Trademark Review | September 2015

The TTAB Finds Confusion Between WINEBUD Wine and BUD Beer

The Trademark Trial and Appeal Board (TTAB) found that Applicant’s mark WINEBUD for wine is confusingly similar to Anheuser-Busch’s (“AB”) BUD mark. The TTAB found that BUD is famous for beer and that consumers are likely to think WINEBUD for wine is produced by the makers of BUD beer.

Applicant filed to register WINEBUD for alcoholic beverages excluding beer. AB opposed, asserting that WINEBUD is confusingly similar to its marks BUD, BUDWEISER and several other BUD-containing marks, all registered for and in use in connection with beer.

The TTAB found the record left no doubt that AB’s BUD mark is famous for beer, having been sold since 1876, extensively advertised and promoted, and having “extremely large” sales. In addition, BUD LIGHT and BUD are the best-selling and second best-selling beers in the U.S., respectively.

The TTAB also agreed with AB that the marks are similar, pointing first to the fact that WINEBUD incorporates the entirety of the BUD trademark. Applicant argued, however, that the marks are highly dissimilar in appearance, sound, connotation and commercial impression because “vine bud” is a recognized term in the field of viticulture. BUDWEISER, on the other hand, is a town in the Czech Republic famed for brewing beer, and BUD is merely an abbreviation of BUDWEISER. The Board found the record did not support Applicant’s contentions.

Applicant did not submit any evidence to suggest that any substantial number of relevant consumers have heard of the small town of České Bedějovice or Budweis, its former name, or that consumers associate BUD beer with that town. Nor did Applicant’s evidence, consisting of one winery trade article, convince the TTAB that “vine bud” is a recognized term in the field of viticulture. Rather, the TTAB found the “WINE” component of Applicant’s mark is merely descriptive of the goods and BUD is the distinctive component, which is identical to AB’s famous mark.

As to the similarity of beer and wine, the Board has often held that wine and beer are related goods, having overlapping trade channels and often both sold at low price points. Further, the fact that AB has never expanded use of its BUD mark to use on wine was of no relevance to the TTAB. Rather, the relevant question was whether purchasers seeing a similar “BUD” mark on wine would think that AB has expanded its product line to include wine. The TTAB held that the fame of the BUD mark makes it likely that consumers would be confused.

Anheuser-Busch, LLC v. Innvopak Systems Pty Ltd., Case No. 91194148 (TTAB, August 19, 2015) [precedential].

The Federal Circuit Reverses the TTAB Ruling for Failure to Consider the Marks in Their Entirety

The United States Court of Appeals for the Federal Circuit overturned a TTAB decision to refuse registration of a paw print logo, ruling that the TTAB focused on specific elements of the two marks rather than comparing the marks in their entirety, and also failed to recognize the relatively narrow scope of protection afforded to marks involving paw prints.

Appellant Jack Wolfskin applied to register the design mark shown below for clothing. Appellee New Millennium Sports opposed the registration on the ground of likelihood of confusion with its earlier registered mark KELME and design as shown below, also for clothing.

The TTAB sustained the opposition, thus refusing to register the Paw Mark. The TTAB found that the similarity of the marks pointed to a likelihood of confusion, and that the number and nature of similar marks in use was a neutral factor.

Similarity of the Marks: The Court cited to authority holding that when a mark contains both words and design, the verbal portion of the mark is the one most likely to indicate origin of the goods, but that similarity of marks must be considered on a case-by-case basis. The TTAB recognized that the word “KELME” in the Kelme Mark created a visual and phonetic impression that was absent from the Paw Mark. The TTAB found, however, that the word KELME was not sufficient to overcome the likelihood of confusion caused by the substantial similarities of the paw print elements of both marks. To support this conclusion, the TTAB stated that “[c]ompanies that use marks consisting of a word plus a logo often display their logos alone, unaccompanied by the literal portion of their trademarks.”

The Court found that the TTAB erred in essentially disregarding the word KELME in the Kelme Mark. In doing so, the TTAB failed to consider the marks as a whole. The Court further found that the TTAB’s statement that logos in composite marks are often displayed alone cannot support ignoring the word element of the mark without providing some rational basis for doing so.

Strength of the cited Kelme Mark: In the Opposition, Jack Wolfskin submitted evidence of numerous other marks that include a paw print that have been registered and used in connection with clothing. The TTAB considered the evidence, but disregarded most of it on the ground that it consisted of secondary source indicators: either because the paw print design was used to identify a school or sports team rather than identifying an apparel or sporting goods company, or because it was used as a secondary source indicator for business offering pet-related goods and services. The TTAB reviewed the remainder of the evidence and found sufficient differences in the designs to distinguish them from the Kelme Mark.

The court found the TTAB did not give proper consideration to Jack Wolfskin’s evidence as to the strength of the Kelme Mark. As the court explained in its recent ruling in Juice Generation, Inc., v. GS Enterprises, LLC, (case no. 14-1853, Fed. Cir. July 20, 2015), extensive evidence of third-party use and registrations is “powerful on its face,” even where the specific extent and impact of the usage has not been established. The court found that the volume of evidence submitted by Applicant suggested consumers are conditioned to look for differences between paw-print designs to determine the source of a product.

The Court concluded that the evidence indicates the paw print portion of the Kelme Mark is relatively weak and that the TTAB’s ruling that there is likelihood of confusion cannot be sustained.

Jack Wolfskin Ausrustung fur Draussen GmbH & Co., KGaA v. New Millennium Sports SLU, Case No. 14-1789, (Fed. Cir. August 2015).