Posted on September 29, 2009 by Sheila Morrison

Differences in Restaurant Concept May Not Be Enough to Overcome Similarities in Name for Trademark Registration Purposes

Restaurateurs recognize differences in restaurant concepts and often believe that such differences will obviate consumer confusion even when the same or similar names are used by two different concepts. Often they are right! However, the U. S. Patent and Trademark Office has its own standards and guidelines and often refuses registration of a junior applicant despite the obvious differences in concept and location. See http://thettablog.blogspot.com/2009/09/wyha-ttab-finds-lucas-chophouse.html 

Restaurateurs who seek a federal registration and/or seek to franchise should be especially aware of this.

Tags:
Posted on September 11, 2009 by Sheila Morrison

Beer and Wine are STILL Related Goods says the US Patent and Trademark Office

Even Gallo can't get the U.S. Patent and Trademark Office to change its mind about whether beer and wine are related goods. The relatedness of beer and wine (and spirits too) is a long standing policy of the USPTO (and some federal courts) and despite the efforts of "big gun" trademark owners like Gallo, the policy still stands, see: http://thettablog.blogspot.com/2009/09/finding-wine-and-beer-related-ttab.html

What this means is that you can't register a mark for wine, if it is already registered for beer. This is a major headache for some wine, beer and spirits manufacturers that know the products are marketed very differently, and take the position that there would be no likelihood of consumer confusion even if the names are identical. That said, this continued policy may be a boon for trademark registrants because it provides strong protection across the alcoholic beverage market space. So, for now, the moral of the story is, if you have a mark that is clear of conflicts across the alcoholic beverage market space, register the mark to gain broad protection.

Tags: , , , , , ,