IP Law Daily, TRADEMARK—TTAB: MOTHER EARTH BREWING design for non-organic beer was confusingly similar to MOTHER EARTH BREW CO. design for organic beer, (Jan 29, 2014)

By Mark Engstrom, J.D.

A brewer of craft beers (Mother Earth Brewing) could not register the composite mark MOTHER EARTH BREWING, with design, because the mark was confusingly similar to the registered mark MOTHER EARTH BREW CO., with design, the Trademark Trial and Appeal Board has ruled (In re Mother Earth Brewing, LLC, December 10, 2013, Seeherman, E.). Because a likelihood of confusion existed when the applicant’s mark was used for beer (excluding organic beer) in International Class 32 and for distributorships (excluding organic beer) in International Class 35, a trademark examining attorney’s refusal to register the mark was affirmed for both classes.

Class 32 Goods

The goods identified in the cited registration were “beer comprised solely of organic components.” The goods identified by the applicant were also beer, but the applicant excluded “organic beer and beer comprised solely of organic components.”

The Board conducted a likelihood of confusion analysis and concluded that the applicant’s mark for non-organic beer, and for “non-organic brewed malt-based alcoholic beverage in the nature of a beer,” was likely to cause confusion with the registered mark for beer made of organic components.

The Board’s opinion focused on eight factors: similarity of marks, goods, channels of trade, and classes of purchasers; third-party use; conditions of purchase; actual confusion; and the scope of protection of the registered mark.

Similarity of marks. The applicant’s mark consisted of a circular design that incorporated the words MOTHER EARTH BREWING and a sketch of a woman’s head. The cited mark consisted of a circular design that incorporated the words MOTHER EARTH BREW CO.; the letters “M” and “E”; waterfalls cascading over, under, and around those letters; a “tree of life”; and two “Irish cross symbols.” The words MOTHER EARTH were identical in both marks.

According to the Board, the additional words BREWING in applicant’s mark and BREW CO. in the registered mark, although descriptive and therefore having little or no source-indicating value, were very similar in appearance and meaning. As a result, the literal portions of the marks were essentially identical. Despite that similarity, the applicant argued that the differences in the marks’ designs were sufficient to distinguish the marks.

Although one could clearly see the differences in the design elements of the marks when the marks were viewed together, the applicable test was not whether the marks were distinguishable when viewed in a side-by-side comparison. The applicable test was whether the marks resembled each other to such a degree that consumer confusion was likely, and that test required the Board to consider “the fallibility of memory over a period of time.”

The Board acknowledged that the marks had different design elements, but it concluded that the marks “project[ed] similar connotations and commercial impressions” when they were “viewed in connection with the words MOTHER EARTH.” The Board noted that the words of a composite mark were generally accorded greater weight than the mark’s design because the words would be used by purchasers to request the goods or services that were identified by the mark.

Ultimately, the literal parts of the marks were essentially identical in pronunciation and connotation, and the marks as a whole were similar in pronunciation, connotation, and commercial impression. In addition, the marks had a similar overall appearance because both consisted of concentric circles with the words MOTHER EARTH in the outer circle. In the Board’s view, the specific differences in the design elements of the marks did not outweigh the marks’ similarities.

Similarity of goods. The goods that were identified in the cited registration were “beer comprised solely of organic components.” The applicant’s goods were also beer, but the applicant excluded “organic beer and beer comprised solely of organic components.”

The applicant argued that “organic beer” and “beer excluding organic beer” were different goods. The Board disagreed. Organic beer and “non-organic beer” were both beer, the Board explained. In the context of the cited registration, “organic” referred to the methods that were used to grow the beer’s ingredients. The beer itself used the same basic ingredients—and was made in the same manner—as non-organic beer. In the Board’s view, organic beer and non-organic beer were “essentially the same goods.” Even if the differences in growing methods created different types of beer, the applicant’s beer and the registrant’s beer would still be “closely related,” according to the Board.

Ultimately, the distinction between organic beer and non-organic beer did not prevent a likelihood of consumer confusion. Consumers would assume that beers being sold under confusingly similar marks were produced by the same source, the court explained.

Channels of trade. Because the registrant’s certificate of registration was prima facie evidence of its exclusive right to use the mark in connection with the goods that were identified in the registration, the Board had to treat the registrant’s goods as traveling in all channels of trade that were appropriate for goods of the applicant’s type, and those trade channels included the channels in which non-organic beer was sold.

Purchaser class. The evidence indicated that purchasers of organic beers did not necessarily purchase mass-market beers, but they did purchase craft beers. Because the applicant’s beer was promoted as a craft beer, and craft beers were encompassed by the applicant’s identification of goods, the evidence indicated that there was an overlap in the purchasers of the applicant’s and registrant’s beers.

Third-party use. The applicant submitted third-party registrations of MOTHER EARTH and argued that those registrations showed that the term MOTHER EARTH was commonly used. The applicant’s argument was erroneous, the Board explained, because “the mere existence of third-party registrations [wa]s not sufficient to show that the public was familiar with them.” Moreover, the applicant failed to show any third-party use of MOTHER EARTH.

The Board acknowledged that third-party registrations could be used to show that a term had a particular significance within a specific industry. However, third-party registrations for goods that were far removed from the goods of the applicant and the registrant—proffered registrations for organic potting soil, computer software, paper products, and paddle surfboards, for example—had little probative value.

Although the applicant proffered third-party registrations for food and beverages, those registrations “at best” showed only that MOTHER EARTH had the significance that the dictionary definition—”the mother of everything animate or inanimate upon the earth”—merely suggested: something that was nourishing and wholesome and natural. The Board could not conclude from the limited number of third-party registrations that were submitted by applicant that MOTHER EARTH had a strong, suggestive connotation for beverages, and that the Board was therefore obligated to give greater weight to the design features when it compared the applicant’s mark with the registrant’s mark.

Conditions of purchase. To the extent that the applicant argued that confusion was not likely because consumers would “go behind the trademark and rely on the name of the brewers,” the Board dismissed the applicant’s view because a likelihood of consumer confusion had to be based on the marks themselves, not on whether there was additional information that a potential consumer could obtain to determine the source of the goods.

The Board acknowledged that some purchasers of craft beers and organic beers were “more discriminating” than consumers of mass market beers, and that some consumers of organic beers specifically chose those beers because they were organic. Nevertheless, it concluded that “even discriminating purchasers” were likely to be confused by the use of the applicant’s mark on its craft beer “in view of the registrant’s mark for beer made from organic components.” Put differently, even if purchasers noted the difference in the design elements of the two marks, they were not likely to view the different designs as an indication of different sources for the beers. According to the Board, the purchasers were likely to assume that a single source had adopted the marks as variations of each other, perhaps as a way to distinguish its organic beer from its non-organic beer.

Actual confusion. Because the parties were not in the same locations or channels of trade, consumers lacked an opportunity to be confused. For that reason, the lack of evidence of actual confusion was an insufficient basis to conclude that consumer confusion was not likely. Nevertheless, the presumptions that were owed to the registrant through its ownership of the cited registration required the Board to assume that: (1) the registrant could sell its beer nationwide, which included the area in which applicant sold its beer, and (2) the beer could be sold in all appropriate channels of trade for beer.

Scope of protection. The applicant argued that: (1) the term common to both marks—MOTHER EARTH—was weak and (2) the scope of protection that was afforded to the cited registration should be deemed “so narrow that the Application for [applicant’s mark] should be allowed.” According to the applicant, MOTHER EARTH was descriptive when used in the context of “beer comprised of organic components.”

Based on the dictionary definition of “mother earth”—i.e., “the mother of everything animate or inanimate upon the earth” and “soil; ground”—the Board could not conclude that MOTHER EARTH immediately and directly described beer that consisted of organic ingredients. At most, the term “somewhat” suggested that the registrant’s beer was made of natural ingredients.

Although a suggestive term was entitled to a lesser scope of protection than an arbitrary term, the protection to which the registered mark was entitled “would certainly extend to prevent the registration of a similar mark containing the words MOTHER EARTH for virtually identical goods,” the Board explained.

Balancing the confusion factors. The Board found that the similarity of goods factor and the channels of trade factor “heavily favored” a likelihood of consumer confusion. Likewise, it found that the similarity of marks factors favored a likelihood of confusion.

Because the term MOTHER EARTH was only slightly suggestive, the registered mark was entitled to a “normal” scope of protection. The third-party use and actual confusion factors were neutral.

The “conditions of purchase” factor favored the applicant because the Board agreed that the relevant purchasers were discriminating. Nevertheless, that factor did not outweigh the factors that favored a likelihood of confusion.

Ultimately, when all of the relevant factors were weighed and balanced, the Board concluded that the applicant’s mark for non-organic beer and for “non-organic brewed malt-based alcoholic beverage in the nature of a beer” was likely to cause confusion with the registered mark for beer made of organic components.

Class 35 Services

The applicant’s application included International Class 35 services for “distributorships in the field of alcoholic beverages, excluding both organic beer and beer comprised solely of organic components.” The Board’s analysis assumed that: (1) the applicant was rendering a service and (2) the applicant was distributing beer made of non-organic components for third parties, rather than for itself.

After considering all of the relevant likelihood of confusion factors, the Board concluded that consumer confusion was likely between the applicant’s mark for distributorship services and the registrant’s mark for goods that were identified in the cited registration. To the extent that there was any doubt on that issue, the Board resolved that doubt in favor of the registrant.

The case is Serial No. 77716598.

Attorneys: David W. Sar (Brooks, Pierce, McLendon, Humphrey & Leonard, L.L.P) for Mother Earth Brewing, LLC. J. Brendan Regan, Trademark Examining Attorney.

Companies: Mother Earth Brewing, LLC

Cases: Trademark USPTO