Wine v. Beer: Another Trademark Battle
/On April 30, Washington state wine producer Ste. Michelle Wine Estates (“Ste. Michelle”) filed suit against Colorado-based brewery Twisted Pine Brewing Company (“Twisted Pine”), alleging federal trademark infringement and other unfair business practices. Ste. Michelle claims that Twisted Pine’s use of NORTHSTAR to sell Northstar Imperial Porter infringes the winery’s rights in that trademark, which it uses for its highly rated Northstar wine. This case is one of a growing number of trademark infringement disputes involving different kinds of alcoholic beverages. The outcome will depend on just how different the court thinks wine and beer are.
Likelihood of Confusion
The purpose of a trademark or a servicemark is to inform consumers of the source of a particular product or service. Under federal law, the owner of a mark may register that mark in the class(es) of goods for which it is used.[1] For example, a mark used for wine should be registered in class 033, a broad class that encompasses all “alcoholic beverages except beer.” Classes are enumerated in the Trademark Identification Manual (beta version). A trademark cannot be registered if it:
Consists of or comprises a mark which so resembles a mark registered in the Patent and Trademark Office, or a mark or trade name previously used in the United States by another and not abandoned, as to be likely, when used on or in connection with the goods of the applicant, to cause confusion, or to cause mistake, or to deceive. . . .
This is why, in most cases, the same mark can be used by different entities for different classes of goods—there is no risk of confusion if one owner uses a mark only for wine and another uses the same mark only for shoes.[2] The question with respect to NORTHSTAR, then, is whether Twisted Pine’s use of the mark will cause confusion among consumers as to the source of its beer and/or Ste. Michelle’s wine.
In the context of infringement litigation,[3] courts consider many factors to determine whether a particular use of a mark is likely to confuse consumers. The most frequently cited case on this issue is Polaroid v. Polarad, decided by the Second Circuit in 1961. In Polaroid, the court articulated eight factors to consider:
- the strength of plaintiff’s mark
- the degree of similarity between the two marks
- the competitive proximity—or relatedness—of the products (are they typically sold in the same markets, e.g., in the same place to the same consumers?)
- the likelihood that the plaintiff will “bridge the gap” (by selling products of the same class as the defendant’s)
- actual confusion
- bad faith on the defendant’s part
- the quality of the defendant's product; and
- the sophistication of the buyers.
287 F.2d 492, 495 (2nd Cir. 1961). The court explained that this is not an exhaustive list, leaving room for judges to take other factors into account. The factor that sparks the most lively debate among beer and wine enthusiasts is the relatedness of the products.
Relatedness
So how related are beer and wine? If a beer and wine were sold under the same mark, would you think they had the same origin? The idea of a Pabst Blue Ribbon Chardonnay or a Sam Adams Pinot Noir may sound absurd to many, but the federal Trademark Trial and Appeal Board (TTAB) has concluded that beer and wine are related enough to preclude concurrent registration, notwithstanding the fact that beer, unlike rum, vodka, cognac, and other alcoholic beverages, is expressly excluded from class 033.[4] Most recently in In re High Water Brewing, Inc., Serial No. 85886282 (Oct. 3, 2014) (not precedential), and In re 8 Vini, Inc., Serial No. 85857391 (Jan. 16, 2015) (not precedential), it found the alcoholic beverages at issue related.
In High Water, the trademark examining attorney had denied registration of the mark NO BOUNDARY for the applicant’s India Pale Ale because a similar mark, NO BOUNDARIES, had been registered for wine. In 8 Vini, the trademark examiner had denied registration of the applicant’s MASQUERADE mark for sparkling wines because a similar mark, MASCARADE, had been registered for a “mixed beverage containing alcohol and fruit juice.” In both cases, TTAB upheld the denial of registration. Its analysis in 8 Vini is illuminating, with an examination of third-party registrations and citations to Federal Circuit cases including In re Salierbrau Franz Sailer, 23 USPQ2d 1719 (TTAB 1992) (holding CHRISTOPHER COLUMBUS for beer likely to be confused with CRISTOBAL COLON & design for sweet wine), and Schieffelin & Co. v. Molson Cos., 9 USPQ2d 2069 (TTAB 1989) (holding BRAS D’OR for brandy likely to be confused with BRADOR for beer).[5] Note, however, that 1) neither decision is precedential, meaning they don't have the force of law, and 2) as TTAB acknowledged in 8 Vini, “there is no per se rule that all alcoholic beverages are related.” “[E]ach case must be decided on its own facts.”
A Fine Mess?
High Water, like many wine lovers I know, argued that “it is an extreme rarity that beer and wine ever emanate or are sponsored by the same source. It is the exceptional case for a winery to also be a brewery or for a brewery to also be a winery.” To be clear, there are companies that sell beer and wine under the same mark, and it’s not just large corporations that have “bridged the gap.”
Oenophiles, like all humans, suffer from the curse of knowledge. When we become well-versed in something, we become sensitive to differences that others completely overlook. For some of us, wine and beer are like apples and Pembroke Welsh Corgis: they just don’t have much in common, and we'd never be confused if a wine was sold under the same mark as a beer. To most people, though, wine and beer are probably more like apples and oranges. They’re clearly different, but not apples-and-Corgis different. After all, they’re both alcoholic beverages produced by means of fermentation. Finally, to a few people, wine and beer might even be like Gala apples and Fuji apples—barely different at all and not worth arguing about. If you’re reading this post, you probably are in the first or second camp, but let’s not forget about those in Camp Gala-Fuji.
So with all this being said, is it time for a “per se rule”? If so, what should that rule be?
[1] Registration is not required, but it confers certain benefits, including the right to sue in federal court.
[2] The same mark can be registered in different classes by different entities. Such registration is called "concurrent registration."
[3] As opposed to an application for registration, to which the factors set forth in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973) apply.
[4] Beer has its own class: 032.
[5] In 2005 the Second Circuit found rum and vodka to be in "moderate competitive proximity" because they are sold in the same precise locations, frequented by the same precise consumers." Star Indus., Inc. v. Bacardi & Co. Ltd., Bacardi U.S.A., and Anheuser-Busch, Inc., 412 F.3d 373 (2d Cir. 2005).
