Published: February 2, 2024
Read time: 3 mins
The trademark dispute between Brooklyn Brewery Corporation and Brooklyn Brew Shop LLC revolved around the registration of beer and brewing-related marks and goods. Brooklyn Brewery Corporation had filed a petition for cancellation and a notice of opposition against Brooklyn Brew Shop LLC, claiming prior use and registration of the marks "BROOKLYN BREWERY" in standard characters and a stylized format. Brooklyn Brew Shop LLC owned a registration for the mark "BROOKLYN BREW SHOP" in standard characters and sought registration of the stylized mark.
Brooklyn Brewery Corporation alleged that Brooklyn Brew Shop's marks were likely to cause confusion, being merely descriptive and primarily describing a geographical location. Brooklyn Brew Shop denied these claims and raised affirmative defenses of laches, acquiescence, and equitable estoppel. The Trademark Trial and Appeal Board (TTAB) dismissed the petition for cancellation, partially sustained the opposition, and partially rejected it. Brooklyn Brewery Corporation appealed the Board's decision to the Court of Appeals for the Federal Circuit, which affirmed some parts of the decision, dismissed others, and remanded some for further review.
Establishing Acquired Distinctiveness
Following the remand, the Board addressed the judgment regarding Class 32 goods removed from Brooklyn Brew Shop's application and proceeded to determine whether the applied-for mark had acquired distinctiveness. To make this determination, the Board reviewed the entire record.
The amount of evidence needed to prove acquired distinctiveness varies depending on the case and the nature of the mark. Considering the degree of descriptiveness of the mark, the Board found it to be descriptive but not highly so. Consequently, the Board concluded that although a higher amount of evidence was required to demonstrate acquired distinctiveness, it was not particularly burdensome in this case.
Reviewing the Evidence
The Board discussed the three types of evidence that can be used to establish acquired distinctiveness: prior registrations, five years of continuous use, and other appropriate evidence. Brooklyn Brew Shop submitted evidence for all three types which the Board evaluated, taking into account factors such as the association of the applied-for mark with a particular source, the length and exclusivity of use, advertising efforts, sales figures, intentional copying, and media coverage.
Prior Registration
The Board recognized that while the prior registration is somewhat limited in its usefulness as it disclaims the matter at issue, it can still be considered as evidence of the length of time the mark has been registered. Brooklyn Brew Shop had been consistently using their stylized mark for almost thirteen years, which meets the five-year requirement. The length, degree, and exclusivity of use were also considered, with the Board again noting that Brooklyn Brew Shop had been selling beer making kits under the name BROOKLYN BREW SHOP for more than thirteen years, and there was no evidence of any other entity using the term in connection with beer making kits.
Advertising Efforts
Advertising efforts were given due weight, with the Board acknowledging that Brooklyn Brew Shop had invested a substantial amount, approximately $500,000, in advertising. They also had a significant social media following and had generated millions of views on their uploaded videos. Although Brooklyn Brew Shop did not provide customer surveys, they submitted numerous postings from message boards that indicated consumer association of the mark with their kits.
Sales Figures
While specific information regarding sales figures and number of customers was not provided, it was noted that Brooklyn Brew Shop sells their beer making kits across all fifty states in the US and through various third-party retailers. Their Afternoon Wheat Beer Kit is popular on Amazon.com, and their sales figures are in the millions of dollars annually. The extensive unsolicited media coverage received by Brooklyn Brew Shop was duly acknowledged by the Board, as well as the awards and recognition they had garnered for their product packaging and brand. Regarding intentional copying, the Board did not find any evidence of it occurring with respect to Brooklyn Brew Shop's mark.
Conclusion
Based on the presented evidence, the Board concluded that Brooklyn Brew Shop successfully demonstrated that their mark had acquired distinctiveness. The opposition claiming mere descriptiveness was dismissed. However, the opposition was sustained for the deleted goods in Class 32, while it was dismissed for the remaining goods in the same class.
