Posts Tagged ‘genericness’

TTAB Decision for Likelihood of Confusion Case – CHINOOKER’D IPA vs. CHINOOK

Sunday, January 10th, 2021

In a 2020 non-precedential opinion, the Trademark Trial and Appeal Board dismissed the §2(d) opposition against Lawson’s Finest Liquids, LLC’s (applicant), mark CHINOOKER’D IPA (IPA disclaimed) for beer, and found it unlikely to be confused with W. Clay Mackey’s (opposer), CHINOOK for “table wine and sparkling wine,” and his presumed common law rights in the same mark for beer.

Turning first to the opposer’s alleged common law rights to the mark CHINOOK for beer, the Board deemed the term generic, and therefore not protected by common law rights. At the core of any genericness case, is the issue of whether relevant members of the public use or understand the term in question in connection with the genus of the good being used under the mark. See Royal Crown, 127 USPQ2d at 1046. In this specific case, of CHINOOK for beer, the U.S. Department of Agriculture identified Chinook as a variety of hops, which is used in brewing beer. Moreover, the applicant’s expert witness testified a similar statement, and a slew of articles, unrelated to the opposer’s product,  supported the testimony. The Board found that the evidence clearly showed that “the relevant purchaser perceives Chinook as indicating a type of beer by referring to a key aspect of that product.” Ultimately, the Board concluded the opposer had no proprietary rights in the term, as it is generic when used in connection with beer, since the relevant public already perceived that the beer was brewed with Chinook hops.

The Board then turned its attention to the main issue: Whether or not the applicant’s mark CHINOOKER’D IPA, for beer, was likely to cause confusion with the opposer’s registered mark CHINOOK for “table wine and sparkling wine,” under §2(d) likelihood of confusion. It used the relevant Dupont Factors to come to its ultimate finding. Starting with the second Factor, the similarity or dissimilarity and nature of the goods in connection with the mark, the Board found the mark to be arbitrary for wine, as the opposer testified that the mark was meant to reference positive attributes of the Pacific Northwest. Therefore, the mark was considered inherently strong. Moving to the seventh Factor, the nature and extent of any actual confusion between the marks, the Board deemed this factor neutral as there was no reasonable opportunity for confusion to occur, which is what gives this factor any probative value. See Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007). In examining the third and fourth Factors, similarity of trade channels and impulsive vs. careful buyers, the Board found that beer and wine are most often offered in the same trade channels to some of the same types of consumers. Since the two marks are for goods offered in the same trade channels, and neither appeal to any specific type of consumer, it was to be presumed that the purchasers of either sides’ goods would include both impulsive and careful consumers. Finally, the Board looked at the first Factor, the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial impression. It found that since the applicant’s mark encompasses a portion of the opposer’s mark, the two are similar in sound and appearance. However, the connotations of the marks are very dissimilar. The opposer’s mark was meant to suggest the Pacific Northwest, while the applicant’s mark “engenders the commercial impression of getting snockered (i.e., drunk) on beer made from Chinook hops.” In this fashion, the two marks do not have the same connotation or give off the same commercial impression.

In conclusion, the Board found confusion unlikely under §2(d) for CHINOOKER’D IPA for beer and CHINOOK for table and sparkling wines. Its ultimate decision was that the dissimilarity in the marks’ connotation and commercial impression heavily outweighed the similarity in sound and appearance. “Each of the evidentiary factors set out in DuPont, may, from case to case, play a dominant role.” As stated in Kellogg Co. v. Pack’em Enters., Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed. Cir. 1991). The commercial impression, in this case, was particularly important as Chinook is generic for beer, and that ultimately made the applicant’s mark arbitrary, and inherently strong, as used in connection with the applicant’s goods.

Hot Topics


Practice Areas

Trade Secrets
Internet Law
The hiring of a lawyer is an important decision that should not be based solely upon advertisements. Before you decide, ask us to send you free written information about our qualifications and experience. This web site is designed for general information only. The information presented at this site should not be construed to be formal legal advice or the formation of a lawyer/client relationship.