United States: TTABlog Test: Are Water-Based Soft Drinks Related to Beer for Likelihood of Confounding?
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The Council tells us on several occasions that there is no in itself rules that all beverages are bound for the purposes of section 2(d). All right, so how do you think that call came out? The USPTO refused to register the mark ROCKAWAY for “Soft drinks based on sparkling water, namely functional drinks containing plant extracts, plant infusions and fruits”, finding probable confusion with the registered mark ROCKAWAY BREWING COMPANY for “Beer; Alcoholic beverage brewed from malt[s] of the nature of a beer” [BREWING COMPANY disclaimed]. The brands are pretty close, but what about the merchandise? In re Rockaway Drinks LLCserial number 90115947 (March 25, 2022) [not precedential] (Opinion of Judge Mark Lebow).
Applicant did not argue that the marks are dissimilar, but argued that the cited mark is weak because it is descriptive and listed on the Supplementary Register. The board however observed that even weak marks “are entitled to protection against a mark which is substantially similar visually, aurally and commercially and which is used on or in connection with goods which are linked”.
With respect to the issue of nexus between the wares, examining counsel Raul Cordova relied on evidence of third-party use to assert that beer and “non-alcoholic beverages made from eau” (as he characterized plaintiff’s wares) are sold under the same brand name. . The evidence of a third party registration supported the Examining Counsel’s position. The applicant disagreed with the characterization of its products, insisting that they were more narrowly defined: “it is a specific type of fizzy health drink containing plant extracts, infusions of plants and fruits”. The reviewing attorney replied that “beers can be infused with herbs and enhancers, narrowing the market space between beers and non-alcoholic water-based beverages that can also be infused” . Counsel sided with examining counsel.
[T]There is no clear definition of what is or is not a “functional” drink, and evidence shows that many of the same ingredients, along with other fruits and herbs, are used in making beer. ***As evidence from examining counsel shows, many beers today also contain plant extracts, plant infusions and/or fruit, as do water-based beverages plaintiff’s allegedly “functional” non-alcoholic beverages.
The cited registration identifies the products broadly as “beer”, which encompasses beer that includes plant extracts, plant infusions and/or fruits that could be classified as functional. Therefore, the Board concluded that the goods in issue were related. Therefore, it must be assumed that these goods travel through the same channels of commerce to the same categories of consumers, “including health-conscious consumers who seek herbal and fruit infusions in their beers or other sparkling beverages.”
And so, the Board upheld the denial of registration.
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