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Tag Archives: trademark dispute

Alcohol companies battle over use of the trademarks HPNOTIQ and HOPNOTIC

Recently, the makers of HPNOTIQ liquor (“Petitioner”) successfully petitioned to cancel the trademark registration for HOPNOTIC beer.[1] 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.[2] 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.[3] The Respondent asserted that it obtained a trademark registration for HOPNOTIC in connection with beer, which has been in use since 2004.[4]

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.[5] 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.[6] Further, the TTAB found that Petitioner used its mark in United States Commerce prior to the Respondent.[7] 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.[8] Thus, the TTAB found that Petitioner’s HPNOTIQ mark was strong and entitled to broad  protection.[9] However, the TTAB refused to find that the HPNOTIQ mark was famous.[10]

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.
Shareholder

[1] Heaven Hill Distilleries, Inc. v. Cricket Hill Brewing Co., Inc., Cancellation No. 92060811 (TTAB Sept. 23, 2016).
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] Id.

Makers of FIREBALL Whiskey file trademark lawsuit against Jack Daniels

Recently, the makers of the FIREBALL brand whiskey filed a lawsuit against rival Jack Daniels for trademark infringement, unfair competition, and deceptive trade practices under Kentucky law.[1] The Complaint alleges that Plaintiff is the owner of trademark registrations of the term FIREBALL for use in connection with liquor related products.[2] The Complaint also alleges that Defendant used the term FIREBALL in advertisements using the Google ADWORDS system and purchased keywords of the term FIREBALL so that consumers searching for the FIREBALL brand whiskey would instead view advertisements for the Defendant’s TENNESSEE FIRE brand whiskey.[3] The Complaint further alleges that the parties are rivals in the whiskey industry and that the Defendant’s conduct was done willfully and in an effort to gain a competitive advantage.[4]

The unauthorized use of a competitor’s trademark in Google ADWORDS, as a search engine keyword, or in metatags has become a common practice among competitors. This type of unauthorized conduct can be actionable as trademark infringement and/or unfair competition.[5] In addition, statements made about a competitor online may be actionable if they rise to the level of a misrepresentation or create a reasonable likelihood that consumers may be confused as to the source, identity or sponsorship of the advertiser’s product.

Search Engine Optimization (“SEO”) has become a big part of business advertising and marketing campaigns. As a result, a business should always be looking out for competitors attempting to use its trademark in an unauthorized manner or to effect SEO. Please contact our office if you have any questions regarding the information in this article.

Daniel Devine, Esq.
Santucci Priore, P.L.
Shareholder

[1] See, Sazerac Brands, LLC, et. al. v. Jack Daniel’s Properties, Inc., Case No. 3-15-cv-849-DJH (W.D. Ken. November 23, 2015).
[2] Id.
[3] Id.
[4] Id.
[5] See, N. American Medical Corp. v. Axiom Worldwide, Inc., 522 F.3d 1211, 1221-1224 & n.10 (11th Cir. 2008).

Opposition to trademark registration of MARATHON MONDAY dismissed

Recently, the United States Patent and Trademark Office’s Trademark Trial and Appeal Board (“TTAB”) denied an opposition, by Boston Athletic Association (“BAA”), to the registration of the mark MARATHON MONDAY by Velocity, LLC (“Velocity”).[1] Velocity filed an application for the mark MARATHON MONDAY for use in connection with “clothing, namely tops, bottoms, headwear, sweatshirts, sweat pants, jackets, pullovers, caps, hats, socks.”[2] Velocity’s application was opposed by BAA, which is the entity responsible for organizing the annual Boston Marathon. BAA objected to registration of the mark MARATHON MONDAY because it created a false association with BAA.[3] BAA owns two trademark registrations for the mark BOSTON MARATHON for use in connection with entertainment services and for a variety of goods, such as t-shirts and hats.[4] Although BAA does not own a trademark registration for the mark MARATHON MONDAY, it argued that it has used both BOSTON MARATHON and MARATHON MONDAY in association with the Boston Marathon race, which is annually held on the third Monday in April.[5]

The TTAB held that MARATHON MONDAY does not uniquely refer to BAA.[6] The TTAB found that the term BOSTON MARATHON is perceived as the persona or identity of BAA, even though the evidence on record did not show that it is publically well-known that the Boston Marathon is organized by BAA.[7] However, the TTAB found that the mark MARATHON MONDAY did not falsely suggest a connection with BAA’s persona of BOSTON MARATHON, because even though the public knows that the Boston Marathon is annually held on the third Monday in April, it is not widely known that the tern MARATHON MONDAY is a recognized name or identity of the entity that organizes the marathon.[8] Thus, it could not be shown that MARATHON MONDAY is recognized as the name, nickname, identity or persona of BAA.[9] The TTAB also noted that other entities use the term MARATHON MONDAY to refer to other marathons or races or activities related to the Monday after such race.[10] As a result, Velocity’s trademark application for MARATHON MONDAY will likely to mature into a trademark registration, absent any appellate proceedings.

The process for applying for a trademark is complicated and involves several deadlines. As this case shows there are methods available to oppose the registration of a trademark. Our firm has significant experience in applying for and opposing trademark applications. If you have any questions regarding the content of this article or on effective ways to police intellectual property please contact our office.

Daniel Devine, Esq.
Santucci Priore, P.L.
Shareholder

[1] Boston Athletic Association v. Velocity, LLC, Opposition No. 91202562 (TTAB Oct. 26, 2015).
[2] Id.
[3] Id.
[4] Id.
[5] Id.
[6] Id.
[7] Id.
[8] Id.
[9] Id.
[10] Id.