The Board affirmed a refusal to register the proposed mark WEGE for beer on the ground that “none of the specimens show use of the mark … to indicate the source of beer.” Applicant’s specimens displayed WEGE only in the phrase “BREWED WITH WEGE OF HANOVER PRETZELS,” which use did not show an association of the mark with beer, but rather with the pretzels with which the beer is brewed. In re Nittany Corporation, Serial No. 88439889 (March 17, 2022) [not precedential] (Opinion by Judge Elizabeth A. Dunn).
The Board observed that “[w]hether the prospective purchaser of the goods will perceive a term on the goods as the trademark indicating the source of the goods will vary with the circumstances, including whether more than one term appears on the goods.” Multiple terms on a product may comprise a trade name and a trade mark, or a house mark and a product mark, or they may indicate the sources of different goods. See, for example, in In re Bose, 192 USPQ 213, 216 (CCPA 1976) (“[I]t is quite apparent that, in the specimens of record, only INTERAUDIO identifies the loudspeaker systems for high-fidelity music reproduction as originating with appellant and distinguishes such goods from those manufactured and sold by others. The mark SYNCOM merely relates to a speaker-testing computer.”).
In sum, the common use of multiple terms on the goods requires careful consideration of how those terms will be perceived by the prospective consumer of the goods. Demonstrating a technical trademark use by affixing a term to the goods in and of itself does not serve the essential specimen purpose of verifying use of the mark by showing that the mark “has been used as a trademark with respect to the goods named in the application.” Bose at 216.
Use of multiple marks on a product may be dubbed “co-branding,” but the question remains whether the use of applicant’s mark, as it appears on the specimen of use, serves as a source indicator for the goods listed in the application.
Here, the Board agreed with Examining Attorney Elaine Xu that the proposed mark WEGE does not function as a trademark for applicant’s beer. Consumers will see ALDUS BREWING COMPANY and the prominent “A” design, in close proximity to the words “pretzel wheat ale,” as the trademark for the beer. The phrase “BREWED WITH WEGE OF HANOVER PRETZELS” will be viewed as the source of the pretzels with which the beer is made.
To be clear, there is nothing inherent to the term WEGE which prevents it from functioning as a beer trademark. It is Applicant’s choice to directly associate WEGE with pretzels by only using WEGE as part of “BREWED WITH WEGE OF HANOVER PRETZELS” which prevents the association between WEGE and beer. See Bose, 192 USPQ at 216.
And so, the Board affirmed the refusal to register.
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TTABlogger comment: So when, say, “Bank of America” appears on a city’s rental bikes, that’s not a trademark use for bikes, right?
Text Copyright John L. Welch 2022.