United States: TTAB Finds SURLY PENGUIN For Alcoholic Beverages Except Beer Confusable With SURLY For Beer And Restaurant Services

Last Updated: May 17 2019
Article by John L. Welch

The Board shot down yet another attempt to show that beer and other alcoholic beverages are not related, finding the mark SURLY PENGUIN & Design (below) for "alcoholic beverages except beer" likely to cause confusion with the registered mark SURLY for beer and for bar and restaurant services. This blog post will hit the high points of the Board's thorough, 37-page decision. Surly Brewing Company v. Christopher Olshan, Opposition No. 91230831 (April 26, 2019) [not precedential] (Opinion by Judge Marc A. Bergsman).

Evidentiary Issues: The Board first dealt with several issues regarding applicant's Internet evidence. It ruled that webpages are admissible by way of notice of reliance under Rule 2.122(e)(2) even if the URL does not appear on the Internet document itself if that information is otherwise provided. It rejected a webpage from a website that, according to applicant, had "expired." And it pointed out again that the mere provision of a website address or hyperlink is not sufficient to make such materials of record.

The Board also observed that labels are neither printed publications nor Internet materials, and they may not be introduced by notice of reliance. And for the umpteenth time, it declared that materials attached to a party's brief are either untimely or duplicative, and therefore are "unnecessary and discouraged."

Strength of Opposer's Mark: The Board found that SURLY is an arbitrary term when applied to beer or bar and restaurant services, and therefore it is an inherently strong mark. As to commercial strength, opposer's substantial sales and advertising figures, promotional activities, and media references convinced the Board that SURLY is a commercially strong mark.

Applicant introduced 14 SURLY registrations in an attempt to show that opposer's mark is weak. However, nine of the registrations covered products far removed from those at issue here. Four of the registrations are owned by opposer. The remaining one was cancelled in 2017.

The Board concluded that opposer's mark belongs on the strong side of the spectrum from very strong to very weak marks.

Comparing the Marks: The fact that the applied-for mark contains opposer's entire mark SURLY, which is a strong mark entitled to a broad scope of protection, "increases the similarity between them." The marks are similar in appearance and sound, as well as in connotation and commercial impression, since in both marks the word "surly" expresses the same mood in both marks.

The goods: Opposer submitted evidence from 50 third-party websites for entities that produce beer and other alcoholic beverages under the same mark, evidence of 21 news articles regarding breweries that have expanded to offer spirits, wine, and cider, and 48 sets of third-party registrations for spirits or cider and beer. Its testimony indicated that brewers are mixing their craft beer with wine and spirits to blend hybrids. Twenty-six news articles corroborated that testimony.

Applicant Christopher Olshan introduced examples of marks with similar features, owned by different entities, for beer and other alcoholic beverages. (E.g., BLUE MOON ale and BLUE ICE vodka. The Board was not impressed.

While Applicant's evidence shows that there are some beers and spirits, offered by separate entities, that share a common term as part of their marks, it does not prove that spirits and beer are not related.

Moreover, some of the marks that share a common term are not similar when considered in their entireties: e.g., BLUE MOON and BLUE ICE, MAD ELF BEER and MAD RIVER WHISKEY.

The Board found opposer's evidence sufficient to establish that beer and alcoholic beverage except beer are related products.

The Goods and Services: To prove the relatedness of beer and restaurant services, "something more" is needed to prove that the goods and services are related. In other words, there is no per se rule that alcoholic beverages and restaurant services are related. Here, the "something more" requirement was met because SURLY is inherently and commercially strong, and therefore opposer's evidence was sufficient to prove that its SURLY bar and restaurant services are related to alcoholic beverages except beer.

Channels of Trade: The involved goods are sold in bars, restaurants, liquor stores, convenience stores, and retails stores, and at special events. There are no limitations in the application or cited registration as to channels of trade or classes of consumers. The Board must consider the "least sophisticated consumer," and so the Board concluded  that the goods are offered in some of the same channels of trade to some of the same classes of consumers.

Conclusion; The Board found confusion likely and it sustained the opposition.

Read comments and post your comment here.

The TTABlog

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