We like to take a look at interesting 2(d) refusals. They present interesting fact patterns, and they can help us show you how to make the best use of some of TM TKO’s tools.

Today’s Refusal

Today, we are looking at an application filed by Anheuser-Busch for the mark UNQUESTIONABLY GOOD for hard seltzer. It ran into a 2(d) refusal based on a registration for the mark UNQUESTIONABLY ORIGINAL, disclaiming “original,” for beer and beer garden services, owned by District 9 Brewing Company.

The Prosecution History thus far

A-B got an initial refusal in September, filed one round of arguments in March, and got a final refusal on April 7, 2021.

Differences Between the Marks?

A-B argued at length that UNQUESTIONABLY is laudatory, and supports the second words in each mark — and that GOOD and ORIGINAL are quite different. Even though our knockout algorithms emphasize UNQUESTIONABLY quite a lot as a part of the mark, and score UNQUESTIONABLY ORIGINAL as one of the top couple of results, I’m actually very sympathetic to this argument. Because of the differences between the marks, I agree with A-B the consumers wouldn’t confuse the two marks.

The UNQUESTIONABLY ORIGINAL mark is a slogan used by the registrant — a secondary mark paired with its D9 Brewing house mark.

A-B’s real-world use of the mark is also secondary, although not as clear-cut. A-B is using the mark in plain text on their website, e.g. “…, and is filtered five times for an unquestionably good taste.” That’s not even a trademark use, but might cause problems under 2(e)(1) or “failure to function” grounds during specimen examination. The company is also using it with a video series called a “Flavor Journal,” where the “Thirsty Bartenders” vloggers and a guest come up with “Unquestionably Good” food/beverage pairings using Bud Light Seltzer. That’s probably not going to cut it as a specimen of use with the USPTO either.

Nevertheless, it seems to support the idea that neither mark is “primary” on the minds of customers — those are the BUD LIGHT and D9 BREWING marks, or possibly a secondary, beer-specific mark on the D9 side. Alas, the USPTO doesn’t consider this — perhaps examination outcomes would be more consistent and more closely matched with reality if the Office could consider the real-world centrality (or lack thereof) of a mark in its commercial context in the context of considering 2(d) refusals. It makes sense why it doesn’t — a registrant could claim secondary use in prosecution and later expand it — but it still seems like something can be done to improve results.

We took a quick look, via ThorCheck’s Term Coexistence search, at otherwise similar marks that differ in this way — one has ORIGINAL, the other GOOD. There were slim pickings in the beverage classes — SINFULLY GOOD SPIRITS! vs. ORIGINAL SIN was the best we found. Term coexistence examples like this are always a bit chance-based, since two companies have to happen to pick names that differ in exactly this way.

Differences Between the Goods?

A-B is pushing uphill here — the Examining Attorney emphasized evidence that various products use the same mark for both beer and hard seltzer, including A-B’s own Bud Light brand, Michelob Ultra, Corona, and more. Perhaps because of this, A-B did not contest the relationships of the goods in the first Office Action Response. Perhaps, also, A-B did not wish to go on record arguing that two products are not closely related — it wouldn’t want to have that quoted back to it during a later enforcement effort.

We used ThorCheck to do a comparison between “beer” and “hard seltzer.” While there are certainly examples of the same companies providing both under the same or similar marks (more on that shortly), there are also a lot of examples of similar marks co-existing.

Owner	Goods	Mark	Mark	Goods	Owner
Summit Brewing Company	032 beer	SUMMIT BREWING COMPANY Disclaims: “BREWING COMPANY” Reg: 3061467 Serial: 76383607 Registered And Renewed Reg: 02/28/2006 Filed: 03/13/2002	SUMMIT SELTZER Disclaims: “SELTZER” Reg: 6206853 Serial: 88576621 Registered Reg: 11/24/2020 Filed: 08/13/2019	033 hard seltzer	Summit Seltzer Company LLC
DC BRAU BREWING LLC	032 beer	THE CITIZEN Reg: 4169260 Serial: 85374727 Section 8 & 15 – Accepted And Acknowledged Reg: 07/03/2012 Filed: 07/19/2011	CITIZEN SELTZER Disclaims: “SELTZER” Reg: 6171247 Serial: 88730364 Registered Reg: 10/06/2020 Filed: 12/17/2019	033 hard seltzer	Citizen Cider, LLC
Mad Scientists Brewing Partners LLC	032 beer	EXPRESS Reg: 3990176 Serial: 85209319 Section 8 & 15 – Accepted And Acknowledged Reg: 07/05/2011 Filed: 01/03/2011	TROPICAL EXPRESS Disclaims: “TROPICAL” Reg: 6310176 Serial: 88753462 Registered Reg: 03/30/2021 Filed: 01/09/2020	033 hard seltzer	Draught Works, LLC
Vino.com, LLC	032 ale	NECTAR ALES Disclaims: “ALES” Reg: 4295409 Serial: 85664805 Section 8 & 15 – Accepted And Acknowledged Reg: 02/26/2013 Filed: 06/28/2012	NECTAR Reg: 6218762 Serial: 88785906 Supplemental Reg. Registered Reg: 12/08/2020 Filed: 02/05/2020	033 hard seltzer	Divinely Nectar, Inc.
Belliveau, Justin R.	032 beer	GRID CITY BEER WORKS Disclaims: “BEER WORKS” Reg: 6257431 Serial: 87300104 Registered Reg: 01/26/2021 Filed: 01/13/2017	GRID CITY BUBBLE WORKS Disclaims: “WORKS” Reg: 6171375 Serial: 88785058 Registered Reg: 10/06/2020 Filed: 02/04/2020	033 hard seltzer	Grid City Beer Works
Caldera Brewing Company	032 ale	ASHLAND AMBER Disclaims: “AMBER” Reg: 3844351 Serial: 77897387 2(f) claim Registered And Renewed Reg: 09/07/2010 Filed: 12/18/2009	ASHLAND HARD SELTZER Disclaims: “HARD SELTZER” Reg: 6263853 Serial: 88642477 Registered Reg: 02/09/2021 Filed: 10/04/2019	033 hard seltzer	Ashland Beverages, LLC
East Nashville Beer Works, LLC	032 beer	EAST NASHVILLE BEER WORKS Disclaims: “BEER WORKS” Reg: 5070316 Serial: 86764667 Supplemental Reg. Registered Reg: 10/25/2016 Filed: 09/22/2015	NASHVILLE SELTZER Disclaims: “SELTZER” Reg: 5958107 Serial: 88573835 Supplemental Reg. Registered Reg: 01/07/2020 Filed: 08/09/2019	033 hard seltzer	Taylor, Kent C.
Sideways Brewing Company, LLC	032 beer	SIDEWAYS FARM & BREWERY Disclaims: “FARM & BREWERY” Reg: 5885805 Serial: 87385887 Registered Reg: 10/15/2019 Filed: 03/26/2017	#GET SIDEWAYS Reg: 6135704 Serial: 88787476 Registered Reg: 08/25/2020 Filed: 02/06/2020	033 hard seltzer	Islamorada Distilling LLC
The Denver Beer Company, LLC	032 beer	MAUI EXPRESS Reg: 5260511 Serial: 87290760 Registered Reg: 08/08/2017 Filed: 01/05/2017	MAUI HARD SELTZER Disclaims: “HARD SELTZER” Reg: 6044346 Serial: 88681927 Supplemental Reg. Registered Reg: 04/28/2020 Filed: 11/06/2019	033 hard seltzer	Kahu ‘Ohani Inc.

We also took a quick look at overlap — where the same company used the same mark for both beer and hard seltzer, just to assess the strength of the argument. Large brewers make up a lot of the results – A-B has several marks (BUD LIGHT, NATURAL LIGHT, ALOHA BEACHES), ; several smaller brewers also have registrations for both, like Great Divide (WHITEWATER), Craft Brew Alliance (OMISSION), Spruce Street (TWO ROBBERS), Detroit Rivertown (ATWATER), Montauk Bewing (MOUNTAUK). Interestingly, Kahu ‘Ohnana, mentioned above, owns registrations for MAUI BREWING CO. and MAUI HARD SELTZER that co-exist with the MAUI EXPRESS registration noted above.

We also took a look at prosecution histories to attempt to find filings for “hard seltzer” that overcame prior registrations for “beer.” Here is the search to do so, for TM TKO users. This yields a few good examples, including the aforementioned ASHLAND HARD SELTZER vs. ASHLAND AMBER (arguments, including statistically-driven arguments that most beer makers do not make hard seltzer and vice versa*). Also, the search finds some really interesting non-refusals: an A-B registration for SOCIAL CLUB did not receive a citation to some prior registrations for SOCIAL for goods including beer, notwithstanding a Letter of Protest seeking as much. SPYK’D (for hard seltzer) “ran into” a similar non-issued Office Action vs. SPIKE (for beer and booze) — a Letter of Protest was accepted but didn’t generate refusal.

* ThorCheck helps with this type of argument — its charts show that there are over 18,000 active, use-based registrations for beer vs. under 200 for hard seltzer, and only ~10 show overlap in production. Unsurprisingly, the Ashland arguments focused on the percentage of beer producers vs. the percentage of cider producers!