IP Law Daily, TRADEMARK—TTAB: Refusal to register WATERLOO SPIKED SPARKLING WATER mark for spiked seltzers reversed, (Oct 7, 2024)

By Saurabh Kashyap, B.A., LL.B., LL.M.

Board rules that the mutual consent agreement between the applicant and the owner of WATERLOO NO.9 GIN effectively addressed potential confusion.

In a non-precedential decision, the Trademark Trial and Appeal Board (TTAB) reversed a Trademark Examining Attorney’s refusal to register the mark WATERLOO SPIKED SPARKLING WATER for spiked seltzers and other alcoholic beverages, finding it was not likely to cause confusion with the registered mark WATERLOO NO. 9 GIN for spirits. The Board found that, while there were similarities between the marks and overlapping goods, a consent agreement between the applicant and registrant mitigated the potential for confusion (In re Waterloo Sparkling Water Corp., No. 90843090 (T.T.A.B. Sept. 30, 2024)).

Background. Waterloo Sparkling Water Corp. applied to register the standard character mark WATERLOO SPIKED SPARKLING WATER for “spiked seltzer containing alcohol; ready-to-drink cocktails; alcoholic seltzers; flavored alcoholic seltzer; hard seltzer; alcoholic beverages except beer, wine, and spirits; pre-mixed alcoholic beverages; carbonated alcoholic beverages except beer” on the Principal Register in International Class 33. The application was refused by the Trademark Examining Attorney under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), citing a likelihood of confusion with WATERLOO NO. 9 GIN, a registered mark for “spirits” in International Class 33. The applicant submitted a consent agreement with the registrant, which the examining attorney dismissed, resulting in the applicant’s appeal.

Consent agreement. A critical factor in the Board’s reversal was the consent agreement between Waterloo Sparkling Water Corp. and the registrant of WATERLOO NO. 9 GIN. The agreement between the applicant and registrant delineated the types of goods covered by each mark—spiked seltzers and cocktails for the applicant and gin for the registrant. This agreement assured the Board that both parties would operate within distinct product lines, thus minimizing the likelihood of confusion.

Citing In re Four Seasons Hotels Ltd., 987 F.2d 1565 (Fed. Cir. 1993), the Board emphasized that parties to a consent agreement are typically in the best position to assess the potential for confusion. In this case, the agreement demonstrated a clear intention to avoid consumer confusion, and the Board deferred to the parties’ knowledge of their respective markets.

Similarity of the marks. The Board next considered the similarity of the marks, which both prominently feature the term "WATERLOO." The examining attorney argued that this shared element could confuse consumers, especially since both marks are used on alcoholic beverages. However, the Board noted that the marks must be evaluated in their entirety. The additional terms—SPIKED SPARKLING WATER in the applicant's mark and NO. 9 GIN in the registrant's mark—created distinct commercial impressions. When viewed as a whole, the marks were sufficiently different in sound, appearance, and meaning.

Referencing In re Nat’l Data Corp., 753 F.2d 1056 (Fed. Cir. 1985), the TTAB emphasized that marks must be compared in their entirety, not dissected into individual components. Additionally, the consent agreement outlined specific ways to differentiate the marks in marketing and branding, further mitigating the potential for confusion. The Board gave considerable weight to the parties' agreement on this issue, consistent with the ruling in In re American Cruise Lines, Inc., 2018 TTAB LEXIS 363 (T.T.A.B. 2018).

Relatedness of the goods. One of the key DuPont factors considered by the Board was the relatedness of the goods. Both the applicant and registrant are in the alcoholic beverage industry, but their products are distinct—spiked seltzers and ready-to-drink cocktails for the applicant and gin for the registrant. The Board found that while the goods could be sold in overlapping channels, the consent agreement addressed this issue by clearly separating the types of beverages each party would produce.

In its analysis, the Board referred to In re Detroit Athletic Co., 903 F.3d 1297 (Fed. Cir. 2018), where the goods in question were compared based on their specific descriptions in the trademark applications and registrations. In this case, the Board found that the spiked seltzers and cocktails covered by the applicant’s mark were sufficiently different from the spirits covered by the registrant’s mark. The agreement provided additional assurances that the goods would not be marketed in a manner likely to cause confusion.

Market interface and trade channels. Another critical factor in the Board's decision was the market interface between the applicant and registrant. The consent agreement specified that the two parties would use their marks in different marketing channels, further reducing the potential for confusion. As outlined in the agreement, both marks would be sold through distinct trade channels and marketed to different consumer bases.

The Board cited In re Mastic Inc., 829 F.2d 1114 (Fed. Cir. 1987), which held that when parties agree to restrict their use fields, the likelihood of confusion can be significantly reduced. The Board found that the agreement between the applicant and registrant, in this case, provided clear guidelines for how the marks would be used, ensuring that they would not appear in the same trade channels in a manner likely to confuse consumers.

Conclusion. Thus, the TTAB reversed the examining attorney's refusal to register WATERLOO SPIKED SPARKLING WATER, finding that the consent agreement between Waterloo Sparkling Water Corp. and the registrant of WATERLOO NO. 9 GIN provided sufficient protections to avoid confusion.

The Case is Serial No. 90843090.

Judge: Goodman, C.

Attorneys: Allison Hagey (Braun Hagey & Borden LLP) for Waterloo Sparkling Water Corp. Giancarlo Castro for the the USPTO.

Companies: Waterloo Sparkling Water Corp.

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