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Brooklyn Brewery bid to sink ‘Brooklyn Brew Shop’ trademark goes flat

  • Brewery failed to point out ‘inevitable confusion’ from home-brewing mark
  • Brewery did not show present trademark was unprotectable
  • Court remanded for brand new findings on trademark software

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(Reuters) – A U.S. appeals courtroom on Wednesday rejected Brooklyn Brewery Corp’s bid to cancel a home-brewing equipment maker’s trademark that the craft brewer stated might confuse shoppers.

The U.S. Court of Appeals for the Federal Circuit let stand Brooklyn Brew Shop LLC’s federal trademark for beer-making kits beneath its identify and allowed a associated software to proceed regardless of the brewery’s allegations, however advised the U.S. Patent and Trademark Office to rethink the applying on different grounds.

BBS co-founder Stephen Valand stated he was “very pleased” with the choice. Its legal professional Sean Marshall of Hoffman Marshall Strong stated the ruling was a “well-deserved victory” for his shopper.

The brewery and its legal professional John Dabney of Snell & Wilmer did not instantly reply to a request for remark.

Brooklyn Brewery has been promoting craft beer beneath its identify for over 30 years all through the U.S. Brooklyn Brew Shop, based in 2009, sells home-brewing kits and equipment.

BBS registered a federal trademark in its identify for beer-making kits in 2011, and utilized to register a trademark for a stylized model of the identify in 2014 for beer-making kits and “sanitizing preparations” for them.

Brooklyn Brewery petitioned the U.S. Patent and Trademark Office in 2015 to cancel the 2011 trademark and reject the brand new software, arguing they’d trigger confusion and weren’t eligible for trademark safety as a result of they merely described BBS’ items.

The Trademark Trial and Appeal Board ruled for BBS final yr, and the brewery appealed.

U.S. Circuit Judge Timothy Dyk, joined by Circuit Judges Kathleen O’Malley and Todd Hughes, agreed with the TTAB in rejecting a lot of the brewery’s challenges.

Dyk stated the confusion claims have been time-barred until the brewery might show that BBS’ identify would trigger “inevitable confusion,” and that it did not meet this customary.

“Although the marks BROOKLYN BREWERY and BROOKLYN BREW SHOP are substantially similar, they are not nearly identical, nor are the goods,” Dyk stated. “It is not clear that any further analysis was required to reject an inevitable confusion claim.”

The courtroom additionally accepted the board’s discovering that the brewery’s proof wasn’t sturdy sufficient to point out inevitable confusion.

Dyk, just like the board, was additionally unconvinced by the brewery’s argument that BBS’ registered trademark wasn’t protectable as a result of it describes the products it sells.

“BREW SHOP does not conjure up an image of a ‘beer-making kit’ specifically,” Dyk stated, noting a “brew shop” might promote different items like brewing gear, testing units and elements.

The courtroom additionally discovered, in a problem it had by no means addressed, that the brewery did not have standing to enchantment its problem to BBS’ trademark software for cleansing preparations as a result of it did not make or promote competing items and would not be injured by the registration.

However, Dyk remanded for the board to find out whether or not the trademark for beer kits BBS utilized for in 2014 was protectable as a result of its identify had turn out to be distinctive in that subject. The board didn’t make any findings on the difficulty, which BBS had argued for in its software.

The case is Brooklyn Brewery Corp v. Brooklyn Brew Shop LLC, U.S. Court of Appeals for the Federal Circuit, No. 20-2277

For the brewery: John Dabney of Snell & Wilmer

For the brew store: Sean Marshall of Hoffman Marshall Strong

Blake Brittain

Blake Brittain reviews on mental property regulation, together with patents, logos, copyrights and commerce secrets and techniques. Reach him at [email protected]

Saidou Ceesay, a packager, waits for a keg to be filled with beer at the Brooklyn Brewery located in the Brooklyn borough of New York, United States, March 9, 2015. REUTERS/Sara Hylton