By Cheryl Beise, J.D.
A petition to cancel a registration for the mark HOPNOTIC for "beer" has been sustained by the Trademark Trial and Appeal Board on the ground of likelihood of confusion with the petitioner’s previously registered mark HPNOTIQ for "liqueur." The petitioner’s HPNOTIQ mark was strong and entitled to a broad scope of protection, the parties’ products were related and likely to be purchased with little care, and the commercial impression created by the parties’ marks was similar (Heaven Hill Distilleries, Inc. v. Cricket Hill Brewing Co., Inc., September 23, 2016, Seeherman, E.).
In March 2014, respondent Cricket Hill Brewing Co., Inc., obtained registration of the mark HOPNOTIC, in standard characters, for "beer." The application was based on an alleged first use in 2004. Heaven Hill Distilleries, Inc., petitioned to cancel the HOPNOTIC mark, based on priority and likelihood of confusion with the petitioner’s mark HPNOTIQ, used since 2001 in connection with liqueur, and more recently on other goods.
The petitioner pleaded trademark registrations for the standard character marks HPNOTIQ for "liqueur," HPNOTIQ HARMONIE for "liqueurs," and one for HPNOTIQ SPARKLE for "liqueurs" and "alcoholic beverages except beers." Because the application for the HPNOTIQ registration was filed two years before the respondent’s dates of alleged first use, the petitioner established priority.
Beer and liqueur. The TTAB had little trouble in finding that the parties’ products were related. Beer and liqueur are sold to the same classes of consumers in some of the same channels of trade, including off-premises establishments such as liquor stores and on-premises establishments such as bars and restaurants. A 2013 research study conducted by the petitioner (in connection with other litigation) showed that beer amounted to one-third of the monthly alcohol consumption of HPNOTIQ liqueur drinkers. The petitioner also provided evidence that there was a trend in the alcoholic beverage industry for companies to expand their brands into other spirit categories. In addition, beer and liqueurs, although more expensive than beer, are relatively inexpensive items that could be purchased on impulse without much care. Thus, the similarity of goods, channels of trade, and purchase factors favored a finding of likelihood of confusion.
Strength of HPNOTIQ mark. The Board and the parties agreed that consumers would understand the petitioner’s mark HPNOTIQ to be the equivalent of the word "hypnotic." The respondent argued that "hypnotic" was the equivalent of "intoxicating," and based on that assertion, contended that both parties’ marks were highly suggestive of alcoholic beverages and not strong. The Board disagreed. "[I]t goes well beyond mental gymnastics to view ‘hypnotic’ for an alcoholic beverage as suggesting that the product will intoxicate," the Board said. Rather than suggestive, the Board found "hypnotic" to be arbitrary term for designating alcoholic beverages.
In addition to conceptual strength, the petitioner provided evidence establishing that its HPNOTIQ mark was commercially strong. In the past 12 years, the petitioner had spent more than $100 million in marketing its HPNOTIQ brand across a wide variety of media. The brand has been mentioned in thousands of in publications over the years. Sales of HPNOTIQ exceeded those other popular liqueur products such as Chambord and Cointreau. The evidence supported the conclusion that the petitioner’s HPNOTIQ mark was strong and entitled to a broad scope of protection.
Similarity of marks. The Board found that the HPNOTIQ and HOPNOTIC marks were similar. The marks were very similar in pronunciation and were likely to be indistinguishable in a noisy bar atmosphere. As for appearance, the marks conjured the word "hypnotic," and consumers were not likely to notice the different letters used in the marks. Even if consumers were to notice that the respondent’s mark contained an "O" between the "H’ and the "P," and they made the further association with the word "hops" as an ingredient in beer, consumers still could presume that HOPNOTIC beer and HPNOTIQ liqueur emanated from the same source, the Board said. In addition, both marks conveyed the same meaning, i.e., "hypnotic," with the respondent’s mark carrying the additional concept of "hops." When considered in their entireties, the marks were similar in appearance, pronunciation, meaning, and commercial impression.
Actual confusion. The respondent argued that the lack of actual confusion in 12 years of concurrent use supported a finding that confusion was unlikely. However, the record did not contain evidence of the extent of the respondent’s use of its mark. The respondent stated that it currently sold its beer in three states and its current annual sales were about $550,000. This evidence was insufficient for the Board to determine whether there had been an adequate opportunity for actual confusion to occur.
After considering all the relevant du Pont factors and the respondent’s other arguments, The Board concluded that the registered mark HOPNOTIC for beer was likely to cause confusion with the petitioner’s registered mark HPNOTIQ for liqueur. The petition to cancel was granted.
The case is Cancellation No. 92060811.
Attorneys: Lisa C. DeJaco, Matthew A. Williams, and Brittany L. Hampton (Wyatt, Tarrant & Combs, LLP) for Heaven Hill Distilleries, Inc. Jack Baldini (Baldini Law, LLC) for Cricket Hill Brewing Co., Inc.
Companies: Heaven Hill Distilleries, Inc.; Cricket Hill Brewing Co., Inc.
MainStory: TopStory Trademark USPTO
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