The USPTO refused to register the mark BEDLAM VODKA in the word-plus-design form shown below left, for vodka [VODKA disclaimed], finding confusion likely with the registered mark BEDLAM! in the word-plus-design form shown below right, for beer. Applicant argued that the design elements of the marks are distinct, and further that "vodka and beer are not related on this record because the Examining Attorney proffered evidence of only ten producers that offer both vodka and beer out of more than 7,000 breweries and 424 vodka distilleries in the United States as of 2018." How do you think this appeal came out? In re Graybeard Distillery, Inc., Serial No. 88182246 (October 19, 2021) [not precedential] (Opinion by Judge Melanye K. Johnson).
The Board noted once again that there is no per se rule that all alcoholic beverages are related. However, Examining Attorney Sang Min (Sean) Lee submitted printouts from twelve websites showing ten third-party producers offering both vodka and beer, not infrequently at combination brewery/distilleries. Moreover, some producers offer both vodka and beer under the same mark or house mark (Crown Valley, Dogfish, Rogue, Two Brothers, Brickway, and Round Barn). This evidence convinced the Board that the goods are related.
The trade channels for the involved goods overlap: including breweries and combination brewery/vodka distilleries, as well as liquor stores and other retail establishments which sell both vodka and beer. The consumers of the goods are the same: the general public.
Turning to the marks, the Board observed that, "when evaluating a composite mark consisting of words and a design, the literal elements are normally accorded greater weight because they are likely to make a greater impression upon purchasers, be remembered by them, and be used by them to refer to or request the goods and/or services."
Applicant argued that "Registrant’s 'snarling' orange and yellow bear's head design with 'large, pointy teeth,' 'fanciful horns,' and a crown is dominant, catching the viewer's eye, while the sole literal element, 'BEDLAM!' is much smaller than the bear’s head." Moreover, because of the exclamation point, the cited mark "should be spoken with force and emphasis, further distinguishing it from 'BEDLAM,' featured without an exclamation point."
The Board, however, found that the word "BEDLAM" in applicant's mark stands out as the most visually prominent literal element, conveying the strongest commercial impression. As to the cited mark, the word "BEDLAM!" is positioned "so as to draw the eye first to the word and then to the bear’s head design element." The Board observed that "[t]he 'L' in 'BEDLAM!' is connected to the bear's head, serving to draw the viewer’s eye from the horizontal line segment of the 'L,' up through the vertical line segment, and then to the bear's head." In sum, "the marks share a significant visual and phonetic similarity because of the common element, “BEDLAM,” which forms the dominant portion of each mark."
The Board further observed, not surprisingly, that the exclamation point was not enough to distinguish the marks. Furthermore, it noted that BEDLAM is an arbitrary term entitled to a broad scope of protection.
The Board found it likely "that prospective purchasers familiar with Registrant’s Mark for beer mistakenly would understand that Applicant’s vodka comes from a distillery connected with Registrant."On balance, the basic similarity between the marks, which results from the presence of the prominent word “BEDLAM” in both, outweighs the dissimilarity which results from the addition of the generic term “vodka” in Applicant’s Mark and the designs of both marks. Considering the marks in their entireties, they are sufficiently similar that the first DuPont factor weighs in favor of a likelihood of confusion finding
And so, the Board affirmed the refusal to register.
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Text Copyright John L. Welch 2021.
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