Assessing a 2(d) Refusal – UNQUESTIONABLY GOOD for hard seltzer

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.

OwnerGoodsMarkMarkGoodsOwner
Summit Brewing Company032 beerSUMMIT 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 seltzerSummit Seltzer Company LLC
DC BRAU BREWING LLC032 beerTHE 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 seltzerCitizen Cider, LLC
Mad Scientists Brewing Partners LLC032 beerEXPRESS
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 seltzerDraught Works, LLC
Vino.com, LLC032 aleNECTAR 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 seltzerDivinely Nectar, Inc.
Belliveau, Justin R.032 beerGRID 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 seltzerGrid City Beer Works
Caldera Brewing Company032 aleASHLAND 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 seltzerAshland Beverages, LLC
East Nashville Beer Works, LLC032 beerEAST 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 seltzerTaylor, Kent C.
Sideways Brewing Company, LLC032 beerSIDEWAYS 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 seltzerIslamorada Distilling LLC
The Denver Beer Company, LLC032 beerMAUI 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 seltzerKahu ‘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!

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