Here’s another example of how the naming of trademarks is often influenced by references to pop-culture.

In a recent U.S. trademark opposition decision, the Trademark Trial and Appeal Board ruled that the mark SUNNY HAZE for beer was confusingly similar to PURPLE HAZE, for inter alia, beer, so as to prevent registration.  In the case, Abita Brewing Company LLC v. Mother Earth Brewing, LLC, the Board was faced with considering whether the Sunny Haze mark of Applicant for “beer, and brew malt-based alcoholic beverage in the nature of beer” was confusingly similar to Opposer’s Purple Haze mark for “beer, ale, lager, and malt liquor.”  In its Notice of Opposition, the Opposer also relied on two of its other registrations for the Purple Haze mark for “shirts, caps, headwear, and beverageware.”

In concluding that confusion was likely, the Board stated that two “key considerations” in making such a determination were the similarity between the trademarks and the similarity between the goods.  With regard to the latter factor, the fact that the parties’ respective marks both sought protection for “beer” made that likelihood of confusion factor weigh in favor of the Opposer.   In its assessment of the similarity between the parties trademarks, the Board concluded that the first word of both marks modified the word “haze” and connoted a color (golden or purple) or a mood (fury or cheerfulness).   While such a conclusion might constitute a quantum leap in logic (particularly as it relates to a consumer’s perception of the word “purple” as part of the composite mark), the Board nonetheless reached its conclusion of similarity — most likely on the fact that the Opposer submitted sufficient evidence to establish the fame of its Purple Haze trademark for beer.  Since there are no other third-party “haze” trademarks for beer, it seems that Opposer met its burden as being well-known for that moniker in the alcoholic beverage space.

Trademark attorney notes:  Like other trademarks that may be associated with well-known celebrities, such as “the Duke” for John Wayne or “Hound Dog” for Elvis Presley, the trademark “Purple Haze” has been registered by numerous parties over the years.  There are currently 11 U.S. trademark registrations for Purple Haze for a wide variety of goods, including,  frozen confections, fireworks, automobile wax, cosmetics, smoking articles, cheese, and knives.  The lesson here is that unless a party makes early efforts to protect its trademarks, they may quickly be picked-up by other third-parties to apply to a wide variety of goods and services.

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Photo of James Hastings James Hastings

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is…

James Hastings is an attorney with the U.S. Trademark Trial and Appeal Board Practice Group of Practus, LLP.  He is a certified mediator of the INTA Panel of Mediators, an international roster of select professionals with expertise in trademark dispute resolution.

James is the publisher of Trademark Opposition Lawyer, an online advisory dedicated to helping brand owners understand important issues that arise in proceedings before the U.S. Trademark Trial and Appeal Board.  His commentary has been featured on Corporate Counsel, Law.com, LegalZoom,and other digital publications.

He devotes his practice to trademark opposition and trademark cancellation proceedings before the Trademark Trial and Appeal Board of the United States Patent and Trademark Office.  Over the course of his career, he has represented the interests of numerous national and international brand owners in trademark litigation matters in both the U.S. District Courts and before the U.S. Patent and Trademark Office.

Prior to his current affiliation with Practus, LLP, James was in-house counsel to a New England-based catalog retailer, where he was responsible for developing trademark portfolio acquisition, protection, and licensing strategies.  Earlier in his career, he was a partner and associate at intellectual property law firms in New York, where he was engaged in trademark portfolio and intellectual property protection work on behalf of well-known fashion and personal care brands.

James is a member of the New York and Connecticut bars.  He has lectured at University MBA programs and legal education conferences on the issues of trademark protection and e-commerce law.

Past and Present Membership

  • International Trademark Association
  • Association Corporate Counsel
  • National E-tailing and Mail Order Organization of America