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Trademarks All Over the Atlas

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A few months ago, big law firm Foley Hoag compiled a marvelous list of trademark scuffles, within the alcohol beverage category, during the past year. We already knew there were scores of tussles, and the list was growing ever longer, but we never quite realized how fast the casualties are stacking up. The article shows at least 50 such disputes.

Of all those, the Atlas dispute is the one that caught my eye. Because it’s local, must be crushing news for whoever lost, recent, and I had not heard about it but for the Foley article. Foley explained:

The Atlas Brewing Company of Chicago opposed Atlas Brew Works’ application to register ATLAS for beer. The Opposer alleged that “Atlas” was primarily descriptive of a geographic area within Washington D.C., which is where the Applicant is located (“Atlas” is apparently an unofficial nickname of the H Street District). The TTAB rejected this argument, finding that consumers were unlikely to make the connection. The TTAB agreed with the Opposer that there was a likelihood of confusion between the marks, but it found that the Applicant was the senior user (the TTAB did not accept the launch dates of the Opposer’s Twitter and Facebook accounts as establishing priority). The petition was dismissed. Atlas Brewing Company, LLC v. Atlas Brew Works LLC.

Upon reading the opinion, my main takeaway is that the Washington, D.C. brewer tried earnestly and in good faith to find a good brand name, but still had to contend with this expensive dispute. First, they tried VOLSTEAD but House Spirits Distillery shut that down. The Atlas tale and the Foley article further underscore the need to do no less than look around, Google it, conduct a thorough trademark search, engage a specialized lawyer, check TESS, check TTB’s Public COLA Registry, and check LabelVision, when selecting a brand name in a crowded sector. There is not much sign that either party did a particularly good job of scoping out the things that ought to be scoped out, before putting so much sweat and money into a brand, especially since it is getting so clear that disputes are common. In any event, because the Chicago brewer’s opposition was dismissed by the TTAB, it looks like the Washington brewer can shrug this off and move forward with ATLAS as their brand name.

Bourbon-Barrel-Aged Wine

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At USBevX a few days ago I heard lots of questions about various wines aged in Bourbon barrels. But I did not hear lots of answers so I thought I would take a look and see what’s going on. This Fetzer example, above, seems like a good place to start.

It tends to show that it is okay to mention Bourbon on a vintage- and varietal-designated wine. I am a little surprised I don’t see any reference to a formula approval, or to the amount of aging in said barrel. This Fetzer label is also noteworthy because it quickly drew the ire of the big Buffalo, as in Buffalo Trace; Sazerac charged at Fetzer for attempting to graze on land staked out long ago by the whiskey company. This really good article discusses the trademark dispute, about 1/3 of the way down the page.

I see about 64 wine labels with reference to Bourbon as approved by TTB during the past five years. Another representative one, from another big company, is this Robert Mondavi approval. I don’t really see any comparable labels, in the prior five year period. From these two examples, and a bit of asking around, it sounds like the reference to Bourbon should not appear on the same line as the wine’s class/type statement. Also, you are more likely to need aging details (e.g., Aged 6 Months) on the label if the age reference appears on the “brand label.”

PTO Doesn’t Buy That THC Stands for Tea Honey Care

The Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (PTO) recently affirmed the refusal to register the mark THCTEA, holding that it is “deceptively misdescriptive” when used in connection with tea-based beverages. The Applicant—Christopher Hinton—is, according to marijuanafreepress.com, the acting editor for the Marijuana Free Press.

THCTEA’s journey through the trademark system has been an uphill battle.The mark was first refused by the PTO back in September 2012, for being “merely descriptive” and for “plainly indicat[ing] that Applicant’s…goods include…THC.” One pre-requisite for trademark registration is lawful use of the mark in commerce. The problem in this case was that goods containing THC (tetrahydrocannabinol, the active ingredient in marijuana) are illegal under federal law, so it would be impossible for the Applicant to show lawful use of the mark if the product did indeed contain THC.

Here is where things become interesting. The Applicant responded by clarifying that his beverages do not actually contain THC. Accordingly, the PTO rescinded its refusal based on unlawful use, but raised a new ground for refusal, based on the Applicant’s own admission: Using THCTEA on a beverage that contains no THC is deceptively misdescriptive.

Deceptively misdescriptive marks have two key features:  they misdescribe a significant characteristic of the goods associated with the mark (the “misdescriptive” part); and they are likely to cause reasonable consumers to purchase the goods, believing that the goods contain the misdescribed trait (the “deceptive” part). For example, LOVEE LAMB was held to be deceptively misdescriptive for seat covers that were not actually made of lamb’s wool. On the other hand, WOOLRICH was held not to be deceptively misdescriptive for clothes made out of cotton. In close cases, good lawyering can make a big difference.

After the PTO issued a final refusal, the Applicant appealed to the TTAB. On appeal, the Applicant re-alleged his previous arguments: “The characteristics of Applicant’s goods are such that they are suggestive” and “the product does not contain the controlled substance THC…THC is an abbreviation for ‘The Honey Care Tea.’” The TTAB was unpersuaded, and affirmed the PTO’s refusal.

Regarding the misdescription, the TTAB held that “it is plausible that tea-based beverages could contain THC” (albeit illegally) and that “THCTEA, when used for tea-based beverages, is merely descriptive for tea containing THC as a significant ingredient.” Apparently, recipes for THC-containing tea from such websites as grasscity.com, thestonercookbook.com, and 420magazine.com are sufficient to persuade the government that THC-containing tea is plausible. We were unable to find a recipe for THC-containing tea on marijuanafreepress.com.

Regarding deception, the TTAB agreed with the PTO that consumers would be likely to buy THCTEA beverages believing that they contain THC. The TTAB reasoned that, in light of the liberalization of marijuana policy in the United States, “a reasonably prudent consumer would be likely to believe that Applicant’s…beverages contain THC.”

In what probably comes as no surprise, neither the PTO nor the TTAB bought the Applicant’s argument that “THC” stands for “Tea Honey Care,” or that “THCTEA” stands for “The Honey Care Tea.” Apparently, the Applicant’s “example advertisements” (below) were unpersuasive:

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Additionally, the specimen (below) that the Applicant submitted to the PTO probably did not help his “Tea Honey Care” argument:

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THCTEA illustrates an interesting Catch-22 for descriptive marks that reference controlled substances. If you do put the controlled substance in your goods, you can’t claim lawful use of your mark in commerce. If you don’t put the controlled substance in your goods, your mark may be deceptively misdescriptive.

Don’t Be Fooled by Trademark Spam!

About five to ten times per year, we get a call from a client asking why the USPTO sent them an invoice for hundreds of dollars for their trademark applications. After a few minutes, it becomes clear what they are talking about—trademark spam.

Trademark spam? Trademark spam is an unavoidable and unfortunate result of the information an applicant provides the USPTO in an application, which is publically available. This includes, among other information, the name, address, and email of the party applying for the mark. As a result, spammers have all of the information they need to send fake trademark solicitations that appear to be legitimate. The USPTO is fully aware of trademark spam, but despite its efforts, applicants and registrants continue to be victimized by spammers.

What does trademark spam look like? Trademark spam generally comes in the form of official-looking correspondence—letters or email—that either “requires” the recipient to pay certain fees, or strongly “recommends” that the recipient use a particular company to facilitate the trademark registration process. In the first instance, some fees are completely fabricated, while other fees purport to be real fees, but are grossly inflated by the spammer. Here is a list of the actual USPTO trademark fees and their correct amounts. In the second instance, spammers offer their services to facilitate the registration process, something only licensed attorneys are allowed to do. To give you a better idea of what trademark spam looks like, here are a couple examples of trademark spam, one from the “U.S. Trademark Compliance Office” and another from the “Patent & Trademark Office.” While these may appear to be official USPTO documents, both are actually spam.

How can I distinguish trademark spam from legitimate, USPTO correspondence? Here is a quick, easy, and effective way, recommended by the USPTO, to tell trademark spam from legitimate correspondence: If the correspondence is from (1) the “United States Patent and Trademark Office” in Alexandria, VA; or (2) If by e-mail, specifically from the domain “@uspto.gov,” then it is official, USPTO correspondence. Also, if you hired an attorney to file your application, all legitimate mail should go to them. Remember, if you ever have any doubt as to the legitimacy of any correspondence you receive regarding your trademark application or registration, you should check with the USPTO, or an experienced trademark attorney.

What should I do if I get spammed? If you receive any communications that you believe may be spam, or believe you have been misled by trademark spam in the past, the USPTO encourages you to email a copy of the correspondence and the envelope it came in to tmfeedback@uspto.gov, so that it may assess whether to add the sender to the trademark spam list. While the USPTO will not reimburse you for any money you paid to a spammer, notifying the USPTO may help prevent others from being misled in the future.

Beer Cops, Another Side

I normally like The Wall Street Journal but wow a recent editorial about “The Craft Beer Cops” was a letdown. I am not sure it is even worthy of a college newspaper, or one of the Journal’s interns. I don’t see any new points and I certainly don’t see any ideas for how to more properly regulate the industry. It has the feel of Trumpism; a few guys said it’s bad, and that becomes sufficient evidence that it’s a yuge disaster. I don’t want to paste the whole editorial because it’s behind a paywall, so I tried to repeat only the worst half, as below within the block quotes.

You might think of a microbrewery as a home for free spirits who grow long beards, take their dogs to work, and make their own rules. But Washington won’t let them. …

This seems a dumb place to start. Does anyone really think each brewer should do entirely as they wish? I doubt it. So it’s really a question of which rules are good, not whether. Not to mention that there is plenty of evidence that many of the brewers like the rules and helped shape them.

Mr. Bush had recently bumped into Erik Olsen of New Hampshire’s Kelsen Brewing Company, who told him that competing in this industry requires a license from the U.S. Treasury that Mr. Bush says goes back to Prohibition days. …

Fantastic. One data point, based on bumping into one person. Is the licensing scheme bad just because it goes back a few generations?

[TTB] says its application process is …” You know, in case they might be Al Capone.

This seems particularly lazy and suggests that just because the bearded gents might not tote machine guns, that they are all angels. Also, I thought Al Capone was a spirits guy (not a Chardonnay or Dunkel guy). Then again, maybe he did dabble in Dunkel.

Brewers have to go back to the feds to get approval for each new label. … He adds that the agency “has to approve our plans before we can start using the new expansion space for brewing.” This can take six months or more.

This I agree with more. If the government wants to have at least one hand on the steering wheel, they should put up the resources to do so properly.

Ohio Gov. John Kasich got an earful on the same subject when he recently visited New Hampshire’s Henniker Brewing. The [rules] even covers font sizes. [Henniker] was forced to stop calling its old-fashioned porter “soothing” because regulators claimed it suggested a medical benefit.

Are font rules really so onerous, especially in that TTB more or less made this a low priority a few years back? What’s the point of mandatory labeling if it’s smaller than readable? Even if you think “soothing” should be allowed, if you think all words should be allowed, you probably just have a bad imagination.

This kind of nonsensical regulation could drive anyone to drink, and it’s one more reason we have a 2% growth economy.

This is the dumbest point of all. Despite all the rules, the Journal may have picked the single worst industry in the land, to make its point about stunted growth. Is any industry growing faster than craft beer?

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