In prior installments of our series on branding considerations and trademark disputes in the beverage alcohol industry, we examined best practices relating to trademark selection and searching to hopefully avoid branding disputes with others here and here.
As we advised, your review of and investigation into a proposed trademark for branding your new “beer” product should certainly include analysis of beverage alcohol products not considered “beer.” It is also worth considering whether your proposed brand resembles or could be perceived as riding on the coattails of any well-known regional or national brand, even outside the beverage alcohol market, on what might be considered “closely related” goods or services. As noted, the key legal question is whether a consumer would likely be confused and think that your new branded product is actually sourced from someone else or is otherwise endorsed by them.
A recently filed lawsuit provides emphasis for the real importance of well-performed pre-use trademark searching. By way of background, Marriott International, Ltd. (Marriott) operates the GAYLORD ROCKIES hotel, which happens to be located on the outskirts of Denver, Colorado at the foot of the majestic Rocky Mountains. Last year, Marriott filed an application with the U.S. Patent and Trademark Office (PTO) seeking a federal registration for the term “GAYLORD ROCKIES” to brand “beer.” On June 22, 2020, the Colorado Rockies Baseball Club filed a notice with the PTO’s Trademark Trial and Appeal Board to oppose Marriott’s application, contending that if allowed to register, the GAYLORD ROCKIES brand, used to brand beer, would likely cause consumers to confuse the beer as being sourced or endorsed by the COLORADO ROCKIES.
As the basis for its opposition, the Colorado Rockies included ten existing federal trademark registrations, all incorporating the term “ROCKIES.” One of its cited registrations, ROCKIES ROOKIES KIDS FAN CLUB for plastic bottles for drinking water, plastic drinking cups for toddlers, and beverage glassware, among other goods, appears targeted at minors unable to legally purchase or consume alcohol beverages. Another including the COLORADO ROCKIES logo, covers the same products as well as foam beverage can holders. It is important to note, however, that none of the Colorado Rockies’ cited registrations cover “beer” or any other type or category of beverage alcohol product.
It is important to note that Marriott already owns a federal trademark registration for GAYLORD ROCKIES covering hotel and bar services, among other services, claiming a date of first use of December 18, 2018. That registration is not at issue in the current opposition proceeding. The Colorado Rockies Baseball Club did not oppose the application that matured to this registration.
We do not know how the parties or the Trademark Trial and Appeal Board will resolve this controversy, but the case highlights the intricacies of trademark disputes and what an applicant seeking a federal trademark registration needs to consider in its trademark selection process. We will continue to follow this case and report to you on its progress. Suffice it to say that even where the branded products do not directly overlap and the commonality in the brands is a geographic area – e.g., the Rocky Mountains – you may face conflict from parties outside of your direct product category. Relatedly, to the extent that your company has awareness of others with similar marks, or has prior dealings with others and their trademark enforcement practices, it is important to let your trademark counsel know so counsel can evaluate any risks appropriately in a trademark search