• Skip to primary navigation
  • Skip to main content
  • Skip to primary sidebar
  • Skip to footer
  • Advertise
  • About Craft Brewing Business

Craft Brewing Business

Professional Insight, Unfiltered

  • News
  • Business & Marketing
  • Ingredients & Supplies
  • Packaging & Distribution
  • Equipment
  • Webinars & White Papers
  • COVID-19

This is a fascinating situation: Explaining the 3 Floyds and Abnormal trademark dispute

September 27, 2018Matthew McLaughlin

This one’s a little different for sure.

California’s Abnormal Beer and Wine has been vocal about Indiana’s 3 Floyds Brewing Co.’s part in having its name trademark application disapproved. 3 Floyds has trademarked the slogan “it’s not normal” to promote its beer. We reached out to both breweries to see if anyone wanted to talk. No one did. That’s cool. So, then we reached out to one of the beer industry’s most esteemed attorneys, Matthew McLaughlin — alcohol regulatory attorney, executive director of the Mississippi Brewers Guild and 2017 winner of the FX Matt Defense of the Industry Award by the Brewers Association. What was McLaughlin take on all this?

This is a fascinating situation.

Clearly, I have not been privy to any of the communications between the parties, but there is little to no evidence in the USPTO record that 3 Floyds actually opposed the “abnormal” application.

Procedurally, a party can only oppose an application once the application proceeds to the publication phase of the trademark registration process. The “abnormal” mark never made it that far because the examining attorney concluded there was a likelihood of confusion with the 3 Floyd’s “it’s not normal.”

The examining attorney concluded likelihood of confusion based on the two marks conveying the same idea, stimulating the same mental reaction or having the same overall meaning regardless of whether the marks physically look or sound the same.

The applicant, Abnormal Beer and Wine, filed a response to the office action denying refusing registration on the grounds of likelihood of confusion, but the examining attorney was not compelled by any of Abnormal’s arguments in its response. It has been my experience that attempting to persuade an examining attorney to take a position contrary to the position in which they took in an office action can be very challenging.

The USPTO record does indicate that a party filed a letter of protest with the USPTO while the “abnormal” application was under review. And while the party filing the letter of protest is not public information, one can only assume it was 3 Floyds that filed such.

A letter of protest is an often overlooked tool that holders of senior registered marks can use to informally let the USPTO there may be a likelihood of confusion between two marks. It is not clear from the record that the examining attorney would not have come to the same likelihood of confusion conclusion notwithstanding the letter of protest that was filed by an anonymous party.

Regardless, the examining attorney concluded there was a likelihood of confusion between the “abnormal” and “it’s not normal” marks and Abnormal Beer and Wine was not able to overcome its burden to prove otherwise. Had the “abnormal” mark it through to publication and had 3 Floyds waited to oppose that mark at that juncture, the burden of proof to demonstrate likelihood of confusion would have fallen on 3 Floyds.

Lessons to be learned: letters of protest can be very powerful tools; it can be very difficult to get an examining attorney to take a differing position after they have made a determination in an office action; and, it continues to be critically important to properly clear marks prior to filing trademark applications.

There you have it. Check out McLaughlin’s services right over here.

brewing lawsuit
Founders Brewing’s racial discrimination lawsuit: ‘The behavior experienced by the plaintiff should not be tolerated or condoned by any employer’
Non-alcoholic beer brand Athletic Brewing closes $17M+ in funding with famous backers, selects Crafted ERP, eyes big growth
COVID19 coronavirus mask money
Why you need to maximize engagement during a pandemic
How the Employee Retention Credit can help breweries that paid employees during the pandemic

Reader Interactions

Leave a Reply Cancel reply

You must be logged in to post a comment.

Primary Sidebar

Latest News

  • Beer rebrands continue: Ballast Point, Fremont, New Glory and Blue Point (also, enjoy some tips for your refresh)
  • Colorado Strong launches public awareness campaign to help independent breweries
  • Here’s a video recap of 2020 from Deep Ellum Brewing, complete with dubstep score
  • Malt maker Rahr purchases all of eco energy maker Koda

Sign up for our newsletter

unsubscribe from list

Most Popular Today

Recent Features

  • Beer rebrands continue: Ballast Point, Fremont, New Glory and Blue Point (also, enjoy some tips for your refresh)
    January 21, 2021
  • virginia-beer-co-renovationHow Virginia Beer Co. used the shutdown to overhaul its facility (and keep people employed)
    January 19, 2021
  • Clean air, clean beer: New Ingersoll Rand oil-less reciprocating air compressors are ideal for breweries (aeration to canning)
    January 18, 2021
  • Non-alcoholic beer brand Athletic Brewing closes $17M+ in funding with famous backers, selects Crafted ERP, eyes big growth
    January 18, 2021
  • Watch: This awareness video on human trafficking from beer wholesaler Markstein Sales will move you to action
    January 14, 2021
  • Distribution updates: Massachusetts brewers celebrate franchise reform, Yuengling goes to Texas with Molson Coors and more from Bell’s, Stone and beyond
    January 14, 2021

Footer

  • Email Newsletter Sign Up
  • About Craft Brewing Business
  • Contact Us
  • Advertise on Craft Brewing Business
  • Media Kit Download
  • Privacy and Terms

© 2021 · CBB Media LLC

Continue ...

sponsored by