Frank Knizner

PTO Doesn’t Buy That THC Stands for Tea Honey Care

February 3, 2016 by Frank Knizner 1 Comment

The Trademark Trial and Appeal Board (TTAB) of the United States Patent and Trademark Office (PTO) recently affirmed the refusal to register the mark THCTEA, holding that it is “deceptively misdescriptive” when used in connection with tea-based beverages. The Applicant—Christopher Hinton—is, according to marijuanafreepress.com, the acting editor for the Marijuana Free Press.

THCTEA’s journey through the trademark system has been an uphill battle.The mark was first refused by the PTO back in September 2012, for being “merely descriptive” and for “plainly indicat[ing] that Applicant’s…goods include…THC.” One pre-requisite for trademark registration is lawful use of the mark in commerce. The problem in this case was that goods containing THC (tetrahydrocannabinol, the active ingredient in marijuana) are illegal under federal law, so it would be impossible for the Applicant to show lawful use of the mark if the product did indeed contain THC.

Here is where things become interesting. The Applicant responded by clarifying that his beverages do not actually contain THC. Accordingly, the PTO rescinded its refusal based on unlawful use, but raised a new ground for refusal, based on the Applicant’s own admission: Using THCTEA on a beverage that contains no THC is deceptively misdescriptive.

Deceptively misdescriptive marks have two key features: they misdescribe a significant characteristic of the goods associated with the mark (the “misdescriptive” part); and they are likely to cause reasonable consumers to purchase the goods, believing that the goods contain the misdescribed trait (the “deceptive” part). For example, LOVEE LAMB was held to be deceptively misdescriptive for seat covers that were not actually made of lamb’s wool. On the other hand, WOOLRICH was held not to be deceptively misdescriptive for clothes made out of cotton. In close cases, good lawyering can make a big difference.

After the PTO issued a final refusal, the Applicant appealed to the TTAB. On appeal, the Applicant re-alleged his previous arguments: “The characteristics of Applicant’s goods are such that they are suggestive” and “the product does not contain the controlled substance THC…THC is an abbreviation for ‘The Honey Care Tea.’” The TTAB was unpersuaded, and affirmed the PTO’s refusal.

Regarding the misdescription, the TTAB held that “it is plausible that tea-based beverages could contain THC” (albeit illegally) and that “THCTEA, when used for tea-based beverages, is merely descriptive for tea containing THC as a significant ingredient.” Apparently, recipes for THC-containing tea from such websites as grasscity.com, thestonercookbook.com, and 420magazine.com are sufficient to persuade the government that THC-containing tea is plausible. We were unable to find a recipe for THC-containing tea on marijuanafreepress.com.

Regarding deception, the TTAB agreed with the PTO that consumers would be likely to buy THCTEA beverages believing that they contain THC. The TTAB reasoned that, in light of the liberalization of marijuana policy in the United States, “a reasonably prudent consumer would be likely to believe that Applicant’s…beverages contain THC.”

In what probably comes as no surprise, neither the PTO nor the TTAB bought the Applicant’s argument that “THC” stands for “Tea Honey Care,” or that “THCTEA” stands for “The Honey Care Tea.” Apparently, the Applicant’s “example advertisements” (below) were unpersuasive:

Additionally, the specimen (below) that the Applicant submitted to the PTO probably did not help his “Tea Honey Care” argument:

THCTEA illustrates an interesting Catch-22 for descriptive marks that reference controlled substances. If you do put the controlled substance in your goods, you can’t claim lawful use of your mark in commerce. If you don’t put the controlled substance in your goods, your mark may be deceptively misdescriptive.

Don’t Be Fooled by Trademark Spam!

January 27, 2016 by Frank Knizner Leave a Comment

About five to ten times per year, we get a call from a client asking why the USPTO sent them an invoice for hundreds of dollars for their trademark applications. After a few minutes, it becomes clear what they are talking about—trademark spam.

Trademark spam? Trademark spam is an unavoidable and unfortunate result of the information an applicant provides the USPTO in an application, which is publically available. This includes, among other information, the name, address, and email of the party applying for the mark. As a result, spammers have all of the information they need to send fake trademark solicitations that appear to be legitimate. The USPTO is fully aware of trademark spam, but despite its efforts, applicants and registrants continue to be victimized by spammers.

What does trademark spam look like? Trademark spam generally comes in the form of official-looking correspondence—letters or email—that either “requires” the recipient to pay certain fees, or strongly “recommends” that the recipient use a particular company to facilitate the trademark registration process. In the first instance, some fees are completely fabricated, while other fees purport to be real fees, but are grossly inflated by the spammer. Here is a list of the actual USPTO trademark fees and their correct amounts. In the second instance, spammers offer their services to facilitate the registration process, something only licensed attorneys are allowed to do. To give you a better idea of what trademark spam looks like, here are a couple examples of trademark spam, one from the “U.S. Trademark Compliance Office” and another from the “Patent & Trademark Office.”

While these may appear to be official USPTO documents, both are actually spam.

How can I distinguish trademark spam from legitimate, USPTO correspondence? Here is a quick, easy, and effective way, recommended by the USPTO, to tell trademark spam from legitimate correspondence: If the correspondence is from (1) the “United States Patent and Trademark Office” in Alexandria, VA; or (2) If by e-mail, specifically from the domain “@uspto.gov,” then it is official, USPTO correspondence. Also, if you hired an attorney to file your application, all legitimate mail should go to them. Remember, if you ever have any doubt as to the legitimacy of any correspondence you receive regarding your trademark application or registration, you should check with the USPTO, or an experienced trademark attorney.

What should I do if I get spammed? If you receive any communications that you believe may be spam, or believe you have been misled by trademark spam in the past, the USPTO encourages you to email a copy of the correspondence and the envelope it came in to tmfeedback@uspto.gov, so that it may assess whether to add the sender to the trademark spam list. While the USPTO will not reimburse you for any money you paid to a spammer, notifying the USPTO may help prevent others from being misled in the future.

Another Judge Chimes in on Tito’s

January 15, 2016 by Frank Knizner 2 Comments

On Tuesday, January 12, 2016, a federal district court in New York granted in part and denied in part Tito’s “Handmade” Vodka’s motion to dismiss several claims brought against it by a class of consumers in the case Singleton v. Fifth Generation, Inc.

Judge Brenda K. Sannes of the U.S. District Court for the Northern District of New York issued the opinion, holding that federal approval of Tito’s labels does not provide Tito’s with a “safe harbor” from litigation, and that Tito’s use of the term “handmade” and the phrase “crafted in an old fashioned pot still” “could plausibly mislead a reasonable consumer to believe that [Tito’s] vodka is made in a hands-on, small-batch process.”

Judge Sannes’ decision to allow Singleton to move forward marks yet another instance of a federal judge finding merit in false labeling claims against Tito’s. Singleton joins Hoffman v. Fifth Generation, Inc. and Cabrera v. Fifth Generation, Inc. (both federal cases in California) as well as Pye v. Fifth Generation, Inc. (a federal case in Florida) and Terlesky v. Fifth Generation, Inc. (a federal case in Ohio), which have all survived motions by Tito’s to cut the cases short.

Singleton is more akin to the two California cases, as the judges in all three refused to apply the safe harbor and held that the term “handmade” is not puffery, and therefore actionable. The judges in Pye and Terlesky, on the other hand, both applied the safe harbor, but held that consumers did state a valid claim for breach of warranty based on Tito’s statement that its vodka is “crafted in an old-fashioned pot still.” Judge Sannes, however, dismissed the breach of warranty claims in Singleton.

With at least ten distinct cases brought by classes of consumers against Tito’s over the past year and a half, it can be difficult to keep track of how each side is faring. What is clear is that Tito’s has won two cases—Aliano v. Fifth Generation, Inc. in Illinois, and Wilson v. Fifth Generation, Inc. in Alabama—as both cases have been dismissed and the time to appeal has expired. It also seems relatively safe to say that Tito’s has the high ground in Pye and Terlesky, as the false labeling claims have been dismissed, and only the breach of warranty claims remain. What is less clear, however, is how Tito’s will fare in Singleton, Cabrera, and Hofmann, all of which are all moving forward on the plaintiffs’ mightiest claim—that they were deceived by Tito’s use of the term “handmade.”

Because Singleton survived (in part) Tito’s motion to dismiss, Tito’s will have to answer the consumer-plaintiffs’ claims. Tito’s will, however, have another chance to dismantle the plaintiffs’ case before it goes to trial, by filing a motion for summary judgment. Tito’s tried this in both Cabrera and Hofmann, but was unsuccessful. As for the three other cases against Tito’s (not listed here), the relevant courts have yet to rule on Tito’s motions to dismiss.

Jim Beam Takes Aim at Brown-Forman’s Claim to “Double Oaked”

October 31, 2015 by Frank Knizner 2 Comments

On October 19, 2015, Jim Beam filed a Notice of Opposition at the United State Patent and Trademark Office (PTO) Trademark Trial and Appeal Board against Brown-Forman’s pending trademark application for WOODFORD RESERVE DOUBLE OAKED in connection with “Alcoholic beverages except beers.” In the Notice, Beam alleges that the phrase “Double Oaked” is either generic or merely descriptive and, accordingly, that the WOODFORD RESERVE DOUBLE OAKED mark should not be allowed to register without a disclaimer of that phrase.

Notice: a longer version of this article first appeared in Modern Distillery Age.

Forman applied for registration of WOODFORD RESERVE DOUBLE OAKED back in November 2014. The examining attorney reviewing the application required Forman to disclaim the word “Reserve,” but not the phrase “Double Oaked.” Forman complied, and in late April, the PTO published the application for opposition by third parties. Enter Beam, filing an opposition, arguing that “[Beam] and third parties will be damaged by the registration of [the] [m]ark without a disclaimer of “Double Oaked.”

Specifically, Beam alleges that “Double Oaked” is a generic term “for the process of aging alcoholic beverages in a second oak barrel.” The phrase, Beam continues, is “incapable of distinguishing [Forman]’s alcoholic beverages from those produced and sold by others because its primary significance is to name a type of product rather than indicate the product’s source or origin.” Alternatively, Beam alleges that “Double Oaked” is merely descriptive, because it “describe[s] [Forman]’s process of aging its product … in a second oak barrel.”

The PTO typically refuses registration for marks that contain a generic or merely descriptive phrase, unless an applicant agrees to disclaim any right to the phrase. As defined by the PTO, “A mark is considered merely descriptive if it describes an ingredient, quality, characteristic, function, feature, purpose, or use of the specified goods or services” (e.g., “creamy” to describe a spirit). Generic terms are terms that consumers primarily understand as the common name for a class or type of good or service (e.g., “whiskey” to classify a spirit).

In this case, Beam argues that “Double Oaked” is generic because it refers to a type of aging process (i.e., aging alcoholic beverages in a second oak barrel), which it claims is common in the industry. Beam says that registration of Forman’s mark without a disclaimer of the “Double Oaked” phrase would harm producers, presumably because they have an interest in using the phrase to designate the process used to produce their products.

Beam also argues that “Double Oaked” is merely descriptive, because it refers to the characteristics and aging process of Forman’s bourbon. As evidence, Beam points to the dictionary definitions of “double” and “oaked” (both adjectives), as well as Forman’s own allegedly descriptive use of the term on its labels.

Beam also points to the PTO’s treatment of two similar trademarks as evidence that Forman should have to disclaim the phrase “Double Oaked.” Beam notes that “SINGLE OAK” was allowed registration, but only on the supplemental register, along with other merely descriptive marks. Beam also notes that “DOUBLE OAKED” for wine was previously rejected by the PTO as being merely descriptive.

Forman’s answer to Beam’s opposition is due on November 28, 2015.

Safe Harbor Defense Works, Once In a Blue Moon

October 27, 2015 by Frank Knizner Leave a Comment

Last week, a federal judge in California tentatively dismissed a class action suit against MillerCoors. Yesterday, the judge made that dismissal final.

The case, Parent v. MillerCoors LLC, began in March when plaintiffs—a class of Blue Moon purchasers—alleged that Miller misled consumers into believing that Blue Moon is a craft beer. Plaintiffs argued that Miller’s reference to “Blue Moon Brewing Co.” on the beer’s label and use of the phrase “artfully crafted” in the beer’s advertising led consumers to purchase Blue Moon believing it was craft. Miller defended that the practice of listing its assumed name, “Blue Moon Brewing Co.,” on its label instead of its full business name is specifically permitted by state and federal law, and that consumers could not reasonably rely on the phrase “artfully crafted” as a guarantee that Blue Moon is craft beer.

Judge Gonzalo P. Curiel of the United States District Court for the Southern District of California tentatively agreed with Miller on both points last week, pending a hearing on the matter last Friday. Apparently, plaintiffs’ oral argument at the hearing failed to change Judge Curiel’s mind, as he issued an order yesterday dismissing the case.

Regarding TTB’s approval, Judge Curiel noted that TTB regulations “specifically permit a beer bottle and outer packaging to show, by label or otherwise, the name or trade name of the brewer.” Because California allows the name of a manufacturer to include a duly filed fictitious business name, Judge Curiel held that Miller’s use of “Blue Moon Brewing Co.”—a name properly registered as a fictitious business name in California—is specifically authorized by federal and state regulations. Accordingly, TTB approval provided Miller with a safe harbor.

Regarding the issue of whether Blue Moon fits within the definition of “craft beer” (a point of contention between the parties), Judge Curiel sidestepped the issue, stating, “… even assuming that there is such a definition, Plaintiff cannot rely on it for their argument” since plaintiffs are not pointing to Miller’s use of the phrase “craft beer,” but instead to their use of the different phrase “artfully crafted.” Regarding Miller’s “artfully crafted” claim, Judge Curiel held that the phrase is mere puffery, as it is not capable of being reasonably interpreted as a statement of objective fact. Unlike objective statements of fact, puffery refers to generalized, vague terms that cannot serve as the basis of a lawsuit.

Plaintiffs did secure one small victory, mentioned in the final order but absent from the tentative ruling: Judge Curiel found that their complaint met the heightened pleading requirements required of complaints that allege fraud. Unfortunately for the plaintiffs, this point is moot, as their allegations (well-pled though they may be) still fail to state a valid claim for relief.

Importantly, Judge Curiel distinguishes TTB approval in this case from TTB approval in Hofmann v. Fifth Generation, Inc., a case involving Tito’s “Handmade” Vodka. In Hofmann, the court found that there is no federal regulation that specifically authorizes the use of “handmade” on the label, and so the safe harbor did not apply. Regarding Blue Moon, Judge Curiel says, “Here, the conduct challenged by plaintiff is the same as the conduct authorized by law: Miller’s listing of ‘Blue Moon Brewing Co.,’ rather than MillerCoors, as the manufacturer on Blue Moon’s bottle and packaging.” Judge Curiel’s opinion suggests that in cases where TTB has duly applied specific regulations, courts will defer to TTB approval and will apply the safe harbor. On the contrary, where TTB does not have specific regulations in place, courts will be skeptical of TTB approval and may require the defendants to show that TTB actually reviewed and approved the statements at issue. The forthcoming decision in Hofmann should shed more light on this particular issue.

Parent was dismissed without prejudice, which means that plaintiffs have 30 days to submit an amended complaint against Miller. The judge directed the plaintiffs not allege claims regarding Miller’s use of “Blue Moon Brewing Co.” or the “artfully crafted” trademark.

Blue Moon Takes Refuge in Safe Harbor. Will Tito’s Be Able to Dock Alongside?

October 23, 2015 by Frank Knizner Leave a Comment

A federal judge in California tentatively dismissed a class action suit against MillerCoors on Wednesday. Plaintiffs in the suit—a class of Blue Moon purchasers—alleged that MillerCoors misled consumers into believing that Blue Moon is a “craft beer” by stating on the label that it is brewed by the “Blue Moon Brewing Co.” and by advertising it as “Artfully Crafted.” This ruling could become final as soon as today’s hearing.

Judge Gonzalo P. Curiel of the U.S. District Court for the Southern District of California framed the issue narrowly: The question is whether MillerCoors is “specifically authorized” to list “Blue Moon Brewing Co.” as the manufacturer of Blue Moon on the beer’s labels. Judge Curiel answered that question in the affirmative, finding that Alcohol and Tobacco Tax and Trade Bureau (“TTB”) regulations “specifically permit a beer bottle and outer packaging to show, by label or otherwise, the name or trade name of the brewer.” Noting that California allows the “true name of a manufacturer” to include a “duly filed fictitious business name,” Judge Curiel held that MillerCoors’ use of “Blue Moon Brewing Co.”—a name properly registered as a fictitious business name in California—is specifically authorized by federal and state regulations. Accordingly, TTB’s approval of the Blue Moon label provides MillerCoors with a “safe harbor” from this type of litigation.

Importantly, Judge Curiel took the opportunity to distinguish Blue Moon’s claims from the “handmade” and “handcrafted” claims at issue in the cases involving Tito’s “Handmade” Vodka and Maker’s Mark. Judge Curiel noted that the conclusion that the safe harbor applies “is reinforced when the facts in the instant case are compared to those in other cases where courts found that the manufacturer’s labeling practices were not authorized by law.” He continues:

In Hofmann v. Fifth Generation, Inc. [involving Tito’s “Handmade” Vodka] the district court found the safe harbor doctrine did not apply where a vodka product was labeled as “[hand]made.” The [Hofmann] court found that no TTB regulation specifically authorized the use of “[hand]made” on the vodka’s label, and that it was “not clear that such representations are necessarily within the TTB’s regulatory purview.” [The court in Nowrouzi v. Maker’s Mark Distillery, Inc. reached the same conclusion.] By contrast, here, federal regulations specifically address which brewer name is permitted to appear on a beer’s label bottle and case or shipping containers.

Judge Curiel’s decision suggests that in cases where TTB has duly applied specific regulations, courts will defer to TTB pre-approval and will apply the safe harbor. On the contrary, where TTB does not have specific regulations in place, courts will be skeptical of TTB pre-approval and may require the defendants to show that TTB actually reviewed and approved the statements at issue. The forthcoming decision in Hofmann should shed more light on this particular issue.

Judge Curiel also found that the term “Artfully Crafted” is mere puffery, and thus non-actionable. Plaintiffs are allowed to submit an amended complaint, so long as it is not based on MillerCoors’ use of the terms “Blue Moon Brewing Co.” or “Artfully Crafted.”

* Not really Judge Curiel, in photo above.

Frank Knizner

PTO Doesn’t Buy That THC Stands for Tea Honey Care

Don’t Be Fooled by Trademark Spam!

Another Judge Chimes in on Tito’s

Jim Beam Takes Aim at Brown-Forman’s Claim to “Double Oaked”

Safe Harbor Defense Works, Once In a Blue Moon

Blue Moon Takes Refuge in Safe Harbor. Will Tito’s Be Able to Dock Alongside?

Federal District Court Declares Federal Ban on At-Home Distilling Unconstitutional

Foreign Producers Should Get Ready for Big CBMA Tax Benefits

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