IP Law Daily, TRADEMARK—TTAB: OTTO’S for soda is confusable with OTTO'S OATMEAL STOUT for beer, (Apr 1, 2024)

By Cheryl Beise, J.D.

The marks were similar, and the evidence showed that beer and soda may be sold by the same entity.

A trademark examining attorney properly refused to register the proposed mark OTTO’S for soda pop on the ground of likelihood of confusion with the registered mark OTTO’S OATMEAL STOUT for beer, the Trademark Trial and Appeal Board has ruled. The marks were more similar than dissimilar, and the third-party registrations and website evidence submitted by the examining attorney showed that several entities offer beer and soda under the same or very similar marks. Accordingly, “consumers are accustomed to seeing a single mark associated with a source that sells both beer and soda” (In re C&D Brewing Ventures, Inc., March 26, 2024, Cohen, W.).

Applicant C&D Brewing Ventures, Inc., sought to register on the Principal Register the mark OTTO’S (in standard characters) for “soda pops” in International Class 32. The examining attorney refused registration under Section 2(d) of the Trademark Act on the ground of likelihood of confusion with the previously registered standard character mark OTTO’S OATMEAL STOUT (OATMEAL STOUT disclaimed) for “beer” in International Class 32. The applicant requested reexamination, which the examining attorney denied. The applicant appealed.

Similarity of the marks. The Board agreed with the examining attorney that the marks are similar in sound, meaning, connotation, and commercial impression. The common word “OTTO’S” was the leading and dominant word in both marks and was the most likely to make the greatest impression on consumers. The addition of the disclaimed, descriptive words “OATMEAL STOUT” in the registrant’s mark was not enough to alleviate confusion, in the Board’s view, because consumers would focus more on the OTTO’S portion of the registrant’s mark as the source-indicator for its goods.

In terms of meaning, the Board acknowledged that the registrant’s mark might convey a type of beer, but that did not detract from the likelihood that “[c]onsumers familiar with Registrant’s mark, OTTO’S OATMEAL STOUT, who encounter Applicant’s mark, OTTO’S, could perceive OTTO’S as indicating that the brewers of OTTO’S OATMEAL STOUT have added a non-alcoholic beverage to their product line.”

Relatedness of goods, trade channels, and customers. The examining attorney submitted evidence of nine third-party websites that offered both beer and soda under the same or very similar marks and an Internet article from PASTEMAGAZINE.COM, entitled “7 Breweries That Make Craft Soda,” discussing entities that sold both beer and soda. She also referenced 10 third-party registrations for beer and soda offered under the same mark. The Board found this evidence to be persuasive.

The applicant argued that some of the examples were less probative because they involved house marks for a wide range of goods. The Board disagreed, pointing out that the registrations cited by the examining attorney were for narrow listings, involving beverages only. Based on the examining attorney’s third-party evidence, the Board concluded that there is a relationship between beer and soda and “consumers are accustomed to seeing a single mark associated with a source that sells both beer and soda.”

For its part, the applicant “put forth 83 pairs of registrations that contain identical or nearly identical marks where one in the pair is registered for beer and the other for soda pop/soft drinks (from distinct owners).” The Board, however, discounted this evidence because more than 50 of the pairs included one mark with additional wording, design, or stylization features that was absent in the other mark. In addition, the applicant provided no evidence of actual use of these marks.

Lastly, the applicant attempted to distinguish its consumers and channels of trade on the grounds that beer is an age-restricted product sold only in establishments licensed to sell alcohol. However, because the applicant’s description of goods contained no limitations, its soda products were presumed to move in the same channels of trade and be available to the same classes of purchasers as the registrant’s beer.

Finding that the similarity of marks and the relatedness of the respective goods, the overlap in channels of trade and classes of customers weighed in favor of finding a likelihood of confusion, the Board affirmed the registration refusal.

The case is Serial No. 88935220.

Attorneys: David V. Radack (Eckert Seamans Cherin & Mellott, LLC) for C&D Brewing Ventures, Inc. Rebecca Ruiz for the USTO.

Companies: C&D Brewing Ventures, Inc.

Cases: Trademark USPTO