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Slerring yer werds? Too much Brewnette fer yer.

Byline: Scott Slavick

What does the U.S. Patent and Trademark Office's (USPTO) Trademark Trial and Appeal Board (TTAB) mean when it says that two marks are similar in terms of appearance, connotation, and commercial impression? We think we know, but do we? After reading a board panel's ruling in In re Twin Restaurant IP LLC, Serial No. 85/934,428 (June 24, 2015) [not precedential], we may need to reconsider.

Maybe do it over a glass of ale, for in this case, the owners of the restaurant chain Twin Peaks sought to register the mark Knotty Brunette for beer, ale and lager, but the USPTO's examiner refused to register it, judging it confusingly similar to B.J's Restaurants, Inc.'s registered mark Nutty Brewnette for beer.

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On its face, this seems reasonable, especially since B.J.'s sells its own brew at its B.J.'s Restaurant & Brewhouse restaurants across the country. But Twin Restaurants appealed, first arguing that there would be no confusion between the parties' marks because its Knotty Brunette beer was sold only in its Twin Peaks restaurants. These fine establishments feature "sexy wait-staff," said Twin Restaurants; and, accordingly, it argued its patrons would clearly understand Knotty Brunette to be a homophone for "naughty brunette." Perhaps not coincidentally, B.J.'s brew's advertising features a depiction of an attractive young lady, in fetching 1940s pin-up style.

Was the board titillated at this prospect of dueling sexy brunettes? We cannot know. We do know it was not persuaded. Because the goods identified in Twin Restaurants' application are in part identical to those identified in the Nutty Brewnette registration owned by B.J.'s, the board explained that it had to presume that the parties' goods travel through the same, normal channels of trade (including restaurants not owned by the applicant) to the same classes of consumers.

Interestingly, though, the majority of the board's panel found the first of the so-called Du Pont factors, first enumerated in that eponymous 1973 trademark decision, to be dispositive. That factor is the similarity or dissimilarity of the parties' respective marks. Although the marks have slight differences in sound when pronounced correctly, the board was quick to point out that it must be remembered that there is no correct pronunciation of a trademark. Therefore, the board assumed a consumer could pronounce the parties' marks identically.

Fair enough. But a majority on the board also found what it deemed as "obvious" differences in the parties' marks' appearance, connotation, and commercial impression to be the key factor. It explained that the primary connotation of the registered mark Nutty Brewnette is an allusion to flavor; the board said the name connoted a nutty-flavored beer.

Then, in the same breath (figuratively speaking), the board suggested that Nutty Brewnette could also be understood as a double entendre for nutty brunette, to suggest "a dark-haired female with a 'nutty' or 'silly, strange, or foolish' personality." Whatever could have led them to that conclusion? Judging the book by its cover, I'm sure the reader would have reached it, too!

Nuttiness and foolishness notwithstanding, the board held that the appearance and primary connotation and commercial impression of Nutty Brewnette suggested a nutty-flavored type of beer.

In construing the applicant's Knotty Brunette mark, the board explained that knotty is a homophone for naughty, conveying the meaning of "relating to or suggesting sex in usually a playful way." With nary a naughty smirk, the board then went on to explain that Knotty Brunette was more likely to project the connotation of a naughty brunette, in other words "a dark-haired woman displaying a playful type of sexiness." Moreover, the board felt that the adjective knotty as well as its homophone naughty are entirely devoid of any connotation of nut or nut-like flavoring.

Thus, the board held that Knotty Brunette and Nutty Brewnette each had their own unique humorous play on words that project separate meanings and distinct commercial impressions to would-be consumers. As a result, when confronted with the parties' marks, the board held that consumers were unlikely to assume that the applicant's and the registrant's goods originated from the same source.

Thus, a majority on the panel held that the dissimilarities in the parties' marks outweighed the other Du Pont factors, and reversed the USPTO's refusal to register.

A nutty decision? TTAB Judge David Bucher certainly thought so, arguing in his dissent that similarity in sound alone may be sufficient to establish that the parties' marks were confusingly similar. He explained (we do not know if from personal experience!) that inside a noisy bar, as the night wears on, as the bartender and patrons trade verbal exchanges, any aural differences in the short vowel sounds of only the first of these four syllables will likely not be readily distinguishable--especially to Southerners' ears.

Judge Bucher also saw a similarity in the connotation of the parties' marks and (again dare we ask if from experience!), he questioned the majority's assumption that a consumer would retain fine connotations from one drinking establishment to the next. One imagines a pub-crawl from B.J's to Twin Peaks, and back again. And Bucher concluded his dissent by explaining that that when the parties' goods are identical, a lesser degree of similarity between the parties' marks is necessary to support a finding of confusion. And in cases of doubt in the likelihood of confusion in an ex parte context, the benefit of the doubt should go to the registrant.

This panel opinion during the prosecution of the applicant's sought-for mark and not in an opposition proceeding. It will be interesting to see if Twin Restaurants' mark is ultimately opposed by B.J.'s. In the meantime, readers, you can always experience the nuttiness (naughtiness?) for yourselves.
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Publication:Inside Counsel Breaking News
Date:Sep 21, 2015
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