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.