Recently, the makers of HPNOTIQ liquor (“Petitioner”) successfully petitioned to cancel the trademark registration for HOPNOTIC beer. The Petitioner filed a cancellation proceeding in the Trademark Trial and Appeal Board (“TTAB”) against the makers of HOPNOTIC beer (“Respondent”), seeking cancellation of the Respondent’s HOPNOTIC trademark registration. Petitioner asserted that it has various trademark registrations for the term HPNOTIQ for use in connection with liquor and other products, which has been in use since 2001. The Respondent asserted that it obtained a trademark registration for HOPNOTIC in connection with beer, which has been in use since 2004.
The TTAB found that likelihood of consumer confusion existed between the two marks since the parties’ products (liquor and beer) are related and are likely to be purchased by consumers with a low level of care, and because the commercial appearance and impression of the two marks were similar. In support of its arguments Petitioner introduced a research study which showed that beer accounted for roughly one-third of the monthly alcoholic consumption by its HPNOTIQ customers, lending further support that beer and liquor products are sold to the same class of consumers and in similar channels of trade. Further, the TTAB found that Petitioner used its mark in United States Commerce prior to the Respondent. The TTAB noted that consumers understand Petitioner’s HPNOTIQ mark to be the equivalent of the word hypnotiq, which was not suggestive or descriptive of alcoholic beverages, and that Petitioner’s mark had obtained significant consumer recognition as a result of Petitioner spending over $100 million in marketing over the past twelve years. Thus, the TTAB found that Petitioner’s HPNOTIQ mark was strong and entitled to broad protection. However, the TTAB refused to find that the HPNOTIQ mark was famous.
Respondent still has the option to appeal the TTAB’s decision to cancel its HOPNOTIC trademark registration. If the Respondent decides not to file an appeal, then the registration will be cancelled in due course. At that point, if the Respondent continues to sell beer products under the HOPNOTIC trademark, there will be a risk that Petitioner could institute a trademark infringement lawsuit against Respondent.
Please contact our office if you have any questions regarding the information in this article.
Daniel Devine, Esq.
Santucci Priore, P.L.