Tuesday, March 4, 2014

Atlas Brewing Company v. Atlas Brew Works

Two craft breweries are battling over the right to the name "Atlas". This case is instructive because it highlights not only the difficulties that craft breweries often face when it comes to choosing a name, but also the various types of issues that may arise as they navigate the waters of the Trademark Office.

The Parties:


Atlas Brewing Company ("ABC") is a Chicago based brew pub owned by two brothers. According to ABC's website, the "Atlas" name was inspired by a previous Chicago-based brewery that closed after Prohibition:
"Building on the tradition of Chicago’s neighborhood breweries, we brought back the Atlas name. Atlas was a Chicago brewery that began in 1896 and closed after Prohibition." See: http://www.atlasbeercompany.com/about-us/


Atlas Brew Works
Atlas Brew Works ("ABW") is a Washington, DC based brewery that launched in September 2013. See: http://atlasbrewworks.com/


The Applications:
ABW filed an application for the mark ATLAS on June 1, 2012 on an intent-to-use basis. The application received an initial objection from the Trademark Examiner based on an existing registration for the mark SKINNY ATLAS LIGHT, which also covered beer. ABW submitted arguments in response to the objection, and the Examiner then allowed the application to proceed to publication. [The registration for the SKINNY ATLAS LIGHT mark was subsequently cancelled after the registrant failed to file a 6-Year Affidavit of Use.]

On October 24, 2013, ABC filed applications for the marks ATLAS BREWING COMPANY and ATLAS GOLDEN ALE, both claiming a date of first use of July 19, 2012. The Trademark Examiner cited ABW's application as grounds for a refusal against both of ABC's applications. The applications were subsequently suspended pending the outcome of the opposition proceeding.

The Opposition:

ABC filed an opposition proceeding against ABW's application in April 2013.  As grounds for the opposition, ABC claimed that it had priority over ABW and that there is a likelihood of confusion between the ATLAS and ATLAS BREWING COMPANY marks.  Upon first glance at the facts, one may wonder how ABC could allege that it had priority given that its application claimed a date of first use of July 19, 2012 and ABW's application was filed over one month earlier, on June 4, 2012. This is because the type of use that may be sufficient to support a claim of priority is broader than that which is necessary to support an application to register a mark. Specifically, an opposer can establish priority based on (i) trade name use or (ii) use analogous to trademark or trade name use. In other words, for purposes of proving priority, an opposer is not limited to the date of first use it provided in its own trademark application because that just refers to the date the mark was first used "as a trademark" (i.e. in connection with the provision of the goods/services listed in the application), and it is possible that it had developed a trade identity in the mark before that point.

In its Notice of Opposition, ABC claims that it has priority based on its use of the trade name "Atlas Brewing Company" prior to June 4, 2012. ABC alleges that it had prominently publicized its trade name as of this date, and that its use of the name had attained a significant amount of public recognition in connection with beer.  It notes that a simple internet search would have revealed several entries demonstrating its use of this trade name. See: http://ttabvue.uspto.gov/ttabvue/v?pno=91210379&pty=OPP

ABC recently sought to add two additional grounds for opposition: (1) that ABW lacked a bona fide intention to use the ATLAS mark when it filed its application; and (2) that the ATLAS mark is primarily geographicly descriptive.

Bona Fide Intent to Use:
An application filed on an intent-to-use basis allows parties that intend to use a trademark in the US, but have not yet started offering goods or services under the mark, to secure nationwide priority in the mark.  However, one important condition to such an application is that the applicant must possess a "bona fide" intent to use the mark in the "ordinary course of trade" and "not merely to reserve a right" in the mark. See: http://thettablog.blogspot.com/2013/10/precedential-no-39-ttab-sustains-swatch.html (Board found that application was filed merely in order to reserve a right in the mark in case applicant made a firm decision to develop a product in the future.)

Here, ABC is arguing that ABW filed the application to merely reserve a right in the ATLAS mark, and therefore, it did not possess a bona fide intent to use the mark in the ordinary course of trade.  It turns out that ABW had first sought to use and register another mark, VOLSTEAD BEER WORKS, but had encountered an objection based on a previously filed application for the mark VOLSTEAD which covered distilled spirits. One of the documents that ABW produced during discovery was an email from June 5, 2012 (one day after its application for ATLAS was filed) in which ABW's CEO described the issue with the VOLSTEAD mark. He stated that they had reached out to the other party to see if the issue could be resolved, but he was not hopeful that they would be able to continue with the name. He then went on to state that after going through hundreds of alternatives, they had landed on Atlas Beer Works, and he asked for feedback.  ABC contends that this email demonstrates that ABW was merely trying to reserve the ATLAS mark in case the issue with the VOLSTEAD mark could not be resolved, and that its concurrent applications for two different marks is akin to warehousing of marks.


Geographically Descriptive:
A mark that is primarily geographically descriptive of the goods identified in the application may not be granted registration on the Principal Register. A mark is considered to be "primarily geographically descriptive" if:
(1) the mark's primary significance is a generally known geographic location, and
(2) the relevant public would be likely to make a goods/place association, that is, would be likely to believe that the goods originate in the place named in the mark.
 See: http://thettablog.blogspot.com/2007/12/precedential-no-66-ttab-finds-yosemite.html (YOSEMITE BEER geographically descriptive for beer); http://thettablog.blogspot.com/2011/10/ttab-finds-fire-island-primarily.html (FIRE ISLAND geographically descriptive for beer).

Here, ABC argues that the "Atlas" term is primarily geographically descriptive because it refers to the "Atlas District" in Washington, DC.  In support of this claim, ABC cites statements of ABW that were produced during discovery, including that "[t]he Atlas District is the name of the commercial strip neighborhood in DC that we will be near."






5 comments:

  1. Since 2002 I've got coached countless Massage Experienced therapist (and a couple of Actual physical Therapists) the best way to harmony other people's atlas and axis. I've got created numerous Right in an atlas educating curriculae regarding Experienced therapist. This post stands out as the first I've got provided to everyone around the atlas and axis. Before When i assumed this thoughts had been only way too intricate regarding everyday people. Read more http://mordo-crosswords-solution.blogspot.com/2014/07/right-in-atlas.html

    ReplyDelete
  2. Is Your VIRUS REMOVAL
    Computer Sluggish or Plagued With a Virus? – If So you Need Online Tech Repairs
    As a leader in online computer repair, Online Tech Repairs Inc has the experience to deliver professional system optimization and virus removal.Headquartered in Great Neck, New York our certified technicians have been providing online computer repair and virus removal for customers around the world since 2004.
    Our three step system is easy to use; and provides you a safe, unobtrusive, and cost effective alternative to your computer service needs. By using state-of-the-art technology our computer experts can diagnose, and repair your computer system through the internet, no matter where you are.
    Our technician will guide you through the installation of Online Tech Repair Inc secure software. This software allows your dedicated computer expert to see and operate your computer just as if he was in the room with you. That means you don't have to unplug everything and bring it to our shop, or have a stranger tramping through your home.
    From our remote location the Online Tech Repairs.com expert can handle any computer issue you want addressed, like:
    • - System Optimization
    • - How it works Software Installations or Upgrades
    • - How it works Virus Removal
    • - How it works Home Network Set-ups
    Just to name a few.
    If you are unsure of what the problem may be, that is okay. We can run a complete diagnostic on your system and fix the problems we encounter. When we are done our software is removed; leaving you with a safe, secure and properly functioning system. The whole process usually takes less than an hour. You probably couldn't even get your computer to your local repair shop that fast!
    Call us now for a FREE COMPUTER DIAGONISTIC using DISCOUNT CODE (otr214425@gmail.com) on +1-914-613-3786 or chat with us on www.onlinetechrepairs.com.

    ReplyDelete
  3. Problem: HP Printer not connecting to my laptop.
    I had an issue while connecting my 2 year old HP printer to my brother's laptop that I had borrowed for starting my own business. I used a quick google search to fix the problem but that did not help me. I then decided to get professional help to solve my problem. After having received many quotations from various companies, i decided to go ahead with Online Tech Repair (www.onlinetechrepairs.com).
    Reasons I chose them over the others:
    1) They were extremely friendly and patient with me during my initial discussions and responded promptly to my request.
    2) Their prices were extremely reasonable.
    3) They were ready and willing to walk me through the entire process step by step and were on call with me till i got it fixed.
    How did they do it
    1) They first asked me to state my problem clearly and asked me a few questions. This was done to detect any physical connectivity issues with the printer.
    2) After having answered this, they confirmed that the printer and the laptop were functioning correctly.
    3) They then, asked me if they could access my laptop remotely to troubleshoot the problem and fix it. I agreed.
    4) One of the tech support executives accessed my laptop and started troubleshooting.
    5) I sat back and watched as the tech support executive was navigating my laptop to spot the issue. The issue was fixed.
    6) I was told that it was due to an older version of the driver that had been installed.
    My Experience I loved the entire friendly conversation that took place with them. They understood my needs clearly and acted upon the solution immediately. Being a technical noob, i sometimes find it difficult to communicate with tech support teams. It was a very
    different experience with the guys at Online Tech Repairs. You can check out their website www.onlinetechrepairs.com or call them on 1-914-613-3786.
    Would definitely recommend this service to anyone who needs help fixing their computers.
    Thanks a ton guys. Great Job....

    ReplyDelete
  4. Just want to say your article is astounding. The clarity in your post is simply spectacular
    office furniture reconfiguration Chicago

    ReplyDelete
  5. Information on this site is very interesting and useful. I will promote this blog and try to help others regarding
    office furniture assembly Chicago

    ReplyDelete