A trademark opposition involving beverage trademarks was the subject of our most recent post. Now, we review a trademark cancellation dispute between two beverage trademark owners. In both proceedings, the grounds were a likelihood of confusion pursuant to Section 2(d) of the Trademark Act.
In Rebel Wine Co. LLC v. Piney River Brewing Co., Rebel Wine petitioned to cancel Piney River’s Registration No. 4597351 of the mark MASKED BANDIT for beer and brewed malt based alcoholic beverages in the nature of beer. Rebel Wine plead ownership of Registration Nos. 33119263 and 39743404 both for the mark BANDIT for wine and alcoholic beverages except beers. The U.S. Trademark Trial and Appeal Board found that Petitioner had priority based on its earlier registrations.
In analyzing the likelihood of confusion between the beverage trademarks, the Board reiterated the well-known rule that two key considerations are the similarities between the marks and the relatedness of the goods. Considering the marks in their entireties, it found that MASKED BANDIT and BANDIT are similar, therefore weighing in favor of likely confusion. With regard to the relatedness of goods factor, the proper test is whether consumers would tend to believe that the parties’ respective products emanate from the same source. Here, the Board observed that both parties had beer and/or wine in the goods covered by its registrations. The Board also noted that it often concludes that “beer” and “wine” are related goods for purposes of likelihood of confusion. In the end, it opined that in this proceeding was no different and found that the parties’ respective goods were related. It also found that the trade channels of the parties and purchasing conditions were similar. As a result of the totality of the evidence, the Board granted the petition based on a likelihood of confusion and Piney River’s trademark registration for MASKED BANDIT was cancelled.
Practice Note: While the Board had indicated that each proceeding is different, when it comes to the similarity between wine and beer, it almost inevitably concludes that the two goods are related for purposes of likelihood of confusion. This is despite the fact that here, Respondent introduced 237 pairs of third-party registrations of the same or very similar marks for wine and beer, respectively, owned by different companies.