The Trademark Trial and Appeal Board (TTAB) has affirmed a refusal by the U.S. Patent and Trademark Office (USPTO) to register a trademark for La Finca wines on the grounds that the winemaker failed to show evidence that the brand has acquired distinctiveness. In re Finca La Celia, S.A., No. 86130560 (opinion issued March 31, 2017). Argentina-based winemaker Finca La Celia, which sells its La Finca wines in Trader Joe’s stores, applied for registration of the mark in 2013 and appealed after a second reconsideration was denied. TTAB reversed USPTO’s refusal to register the mark on the ground that it was generic, holding that even though the term “la finca,” which means “the estate” in Spanish, is “merely descriptive,” the term is “not perceived by the relevant public as a generic name for a type of wine.” TTAB affirmed the USPTO ruling that the maker had failed to show La…
Category Archives Trademark Trial and Appeal Board
Warner Brothers, the film studio that owns the rights to the Willy Wonka movies, has asked the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office to stop a Georgia craft brewer’s use of “Golden Ticket” as the name for a chocolate stout beer, claiming that the name could lead some to believe the filmmaker is promoting underage drinking. Warner Bros. Entm’t Inc. v. S. Sky Brewing Co., No. 91233169 (T.T.A.B., filed March 1, 2017). In the Willy Wonka movies, children who found golden tickets tucked inside chocolate-bar packaging won a tour of the chocolate factory and a chance to win a grand prize. Warner Brothers claims the name “Golden Ticket” is an “intent to capitalize” on the popularity of the films, alleging that Southern Sky’s beer is advertised as “reminiscent of a chocolate hazelnut candy bar and as creamy as chocolate milk,” reinforcing the “mental association”…
Siding with the owners of the Empire State Building, the Trademark Trial and Appeal Board has refused to register a logo for “NYC Beer” featuring a drawing of the building. ESRT Empire State Bldg. v. Liang, No. 91204122 (T.T.A.B., order entered June 17, 2016). Claiming ownership of a trademark in a line drawing featuring the building, ESRT Empire State Building filed an opposition to Michael Liang’s application to register a black-and-white image resembling the Empire State Building circled by a black ring and the words “NYC Beer.” TTAB found that the image was likely to dilute ESRT’s mark, finding that Liang’s description in his application of “a building resembling the Empire State Building” belied his argument that the design could be a different building. Accordingly, the board refused to grant the trademark. Issue 609
Jim Beam Brands Co. has filed a notice of opposition against an application filed by Brown-Forman Corp., maker of Jack Daniels®, to trademark Woodford Reserve Double Oaked, a bourbon product aged in two charred-oak barrels. Jim Beam Brands Co. v. Brown-Forman Corp., Serial No. 86/450,636 (T.T.A.B., notice of opposition filed October 19, 2015). Jim Beam argues that the “Double Oaked” portion of the proposed trademark is generic—or at least descriptive—because it “refers to a process of aging alcoholic beverages in a second oak barrel, which is common in the industry.” The notice cites descriptions on Brown-Forman’s website using the terms “double” and “double oaked” to describe the process of making the product. Jim Beam does not object to the registration of Woodford Reserve but requests that Brown-Forman disclaim trademark control of “Double Oaked.” Issue 583
H.J. Heinz Co. has filed a lawsuit against Boulder Brands USA seeking to vacate and reverse a Trademark Trial and Appeal Board (TTAB) decision finding that the marks representing Heinz’s Weight Watchers Smart Ones® and Boulder’s Smart Balance® are sufficiently distinct, allowing both to exist. H.J. Heinz Co. v. Boulder Brands USA, Inc., No. 15-0681 (W.D. Penn., filed May 26, 2015). In its opposition to the Smart Balance® mark, Heinz asserted that the Smart Ones® mark was famous and would be diluted by Smart Balance®, but based on insufficient evidence TTAB disagreed in its March 2015 decision. In addition to the reversal, Heinz seeks a declaration of likelihood of confusion and a declaration of dilution under the Lanham Act and asks the court to direct the U.S. Patent and Trademark Office to invalidate the Smart Balance® mark. Issue 566
The Federal Circuit has reversed and remanded a Trademark Trial and Appeal Board (TTAB) decision invalidating Snyder’s-Lance Inc.’s “Pretzel Crisp” trademark after Frito-Lay Inc. challenged the mark as generic. Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., No. 14-1517 (Fed. Cir., order entered May 15, 2015). TTAB’s decision found that “Pretzel Crisp” is a compound term and not a phrase, so it analyzed “pretzel” and “crisp” separately and found both words to be generic descriptors of Snyder-Lance’s pretzel-cracker product. The Federal Circuit disagreed with this method, holding that TTAB had conducted a “short-cut analysis” by not considering “Pretzel Crisp” as a whole phrase, because “the test for genericness is the same, regardless of whether the mark is a compound term or a phrase.” At the end of its decision, TTAB noted that “were we to analyze [‘Pretzel Crisp’] as a phrase, on this record, our conclusion would be the same, as…
Red Bull GmbH has filed a notice of opposition to Old Ox Brewery’s federal trademark application, arguing that the brewery’s marks are likely to confuse consumers because both animals “fall within the same class of ‘bovine’ animals and are virtually indistinguishable to most consumers.” In re Application No. 86/269,626 and 86/269,577 (U.S. Pat. & Trademark Office, Trademark Trial & Appeal Board, notice of opposition filed January 28, 2015). Red Bull claims that the similarities between the marks would likely cause consumers to believe that the products are affiliated with each another. The Virginia brewery responded in an open letter on its website, calling the company a “Red Bully” that is “holding us hostage with a list of demands that, if agreed to, would severely limit our ability to use our brand. Demands like, never use the color red, silver or blue; never use red with any bovine term or image; and…
