W. Clay Mackey (“Opposer”), owner of the registered mark CHINOOK, for table wine, sparkling wine and beer, filed an opposition against Lawson’s Finest Liquids, LLC (“Applicant”) federal trademark application for CHINOOKER’D IPA, for beer. On December 7, 2020, the Trademark Trial and Appeal Board (“TTAB”) canceled the Opposer’s registration of CHINOOK for beer on the ground of abandonment and concluded that “CHINOOKER’D IPA for beer is not likely to cause confusion with Opposer’s registration for CHINOOK for table wine and sparkling wine.” This TTAB trademark decision is inconsistent with other rulings finding that beer and wine are related products that can cause confusion when the marks are similar or identical to one another.
Why did the TTAB find that there was no confusion?
Abandonment and Common Law Rights
On summary judgment, the TTAB granted the Applicant’s motion that the Opposer had abandoned the CHINOOK mark for beer. The Applicant was successful in arguing that the Opposer had discontinued use of CHINOOK for beer for “at least three consecutive years from the September 3, 1992 filing date of the use-based application.” The Opposer failed to rebut the Applicant’s argument and, as such, the CHINOOK trademark registration for beer was deemed abandoned. Due to the fact that the registration had been abandoned, the Opposer was left to argue that it had prior common law rights in CHINOOK for beer that established a likelihood of confusion between the two respective marks. However, because chinook is a variety of hops used to brew beer, the TTAB determined that CHINOOK was generic when used for selling beer and could not be protected by common law rights either.
Likelihood of Confusion Between the Marks
When determining a likelihood of confusion, the TTAB analyzes the evidence at issue in relation to the thirteen factors set forth in In re E.I. du Pont de Nemours & Co., 476 F. 2d 1357, 177 USPQ 563, 567 (CCPA 1973). In the case at hand, the TTAB found that the relevant Du Pont factors that favored the Opposer’s mark were the similarity of the goods, the similarity of the channels of trade, and the classes of consumers. The Du Pont factor that favored Applicant was the dissimilarity of the respective marks. Even though the TTAB believed that the marks are similar in appearance and sound, they found that the different meanings of the marks create different commercial impressions that would not confuse consumers. In this instance, the TTAB explained that CHINOOK suggests association with the Pacific Northwest and CHINOOKER’D IPA “engenders the commercial impression of getting snockered (i.e., drunk) on a beer made from Chinook hops.” Therefore, this disassociation of commercial impression was sufficient to determine that there was no likelihood of confusion between CHINOOK and CHINOOKER’D IPA.
TTAB Trademark Decision
The final TTAB trademark decision was rendered six years after the Opposer filed its opposition. Trademark opposition proceedings can be a lengthy undertaking that require the expertise of an established trademark lawyer.
If you are involved in a trademark dispute or need assistance with preparing a trademark application, please e-mail us at info@kleinmoynihan.com, or call us at (212) 246-0900.
The material contained herein is provided for information purposes only and is not legal advice, nor is it a substitute for obtaining legal advice from an attorney. Each situation is unique, and you should not act or rely on any information contained herein without seeking the advice of an experienced attorney.
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