KMK Law Intellectual Property Blog

In a non-precedential decision, the Trademark Trial and Appeal Board (“Board”) recently reversed a refusal to register Heritage Distilling Company’s application for the mark, BSB, for “distilled spirits” based on the following mark owned by Black Shirt Brewing Co. for “brewpub services; taproom services; taproom services featuring beer brewed on the premises”:

In re Heritage Distilling Company, Inc., Serial No. 86896656 (November 9, 2017) [not precedential] (Opinion by Judge Marc A. Bergsman). In issuing her refusal of the BSB mark, the Examining Attorney pointed out that brewpubs and taprooms often sell distilled spirits, citing the reasonably-well known examples Ballast Point, Rogue, Dogfish Head, New Holland, and some other, less-well known examples like Bent Brewstillery, Maplewood, and Portside.

Over the last couple of years, the Board has been pretty consistent finding beer and wine on the one hand, and beer and spirits on the other, to be related goods. This consistency has led us to the general conclusion that “booze is booze,” and if you have a mark registered for one type of booze, you’re not going to be able to register a similar mark for a different kind of booze. In that vein, shouldn’t the same rule apply to “booze” and “places that sell booze” because, after all, the “places that sell booze” bit is only one, very minor step removed from simply “booze.” Well, it seems not.

In reversing the refusal and finding no likelihood of confusion (despite finding the two marks to be similar for purposes of the analysis), the Board relied on a Federal Circuit case from 2003 which held that restaurant services are not per se related to particular food or beverage items which may also be offered in connection with those restaurant services, requiring that “something more” be shown before one can conclude that the goods/services are similar. This despite the fact that the Board relied on a definition of “taproom” which reads “a room in which alcoholic drinks, especially beer, are available on tap; a bar in a hotel or inn” (emphasis added).

While this “something more” test has been in place since 1982, it seems to us that the “something more” here is the evolution of the craft brewing/craft distillery industry since 2003. Is it really not yet common knowledge that brewpubs offer their own branded beer? Am I the only one that knows you can get beer and spirits from a brewpub or a taproom? [Don’t answer that please.] Did the Board miss the fact that the Black Shirt Brewing registration identified “…beer brewed on the premises”? Hmmm…lookie here:

That sure looks like branded beer to me. So…isn’t that just “booze is booze” still? Apparently not, if you just have a taproom where booze is sold, or if you have food of some sort mixed in. If Black Shirt Brewing had just registered its mark for “beer,” one would think we wouldn’t now be forced to deal with BSB beer and BSB spirits too. Instead, Black Shirt Brewing has only seen fit to register its beer names for “beer;” not its housemark. So, the question, I guess, is which is more of a head-scratcher: this decision (which thankfully isn’t precedential), or the decision not to register the name of your brewery for beer…?