Some of our recent blog posts have discussed the issues that can arise when a smaller entity tries to pursue federal trademark protection of a brand name that happens to be similar to that of a larger, more recognized company. Oftentimes, some form of litigation will ensue. Sometimes, the smaller entity will win: more often the smaller entity must find a different name for its brand. This blog highlights the problems that can arise when a company tries to pursue federal trademark protection of a brand name for products that happen to be similar to a previously registered trademark brand name associated with similar goods.
The Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (USPTO) believes that wine and beer qualify as the same goods, much to High Water Brewing, Inc. (High Water), the producer of “No Boundary IPA”’s dismay. High Water sought federal trademark protection of its “No Boundary IPA” beer, only to be met with a rejection from the Trademark Examiner who found the brand name too similar to the registered mark “No Boundaries” for wine, owned by a California vintner. High Water appealed the Trademark Examiner’s decision to the TTAB.
The TTAB analyzed the case through a “likelihood of confusion” lens, the standard for trademark infringement. The TTAB focused its analysis on two key factors: the commercial impression the marks give to consumers and the similarity of the nature of the goods. In examining the commercial impression, the TTAB considered whether the average consumer would think there was an association between “No Boundary IPA” beer and “No Boundaries” wine. The TTAB agreed with the Trademark Examiner, determining that because beer and wine are closely related in nature, it was reasonable for the average consumer to think the goods are related. Similarly, although High Water argued otherwise, the TTAB also found that wine and beer are sold in the same channel of commerce; therefore, consumers could likely believe that the sources of “No Boundary IPA” beer and “No Boundaries” wine were the same. Although High Water can still use the name “No Boundary IPA”, its beer will not receive federal trademark protection.
It is interesting to note that there are seven other “No Boundaries” trademarks registered on the Principal Register. Five of the registrations are owned by Wal-Mart for use in association with eyeglass frames, jewelry, shoes, handbags and clothing. One “No Boundaries” mark is used in connection with entertainment services related to organizing marathons while another is used in association with computer services. None of these registered marks constrained the Trademark Examiner’s analysis because there was no similarity between the goods and services provided; trademarks for goods or services that are entirely different, yet bear the same name, can co-exist on the federal register. However, there is always a risk that the prior, or first, user of a trademark will challenge a secondary, or junior, user’s use of a similar or identical mark. A successful challenge will place the junior user in the unenviable position of finding a new brand name after having spent a great deal of time and money establishing the original (infringing) brand name.
If you have trademarks or copyrights that you want to register for federal protection, intellectual property rights that need to be enforced, or any other intellectual property concerns, the attorneys at Korngut Paleudis LLC have the knowledge and experience necessary to apprise you of your rights and address your intellectual property and litigation needs. Please contact the firm either through our website or at (212) 949-0138 in New York City, (914) 220-8270 in White Plains, or (203) 355-3635 in Stamford, Connecticut.