.61 (2020)...... 40
Wine, Establishment and Operations, 27 C.F.R. § 24.105 (2020) ...... 40
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I. DESCRIPTION OF THE RECORD
Applicant submits the following evidence into the record.
(1) APPLICANT’S EVIDENCE
• Declaration of Expert Witness Patrick Rue, with exhibits, 73 TTABVUE, filed January 21, 2020.
• Declaration of Jennifer Swiatek, with exhibits, 74 TTABVUE, filed January 21, 2020.
• Declaration of Sean Lawson, with exhibits, 75 TTABVUE, filed January 22, 2020 (confidential version).
• Declaration of Sean Lawson, with exhibits, 76 TTABVUE, filed January 22, 2020 (non- confidential version).
• Applicant’s Notice of Reliance, Part 1, 77 TTABVUE, filed January 22, 2020, attaching the following:
o Pages 7-43 – List of trademark registrations coexisting across beer and wine with different owners, registration certificates attached as Exhibit A14.
o Pages 47-280 – Certificates of Label Approval (“COLAs”) issued by the United States Tax & Trade Bureau (“TTB”) relating to beer, wine, and spirits products branded with the term “CHINOOK.”
o Exhibit A2 – COLAs issued by TTB relating to beer products demonstrating generic use of the term “CHINOOK.”
o Exhibit A3 – Search Results for “CHINOOKED,” Untappd (Jan. 20, 2020) (available at https://untappd.com/search?q="chinooked”, last accessed January 20, 2020).
o Exhibit A4 – Search Results for “CHINOOK.IPA,” Untappd (Jan. 20, 2020) (available at https://untappd.com/search?q=chinook.ipa&type=beer&sort=all, last accessed January 20, 2020).
o Exhibit A5 – Article: Chris Lang, Hop Head: Breweries Launch Trademark Wars, News Advance (Apr. 22, 2015) (available at https://www.newsadvance.com/entertainment/hop- head-breweries-launch-trademark-wars/article_7e5c6fae-e838-11e4-96f5- af6d9c9b12a0.html, last accessed January 20, 2020).
o Exhibit A6 – Sara Randazzo, Hopportunity Cost: Craft Brewers Brawl Over Catchy Names as Puns Run Dry, The Wall Street Journal (July 10, 2016) (available at https://www.wsj.com/articles/hopportunity-cost-craft-brewers-brawl-over-catchy-names- as-puns-run-dry-1468170639, last accessed January 20, 2020).
o Exhibit A7 – Beer Puns, Punpedia (available at https://punpedia.org/tag/hops/, last accessed January 20, 2020).
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o Exhibit A8 – Jay Wood, The Top Hops, According to New Survey from the Brewers Association, CraftBeer.com (Dec. 12, 2016) (available at https://www.craftbeer.com/craft-beer-muses/brewers-association-releases-2016-hop- usage-survey, last accessed January 20, 2020).
o Exhibit A9 – Your Guide to the Most Popular Beer Hops in the USA, CraftBeerClub.com (Mar. 23, 2018) (available at https://craftbeerclub.com/blog/post/your-guide-to-the-most- popular-beer-hops-in-the-usa, last accessed January 20, 2020).
o Exhibit A10 – Andy Sparhawk, Cascade Reigns: Top Hops 2007 vs. 2015, CraftBeer.com (Dec. 1, 2015) (available at https://www.craftbeer.com/editors- picks/cascade-reigns-top-hops-2007-vs-2015, last accessed January 14, 2020).
o Exhibit A11 – Chinook (USDA Accession No. 21226), United States Department of Agriculture (available at https://www.ars.usda.gov/ARSUserFiles/2450/hopcultivars/21226.html, last accessed January 14, 2020).
o Exhibit A12 – Jay Wood, Top Hops: Cascade Ranks # 1 among Craft Brewers’ Favorite Varieties (Feb. 8, 2013) (available at https://www.craftbeer.com/editors-picks/top-hops- cascade-ranks-among-americas-most-popular-varieties, last accessed January 14, 2020).
o Exhibit A13 – Catalogue for Country Malt Group, supplier of Chinook Hops for Applicant.
• Applicant’s Notice of Reliance, Part 2, 78 TTABVUE, filed January 22, 2020, attaching the following:
o Exhibit A14 – United States Trademark Registration Certificates for marks coexisting across beer and wine with different owners.
o Exhibit A15 – Images of marks used on beer and wine products, demonstrating actual use of the marks listed in the registrations in Exhibit A14.
o Pages 572-613 – The entire file wrapper for United States Trademark Application Serial No. 86299655.
o Pages 614-641 – Law Review Article: Justin P. Weinburg & Joseph O. Balthazor, Jr., Stop Letting Wine Crash the Wedding: Craft Beer Consumers Are Sophisticated Buyers, 8 Cybaris® p. 76 (2017) (78 TTABVUE 63).
o Pages 642-644 – Periodical Article: Laura Burgess, The Difference Between Making Beer, Wine and Spirits, Vinepair (Nov. 15, 2016) (available at https://vinepair.com/articles/the-difference-between-making-beer-wine-and-spirits/, last accessed January 22, 2020).
o Pages 645-655 – Reality of Wine Prices (What You Get for What You Spend), Wine Folly (Apr. 29, 2016) (available at https://winefolly.com/update/reality-of-wine-prices-what- you-get-for-what-you-spend/, last accessed April 29, 2016.
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o Pages 656-659 – Screenshot of Opposer’s Website, listing prices for Opposer’s white and red wines (available at www.chinookwines.com/the-wines/white-wines.php, www.chinookwines.com/the-wines/rose-red-wines.php, last accessed January 22, 2020).
o Pages 660-665 - Justin Kendall, Power Hour: Nielsen Shares 2019 Craft Beer Consumer Insights, Brewbound (Jul. 23, 2019), https://www.brewbound.com/news/power-hour- nielsen-shares-2019-craft-beer-consumer-insights (last visited Jan. 22, 2020).
• Applicant’s Rebuttal Notice of Reliance, 82 TTABVUE, filed April 15, 2020, attaching the following:
o Exhibit A-23 – “Terms & Conditions” for the retailer “Total Wine & More)
o Exhibit A-24 – Screenshots of Opposer’s website.
o Exhibit A-25 – Printouts of lists of Connecticut licensed wineries.
o Exhibit A-26 – Printouts of lists of Massachusetts wine shippers.
o Exhibit A-27 - Printouts of lists of Maine wine shippers.
o Exhibit A-28 – Printouts of lists of New Hampshire wine shippers.
o Exhibit A-29 – Printouts of lists of wine licenses in New Jersey.
o Exhibit A-30 – Printouts of brands registered in New York for the name “CHINOOK.”
o Exhibit A-31 – Printouts of lists of Pennsylvania wine shippers.
o Exhibit A-32 – Printouts of lists of Vermont wine shippers.
o Exhibit A-33 – Screenshot of Applicant’s website listing where to buy Applicant’s products.
(2) OPPOSER’S EVIDENCE
• Declaration of W. Clay Mackey, 71 TTABVUE, filed November 25, 2019.
• Opposer’s Notice of Reliance, 72 TTABVUE, filed November 25, 2019.
• Rebuttal Declaration of W. Clay Mackey, 80 TTABVUE, filed March 20, 2020.
• Rebuttal Declaration of Jeff Cox, 80 TTABVUE, filed March 20, 2020.
• Rebuttal Declaration of Kay Simon, 80 TTABVUE, filed March 20, 2020.
• Opposer’s Rebuttal Notice of Reliance, 81 TTABVUE, filed March 20, 2020.
• Opposer’s Main Brief, 83 TTABVUE, filed July 6, 2020.
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II. PROSECUTION HISTORY
On June 4, 2014, Lawson’s Finest Liquids, LLC (“Applicant”) filed U.S. Application
Serial No. 86/299,655 (the “Application”) for the mark CHINOOKER’D IPA (“Applicant’s
Mark”) for “beer.” The application was approved for publication and was published on
November 4, 2014. On February 27, 2015, W. Clay Mackey (“Opposer”) filed a Notice of
Opposition, opposing the Application. As grounds for opposition, Opposer alleged Applicant’s
Mark was likely to cause confusion with the mark “CHINOOK,” the subject of U.S. Registration
No. 1,353,183 for “table wine and sparkling wine” (“Opposer’s Wine Mark”), and the mark
“CHINOOK,” the subject of U.S. Trademark Registration No. 1,790,596 for “beer” (“Opposer’s
Beer Mark”; Opposer’s Wine Mark and Opposer’s Beer Mark may be collectively referred to herein as “Opposer’s Marks”).
Applicant filed its Answer and Counterclaim on April 8, 2015, and its Amended Answer and Counterclaims on December 23, 2015. In its Counterclaims, Applicant sought to cancel the registration of Opposer’s Beer Mark, in part based on Opposer’s abandonment of Opposer’s Beer
Trademark.
On May 24, 2018, Applicant moved for summary judgment on its counterclaim seeking cancellation of the registration of Opposer’s Beer Mark. On August 1, 2019, the Board ruled on
Applicant’s motion, sustaining Applicant’s abandonment claim and cancelling the registration of
Opposer’s Beer Mark.1
1 Applicant notes that Opposer mischaracterizes the Board’s holding here in stating, “The Board also found that Redhook Brewing Company sold CHINOOK brand beer through interstate commerce in 1992, under license from Opposer Mackey.” 83 TTABVUE 15. The Board made no such ruling.
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Opposer filed its main brief with the Board on July 6, 2020. Applicant now submits its main brief.
III. STATEMENT OF THE ISSUES
1. Whether Opposer has met its burden of proving, by a preponderance of the evidence, that
Applicant’s Mark so closely resembles Opposer’s Wine Mark, when applied to Applicant’s goods
(beer), as to be likely to cause consumer confusion, mistake or deception as to the origin of the
parties’ goods.
2. Whether the term “CHINOOK” is merely descriptive, merely informational, and/or generic for
beer products.
3. Whether the term “CHINOOK” is weak by nature of the amount of third-party use of the name
for beer products, as well as other alcoholic beverage products.
4. Whether beer and wine products are related, in light of the hop-related significance of the term
“chinook” as to beer.
5. Whether Opposer has lost the ability to enforce his rights in the mark “CHINOOK” against any
party as to beer, due to significant third-party use of the term for beer and/or against Applicant as
to the mark “CHINOOKER’D IPA” for beer, due to Applicant’s longstanding use of the name.
IV. INTRODUCTION
Opposer alleges Applicant’s “CHINOOKER’D IPA” mark for beer is likely to cause confusion with Opposer’s mark “CHINOOK” for wine, despite the fact that Applicant’s Mark and Opposer’s Wine
Mark have coexisted without confusion for over 12 years. The Board should rule in Applicant’s favor in this proceeding and find no likelihood of confusion between the parties’ marks.
Opposer’s Wine Mark relates to the chinook winds, and carries connotations relating to salmon, a
Washington mountain pass, a Washington town, and the Chinook Indian Nation. 83 TTABVUE 13. The
12 term, “CHINOOK,” however, is the generic name for a popular variety of hops used in the production of beer. 73 TTABVUE 2, 10, 21 (Rue Decl. § 9, Exh. pp. 4, 15). Brewers regularly incorporate hop terms or hop-related puns into their beer names, and consumers are inundated with such brands. See, e.g., 77
TTABVUE 459 (Chris Lang, Hop Head: Breweries Launch Trademark Wars, News Advance (Apr. 22,
2015) (available at https://www.newsadvance.com/entertainment/hop-head-breweries-launch-trademark- wars/article_7e5c6faee838-11e4-96f5-af6d9c9b12a0.html, last accessed Jan. 20, 2020). Accordingly, consumers will immediately assume the term “CHINOOK” in “CHINOOKER’D” is a nod to the chinook variety of hops, and would not assume a relationship to Opposer
Analysis of likelihood of consumer confusion between marks is based upon consideration of the factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 U.S.P.Q. (CCPA 1973).
Opposer’s Wine Mark and Applicant’s Mark bear significant differences that will ensure confusion between the marks is avoided. These differences are exacerbated due to the generic, merely informational, and descriptive nature of the term “CHINOOK” as to beer. Also, due at least to the extremely beer- specific connotation of the term “CHINOOK,” in that context beer and wine products under CHINOOK- formative marks are even less related. Moreover, a significant number of brewers and distillers use the name “CHINOOK” as a brand name for beer or spirits products. 77 TTABVUE 282-376.
Applicant submits that the sum of these factors in light of the arguments and evidence presented below weighs heavily in Applicant’s favor. Accordingly, Applicant requests that the Board dismiss
Opposer’s opposition so that the application can proceed to registration.
V. RECITATION OF THE FACTS
Chinook is the name of one of the most popular varieties of hops used in beer recipes in the
United States and throughout the world. 77 TTABVUE 490; 494; 499; Chinook hops were first bred in
Prosser, Washington, in 1974, were assigned a registration number by the USDA in 1980, and were first offered for sale to brewers in 1985. 77 TTABVUE 503 (Chinook Hops (USDA Accession No. 21226),
13
United States Department of Agriculture (available at https://www.ars.usda.gov/ARSUserFiles/2450/ hopcultivars/21226.html, last accessed January 14, 2020); 73 TTABVUE 2, 10, 21 (Rue Decl. § 9, Exh. pp. 4, 15). Since being released, chinook hops have consistently ranked among the top 3 most popular varieties of hops. Id. at 10, 64, 68, 71 (Rue Decl. pp. 4, 58, 62, 65).
Applicant started the company Lawson’s Finest Liquids, LLC on June 5, 2006. 76 TTBAVUE 8
(Lawson Decl. Exh. 1). In 2007, Applicant brewed a beer named CHINOOKER’D IPA and it into the
New England Regional Homebrewer’s Competition. 76 TTABVUE 3 (Lawson Decl. § 7). Applicant’s
CHINOOKER’D IPA beer includes a significant amount of chinook hops, which gives the beer its signature flavor, and chinook hops are the namesake for the beer. 76 TTABVUE 4 (Lawson Decl. § 11-
12).
Applicant has been continuously producing and selling beer under Applicant’s Mark since 2008.
75 TTABVUE 4 (Lawson Decl. § 8; Exh. 4). Applicant’s CHINOOKER’D IPA beer has been featured in several national and regional craft beer publications. 76 TTABVUE 5, 44-52 (Lawson Decl. § 17;
Exhibits 7-8). As of January 20, 2020, Applicant’s CHINOOKER’D IPA was rated the 49th best
American IPA out of 38,505 entries on the craft beer enthusiast website Beer Advocate. 76 TTABVUE 5,
57-62 (Lawson Decl. § 21, Exh. 10). As of January 21, 2020,
Beers produced by Applicant under the “CHINOOKER’D IPA” mark have been continuously sold since at least as early as 2008. 76 TTABVUE 4 (Lawson Decl. § 13). For instance, Applicant has distributed its CHINOOKER’D IPA beer to the Beverage Warehouse of Vermont since 2008. 74
TTABVUE 2, 13-20 (Swiatek Decl. § 6, Exhibit 2).
Use of hop terms in beer names is commonplace in the brewing industry. Use of hop-puns in the beer industry is well known to consumers. 77 TTABVUE 464-470; 472-486. Numerous beer products are offered under CHINOOK-formative names by breweries. 77 TTABVUE 47-280, 282-376, 378-454. 77
TTABVUE 282-376.
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VI. OPPOSER’S MOTION TO STRIKE APPLICANT’S REBUTTAL EVIDENCE
Opposer has moved to strike Applicant’s rebuttal notice of reliance, which was submitted on
April 15, 2020. Applicant notes that its Rebuttal Notice of Reliance was not due until May 6, 2020, and the submission was therefore proper and timely.
Opposer also alleges that Applicant’s rebuttal evidence is not proper rebuttal evidence. Applicant notes that Opposer’s Rebuttal Notice of Reliance relates to attempting to demonstrate that Applicant’s products and Opposer’s products are carried in the same channels of trade. All of Applicant’s rebuttal evidence is directed toward rebutting this notion. For instance, Applicant has provided the retailer Total
Wine’s Terms and Conditions, which indicate that “[n]ot all items listed on the Sites are available for sale in all Stores, … and quantities may vary depending on the state or Store location.” See 82 TTABVUE 8-
21 (Exhibit A-23). The remaining evidence proffered by Applicant relates to: the areas where Opposer’s goods are allegedly sold 82 TTABVUE 23 (Exhibit A-24); the areas where Opposer can (or cannot) legally sell its products (see 82 TTABVUE 25-1236) Exhibits A-25 through A-32); and the areas where
Applicant’s goods are sold (exhibit A-33). This evidence directly refutes Opposer’s evidence and allegations that Opposer’s and Applicant’s products travel in similar channels of trade, and provides additional context to the probative value of Opposer’s own rebuttal evidence.
VII. MOTION TO STRIKE OPPOSER’S EVIDENCE
Applicant submits that a significant amount of the evidence provided by Opposer is improper and should not be considered. Federal Rules of Evidence Rule 701 provides that lay witness testimony must be rationally based on the witness’s perception, helpful to clearly understanding the witness’s testimony or to determining a fact in issue, and not based on scientific, technical, or specialized knowledge within the scope of Rule 702. Fed.R.Evid. § 701.
Applicant specifically objects to the following testimony presented by Opposer in his Declaration of November 22, 2019:
15
1. Paragraph 11 – “I believe that many of the same customers who buy wine also buy beer.”
2. Paragraph 12. “I am also aware that other companies have produced and sold both wine and beer
under the same name, examples are Wagner Vineyards of Lodi, New York, and Firestone
Vineyards previously of Los Olivos, California. Today companies across the country produce and
sell wine, beer and distilled products under the same name. Examples include St. Clair Brown
Winery & Brewery of Napa, California, Schram Vineyards Winery & Brewery of Waconia,
Minnesota, Crown Valley Brewery Distillery and Winery of Genevieve, Missouri, and Wilridge
Vineyard, Winery & Distillery of Yakima, Washington.”
71 TTABVUE 4 (Mackey Decl. §§ 11, 12). Applicant submits that each of these statements are not the type of statements that Mr. Mackey can make as a lay witness. Mr. Mackey is not qualified as an expert, and cannot testify regarding whether customers who buy wine also buy beer, or whether companies that produce wine also produce beer. Accordingly, Applicant requests that paragraphs 11 and 12 be stricken from the record.
Opposer has attempted to introduce into evidence additional improper lay opinion testimony in its rebuttal notice of reliance. For instance:
1. Paragraph 1 – “Chinook Winds are described as warming winds from the ocean into the interior
regions of the Pacific Northwest of the United States of America. The Chinook Winds can occur
in most places on the leeward side of a nearby mountain range. In Washington and Oregon the
warm, moist air from the Pacific Ocean is forced over the Cascade Mountain Range where it
cools because of a gain in elevation. The cooler air can hold less moisture resulting in
precipitation west of and near the summit of the mountains. As the drier air mass continues
downslope on the leeward side of the Cascade Mountain Range, it becomes warmer through
compressional heating. The accelerating warm wind is known regionally as a Chinook Wind. The
16
Chinook Winds contribute to the favorable grape growing conditions in this region. In addition,
the term Chinook is a regional and cultural term with different associations throughout the Pacific
Northwest region. Many people refer to the salmon species known as King Salmon as Chinook
Salmon. The Eastern entrance to Mount Rainier National Park on HWY 410 is Chinook Pass. The
town of Chinook on the Columbia River is the ancestral home of those Native Americans who
call themselves Chinook. All of these associations with the term Chinook pre-date the release of
the hop variety named “Chinook” by many decades, centuries in the case of Native Americans.
2. Paragraph 4 – “In my experience, the price of craft beer is between $8-$12 for a six-pack of 12-oz
cans. Considering CHINOOK brand wines’ price point, it has been my experience that purchasers
of CHINOOK brand wines are also likely purchasers of craft beer.
3. Paragraph 6 is wholly based on hearsay and is inadmissible. Moreover, Mr. Mackey’s reflections
on the testimony of Mr. Cox is irrelevant and inadmissible lay opinion testimony.
80 TTABVUE 2-4 (Mackey Rebuttal Decl. §§ 1, 4, 6). Mr. Mackey is not an expert in the various origins of the term “CHINOOK,” the price of craft beer, the likelihood of similar purchasers of beer and wine.
There is no reason to believe his personal experience informs this testimony. Regarding paragraph 6, the statement is a mere recitation of an alleged conversation Mr. Mackey had with Mr. Cox. There is no justification for entry of Mr. Mackey’s recollection of a second-hand conversation with Mr. Cox, especially since the nature of the conversation again involves technical experience Mr. Cox has not been qualified as having, and Mr. Cox’s own direct declaration is on file. Similarly, Mr. Mackey’s alleged interactions with “individuals who make purchasing decisions for retailers who purchase both beer and wine” are irrelevant hearsay, and such testimony should not be permitted. There is no reason Mr. Mackey needs to speak to Mr. Cox’s recollections or those of individuals making purchase decisions for retailers.
Further, paragraph 6 also recites Mr. Mackey’s opinions regarding the common channels of trade for beer and wine. Mr. Mackey is not qualified to testify as to channels of trade for beer or wine. For the reasons above, Applicant requests that paragraphs 1, 4 and 6 be stricken in their entirety. Alternatively, Applicant
17 requests that the subject matter that relates to opinions based on industry experience be stricken from the record.
Regarding the statement of Jeff Cox, Mr. Cox is not qualified to testify as to the veracity of the claim that the distribution channels for wine and beer are mutually exclusive. Mr. Cox is not an expert in this matter, and is only entitled to provide testimony within his own expertise. Moreover, Mr. Cox has demonstrated he works “in the Wine, Beer, and Spirits section of the Merchandising Department for
PCC.” 80 TTABVUE 6. We have no context for Mr. Cox’s role in that department, or any idea what experience, training, or knowledge Mr. Cox has regarding any subject matter. Accordingly, Mr. Cox’s statement should be stricken in its entirety.
Regarding the declaration of Kay Simon, her testimony in paragraph 4 is wholly improper. 80
TTABVUE 8-10 (Simon Rebuttal Decl. §4), Ms. Simon has not been designated as an expert in any regard relating to this proceeding. Ms. Simon is not qualified to testify as to the probative value of
COLAs. Moreover, Ms. Simon’s testimony in paragraph 6 is improper, as Ms. Simon is not qualified to provide testimony regarding whether “CHINOOK” brand wine purchasers are also likely purchasers of craft beer. 80 TTABVUE 9 (Simon Rebuttal Decl. § 6. Moreover, relating to Ms. Simon’s testimony in paragraph 7, Ms. Simon has not provided any context as to the confusion she allegedly witnessed in consumers as to the source of beer and wine products being related. 80 TTABVUE 10 (Simon Rebuttal
Decl. § 7) For the reasons above, Applicant requests that paragraphs 4, 6, and 7 in Ms. Simon’s deposition be stricken from the record. Alternatively, Applicant requests that paragraphs 4 and 6 be stricken from the record, and paragraph 7 be afforded no probative value, as the facts surrounding such testimony are not provided here.
VIII. ARGUMENT
Applicant is entitled to a judgment in its favor based on the evidence of record in light of the authorities cited by the parties. Opposer has not met its burden of proof by a preponderance of the
18 evidence a likelihood of confusion with Applicant’s Mark. B&B Hardware, Inc. v. Hargis Industries,
Inc., 575 U.S. ___, 135 S.Ct. 1293, 113 USPQ2d 2045, 2049, 2056 (2015) (party opposing registration bears the burden of proof).
A likelihood of confusion is determined based on whether the consuming public would mistakenly assume that Applicant’s goods sold under Applicant’s Mark originate from the same source as
Opposer’s goods sold under Opposer’s mark. This determination is made on a case-by-case basis pursuant to the du Pont factors:
1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression.
2. The similarity or dissimilarity of and nature of the goods or services as described in an application or registration.
3. The similarity or dissimilarity of established, likely-to-continue trade channels.
4. The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing.
5. The fame of the prior mark (sales, advertising, length of use).
6. The number and nature of similar marks in use on similar goods.
7. The nature and extent of any actual confusion.
8. The length of time during and the conditions under which there has been concurrent use without evidence of actual confusion.
9. The variety of goods on which a mark is or is not used (house mark, “family mark, product mark).
10. The market interface between the applicant and the applicant and the owner of a prior mark.
11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
12. The extent of potential confusion, i.e., whether de minimis or substantial.
13. Any other established fact probative of the effect of use. du Pont, 476 F.2d 1357, 1361, 177 USPQ 563, 567. Applicant submits that, based on the evidence provided herewith and the arguments below, a significant majority of the factors weigh in favor of
Applicant, and judgment should be entered in Applicant’s favor.
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(1) THE MARKS ARE SUBSTANTIALLY DISSIMILAR
Under In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567
(C.C.P.A. 1973) , the first factor requires examination of “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” The test of likelihood of confusion is not whether the marks can be distinguished when subjected to a side-by-side comparison, but whether the marks are sufficiently similar that there is a likelihood of confusion as to the source of the goods or services. See Zheng Cai v. Diamond Hong, Inc., __ F.3d __, 127 USPQ2d 1797, 1801 (Fed. Cir.
2018); Midwestern Pet Foods, Inc., v. Societe Des Produits Nestle S.A., 685 F3d 1046, 1053, 103
USPQ2d 1435, 1440 (Fed. Cir. 2012); Edom Labs., Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB
2012); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010). The basic principle in determining confusion between marks is that marks must be compared in their entireties and must be considered in connection with the particular goods or services for which they are used. In re Nat’l Data Corp., 753 F.2d
1056, 1058, 224 USPQ 749, 750-51 (Fed. Cir. 1985) (footnotes omitted) (citations omitted).
Further, the dissimilarities between Applicant’s Mark and Opposer’s Mark are more significant in the present case, as the term “CHINOOK” when applied to beer is carries highly descriptive, merely informational, and potentially generic meaning. The Court of Appeals for the Federal Circuit and the
Trademark Trial and Appeal Board have recognized that merely descriptive and weak designations may be entitled to a narrower scope of protection than an entirely arbitrary or coined word. See Juice
Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 1338-39, 115 USPQ2d 1671, 1674 (Fed. Cir.
2015); Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1373,
73 USPQ2d 1689, 1693 (Fed. Cir. 2005); Giersch v. Scripps Networks, Inc., 90 USPQ2d 1020, 1026
(TTAB 2009) ; In re Box Solutions Corp., 79 USPQ2d 1953, 1957-58 (TTAB 2006); In re Cent. Soya
Co., 220 USPQ 914, 916 (TTAB 1984).
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A. Opposer’s Mark is Weak as to Beer
The strength of a mark affects the scope of protection to which it is entitled. Accordingly, before comparing the marks, it is proper to first assess the inherent strength or weakness of Opposer’s Mark as to
Applicant’s goods. In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir.
2010). As noted above, merely descriptive and weak designations may be entitled to a narrower scope of protection than an entirely arbitrary or coined word. Juice Generation, 794 F.3d at 1338-39, 115 USPQ2d at 1674; Palm Bay Imps., 396 F.3d at 1373, 73 USPQ2d at 1693; Giersch, 90 USPQ2d at 1026.
The determination of whether a mark is merely descriptive must be made in relation to the goods for which registration is sought, not in the abstract. In re Chamber of Commerce, 675 F.3d 1297, 1300,
102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Bayer Aktiengesellschaft, 488 F.3d 960, 964, 82 USPQ2d
1828, 1831 (Fed. Cir. 2007). In the present case, registration is sought as to beer products and the inquiry, therefore, surrounds whether the term “CHINOOK” is merely descriptive, merely informational, and/or generic for beer products.
“CHINOOK” IS GENERIC FOR BEER
The term “chinook” has a generic meaning as related to beer and a key ingredient of beer. 73
TTABVUE 3 (Rue. Decl § 8). There is a two-part test used to determine whether a designation is generic:
(1) What is the genus of the goods at issue? And (2) Does the relevant public understand the designation primarily to refer to that genus of goods or services? 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). The test turns upon the primary significance that the term would have to the relevant public.
In the present case, the genus of the goods at issue is “beers containing chinook hops.” Several craft brewers use the term “CHINOOK as part of brand names for beer, such as CHINOOK IPA or the like. 73 TTABVUE 3 (Rue Decl. § 10); 76 TTABVUE 5 (Lawson Decl. §§ 15, 16). Moreover, craft brewers and consumers often use the term “CHINOOK” as a reference to the “Chinook IPA” category of
21 beers. 73 TTABVUE 3 (Rue Decl. § 9). For instance, an article discussing the top hops used by craft brewers on the Brewers Association’s website craftbeer.com, the article references a category of “Notable
Chinook Beers,” listing CHINOOK SINGLE HOP IMPERIAL IPA by Flying Dog Brewery, ALL
CHINOOK PALE ALE by Coast Brewing, and High Tide Fresh Hop IPA by Port Brewing as members of the category. 77 TTABVUE 506 (Andrew Kac Marek, Top Hops: Cascade Ranks #1 Among Craft
Brewers’ Favorite Varieties, Craftbeer.com p. 3 (Feb. 8, 2013) (available at https://www.craftbeer.com/editors-picks/top-hops-cascade-ranks-among-americas-most-popular-varieties, last accessed Jan. 14. 2020). Further, Applicant notes that a significant number of beers include the term
“CHINOOK” in their name, indicating that such beers are also members of the “CHINOOK” genus of beers. See, e.g., 77 TTABVUE 47-280, 378-454.
As to the second part of the genericness test, the term “chinook” has a generic meaning that is known to consumers as relating to beer and a key ingredient of beer. Expert witness Patrick Rue testified to this very fact. 73 TTABVUE 2 (Rue Decl. § 9).
In any case, even if the term “CHINOOK” only refers to the hops used to make a beer, it would still be generic for beer because "the generic name of an ingredient of the goods is incapable of identifying and distinguishing their source and is thus unregistrable on either the Principal or
Supplemental Register." See Cordua,118 USPQ2d at 1637-38 (affirming the Trademark Trial and Appeal
Board’s holding of CHURRASCOS (a type of grilled meat) generic for restaurant services).
For the above reasons, Applicant submits that Opposer’s mark is generic as to beer. Accordingly, consumers would not assumed that Applicant’s use of the term “CHINOOKER’D IPA” related to
Opposer’s mark, but would instead assume “CHINOOKER’D IPA” was a reference to the generic term
“CHINOOK.”
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“CHINOOK” IS MERELY INFORMATIONAL FOR BEER
Merely informational matter fails to function as a mark to indicate source. See, e.g., D.C. One
Wholesaler, Inc. v. Chien, 120 USPQ2d 1710, 1716 (TTAB 2016). Matter is merely informational and does not function as a mark when, based on its nature and the context of its use by the applicant and/or others in the marketplace, consumers would perceive it as merely conveying general information about the goods or services or an informational message, and not as a means to identify and distinguish the applicant’s goods from those of others. Trademark Manual of Examining Procedure (“TMEP”) § 1202.04.
Because the function of a trademark is to identify a single commercial source for particular goods or services, if consumers are accustomed to seeing a term or phrase used in connection with goods or services from many different sources, it is likely that consumers would not view the matter as a source indicator for the goods or services. In re Eagle Crest, Inc., 96 USPQ2d at 1230. In the present case,
Applicant has established that consumers are accustomed to seeing the term “CHINOOK” used in connection with several different beer products offered from different sources. See, e.g., 77 TTABVUE
47-280, 378-454. Accordingly, consumers will not view the term “CHINOOK” as a source indicator for beer products. See In re Volvo Cars of N. Am. Inc., 46 USPQ2d 1455, 1461 (TTAB 1998).
Matter may be merely informational and fail to function as a source indicator where is conveys general information about the goods or services (see TMEP § 1202.04(a), or the matter is a common phrase or message that would be ordinarily used in advertising beer products. Applicant has already demonstrated ad nauseum that the term “CHINOOK” is a common term used in the beer industry.
Further, the term “CHINOOK” used on beer products is a mere indication that such products contain chinook hops. 73 TTABVUE 3 (Rue Decl. § 9). Accordingly, the term “CHINOOK” fails to function as a source indicator for beer, and consumers will not assume that beer products containing the term
“CHINOOK” relate to Opposer.
“CHINOOK” IS MERELY DESCRIPTIVE FOR BEER
23
A mark is considered merely descriptive if it describes an ingredient of the specified goods or services. See In re TriVita, Inc., 783 F.3d 872, 114 USPQ2d 1574 (Fed. Cir. 2015); KP Permanent Make-
Up, Inc. v. Lasting Impression I, Inc., 543 U.S. 111, 122 (2004) (trademark law does not countenance someone obtaining a complete monopoly on use of a descriptive term simply by grabbing it first”)
(citation omitted). This requires consideration of the context in which the mark is used or intended to be used in connection with those goods/services, and the possible significance that the mark would have to the average purchaser of the goods or services in the marketplace. See In re Chamber of Commerce, 675
F.3d at 1300, 102 USPQ2d at 1219; In re Bayer, 488 F.3d at 964, 82 USPQ2d at 1831; In re Nett Designs,
Inc., 236 F.3d 1339, 1342 (Fed. Cir. 2001); In re Omaha Nat’l Corp., 819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987); In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215 (C.C.P.A. 1978); In re Datapipe,
Inc., 111 USPQ2d 1330 (TTAB 2014) . Sources for considering the context in which the mark is or may be used include websites, publications, labels, packages, advertising material, and explanatory text on specimens for the goods and services. See In re N. C. Lottery, 866 F.3d 1363, 123 USPQ2d 1707, 1710
(Fed. Cir. 2017); In re Nett Designs, Inc., 236 F.3d at 1342; In re Abcor Dev. Corp., 588 F.2d 811 at 814.
Expert Witness Patrick Rue provided expert testimony on the issue of descriptiveness of the term
“CHINOOK” for beer. According to Mr. Rue:
In my opinion, both within the beer industry and among craft beer consumers, the term “chinook” has a generic, and/or highly descriptive meaning as related to beer and a key ingredient of beer.
…
In my experience, it is very common for brewers to feature a specific hop in a beer recipe. Breweries often name such beers by referring only to the variety of hops used in producing the beer. For instance, breweries will often refer to a beer generically as a “Chinook IPA” or a “Citra Lager.” Relatedly, a typical craft beer consumer being confronted with a beer brand that includes the word “chinook” would assume that the term “chinook” refers to the primary type of hop used and featured in the beer.
73 TTABVUE 3 (Rue Decl. §§ 9, 10).
24
Here, the record leaves no doubt that the term “CHINOOK” is merely descriptive of beer. The term clearly describes a feature or characteristic of beer products, namely, the category of beers offered for sale or the types of hops used to produce beers. Businesses and competitors should be free to use descriptive language when describing their own goods and/or services to the public in advertising and marketing materials. See In re Sterotaxis Inc., 429 F.3d 1039, 77 USPQ2d 1087, 1089-90 (Fed. Cir. 2005)
(citing In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978) (“The major reasons for not protecting such [merely descriptive] marks are: (1) to prevent the owner of a mark from inhibiting competition in the sale of particular goods; and (2) to maintain freedom of the public to use the language involved, thus avoiding the possibility of harassing infringement suits by the registrant against others who use the mark when advertising or describing their own products.”)); see also In re Styleclick.com Inc., 58
USPQ2d 1523, 1527 (TTAB 2001).
Applicant has submitted substantial evidence to demonstrate that the term “CHINOOK” is used in a descriptive manner on beer products by third parties. For instance, Applicant has provided COLAs for 28 beer products, 2 spirits products, and 2 hard cider products that include the term “CHINOOK” on the label as describing an ingredient in the product. 77 TTABVUE 282-376.
Applicant has also provided substantial evidence to demonstrate that hop terms are regularly used as beer names by breweries. For instance, Jennifer Swiatek, the manager and owner of the Beverage
Warehouse of Vermont, declared that her store alone currently sells 11 beers that use 8 different hops varieties in their names. 74 TTABVUE 2 (§ 8). Ms. Swiatek also declared that her store has sold many beers in the past that feature hop-variety puns, such as “CITRA ASS DOWN” by Against the Grain
Brewery, “CITRADELIC” by New Belgium Brewing Company, and “CHINOOKER’D IPA” by
Applicant. Id. at 3 (§ 9). Ms. Swiatek also provided images of various beers sold at her retail establishment bearing hop names (Id. at 7-11, exhibit 1), including: Hill Farmstead Brewery CITRA (Id. at 7); Lost Nation Brewing MOSAIC (Id. at 8); Switchback Brewing Co. CITRA PILS (Id. at 9); Foley
Brothers Brewing CITRENNIAL (Id. at 10); Hoof Hearted Brewing AMARILLO + SIMCOE (Id. at 11).
25
For all of these reasons, Opposer’s mark CHINOOK is either generic, merely informational, or merely descriptive for beer products. Accordingly, Opposer’s mark CHINOOK is extremely weak at best as relating to beer products, and should be afforded only an extremely narrow scope of protection relating to such goods, if any. Applicant submits that the evidence presented herein, in light of the precedence cited, significantly shifts the analysis of the comparison of the marks that follows below.
B. Applicant’s Mark and Opposer’s Mark Are Different in Appearance
Similarity in appearance is one factor to consider when comparing the marks. See In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). Opposer’s mark consists of the single term CHINOOK. Applicant’s mark consists of the composite term CHINOOKER’D
IPA. Opposer’s mark spans 7 letters and 1 word, whereas Applicant’s mark spans two “words” and 10 letters. Moreover, the include of the additional phrase IPA specifically draws consumers to the fact that
IPA relates to a beer product. Moreover, the fact that the term “CHINOOKER’D” is not a real word will create a unique visual impression for consumers that is not present in Opposer’s mark. For these reasons,
Applicant submits that Applicant’s mark is visually distinct from Opposer’s mark.
C. Applicant’s Mark and Opposer’s Mark Are Different in Sound
Similarity in sound is one factor in determining whether the marks are confusingly similar. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973); In re
White Swan, Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988). Opposer’s mark spans 2 syllables: “SHIN” (or
“CHIN”) and “OOK.” Applicant’s mark spans 6 syllables: “SHIN” (or “CHIN”) “OOK” “ERD” “I” “P”
“A.” Given that the common syllables “SHIN” and “OOK” carry the unique suffix “ERD,” and given that the letter sounds “I” “P” “A” append the first term, consumers will easily distinguish between Opposer’s mark and Applicant’s mark. Moreover, the shared syllables “SHIN” and “OOK” are generally softer sounds that are not as audible as the harder sounds “ERD” and “P” that are present in Applicant’s mark.
Accordingly, consumers easily audibly distinguish Applicant’s mark from Opposer’s mark.
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D. Applicant’s Mark and Opposer’s Mark Have Significantly Different Connotations
Similarity in meaning or connotation is another factor in determining whether the marks are confusingly similar. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567
(C.C.P.A. 1973) ; In re Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009). The meaning or connotation of a mark must be determined in relation to the named goods or services.
Expert witness Patrick Rue provided testimony relating to the connotation of Applicant’s mark.
Mr. Rue declared, “[There is a] hop-related significance of the term “chinook” for beer. This same connotation does not exist for wine, since hops are not typically used as an ingredient in wine.” 73
TTABVUE 3 (Rue Decl. § 11). In the present case, the connotations of Opposer’s mark and Applicant’s mark are wholly different. Opposer has conceded, “Unlike CHINOOK brand wine, … Chinook hops are the namesake for CHINOOKER’D IPA. 83 TTABVUE 17-18.
“CHINOOKER’D” is a reference to the chinook variety of hops. Ms. Swiatek declared that, based on her 34 years of experience as a beer retailer, she understands that the term “CHINOOK” as related to beer and in the craft beer industry carries a significance as relating to a variety of hops. 74
TTABVUE 3 (§ 10). Ms. Swiatek also declared that the term “CHINOOK” does not carry the same hop significance, but instead relates to a type of fish. Id. (§ 11).
Opposer makes the strange suggestion that Applicant should have entered a disclaimer of the term
“CHINOOK” if the term is indeed generic. Opposer’s argument is fruitless, however, as the term
“CHINOOKER’D” is a hop-pun and a unitary double entendre. A true “double entendre” is unitary by definition. An expression that is a "double entendre" should not be broken up for purposes of requiring a disclaimer. See In re Kraft, Inc., 218 USPQ 571, 573 (TTAB 1983). Applicant asks that the Board take judicial notice of the definition of the term “SNOOKERED,” which means “to deceive, cheat, or dupe.”
Definition: Snooker, Dictionary.com. Available at https://www.dictionary.com/browse/snookered, last accessed August 3, 2020; TBMP § 704.12(a); UMG Recordings Inc. v. Matte, Inc., 100 USPQ2d 1868,
27
1874, 1879 n.12 (TTAB 2011) (allowing entry of a dictionary definition by Judicial notice). Applicant notes that the term “CHINOOKER’D” is a composite of the terms “CHINOOK” and “SNOOKERED.”
The composite term carries the double meaning of referring to the chinook hop and also the term
“SNOOKERED.”
Applicant notes that hop-puns are regularly used in the beer world. Brewers regularly incorporate hop terms or hop-related puns into their beer names, and consumers are inundated with such brands. See, e.g., 77 TTABVUE 459 (Chris Lang, Hop Head: Breweries Launch Trademark Wars, News Advance
(Apr. 22, 2015) (available at https://www.newsadvance.com/entertainment/hop-head-breweries-launch- trademark-wars/article_7e5c6faee838-11e4-96f5-af6d9c9b12a0.html, last accessed Jan. 20, 2020).
Accordingly, consumers will immediately assume the term “CHINOOK” in “CHINOOKER’D” is a nod to the chinook variety of hops, and would not assume a relationship to Opposer
Moreover, even if the composite term “CHINOOKER’D” was not found to comprise a double entendre, Applicant notes that the term is at least a compound word mark. If a compound word mark consists of an unregistrable component and a registrable component combined into a single word, no disclaimer of the unregistrable component of the compound word will be required. See In re EBS Data
Processing, Inc., 212 USPQ 964, 966 (TTAB 1981) (finding that "[a] disclaimer of a descriptive portion of a composite mark is unnecessary . . . if the elements are so merged together that they cannot be regarded as separable elements . . . for example, . . . by combining two words or terms, one of which would be unregistrable by itself . . ."). For all of these reasons, Applicant submits that the lack of entry of a disclaimer in the present case does not demonstrate in any way that the term “CHINOOK” is not generic, merely informational, and/or merely descriptive for beer products.
Accordingly, Applicant submits that Opposer’s mark and Applicant’s mark carry completely different connotations, further separating the marks in the minds of consumers and thereby avoiding confusion.
28
E. Applicant’s Mark and Opposer’s Mark Have Different Commercial Impressions
Even marks that are identical in sound and/or appearance may create sufficiently different commercial impressions when applied to the respective parties’ goods or services so that there is no likelihood of confusion. See, e.g., In re Sears, Roebuck & Co., 2 USPQ2d 1312, 1314 (TTAB 1987)
(holding CROSS-OVER for bras and CROSSOVER for ladies’ sportswear not likely to cause confusion, noting that the term "CROSS-OVER" was suggestive of the construction of applicant’s bras, whereas
"CROSSOVER," as applied to registrant’s goods, was "likely to be perceived by purchasers either as an entirely arbitrary designation, or as being suggestive of sportswear which "crosses over" the line between informal and more formal wear . . . or the line between two seasons"); In re British Bulldog, Ltd., 224
USPQ 854, 856 (TTAB 1984) (holding PLAYERS for men’s underwear and PLAYERS for shoes not likely to cause confusion, agreeing with applicant's argument that the term "PLAYERS" implies a fit, style, color, and durability suitable for outdoor activities when applied to shoes, but "'implies something else, primarily indoors in nature'" when applied to men’s underwear); In re Sydel Lingerie Co., 197 USPQ
629, 630 (TTAB 1977) (holding BOTTOMS UP for ladies’ and children’s underwear and BOTTOMS UP for men’s clothing not likely to cause confusion, noting that the wording connotes the drinking phrase
"Drink Up" when applied to men’s clothing, but does not have this connotation when applied to ladies’ and children’s underwear).
As demonstrated above, the commercial impression of the term “CHINOOK” for wine is distinctly separate from the meaning of the term “CHINOOK” for beer. The dissimilarity in the connotations and commercial impression associated with the marks CHINOOK for wine and
“CHINOOKER’D IPA” for beer demonstrates that this factor weighs heavily against a finding of confusion between Applicant’s and Opposer’s marks.
(2) BEER AND WINE PRODUCTS ARE NOT RELATED
“The degree of ‘relatedness’ must be viewed in the context of all the factors, in determining whether the [goods] are sufficiently related that a reasonable consumer would be confused as to source or
29 sponsorship.” In re Binion, 93 USPQ2d 1531, 1534-1535 (TTAB 2009) (the word “services” replaced with “goods”). Opposer has provided a substantial amount of very weak, at best, evidence to attempt to demonstrate that beer and wine are related goods in the present case. In the present case, beer and wine products are not so related as to cause a heightened level of confusion for consumers, owing at least to the highly descriptive meaning of the term CHINOOK as to beer, and the non-use of hops in wine products.
Similarly, there is substantial evidence that helps demonstrate that beer products and wine products are highly specialized products that are unlikely to be confused as to source by consumers.
A. Mackey’s Evidence Regarding Third Party Registrations Is Weak
Opposer has submitted evidence in the form of third-party trademark registrations that span both beer and wine, internet evidence purporting to show use of a mark for both beer and wine, and Opposer’s own lay opinion testimony. Applicant submits that all of this evidence is extremely weak and carries very little probative weight regarding the similarity of beer and wine.
Opposer suggests that “many third parties have registered trademarks to be used on both wine and beer,” providing “78 third-party, use-based registrations showing the same registrations covering both beer and wine goods. 83 TTABVUE 15, 29 (Opposer’s Main Brief pp. 14, 28). When a third-party federal registration has been properly made of record, its probative value is limited, particularly when the issue to be determined is likelihood of confusion, and there is no evidence of actual use of the mark shown in the registration. See AMF Inv. V. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269
(CCPA); In re the Dot Communications Network LLC, 101 USPQ2d 1062, 1067 (TTAB) 2011) (limited probative value in view of the current market conditions which are very different from when registrations issued); Nike Inc. v. Maher, 100 USPQ2d 1018, 1028 (TTAB 2011) (little probative value because they tell nothing about whether the marks are being used or the manner of such use); Nike, Inc. v. WNBA
Enterprises, LLC, 85 USPQ2d 1187, 1200 (TTAB 2007) (not evidence of use).
Moreover, a closer analysis of the registrations cited by Opposer further demonstrates that such evidence carries even less probative value, if any. First, Applicant requests that the Board take notice of
30 the fact that several of the registrations cited by Opposer are now dead. For instance, Opposer has cited 26 registrations that have been cancelled as to beer, wine, or both, including registrations nos. 4,077,512,
4,077,511(as to both beer and wine), 4,225,891 (as to both beer and wine), 4,332,166 (as to both beer and wine), 4,558,662 (as to wine), 4,451,211 (as to wine), 3,247,029 (as to wine), 3,237,848 (as to wine),
3,005,606 (as to beer), 3,000,630 (as to beer), 2,911,802 (as to wine), 3,632,408 (as to wine), 3,064,034
(as to wine), 3,163,067 (as to beer), 2,632,776 (as to wine), 3,075,029 (as to both beer and wine),
2,963,588 (as to wine), 2,713,986 (as to beer), 2,595,289 (as to beer), 2,341,577 (as to beer), 2,139,342
(as to wine), 1,574,102 (as to wine), 1,587,313 (as to wine), 1,560,079 (as to beer), 1,553,878 (as to both wine and beer), 1,395,765 (as to wine), and 1,018,538 (as to both beer and wine). Also, at least 1 of the cited registrations does not actually span both beer and wine (Registration No. 5,018,239)
Further, all of the registrations cited by Opposer date back to before 2019. Pursuant to
Examination Guide 3-19 from July 2019, “The ongoing issue of applicants submitting specimens that are digitally created/altered, or are mockups, has resulted in the need for the USPTO to focus more attention on whether submitted specimens are real and show the mark as actually used in commerce as required by the Trademark Act.” United States Patent & Trademark Office, Examination Guide 3-19, Examination of
Specimens for Use in Commerce: Digitally Created or Altered and Mockup Specimens 1 (2019), available at https://www.uspto.gov/sites/default/files/documents/Exam%20Guide%2003-19.pdf, last accessed Aug.
2, 2020. Applicant submits that a company attempting to substantiate use in connection with two specialized goods (i.e., both beer and wine) is even more likely to rely upon questionable evidence of use as to such goods. This is evidenced by the fact that literally one-third of the registrations cited by Opposer as demonstrating registrations that span both beer and wine are now abandoned as to wine, beer, or both.
One can presume that a company that previously was capable of obtaining a registration covering both beer and wine may not be now capable of renewing such registrations under the USPTO’s newer rigid requirements for demonstrating use. Even more, the evidence provided by Opposer actually demonstrates
31 that it is highly likely that registrations spanning both beer and wine are illegitimate as to either beer or wine, or both.
It is worth noting that, prior to 2019, the USPTO habitually did not require a showing of use for each good listed in a class, instead approving the registration of a mark in a class where use was shown as to any good in a class. See Id. at 3 (permitting that an examining attorney make a request for information under 37 C.F.R. § 2.61(b) as to additional goods identified in the application). Registrations that recite a long laundry-list of goods across multiple classes are likely the result of the more favorable review process previously allowed to trademark applications. Many of the registrations cited by Opposer are prime examples of laundry list registrations, including registrations nos.: 5166429 (TERP); 5159453 (A
CRAFTED EXPERIENCE); 5007753 (LOGIS DE LAFONT); 5116260 (TULASI); 4932847 (THE
MINT 400); 5096461 (IOLÉ); 5023210 (THE CAJUN BUDDHA); FEASTY (4978590); 4978543
(BREWVO); 5223362 (FUTURE); and 1513279 (BORIS BECKER). Applicant submits that, when the time for demonstrating continued use as to each listed good of such marks under the USPTO’s more rigid standards comes, these marks are also likely to be cancelled as to either beer or wine, or both.
In the present case, Opposer’s mark for beer was declared abandoned by the TTAB, providing even more evidence to support the contention that companies owning registrations for a given mark across both beer and wine are often illegitimate or vulnerable to cancellation based on abandonment.
While some registered marks may exist that span both beer and wine, it is reasonable to assume that some if not many of them are ripe for cancellation due to abandonment or non-use. While many wineries may aspire to obtain a monopoly for their marks that spans all alcoholic beverages, running a winery takes a significant amount of an owner’s time and energy, and developing and maintaining a successful beer brand while also keeping a winery operational is often infeasible or not sustainable. Mr. Mackey echoed this, stating, “Because our time was occupied with operating the winery, we decided that I should enter into a license agreement with a beer producer for the production of beer under the CHINOOK mark.” 71
TTABVUE 4. Also, wineries may attempt to maintain trademark registrations through sham renewals and
32 licensing agreements in order to maintain broader rights than they might otherwise be entitled to, as was arguably the situation in the present case.
Given that the USPTO has not reviewed any remaining registered marks cited by Opposer under the more rigorous standards implemented to curtail the registration of marks supported by illegitimate statements of use, Applicant submits that Opposer’s evidence as to registered marks spanning both beer and wine products carries extremely limited probative value as to similarity of the goods. On the contrary,
Applicant submits that such evidence demonstrates that it is highly unlikely (or certainly uncommon) that a company actually makes a legitimate use of a given mark in connection with both beer and wine products.
Finally, some of the registrations cited by Opposer relate to generic house marks produced on behalf of retailers spanning a very wide variety of goods. This is the case at least for registrations nos.
4707076 (KIRKLAND SIGNATURE, the house brand for Costco Wholesaler Corporation) and 1574102,
1587313, and 1018538 (SHOPRITE, the house brand for the retailers’ cooperative ShopRite
Supermarkets). Applicant notes that these registrations span an extremely wide variety of goods including, as examples, antifreeze, ammonia, denture adhesives, nail clippers, pantyhose, seaweed, razor blades, as well as beer and wine. Evidence demonstrating that these megabrands are used to sell both beer and wine does not demonstrate that beer and wine are related, but instead demonstrates that these megabrands are used by those retailers in connection with a wide variety of goods. Accordingly, unless the Board will also consider flea and tick medications for dogs and cats similar to camisoles (see registration 4316489), this evidence cannot be relied upon to demonstrate a relatedness between beer and wine.
B. Mackey’s Internet Evidence Is Weak
Opposer has provided internet evidence purporting to demonstrate that some companies sell wine and beer under the same marks. See 72 TTABVUE 11-125 (Exs. 0-9 – 0-30). Pursuant to Trademark Trial and Appeal Board Manual of Procedure (“TBMP”) § 704.08(b), the probative value of Internet
33 documents is limited. They can be used to demonstrate what the documents show on their face. However, documents obtained through the Internet may not be used to demonstrate the truth of what has been printed. Fed. R. Civ. P. 802. See, e.g., Spiritline Cruises LLC v. Tour Management Services, Inc., 2020
USPQ2d 48324, at *2 (TTAB 2020) (Internet printouts and other materials properly introduced under a notice of reliance without supporting testimony considered only for what they show on their face rather than for the truth of the matters asserted); Milwaukee Electric Tool Corp. v. Freud America, Inc., 2019
USPQ2d 460354, at *4 (TTAB 2019) (same for website, Internet printouts and other materials), complaint filed, No. 20-cv-109 (M.D.N.C. Feb. 3, 2020); Ricardo Media Inc. v. Inventive Software, LLC,
2019 USPQ2d 311355, at *2 (TTAB 2019) (unaccompanied by testimony, articles from the Internet may not be considered for the truth of the matters asserted but are admissible for what they show on their face); Optimal Chemical Inc. v. Srills LLC, 2019 USPQ2d 338409, at.*2 n.13 (TTAB 2019) (website printouts are hearsay and admissible under notice of reliance for what they show on their face but may not be relied upon for the truth of the matters asserted unless supported by testimony or other evidence); Schiedmayer Celesta GmbH v. Piano Factory Group, Inc., 2019 USPQ2d 341894, at *3, *9 nn. 8, 15 (TTAB 2019 (Internet evidence relied on for "what these sources state, rather than the truth of what they state"; Internet reference works considered for what they show on their face, specifically that certain searches and materials point to Ms. Schiedmayer’s family and its businesses and their musical instruments), appeal filed, No. 20-1196 (Fed. Cir. Dec. 3, 2019); TV Azteca, S.A.B. de C.V. v. Martin, 128
USPQ2d 1786, 1790-91 (TTAB 2018) (newspaper articles and blog post submitted with no supporting testimony or other evidence are hearsay; “residual hearsay” exception of Fed. R. Evid. 807(a) does not apply); WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1038 and 1040-41 (TTAB 2018) (printouts from websites downloaded from the Internet are admissible under notice of reliance for what they show on their face, but absent testimony from a competent witness, the matters asserted therein are hearsay and thus not probative of the truth of what has been printed); Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1467 n.30 (TTAB
2014) (Internet webpage evidence admissible only to show what has been printed and not for the truth of
34 what has been printed). A printout from a webpage may have more limitations on its probative value than traditional printed publications. A party may increase the weight the Board will give website evidence by submitting testimony and proof of the extent to which a particular website has been viewed. Ricardo
Media Inc. v. Inventive Software, LLC, 2019 USPQ2d 311355, at *3 (TTAB 2019) (no evidence introduced to show that United States consumers visited website) (citing In re Brouwerij Bosteels, 96
USPQ2d 1414, 1424 (TTAB 2010)); Baroness Small Estates, Inc. v. American Wine Trade, Inc., 104
USPQ2d 1224, 1228 (TTAB 2012) (noting that there was no evidence in the record as to the public exposure to the website pages submitted as evidence in genericness claim) (citing In re Country Music
Association Inc., 100 USPQ2d 1824, 1830 (TTAB 2011)). Otherwise, the document may not be considered to have much probative value. Optimal Chemical Inc. v. Srills LLC, 2019 USPQ2d 338, 409, at *2 n.13 (TTAB 2019) (website printouts are hearsay and admissible under notice of reliance for what they show on their face but may not be relied upon for the truth of the matters asserted unless supported by testimony or other evidence); WeaponX Performance Products Ltd. v. Weapon X Motorsports, Inc.,
126 USPQ2d 1034, 1038 and 1040-41 (TTAB 2018) (same).
Opposer has provided internet evidence labeled as exhibits O-9 through O-36. Applicant notes that none of these exhibits have been verified by testimonial evidence, nor has evidence been provided to prove the extent to which a particular website has been viewed. Notably, not even the declaration of Clay
Mackey verifies that accuracy of exhibits O-31 or O-32. Accordingly, such evidence is not probative for the truth of the matter asserted therein, but only for what they show on their face. Id.
Moreover, even if the evidence provided in these exhibits is allowed some probative value, such evidence would at best only demonstrate that an extremely limited number of wine products and beer products are sold under the same marks. Even taken at its face value, the evidence provided by Opposer does not demonstrate that beer and wine are related. As to Exhibits O-9 and 0-10, there is no evidence provided to show: that the Charleville Vineyards & Microbrewery depicted in Exhibit O-9 is the same entity described as Charleville Vineyards in Exhibit O-10; that both companies still exist, given that both
35 exhibits are date stamped from May 14, 2018; or that Charleville Vineyards markets and sells any products, let alone wine products, under the name CHARLEVILLE. Similarly, exhibits O-11 through O-
16, at best, demonstrate that there are ciders, beers, and wine products sold under the name Edgefield.
There is no evidence to demonstrate that these products originate from a similar source. On the contrary, this evidence could just as easily be interpreted as demonstrating that beer, wine, and cider products by different entities under the name EDGEFIELD.
Relating to Exhibits O-13 through O-15, depicting the mark KIRKLAND used on beer and wine products, Applicant reiterates that the evidence provided is admissible hearsay, and cannot be used to demonstrate the truth of the matter stated therein. Without testimonial evidence to verify the source of the beer products shown in Exhibits O-13 and O-14 versus the wine products depicted in O-15, a similar source cannot be assumed. Moreover, even if this evidence is taken at more than what it present on its face, as demonstrated above KIRKLAND is a Costco house brand used in connection with myriad goods.
Such goods are so varied that it cannot be assumed that any goods sold under the KIRKLAND brand are related.
C. Opposer’s Reliance on Non-Precedential Cases Is Faulty
In support of its allegation that wine and beer are related goods, Opposer attempts to incorporate by reference the evidence relied upon in the Board’s non-precedential decision in In re Lord Lion Winery
LLC. 83 TTABVUE 15, 30 (Opposer’s Main Brief p. 29). Citation of Opinions to the Trademark Trial and Appeal Board, O.G. Notice (Jan. 23, 2007). See In re Society of Health and Physical Educators, 127
USPQ2d 1584, 1587 n.7 (TTAB 2018) ("Board decisions which are not designated as precedent are not binding on the Board, but may be cited and considered for whatever persuasive value they may hold."); In re Morrison & Foester LLP, 110 USPQ2d 1423, 1427, n.6 (TTAB 2014) ("Although parties may cite to non-precedential decisions, the Board does not encourage the practice.); In re the Procter & Gamble Co.,
105 USPQ2d 1119, 1120-21 (TTAB 2012) (citation to non-precedential opinions permitted but not encouraged; non-precedential decisions not binding on the Board). Applicant submits that, at least in light
36 of the non-precedential nature of the cited case, it is wholly improper for Opposer to attempt to incorporate the Board’s evidentiary findings from the case. Moreover, it is impossible to here fully interpret the probative value of the examples cited in the case and to incorporate such evidence into the record for the present case. Accordingly, Opposer’s evidence relating to evidentiary findings by the Board in an unrelated proceeding cannot be included as evidence in this proceeding. Accordingly, Applicant requests that the Board strike all of page 29 of Opposer’s brief, as well as the end of the paragraph at the top of page 30. Alternatively, Applicant requests that the Board afford very little probative value to any of the information contained on such pages.
Applicant also notes that several of the other cases cited by Opposer are similarly non- precedential: Anheuser-Busch, LLC v. Innvopak Sys. Pty Ltd., 115 U.S.P.Q.2d 1816, 1826-27 (TTAB
2015) (non-precedential); In re The Bruery, LLC, Serial No. 85656671, 2014 WL 5035512 (TTAB Sept.
24, 2014) (non-precedential); In re Uinta Brewing Co., Serial No. 86333439 (TTAB June 29, 2016) (non- precedential); E. & J. Gallo Winery v. Wade, Cancellation No. 92063116, 2017 WL 2876830 (TTAB
June 7, 2017) (non-precedential); In re Iron Hill Brewery, LLC, Serial No. 86684857, 2017 WL 4310820
(TTAB Sept. 8, 2017) (non-precedential); and In Re 10 Barrel Brewing, LLC, Serial No. 86190248, 2016
WL 3566124 (TTAB May 31, 2016) (non-precedential). Applicant requests that the Board consider the case at hand based on precedential cases and other authorities, as any relationship that may have been found to have existed between beer and wine in other cases by the Board are substantially different than the facts presented in the present case.
D. Beer Sold Under CHINOOK-Formative Names Is Not Related to Wine
As demonstrated above, “The degree of ‘relatedness’ must be viewed in the context of all the factors, in determining whether the [goods] are sufficiently related that a reasonable consumer would be confused as to source or sponsorship.” Binion, 93 USPQ2d 1534-1535 (TTAB 2009) (the word “services” replaced with “goods”). Absent the consideration of Applicant’s and Opposer’s marks and the facts and evidence presented herein, the Board has found some marks for beer to be similar to some marks for
37 wine. Such holdings should have little, if any, bearing on the case at hand. In the present case, it is impossible to consider the relatedness of beer and wine goods without also considering the marks utilized by Opposer and Applicant in connection with such goods. Put simply, a product branded as CHINOOK for wine is not closely related to a product branded as CHINOOK for beer. A product branded as
CHINOOK for beer necessarily carries a highly descriptive if not generic connotation that is not present in the goods-mark relationship for CHINOOK for wine or other alcoholic beverages. This reality is further demonstrated by the fact that a substantial number of beer and spirits products coexist with brands that utilize the word “CHINOOK” without any apparent confusion between them. See, e.g., 77
TTABVUE 47-280 (including 45 COLAs for beer products and 42 spirits products containing the term
“CHINOOK”).
Opposer alleges that Applicant’s “CHINOOKER’D IPA” beer and Opposer’s “CHINOOK” Wine are both found on Total Wine and More’s retail website. 83 TTABVUE 31-32. Applicant has provided herewith the Terms & Conditions for the Total Wine and More website, which provides:
Not all items listed on the Sites are available for sale in all Stores, or the prices, promotions, and quantities may vary depending on the state or Store location. Some items, especially highly-allocated or limited quantity items, may be listed on the Sites but may not be available for sale or in the quantities indicated.
82 TTABVUE 14. Applicant notes that Applicant’s CHINOOKER’D IPA beer is indeed not available in the same store that Opposer cited, as demonstrated by Opposer’s own evidence. 81 TTABVUE 7. In reality, Opposer’s own evidence actually demonstrates Applicant’s product is not actually sold within the same channel of trade as Opposer’s product.
Applicant’s Expert Witness Patrick Rue provided testimony on this topic. According to Mr. Rue:
In my opinion, the beer and wine industry are not so highly related that a product bearing the mark CHINOOK for wine would be confused with a product bearing the mark CHINOOKER’D for beer. This is largely because of the hop-related significance of the term “chinook” for beer. This same connotation does not exist for wine, since hops are not typically used as an ingredient in wine. Also, the production of wine
38
requires different equipment and different technical expertise than the production of wine. The significant differences between the beer and wine industries, including their varying channels of trade, also helps to minimize any confusion among consumers, also helps to minimize any confusion among consumers relating to these brands.
73 TTABVUE 3 (Rue Decl. § 11). Applicant again notes that Mr. Rue’s testimony is the only expert testimony on the record. For that reason alone, Applicant submits that this is strong evidence that this factor weighs heavily in Applicant’s favor.
Opposer attempts to pretend that the comparison of Applicant’s beer goods and Opposer’s wine goods should be made in a vacuum. Precedent, however, demands that the comparison be made in light of all factors, not the least of which includes the marks intended to be used with the goods. Given that the term CHINOOK as connected to beer cannot be separated from the highly popular and well-known chinook hop, beer goods sold under the name CHINOOK are even less related to wine goods sold under the name CHINOOK.
E. Real-World Reasons Why Breweries Do Not Sell Wine, and Wineries Do Not Sell Beer
Brewing beer and making wine require investment in expensive specialized equipment to make and extensive employee training to master. Beer and wine utilize different production methods and incorporate different ingredients. “The fermentation and distilling processes that keep humanity lubricated share a lot. But they actually start and end differently, which is why you don’t often see brewers adding whiskey…to their lineup, or dual beer… and winemaking operations.” 78 TTABVUE 643 (Laura
Burgess, The Difference Between Making Beer, Wine and Spirits, Vinepair).
Most notably in the present case, beer products are produced with hops. See 27 U.S.C. §
211(a)(7) (2006); Alcohol and Tobacco Tax and Trade Bureau (“TTB”), Labeling and Advertising of
Malt Beverages, 27 C.F.R. § 7.10 (2020). Brewing beer and making wine products requires the acquisition of different federal and state permits and compliance with different state and federal laws. See, e.g., Qualification of a Brewery, 27 C.F.R. § 25.61 (2020); Wine, Establishment and Operations, 27
39
C.F.R. § 24.105 (2020). These are the real world, practical reasons why most breweries do not make wine products, and most wineries do not make beer. Consumers understand these differences and will not be led to expect that any particular beer and wine come from the same source.
F. Several Similar Marks Are Used by Different Third-Parties for Beer and Wine
As further evidence that wine and beer are not so related as to create a likelihood of confusion in the present case, Applicant submits herewith a list of 207 pairs of third party registrations that coexist for beer and wine products for marks that are more similar than the marks in the present case. 77 TTABVUE
7-43; 78 TTABVUE 3-228. The Board has held that the existence of numerous third-party registrations by different companies indicates that businesses in these industries believe that their respective goods and services are distinct enough that confusion between even identical marks is unlikely. See In re Thor Tech,
113 USPQ2d 1546 (TTAB 2015). In Thor Tech, the Board found a list of 50 pairs of coexisting marks to be sufficient to show a lack of confusion between trucks and trailers. Applicant, therefore, submits that a list of 207 pairs of coexisting marks across beer and wine products should be more than sufficient to show that confusion is unlikely. Moreover, Applicant notes that the registrations cited are a mere sampling of those available, intended to provide evidence of some of the most similar marks that currently coexist between beer and wine. Also, Applicant notes that the mark CHINOOKER’D IPA is more different from
CHINOOK than most if not all of the pairs of marks cited.
Applicant has also provided images demonstrating use of hundreds of similar marks used by different entities to further corroborate the use of the registered marks Applicant has cited. For instance:
• The Church Brew Works produces an AMBROSIA ALE (78 TTABVUE 105, 230) while Arbor Hill Gourmet Wines produces a wine branded AMBROSIA (78 TTABVUE 101, 231);
• Sterling Vineyards sells wine under the name STERLING (78 TTABVUE 18, 232), while a beer is also sold under the name STERLING (78 TTABVUE 3, 233);
• Kinetic Brewing Company sells beers branded KINETIC (78 TTABVUE 163, 237), while Les Vins Georges Duboeuf sells wine under the name KINETIC CHARDONNAY (78 TTABVUE 161, 238);
40
• Fullsteam Brewery sells a beer under the name HOGWASH (78 TTABVUE 93, 239), while wine is also sold under the name HOGWASH (78 TTABVUE 98, 240);
• Ballast Point Brewing Company sells a beer under the name FATHOM (78 TTABVUE, 107 241), while Babcock Vineyards sells a wine under the name FATHOM (78 TTABVUE 104, 242);
• Anheuser-Busch sells beer under the name FAUST (78 TTABVUE 155, 246), while wine is sold under the name FAUST (78 TTABVUE 158, 247);
• Moab Brewery sells beer under the name DEAD HORSE AMBER ALE (78 TTABVUE 59, 248- 258), while Mark Ryan Winery sells a wine product under the name DEAD HORSE (78 TTABVUE 70, 259);
• Back Forty Beer Company sells beer under the name BACK FORTY (78 TTABVUE 203, 270), while Ferrari-Carano sells wine branded with the name BACK FORTY (78 TTABVUE 206, 271);
• Natty Greene’s Brewing Co. sells beer under the name WILDFLOWER (78 TTABVUE 168, 272), while J. Lohr sells wine under the name WILDFLOWER (78 TTABVUE 152, 273).
Hundreds more pairs of images demonstrating use and registration certificates for differently owned beer and wine products bearing identical or extremely similar names have been provided by Applicant. (78
TTAB 274-571).
Based on the evidence presented, and light of the weak nature of the evidence presented by
Opposer, Applicant submits that the du Pont factor relating to dissimilarity of the goods weighs heavily in
Applicant’s favor.
(3) THE DISSIMILARITY OF ESTABLISHED, LIKELY-TO-CONTINUE TRADE CHANNELS
The third du Pont factor relates to whether Applicant’s and Opposer’s goods utilize similar channels of trade. du Pont, 476 F.2d 1357, 1361, 177 USPQ 563, 567. Applicant again notes that it has provided the only expert witness testimony in this proceeding. The sole expert witness cited, Patrick Rue, testified, “The significant differences between the beer and wine industries, including their varying channels of trade, also helps to minimize any confusion among consumers relating to these brands.” 73
TTABVUE 3 (Rue Decl. § 11). In a weak attempt to rebut this testimony, Opposer provides the lay witness testimony of Mr. Jeff Cox, the apparent “Wine, Beer & Spirits Merchandiser for Puget
41
Consumers Co-op.” Mr. Cox is not an expert in the present case, and can only provide testimony that directly relates to his personal experience. FRE Rule 701 provides that testimony in the form of an opinion is limited to one that is: (a) rationally based on the witness’s perception; (b) helpful to clearly understanding the witness’s testimony or to determining a fact in issue; and (c) not based on scientific, technical, or other specialized knowledge. Federal Rules of Evidence Rule 701(a).
With that limitation in mind, Mr. Cox alleged most distributors to the Puget Consumers Co-Op distribute both beer and wine. Applicant notes that this testimony is lay opinion and, therefore, extremely limited. Opposer notes that, since Mr. Cox’s personal experience relates only to the suppliers of beer to the Co-Op he is employed with, this testimony has extremely limited probative value in the case at hand.
Whether beer and wine products are distributed through similar companies to a single retailer in the Puget
Sound region does not demonstrate the typical trade channels throughout the country or generally within the beer and wine industries.
The most probative evidence on the record is the expert testimony from Mr. Rue. Mr. Rue has testified that beer and wine have differing channels of trade. 73 TTABVUE 3 (Rue Decl. § 11).
Accordingly, Applicant submits that this factor weighs heavily in Applicant’s favor.
(4) THE CONDITIONS UNDER WHICH AND BUYERS TO WHOM SALES ARE MADE, I.E., “IMPULSE” VS. CAREFUL, SOPHISTICATED PURCHASING
As demonstrated below, Consumers of Applicant’s goods and Opposer’s goods are sophisticated purchasers. Sophisticated purchasers spend more time deciding whether to purchase a product, and in doing so, will not purchase the wrong product by mistake as a result of confusingly similar trademarks.
See, e.g., E & J Gallo Winery v. Consorzio del Gallo Nero, 782 F.Supp. 457, 465-66 (N.D. Cal. 1991).
Because craft beer consumers are sophisticated, they would not be likely to confuse two similarly branded craft beer and wine marks. Justin P. Weinburg & Joseph O. Balthazor, Jr., Stop Letting Wine Crash the
Wedding: Craft Beer Consumers Are Sophisticated Buyers, 8 Cybaris® p. 76 (2017) (78 TTABVUE 63).
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Consumer sophistication may be proved by direct evidence such as survey evidence or expert opinions. Star Indus., Inc. v. Bacardi & Co. Ltd., 412 F.3d 373, 390 (2d Cir. 2005). No survey evidence has been presented in this case. Applicant notes that the only expert opinion evidence provided on this issue was from Applicant’s expert witness Patrick Rue. Mr. Rue testified, “It is my opinion that craft beer purchasers are highly sophisticated, and that there is a heightened level of attention such consumers pay to source when purchasing a beer. I have the same opinions regarding a higher level of sophistication for wine consumers and higher degree of care made in the purchasing of wine.” 73 TTABVUE 3 (§ 12).
Since the only direct evidence presented in this case demonstrates that the relevant consumers in this proceeding are highly sophisticated, Applicant submits that on that basis alone, this factor weighs heavily in Applicant’s favor.
Moreover, craft beer drinkers are more sophisticated than typical beer drinkers. According to market research firm Nielsen, the average weekly craft beer drinker makes between $75,000 and $99,000 annually. Justin Kendall, Power Hour: Nielsen Shares 2019 Craft Beer Consumer Insights, Brewbound
(Jul. 23, 2019), https://www.brewbound.com/news/power-hour-nielsen-shares-2019-craft-beer-consumer- insights (last visited Jan. 22, 2020). Craft beer consumers are also very discerning, even taking care to ascertain the geographic origin of the products before purchasing. For instance, Nielsen found that 66% of craft drinkers only buy beer sold in their region. Id. Similarly, 58% of weekly craft beer drinkers indicated they would be more likely to purchase a beer if it displays the Brewers Association’s independent seal. Id.
Since craft beer consumers are high-earning and have a tendency toward being discerning in their beer purchasing habits, a potential for confusion as to a common source between Applicant’s goods and
Opposer’s goods is largely mitigated.
It is also worth noting that wine drinkers are similarly sophisticated. In the case Banfi Prod. Corp. v. Kendall Jackson Winery, Ltd., the Eastern District of New York the district court held that the surveys presented in the case reflected that wine consumers “tend to be older, wealthier, and better educated than the average population” and that a typical wine consumer earns at least $60,000 in income. 74 F.Supp.2d
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188, 195 (E.D.N.Y. 1999). Therefore, consumers of Opposer’s goods are sophisticated, and will be less likely to mistakenly assume a relationship between Applicant’s goods and Opposer’s goods.
Consumer sophistication is also demonstrated here based on the nature of the product and its price. See Patsy’s Brand, Inc. v. I.O.B. Realty, Inc., 317, F.3d 209, 219 (Fed. Cir. 2003). Opposer’s wines typically run from $16.99 to $27.99 per bottle. 78 TTABVUE 658-659. According to the Wine Pricing
Segments put out by Wine Folly, this price point puts Opposer’s wine products into the premium or super premium segment. 78 TTABVUE 646 (Reality of Wine Prices (What You Get for What You Spend), Wine
Folly (Apr. 29, 2016) (available at https://winefolly.com/update/reality-of-wine-prices-what-you-get-for- what-you-spend/, last accessed April 29, 2016)). The Federal Circuit has found that consumers purchasing
“premium goods” will exercise a higher degree of focus while making a decision. See G.H. Mumm & Cie v. Desnoes & Geddes, Ltd., 917 F.2d 1292, 1295 (Fed. Cir. 1990). Accordingly, consumers of Opposer’s products are likely to also exercise a higher degree of care in purchasing premium beer products like
Applicant’s beers and confusion will be mitigated.
Applicant’s products are also accurately described as “premium goods.” For instance, Applicant has sold 22-ounce bottles of its CHINOOKER’D IPA beer for $7 per bottle (almost 32 cents/ounce). 76
TTABVUE 33-38, 40. For the sake of comparison, the average craft beer six pack (i.e., 6 cans of 12 oz beer = 72 ounces) price is $9.26 (almost 13 cents/ounce), while the average local craft 6-pack runs $14.34
(almost 20 cents/ounce). 78 TTABVUE 664. For the sake of comparison, those prices indicate
Applicant’s beer runs 60% higher than the typical local beer rate, and 146% higher than the typical craft beer price. Even in light of such premium prices, consumers regularly drove hours to find Applicant’s beers. 74 TTABVUE 4 (Swiatek Decl. § 15).
For all of the above reasons, Applicant submits that consumers encountering beer products sold under the mark “CHINOOKER’D IPA” will be more capable of recognizing that such products are not related to Opposer.
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(5) THE FAME OF THE PRIOR MARK
According to In re E. I. du Pont de Nemours & Co., the "fame of the prior mark" is a factor to be considered in determining likelihood of confusion. 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A.
1973). Opposer’s mark is not famous. Opposer alleges to have demonstrated over $7.5 million in revenue under the CHINOOK mark since 1997. 83 TTABVUE 35. The sales alleged by Opposer amount to only
$350,000 per year over 23 years, not a significant amount by any measure. Moreover, Opposer alleges he has advertised his marks through his website “as well as other wine distributor websites.” 83 TTABVUE
14. Opposer has not expended any money advertising its goods, and enjoys only moderate sales of its goods. Accordingly, Opposer’s mark is far from famous, and this factor weighs in favor of Applicant.
(6) THE NUMBER AND NATURE OF SIMILAR MARKS IN USE ON SIMILAR GOODS
Evidence of third-party use falls under the sixth du Pont factor – the “number and nature of similar marks in use on similar goods.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177
USPQ 563, 567 (C.C.P.A. 1973). If the evidence establishes that the consuming public is exposed to third-party use of similar marks on similar goods, it “is relevant to show that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm Bay Imps. 396 F.3d at 1373-74, 73 USPQ2d at
1693; see also In re FabFitFun, Inc., 127 USPQ2d 1670, 1675 (TTAB 2018) (finding the component term SMOKING HOT in the marks I’M SMOKING HOT and SMOKIN’ HOT SHOW TIME to be
“somewhat weak” based in part on evidence of third-party use of the term on similar cosmetics goods, noting that such uses “tend to show consumer exposure to third-party use of the term on similar goods”); Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016) (noting that evidence that third parties had adopted marks that were the same as or similar to opposer’s mark for use in connection with food products “may show that a term carries a highly suggestive connotation in the industry and, therefore, may be considered weak”); but see Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d
324, 153 USPQ 406 (CCPA 1967) (“the existence of confusingly similar marks already on the register will not aid an applicant to register another confusingly similar mark”).
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Enforcement efforts are pertinent to the strength of a mark. Burns Philp Food Inc. v. Modern
Prods. Inc., 24 USPQ2d 1157, 1158 n.2 (TTAB 1992) (policing efforts go to the strength of the mark); Po Folks, Inc. v. Kourtney Folks Rest., Inc., 231 USPQ 313, 315 (TTAB 1986) (same); 2 J.
Thomas McCarthy, MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION §11.91 (5th ed. 2020)
(an “active program of prosecution of infringers ... enhances the distinctiveness and strength of a mark”). But Opposer’s activities fall far short of a rigorous enforcement program that would give rise to strong rights. Indeed, despite Opposer’s alleged enforcement activities, a number of third-party
CHINOOK-formative marks are actively in use by brewers and other alcoholic manufacturers for alcoholic beverage products and have been in active use for significant periods of time. Substantial numbers of alcoholic beverage products are sold by third parties under marks that incorporate the term
CHINOOK. Applicant has provided at least 45 COLAs issued by TTB for beer products with brands that utilize the word “CHINOOK,” another 42 COLAs for distilled spirits products bearing the name
“CHINOOK,” and another wine product bearing the name “CHINOOK.” 77 TTABVUE 47-280.
As additional evidence, Applicant has provided search results from the beer enthusiast social media website Untappd, displaying search results for the terms “CHINOOKED” and “CHINOOK IPA.”
77 TTABVUE 378-381, 383-454. The Board may consider evidence obtained from social media sites such as Facebook, Twitter, Instagram, and LinkedIn. See In re DePorter, 129 USPQ2d 1298, 1299-1307
(TTAB 2019) (Board considered widespread use by many third parties of #MAGICNUMBER108 on social media such as Twitter and Instagram as evidence of consumer perception of proposed mark as an informational message not a source identifier); In re Adlon Brand GmbH & Co., 120 USPQ2d 1717, 1720
(TTAB 2016) (Board considered social media evidence relating to individuals bearing the surname Adlon because "they illustrate the ways in which members of the public may be exposed to people who bear the surname ADLON."). Applicant submits that this evidence of widespread use by breweries of the term
CHINOOK as part of a beer brand demonstrates that consumers are inundated with beer products branded with the term, and will not afford much brand designating power to any particular beer branded with the
46 name. Also, such evidence demonstrates consumer perception of the term CHINOOK as an informational message about the contents of the beer products sold under such marks, and not as a source identifier.
While third-party evidence has limitations, the substantial evidence presented herein, taken as a whole, is “powerful on its face,” Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v.
New Millenium Sports, S.L.U., 797 F.3d 1363, 1373 (Fed. Cir. 2015), cert denied, 136 S. Ct. 982, 194
L. Ed. 2d 5 (2016); Juice Generation, 115 USPQ2d at 1674, and supports that consumers in the marketplace have become conditioned to encountering and distinguishing between CHINOOK- formative marks in the beer field, if not also in the field of distilled spirts, based on minute differences between the marks. “Evidence of third-party use of similar marks on similar goods ‘can show that customers have been educated to distinguish between different marks on the basis of minute distinctions.” Jack Wolfskin, 797 F.3d at 1363, 116 USPQ2d at 1136, quoting Juice
Generation, 794 F.3d at 1334, 115 USPQ2d at 1674.
(7) THERE HAS BEEN NO ACTUAL CONFUSION
Applicant has been using the mark CHINOOKER’D IPA as the name of its IPA style beer since
2007. Id. at 2 (Lawson Decl. § 7). Applicant has been regularly selling beer under the name since 2008.
Id. (Lawson Decl. §§ 7, 8). Applicant first shipped the beer in commerce to Denver, Colorado to compete in the Great American Beer festival in 2008. Id. (Lawson Decl. § 7). Given that Applicant’s beer has been sold for over 12 years and there has been no apparent actual confusion with Opposer, this is strong evidence that the marks are not confusing. 76 TTABVUE 14 (Lawson Decl. § 14). No evidence of actual confusion or even allegation of actual confusion has been proffered by Opposer. Accordingly, Applicant submits that this factor weighs in Applicant’s favor.
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(8) THE LENGTH OF TIME DURING AND THE CONDITIONS UNDER WHICH THERE HAS BEEN CONCURRENT USE WITHOUT EVIDENCE OF ACTUAL CONFUSION.
Applicant reiterates that no actual confusion has occurred between Applicant’s goods and
Opposer’s goods. Supra at 47 (section 7 above).
(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
The tenth du Pont factor relates to the market interface between Applicant and Opposer, including laches and estoppel attributable to Opposer and indicative of lack of confusion. Du Pont, 177
USPQ at 567. Opposer alleges, “Mackey has continuously worked to protect his CHINOOK mark since its registration in 1985.” 83 TTABVUE 14. The evidentiary record indicates that Mackey has, however, been seriously delinquent in curbing third party use of the term CHINOOK for beer, as rampant third- party use of the term has occurred. Applicant has provided copies of 45 COLAs for beer products and 42 spirits products containing the brand name “CHINOOK.” See, e.g., 77 TTABVUE 47-280. Applicant notes that TTB provides a Public COLA Registration to provide access to information on COLAs issued by TTB. TTB Public COLA Registry Customer Page, available at https://www.ttb.gov/labeling/cola- public-registry, last accessed 8/2/2020. Moreover, Applicant has provided substantial evidence demonstrating that the popular beer social media website Untappd is replete with entries for third party
(as well as Applicant’s) beers that incorporate the term CHINOOK as a brand name. 77 TTABVUE 378-
381, 383-454. Accordingly, Opposer was put on notice that substantial third-party use of CHINOOK- formative marks for beer were occurring. This evidence demonstrates that Opposer has not be quite so diligent as he represents.
Also, Applicant has continuously produced and sold beer under the name CHINOOKER’D IPA since 2008, after making public use of the name in 2007. 76 TTABVUE 3 (Lawson Decl. § 7). Since beginning to sell the beer, Applicant has regularly entered the beer into the national beer competition, the
Great American Beer Festival. Id. Also, Applicant’s CHINOOKER’D IPA beer has totaled 18,277 check-
48 ins by 15,449 unique users. Id. at 4, 16 (Lawson Decl. § 9, Exhibit 5). Further, CHINOOKER’D IPA has been featured in several national and regional craft beer publications. 76 TTABVUE 5, 45-53 (Lawson
Decl. § 17, Exhibits 7-8).
Nonetheless, despite such longstanding use by Applicant, national press for the CHINOOKER’D
IPA beer, and familiarity among craft beer consumers, Opposer waited until 2015 to take any action against Applicant’s use of the term “CHINOOKER’D IPA” in connection with the sale of beer. Further,
Opposer has not even asked that Applicant discontinue its use of the term “CHINOOKER’D IPA” for beer. Instead, Opposer hopes to maintain an illegitimate monopoly on the USPTO’s trademark registry over all CHINOOK-formative marks for all alcoholic beverages. In light of the fact that Opposer has not taken any action for such a long period of time against Applicant or any of the significant number of third-parties that use the term CHINOOK for beer, it would be improper to now sustain Opposer’s objection to Applicant’s attempt to register the term CHINOOKER’D IPA for beer.
Opposer purports to have continuously worked to protect its CHINOOK wine mark. Applicant has demonstrated significant and widespread use of the term CHINOOK for beer, including Applicant’s own use of the name CHINOOKER’D IPA for beer. Given that Opposer has not successfully defended its rights against third-party use of the name CHINOOK for beer, and has not made any attempt to stop
Applicant from using the name CHINOOKER’D IPA for beer. For all of the above reasons, Applicant submits that this factor weighs in favor of Applicant.
(11) THE EXTENT TO WHICH APPLICANT HAS A RIGHT TO EXCLUDE OTHERS FROM USE OF ITS MARK ON ITS GOODS
Despite any brand recognition strength Opposer may claim for the term “CHINOOK” for wine products, such recognition strength does not carry over to beer products, and does not overcome the conceptual and inherent weakness and diluted status of the term “CHINOOK as to beer caused by significant third party use of the term for “beer” as to act to bar the registration of every mark that includes the term “CHINOOK” for beer products. “[I]t will only bar the registration of marks ‘as to
49 which the resemblance to [CHINOOK] is striking enough to cause one seeing it to assume that there is some connection, association or sponsorship between the two.’” Anthony’s Pizza, 95 USPQ2d at
1278 (quoting Pizza Inn, Inc. v. Russo, 221 USPQ 281, 283 (TTAB 1983)).
Moreover, Applicant reiterates here its substantial evidence and evidence demonstrating that the term “CHINOOK” is inherently weak and weak by nature of substantial third-party use. Supra pp. 20-22, 45-47
For all of these reasons, Applicant submits that this factor weighs heavily in Applicant’s favor.
(12) THE EXTENT OF POTENTIAL CONFUSION
Any risk of confusion between Applicant’s beers sold under the “CHINOOKER’D IPA” mark and Opposer’s “CHINOOK” mark for wine is de minimis at best. Applicant’s beer products are extremely well known within the craft beer industry. See 76 TTABVUE 5 (Lawson Decl. §§ 17, 20); 74 TTABVUE
4 (Swiatek Decl. § 15). As of January 21, 2020, there have been 18,277 check-ins by consumers of
CHINOOKER’D IPA by 15,449 unique users. 76 TTABVUE 4, 16-27 (Lawson Decl. § 9, Exh. 6).
Moreover, Applicant has regularly shipped his beer to the Great American Beer Festival in Denver,
Colorado since 2008. 76 TTABVUE 3 (Lawson Decl. § 7). Despite such widespread and geographically proximate use, the parties agree that no recognizable actual confusion has occurred.
Moreover, in light of the generic, merely informational, and merely descriptive (supra at 21-25), the sophistication of the buyers of Applicant’s and Opposer’s goods (supra at 42-44), and the substantial third-party use of the term “CHINOOK” for beer (supra at 45-47), Applicant submits that any confusion among consumers will be extremely minimal and short lived.
For the above reasons, Applicant submits that this factor weighs in Applicants’ favor.
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(13) ANY OTHER ESTABLISHED FACT PROBATIVE OF THE EFFECT OF USE
Applicant has provided significant evidence demonstrating confusion within the factors laid out by du Pont. To the extent that any evidence did not fall directly within a specific du Pont category,
Applicant submits that such evidence and arguments should be considered based on this factor.
IX. SUMMARY
Opposer’s case is based on the mistaken impression that any alcoholic beverage branded with a
CHINOOK-formative term is confusingly similar to Opposer’s “CHINOOK” mark for wine. Opposer’s rights in the “CHINOOK” term for beer are weak or non-existent, owing to the generic, merely informational, and descriptive nature of the term “CHINOOK” for beer. Moreover, numerous third parties the CHINOOK-formative terms in connection with the sale of beer products, as well as other alcoholic beverage products. Also, beer and wine are not so related as to create a heightened likelihood of confusion in the present case. Accordingly, the differences between the mark “CHINOOKER’D IPA” for beer and “CHINOOK” for wine are significant enough to avoid confusion.
Also, the evidence on the record provided by Opposer is weak and non-persuasive. Applicant’s much stronger evidence as to the du Pont factors creates an overwhelming finding of no likelihood of confusion with Opposer’s mark.
For all of the reasons stated above and the evidence submitted herewith, Applicant is entitled to registration of its mark, and Opposer’s opposition should be dismissed.
DATED this 4th day of August 2020.
Respectfully submitted,
/Daniel Christopherson/ Lehrman Beverage Law, PLLC Phone: 202-449-3739 x708 Email: [email protected] Attorney for Applicant
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CERTIFICATE OF SERVICE
The undersigned hereby certifies that a true copy of the foregoing document was served by U.S. electronic mail to Opposer’s counsel at the follow email addresses: [email protected]
Dated: August 4, 2020
/Daniel Christopherson/ Daniel Christopherson Attorney for Applicant
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