The TTAB Reverses A Refusal Relying On The Something More Standard

Earlier this summer the Board relied on the “Something More” standard in reversing a refusal to register a trademark for beer. See In re Iron Hill Brewery, LLC, Serial No. 86682532 (July 28, 2017). The Applicant was seeking to register the mark CANNIBAL in standard characters for beer. There was a registered mark CANNIBAL for restaurant services and the Examining Attorney held that there was a likelihood of confusion between the two CANNIBAL marks. See our blog post entitled, The Origin Of The Something More Standard In Trademark Law, for a review of prior cases applying this standard. The application of this standard can be traced back to In re Coors Brewing Co. 343 F.3d 1340 (Fed. cir. 2003) and Jacobs v. Int’l Multifoods Corp., 668 F.ed 1234 (CCPA 1982). Cases following have expanded the reach of this standard in likelihood of confusion cases.

In this case, the Examining Attorney refused Applicant’s CANNIBAL mark for beer on 2(d) grounds and made this refusal final. The Applicant appealed to the Board after the request for reconsideration was denied. The Board started its likelihood of confusion analysis with evaluating the goods and services. Since the marks are identical, the Examining Attorney was required to show something more than the same mark was used to brand restaurant services and food or beverage products. In other words, the Examiner could not simply argue that since restaurants occasionally sell their own beer, beer and restaurant services are related. There is no general rule in trademark law that certain goods and services are related.

In prior cases, the Board found the “something more” standard satisfied, when evidence has been shown that registrant’s mark is very unique and strong or if there was evidence that Applicant’s restaurant specialized in Registrant’s type of food products. See In re Coors Brewing Co., where the Court held that it was not sufficient to find a relatedness of the goods and services based only on the fact that a tiny percentage of all restaurants use the same mark for both its restaurant services and to brand beer. The Examining Attorney in this case, produced evidence of websites from restaurants and argued that these restaurants also sold beer, but did not show evidence that the same trademark was used to brand both the restaurant services and the beer.

The Board pointed out that the Examining Attorney relied on five different third-party websites to attempt to demonstrate that the goods and services often originate from the same source. However, as mentioned above the evidence failed to show one mark being used for both beer and restaurant services. The Examiner’s website evidence didn’t show anything more than the name of the restaurant and that the establishment also brewed beer or served beer, but not under the restaurant’s name. The Board  was looking for the “something more” evidence in the record to determine that the goods and services were “sufficiently related”.

In order to find that the Registrant’s mark is “very unique and strong”, there must be evidence submitted into the record demonstrating commercial strength. Simply pointing to the fact that the trademark falls under the arbitrary mark category is not sufficient. Although the Examiner did submit 13 third-party use-based registrations and excerpts from their websites showing the use of the same mark for beer and restaurant services, this was not enough. The Applicant placed evidence in the record that showed that there are over a million restaurants in the U.S., but only 4,000 licensed brewers in the U.S. The Board held that showing 13 parties using the same brand for beer and restaurant services is a tiny percentage similar to the Coors case. The “something more” standard was not met here. The Board reversed the refusal and allowed the application for beer under the CANNIBAL mark to proceed. If you have questions, regarding this standard or other trademark questions, please feel free to contact our office for a courtesy consultation.