Victory Beer vs. Victory Whiskey

Will whiskey buyers, upon seeing a whiskey that has the same name as a beer brand, be confused into thinking that the whiskey is being produced by the same company that produces the beer?  That is probably the question being asked by Sons of Liberty Spirits right about now, after its trademark application for the term VICTORY was opposed by Victory Brewing Company. Unfortunately for Sons of Liberty, it is a question that is likely to be answered in the affirmative by the Trademark Trial and Appeal Board.

Sons of Liberty Spirits is a Rhode Island craft distillery. It has obtained trademark registrations for other military inspired names, such as BATTLE CRY, UPRISING, and LOYAL 9. Its application for the mark VICTORY was approved by the Trademark Office and published for opposition on December 17, 2013. On January 16, 2014, Victory Brewing Company filed a Notice of Opposition against the application. See: http://ttabvue.uspto.gov/ttabvue/v?pno=91214516&pty=OPP

Victory Brewing Company is a Pennsylvania based craft brewery. It is one of the larger craft breweries in the US, with distribution across 30 states. It has trademark registrations for a number of marks featuring the "Victory" term, including: VICTORY; VICTORY BREWING COMPANY; A VICTORY FOR YOUR TASTE; and VICTORY HELIOS ALE.

Sons of Liberty (and plenty of others) would likely argue that consumers will not mistakenly believe that beer and liquor products (or wine) are sold by the same company, even if they are offered under the same brand name, because the respective alcohol products are usually sold by different types of companies (i.e. breweries, distilleries and wineries). However, the TTAB has generally taken the opposite view, provided that the opposing party has introduced some evidence showing that the respective alcohol products are related in some way (e.g. records of third party registrations covering both types of products). Representative cases include:

• BATTLEFIELD BLUE 'RITA for prepared alcohol cocktails refused based on BATTLEFIELD for beer. (TTAB upheld refusal). See: http://www.thettablog.blogspot.com/2013/07/test-your-ttab-judge-ability-are.html

• UPSLOPE BREWING COMPANY for beer refused based on UPSLOPE for wine (TTAB upheld refusal). See: http://thettablog.blogspot.com/2011/02/test-your-ttab-judge-ability-two-cases.html

• EARTHQUAKE HIGH GRAVITY LAGER & Design for high gravity lager refused based on EARTHQUAKE for wine. (TTAB upheld refusal). See: http://thettablog.blogspot.com/2011/02/test-your-ttab-judge-ability-two-cases.html

• ATELIER for tequila refused based on ATELIER WINERY for wine. (TTAB upheld refusal). See: http://thettablog.blogspot.com/2012/12/atelier-for-tequila-confusable-with.html

While the TTAB maintains that there is no per se rule that different types of alcoholic products are related, as one prominent trademark attorney has noted, "it just works out that way." (https://twitter.com/TTABlog/status/259322993669451778) 

Trademark Beerpocalypse!

The term "Apocalypse" has been the source of multiple disputes between craft breweries lately. The parties involved in the various disputes are:

Apocalypse Brewing Co.: an Oregon brewery.


Apocalypse Brew Works: a Kentucky brewery.


10 Barrel Brewing: distributes a beer called Apocalypse IPA.


Drake's Brewing Co.: distributes a beer called Hopocalypse.




(1). 10 Barrel Brewing vs. Apocalypse Brewing Co.
Both breweries are located in Oregon: 10 Barrel is in Bend; Apocalypse Brewing is about 175 miles away in Medford. 10 Barrel is one of the top selling breweries in Oregon. Apocalypse Brewing is a new brewery, having just opened in September 2012.

10 Barrel sells a beer named Apocalypse IPA, which it has apparently been selling since 2009. Upon learning of the new brewery's name in February 2012, 10 Barrel sent a cease and desist letter to Apocalypse Brewing.

In response, Apocalypse Brewing argued that the term "Apocalypse" was already used by many other breweries and therefore, no one brewery could claim exclusive rights to the term. Apparently, after some back-and-forth between the attorneys, the parties stopped communicating. 

Then, in June 2013, 10 Barrel renewed its objection. A few months later, Apocalypse Brewing decided to change its name. "[h]aving been out-lawyered and out-spent by the corporate juggernaut that is 10 Barrel Brewing." Perhaps drawing inspiration from its battle with 10 Barrel, the new name they chose was Opposition Brewing Company.

See: http://bit.ly/1gH2MSw


(2) Drake's Brewing Co. vs. Apocalypse Brew Works and
(3) 10 Barrel Brewing vs. Apocalypse Brew Works

Drake's Brewing Co. is a California based craft brewery. It sells a beer named Hopocalypse, and it owns a federal trademark registration for the HOPOCALYPSE mark.

10 Barrel, as noted above, is a Oregon based brewery that sells a beer named Apocalypse IPA.

Apocalypse Brew Works is a Louisville based brewery that opened in May 2012. In June 2013, it filed a federal trademark application for the mark APOCALYPSE BREW WORKS. The application was approved by the Trademark Office and published for opposition in November 2013.

In December, both 10 Barrel and Drake's filed extensions of time to oppose the APOCALYPSE BREW WORKS application. Each party now has until March to file an opposition. Presumably the parties will now engage in settlement discussions in an effort to resolve the dispute.

See: http://ttabvue.uspto.gov/ttabvue/v?qs=85971069


These cases provide a good example of the types of disputes that can arise in the trademark area. The first was a dispute between two parties over use of the same mark. The second and third are potential disputes over registration of a mark, with one involving a nearly identical mark that is not registered, and the other involving an arguably similar mark that is registered. 

It is also interesting to note that there are a number of other "Pocalypse" formative marks being used by others in connection with beer, including:


SNOWPOCALYPSE SCOTCH ALE: Name of a beer sold by Smokehouse Brewpub, which is located in Minneapolis. Smokehouse Brewpub filed a federal trademark application for the mark in December 2012. The application is still going through the examination process.

APOCALYPSE COW:  Name of a beer sold by Three Floyds Brewing, which is located in Indiana. Three Floyds filed a federal trademark application for the mark in 2010, and it proceeded to registration in 2011.

EPOCHALYPSE: The name of a brewery in Rochester, NY. It filed a federal trademark application for the mark in 2012, and it proceeded to registration in 2013.

ALEPOCALYPSE: Planned name of a beer that will be sold by a new Atlanta based brewery, Southern Sky Brewing Co. Southern Sky filed a federal trademark application for the mark, which was published for opposition in August 2013. No opposition was filed. Therefore, the application will proceed to registration after Southern Sky begins using the mark and files an acceptable statement of use with the Trademark Office.

APOCALYPSE ALE WORKS: The name of a brewery in Forest, VA.

"Strange" Trademark Dispute (Strange Brew v. Strangeways Brewing)

This case highlights the risk associated with engaging in trademark enforcement efforts-- you can quickly find yourself on the defensive.

Brian Powers is the owner of Strange Brew, a Massachusetts based home brewing supply business (see: http://www.home-brew.com). Powers owns a federal trademark registration for the mark STRANGE BREW, which covers:

Class 32: Beer; and
Class 35: Retail stores featuring beer and wine making supplies.

In 2012, a small Virginia based craft brewery, Burton Brewing LLC, filed a trademark application for the mark STRANGEWAYS BREWING.  The application was approved by the Trademark Office and published for opposition in early 2013. In May 2013, Powers filed an opposition proceeding against the application, arguing that consumers are likely to be confused into believing that Strange Brew provides, or is affiliated with, the goods offered under the STRANGEWAYS BREWING mark.

Many small companies when faced with a trademark complaint will decide that it is more economical to simply abandon the mark and choose a new name. That's not what happened here. Instead, Burton Brewing decided to fight back. [NOTE: this may be partially explained by the fact that the owner's wife is an IP litigator at a major law firm-- see update below.] First, it filed an answer to the Notice of Opposition along with a counterclaim seeking cancellation of Powers' trademark registration on various grounds, including because the mark was allegedly not being used in connection with beer when the application was filed and is therefore void ab initio. [Burton Brewing alleges that, with the exception of two 1-day brewing demonstrations which occurred in 2012 and 2013, respectively, Powers has never sold finished beer under the STRANGE BREW mark.]

Not content to stop there, Burton Brewing also filed a lawsuit in federal court seeking a declaration that its use of the STRANGEWAYS BREWING mark does not infringe on Powers' rights in the STRANGE BREW mark, and requesting that the Court order the cancellation of Powers' trademark registration. Notably, as part of its court filing, Burton Brewing cited more than 20 third party uses of the term "Strange" in connection with beer, including: Strange Brewing Company; Strange Land Brewing; Strange Pelican Brewery; and Strange Brew Tavern.

Powers now finds himself in the unenviable position of having to hire counsel in Virginia and defend against a lawsuit in federal court. Interestingly, only a few months before Powers filed this Opposition proceeding, he had to defend against a cancellation action that was filed by another brewery, Strange Brewing Company, after Powers had sent them a cease and desist letter. [The petition for cancellation was withdrawn in December 2013 after the parties signed a settlement agreement.]

For additional background, see: http://www.richmondbizsense.com/2013/08/27/when-youre-strange-someone-will-sue-for-your-name/


UPDATE (1/15/14): The parties have settled their dispute, with Strange Brew agreeing to withdraw its opposition to the STRANGEWAYS BREWING application and Burton Brewing agreeing to dismiss its lawsuit. Another interesting piece of information that has been revealed-- the attorney representing Burton Brewing is the owner's wife, who is an IP litigator at Hunton & Williams. See: http://bit.ly/19uiNLz