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Pour me another, barman. Make it a double-take.

Byline: Scott Slavick

There are times when the USPTO's Trademark Trial and Appeal Board (TTAB) makes decisions that seem sensible and straightforward. There are times the TTAB makes decisions so obvious they don't deserve remark.

Then there are times when the TTAB goes down a rabbit hole and pops out with something so counter-intuitive it forces you to look twice --such as in the recent ruling in In re Rabbit Hole Spirits, LLC, Serial No. 86/193,667 (June 11, 2015) [not precedential]--where it's not even clear that the TTAB is speaking the same English language as the rest of us.

Could it be the fumes from the alcohol? Who knows. Here are the facts.

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FURTHER READING: 'Sophisticated? Maybe.' Says TTAB Far from heaven, too near on earth

Confused? Just the Carfax, ma'am! Federal Circuit repairs 'cracked' pretzel logic ________________________________________________________________________________________________________________________

Rabbit Hole Spirits applied to register the mark Moonshine Redefined for "distilled spirits; liquor; whiskey." Despite the phrase's poetic appeal, the USPTO's examiner refused to register it, feeling it confusingly similar to Redefining Vodka, a mark registered for "alcoholic beverages, except beers," by the maker of Swedish vodka Purity Vodka. Rabbit Hole Spirits appealed the refusal and the TTAB took up the appeal.

We don't know if the board sampled the respective companies' offerings--holding up their glasses and swirling the liquid, then sampling the spirits--before conducting their analysis. We do know the board began its analysis by explaining that because the parties' goods are legally identical, in that the goods identified in the cited registration encompass those covered by the application, it was forced to presume that the parties' goods travel in the same channels of trade and are sold to the same classes of consumers.

So the applicant's case was not off to a rousing start, as it in one fell swoop lost on three of the most commonly cited factors used to determine likelihood of confusion: that is, the similarity of the parties' goods, the companies' likelihood to continue selling in the same trade channels, and the sophistication of consumers.

Facing this setback, Rabbit Hole Spirits next argued that the cited mark Redefining Vodka was highly descriptive and therefore entitled only to a narrow scope of protection. Indeed, the phrase Redefining Vodka is actually used as a message or tagline on the product, Purity Vodka, but on its face it seems manifestly descriptive, not to mention lacking the pleasing internal rhyme of Moonshine Redefined.

But the board resisted Rabbit Hole's argument, explaining that its attack was improperly pled because the cited registration was federally registered and therefore entitled to a presumption of validity.

In perhaps the only help that the board would give to Rabbit Hole, the board interpreted the appellant's argument to state that the cited mark was highly suggestive of the registered goods and therefore should be considered weak. You say tomato; I say tomahto.

Rabbit Hole then referenced no fewer than 251 third-party registrations for marks containing the words redefining, redefined, or redefine. The board responded that, although such registrations are not evidence that the third-party marks are actually in use in commerce, they could operate in the manner of a dictionary to help prove that a particular term has significance in a particular field. Nearly all of these third-party registrations covered goods and services very different from alcoholic beverages; however, the board felt, dictionary definitions of redefine as "define again or differently" indicated that this meaning would be applicable to a broad range of goods and services, including alcoholic beverages.

The board therefore concluded that redefining has "a laudatory significance" as applied to alcoholic beverages. In a poetical sense or otherwise, this means the word confers praise upon its object. But the board went on to agree with Rabbit Hole that Purity's Redefining Vodka should not be entitled to the broad scope of protection akin to that given to arbitrary marks, e.g., marks that have no significance as applied to their registered goods (e.g., think Apple for computers).

On its face, this turnabout looked good for Rabbit Hole. Nonetheless, the board held that even suggestive marks are entitled to protection against confusingly similar marks.

Turning to the marks at issue, the board agreed with Rabbit Hole that there are specific differences in the parties' marks. However, it held that both parties' marks consisted of a variation of the word redefine coupled with a generic term for an alcoholic beverage. Because of this, the board held that the parties' marks convey the same connotation and commercial impression of a beverage that is different from the others, i.e., that it has been redefined. The board held that consumers are likely to view the parties' marks as indicating a single source, with the generic portions of the marks simply identifying the particular type of beverage.

Then the effects of alcohol must have kicked in! The board went even further to hold that the parties' marks have a similarity in appearance and pronunciation, thus concluding that the similarities in the parties' marks far outweighed their differences.

One has to question this analysis: Do Moonshine Redefined and Redefining Vodka really appear similar in appearance? Do they have the same effect in the listener's inner ear? Are they even pronounced the same way? I am not sure what language the board was using for its own pronunciation--but I'm not sure it was English.

Finally, Rabbit Hole tried to argue that the conditions of sale favored Rabbit Hole because customers looking to purchase vodka would not buy moonshine. The board noted (for what seems like the millionth time in trademark matters!) that the real issue is not whether consumers would confuse the parties' goods, but whether consumers would confuse the sources of the parties' goods.

There was, the board felt, no evidence that purchasers of alcoholic beverages are particularly sophisticated or would exercise a greater standard of care than the general public. (If they're drinking moonshine, one has to guess, their powers of discrimination would be so much the less!) Balancing the relevant confusion factors, the board found confusion likely and affirmed the refusal.

In light of the recent Supreme Court decision in B&B Hardware v. Hargis Industries, where the court ruled effectively that decisions of the TTAB have preclusive effect on parallel or later cases in Federal district court, decisions by the board may now take on a much more important role in our trademark judicial system. Because of this, trademark practitioners are hoping that the TTAB pays its fullest attention to decisions that have ramifications beyond the single instance, and gives as much weight as possible to the realities of each parties' situation. One might question whether the heightened scope of protection the board gave to an arguably marginal, moderately descriptive mark, while giving short shrift to the concept of looking at the parties' marks as a whole, is best serving the judicial system.
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Publication:Inside Counsel Breaking News
Date:Sep 9, 2015
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