Another Reason To Distinguish Alcohol Markets In Trademarks: Actual Infringement Defended By Use Across Alcohol Products

from the works-in-reverse-too dept

A brief review of all of the articles I've written in these here pages about sweet, delicious alcohol mostly have to do with trademark spats between drink-makers, including many in which I've made the point that it's high time for the USPTO to get a little more subtle when it comes to its alcohol marketplace designations. Beer isn't wine, and wine isn't liquor, and the public looking to buy one of those is quite unlikely to confuse one product for another. The focus of many of those posts was how this lack of distinction between the alcohol markets has resulted in too many aggressive trademark lawsuits and threat letters that hardly seemed necessary.

But there is a flip side to all of this that serves as another perfectly good reason for the USPTO to make a change. Recently, one liquor distiller sued another in what seems like a fairly plausible trademark infringement case.

Few Spirits, the maker of Breakfast Gin, has taken the Michigan-based Gray Skies Distillery to court over the planned December launch of its new whiskey, Breakfast Rye. As reported by, Few’s counsel sent a notice in October telling Gray Skies it had “prior rights and registration” to Breakfast Gin, and told it to cease any use of Breakfast Rye. In the lawsuit, it alleged trademark infringement, unfair competition, and violation of Michigan’s Consumer Protection Act. In response, Gray Skies submitted a letter of protest to Few’s pending trademark application.

The Breakfast Gin producer is now seeking an injunction to prevent Gray Skies from selling Breakfast Rye, including damages if it goes up for sale in stores or in bars.

Now, we could spend time talking about just how valid a trademark the word "breakfast" is in the liquor industry -- whether it's generic, whether it's overtly common, and whether or not its actually somewhat descriptive of the flavor or ingredients within each liquor product itself. Frankly, I don't want to do that in this post. The trademark seems valid to me and it certainly isn't striking any well-tuned outrage chords in my psyche.

But one of the defenses proffered by Gray Skies' attorney, Thomas Williams, in its opposition to Few's trademark application shows exactly the problem with a lack of market distinctions in the alcohol industry, except in reverse.

"The use of 'breakfast' to describe alcoholic beverage products that have characteristics, aromas or flavors reminiscent of breakfast foods, is replete in the marketplace," Williams wrote. "For example, Founders Brewing Company markets and sells Founders Breakfast Stout and Founders Canadian Breakfast Stout. Dogfish Head markets and sells Beer for Breakfast Stout."

Except that none of that should actually matter. Few shouldn't be denied a trademark on the word "breakfast" due to the plethora of beer brews using the word in their names. Different alcohol medium, different customer base, different market. That the USPTO doesn't recognize any of that is the problem, of course, but it's disappointing to see the lawyers for a member of the industry ignore all of that over a simple trademark opposition. It's worth noting as well that the same lawyer, Williams, does not trot out this defense in response to the lawsuit Few filed. There instead he relies on the overall trade dress and, remarkably, claims that gin and whiskey customers are discerning enough to discriminate between types of spirits.

One of the factors in trademark law focuses on the likelihood of confusion over a product by consumers. Buyers of craft spirits are very discriminating, Williams said.

"I think we would vigorously dispute that anybody's going to be confused when you put the two products side by side in the market, he said.

Pick a lane, counselor.

By ignoring obvious market distinctions in the alcohol industries, the USPTO has allowed lawyers like Williams to try to play both sides of the argument. On the one hand, oppose a trademark because of similar marks in the beer industry. On the other hand, claim that similar marks within the spirits industry are just fine because gin and whiskey are basically in different markets. A little clarity through common sense any time now, USPTO.

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Filed Under: alcohol, breakfast rye, breakfist gin, trademark
Companies: few spirits, gray skies

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  • icon
    K`Tetch (profile), 6 Dec 2017 @ 9:14pm

    moron in a hurry

    it always comes down to the 'moron in a hurry' test for me, and I'm not talking about 3rd lawyers and their motions.

    what's the likelihood of confusion. Beer and Gin - probably not much. beer and ~~paintstripper~~whiskey

    beer bottles are a different size and/or shape usually. Gin and Whiskey (be it rye, scotch or strychnine) are often in the same areas and often have coloured glass bottles. It's not that hard for a moron in a hurry to grab one when they meant the other (been there, done that, when I was a heavy Gin drinker - 0.5l/night typical)

    So beer = no real confusion, but other spirits, there can easily be, especially if you partake, and have partook.

    reply to this | link to this | view in chronology ]

    • identicon
      Anonymous Coward, 7 Dec 2017 @ 3:35am

      Re: moron in a hurry

      Nothing can help you make the distinction when so blind drunk as to only be able to see the shape of the bottle.

      reply to this | link to this | view in chronology ]

  • identicon
    Anon, 7 Dec 2017 @ 7:07am

    Sorry... Don't See Your Point

    Sorry - I don't buy your point, either. The alcohol market is the alcohol market. Those who choose generic widely used words will face the fact that others use the same words. Only one company uses "Cheerios" but "Raisin Bran" or "Corn Flakes"? too bad. It's a common word. You can't hijack it to keep others out.

    OTOH, it comes down to similarity if the issue is confusion. If the bottle is similar in shape and color, if the label seems similar enough and the typeface, etc. etc. - Virgin Cola lost a case to Coke for having a red can with a white stripe and similar font. But to confuse a bottle of brown stuff with a bottle of clear stuff - yeah, you'd have to be pretty drunk.

    So perhaps the argument is people will think they're the same company making them? I'd buy the argument company B is building on company A's effort to market the image of naughtiness of alcohol for breakfast, except here seem to be a plethora of beer companies suggesting the same social disrespect angle (disguising it as the name means "reminiscent of breakfast foods").

    reply to this | link to this | view in chronology ]

  • identicon
    Stosh, 7 Dec 2017 @ 10:34am

    If you have trouble telling Gin from Rye, you should discontinue use of either for at least 24 hours.

    reply to this | link to this | view in chronology ]

  • identicon
    Anonymous Cowherd, 7 Dec 2017 @ 12:28pm

    I think it's a deeply disturbing symptom of the thoroughly corrupt permission culture of the modern world that someone would purport ownership of a common word, to say nothing of government affirming such claims.

    reply to this | link to this | view in chronology ]

  • identicon
    Christenson, 7 Dec 2017 @ 3:21pm

    Beer: Not just for Breakfast Anymore!

    Hair of the dog that bit me and all that.
    Breakfast Gin and Breakfast Rye....I need my English Breakfast Tea!
    Dear USPTO: Please STOP granting TMs on generic descriptive adjectives! And go, get some pros in charge that understand that patents and TMs are only vague and uncertain correlates of anything like progress, innovation, or economic growth, not drivers, and quite possibly inhibitors!

    reply to this | link to this | view in chronology ]

  • icon
    NaBUru38 (profile), 8 Dec 2017 @ 10:37am

    I disagree. If random companies started producing Bud vermouth, Miller vodka, Smirnoff gin, it would become a chaos.

    reply to this | link to this | view in chronology ]

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