The relationship of wine, beer, and spirits has often proved complicated and confusing for the tippler, regardless of country. There are old saws that many repeat, and report on, that say things like “Beer Before Liquor, Never Sicker; Liquor Before Beer, You’re In The Clear” and “Wine Before Beer Leaves You Queer, But Beer Before Wine Leaves You Fine.” One also hears such advice as one travels, with sayings like “Bier auf Wein, lass das sein; Wein auf Bier, das rat’ ich dir” in Germany (which you can hear here and which I am told essentially means “Beer after wine is to be avoided; wine after beer is advised”), and “sörre bor, jó gyomor, borra sör, meggyötör” in Hungary (which you can also hear here and which has been roughly translated for me as “beer then wine leaves a good stomach; wine then beer leaves it [i.e. the stomach] tormented”), as others are quick to mention. And, of course, there are many, many other bits of drinking doggerel that are a bit difficult to remember and keep straight.
It turns out, as one moves from country to country, that the relationship of wine, beer, and spirits has often also proved complicated and confusing for the trademarker. That is because some jurisdictions see those products as competitive (in the legal sense for trademark purposes) with one another, and some do not. (Those in marketing vary as well. While a 2016 Gallup Poll of Americans who drink alcohol found that 43% of Americans who drink alcohol say they prefer beer, 32% say wine and 20% say liquor, marketers remain unsure if that reveals one or more markets, some seeing several different tiers in a larger “drinks market,” while others see all three as competing within a single market for alcoholic drinks). Those seeking to register or resist registration of certain trademarks thus remain a bit confused over what is likely to confuse in the market and what the definition of that legal market should be.
For instance, in the United States, there seem to be two different views on the same issue. In one recent example, the Trademark Trial and Appeal Board recently ruled that beer and spirits did essentially compete and that consumers would confuse a craft brewer’s “Mastermind” beer brand with an already-registered “Mastermind Vodka” trademark. The Board stated in its August 6, 2018 decision affirming a refusal to register the brewer’s proposed mark that “The fact that the USPTO classifies Applicant’s beer in Class 32 and Registrant’s spirits in Class 33 does not establish that those goods are unrelated under § 2(d). See TMEP §1207.01(d)(v).” Id. at 10. The Board then went on to hold that “there is a likelihood of confusion because beer and spirits may be produced by the same entity and sold under the same trademarks,” which was based on evidence of websites showing that there are “numerous businesses owning a brewery and a distillery, offering both beer and spirits.” Id. at 11. In doing so, the Board distinguished earlier precedent that had held that beer and wine “are not sufficiently related that the contemporaneous use of similar marks on the two products is likely to cause confusion as to source” and relied instead on precedents holding that “beer and other alcoholic beverages including wine, are related, and that their purchasers and channels of trade overlap.” Id. at 13-15; see also In re High Water Brewing, Inc. (T.T.A.B 2014)(affirming refusal to register craft beer mark NO BOUNDARIES IPA in light of similar wine mark NO BOUNDARY because “beer and wine are related products and that this du Pont factor favors finding a likelihood of confusion”); and see In re Majestic Distilling Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003) (stating tequila is related to malt liquor); In re Sailerbrau Franz Sailer, 23 U.S.P.Q.2d 1719 (T.T.A.B. 1992) (holding beer and wine are related goods); Schieffelin & Co. v. Molson Cos., 9 U.S.P.Q.2d 2069 (T.T.A.B. 1989) (holding beer and brandy are related).
But, in the United States, “there is no per se rule that holds that all alcoholic beverages are related.” In re White Rock Distilleries, Inc., 92 U.S.P.Q.2d 1282, 1285 (P.T.O. Oct. 5, 2009) (citing G.H. Mumm & Cie v. Desnoes & Geddes, Ltd., 917 F.2d 1292, 1295 (Fed. Cir. 2003)) So, in Sazerac Co. Inc. v. Fetzer Vineyards, the U.S. District Court for the Northern District of California came to a different conclusion in a September 2017 decision, holding in a dispute between a wine maker and a bourbon distiller that, although “[b]oth Sazerac’s Buffalo Trace bourbon and Fetzer’s 1000 Stories wine participate in the same general alcoholic beverage industry. And Sazerac presented evidence that the products are advertised and marketed in overlapping channels[,] they are nonetheless very distinct products. They have different alcohol contents and social uses, and they occupy different sections of the stores where they are offered for sale. Sazerac produced no evidence that a consumer is likely to associate a California red zinfandel with a Kentucky bourbon whiskey” Id. at 30. That decision rejecting the distiller’s trademark and trade dress claims is now on appeal.
The EU has also held spirits and beer unlikely to be confused in a case arising in Germany. In Yilmaz v. Office for Harmonisation in the Internal Market (OHIM) (Case T-584/10, October 3 2012), the General Court upheld a decision allowing the registration of the figurative mark TEQUILA MATADOR HECHO EN MEXICO despite an earlier registration for MATADOR for beer. The EU court concluded that:
it must be borne in mind, in particular, that, while the goods to be compared in the present case belong to the same general category of beverages, and more specifically to the category of alcoholic beverages, they are different in particular as regards their ingredients, method of production, colour, smell and taste, with the result that the average consumer perceives them to be different in nature. Those goods are not normally displayed in the same shelves in the areas of supermarkets and other outlets selling drinks. As regards their use, a significant difference between the goods is that beer quenches thirst which is not normally the case for the alcoholic beverages covered by the mark applied for. While it is true that those goods may be consumed in the same places and on the same occasions and satisfy the same need – for example, enjoyment of a drink during a meal or as an aperitif – the fact remains that they do not belong to the same family of alcoholic beverages and that the consumer perceives them as two distinct products, as the Court held, so far as concerns beer and wine, in paragraph 66 of [Case T 175/06 Coca-Cola v OHIM– San Polo (]MEZZOPANE[)  ECR II]
Moreover, …, th[e] fact [that some cocktails mix beer and tequila] does not mean that the goods at issue are complementary. Complementary goods are goods which are closely connected in the sense that one is indispensable or important for the use of the other [citation omitted]. In the present case, the alcoholic beverages covered by the mark applied for are neither indispensable nor important for the use of beers and vice versa. There is indeed nothing in the file to support the conclusion that a purchaser of one of those products would be led to purchase the other.
As to whether the goods at issue in the present case are in competition with each other, the Court considers that there is a significantly lower degree of competition than that found, with regard to wine and beer, in paragraph 68 of MEZZOPANE, and that the Board of Appeal took sufficient account of that fact, in paragraph 28 of the contested decision. The Court considered, in paragraph 68 of MEZZOPANE, that wine and beer are, to a certain extent, in competition with each other on the ground that, …, wine and beer are, to a certain extent, capable of meeting identical needs, which means that a certain measure of mutual substitutability must be acknowledged. However, the Court of Justice stated, as the General Court has also pointed out, that, in view of the significant differences in quality — and, accordingly, in price — between wines, the decisive competitive relationship between beer, a popular and widely consumed beverage, and wine must be established by reference to those wines which are the most accessible to the public at large, that is to say, generally speaking, the lightest and least expensive varieties [citations omitted]. The alcoholic beverages covered by the mark applied for are, in general, significantly stronger and considerably more expensive than ‘those wines which are the most accessible to the public at large’, with the result that the Court’s findings are not applicable to the present case.
[Id., paras. 54-57]
Thus, in the end, the beer and spirits products are unlikely to be confused because they are deemed neither truly competitive nor frequently complementary, in much the same way that the same court had concluded in Mezzopane (at paras. 66-70) that beer and wine where neither complementary nor competitive.
The United Kingdom came to a similar conclusion when TIGER GIN attempted to register after TIGER, a mark on ale. In rejecting that opposition and allowing the gin maker to register the mark, the Examiner noted that:
the factors I have in mind in relation to the present case are:
- The different processing/manufacture of beer and gin,
- The different taste, colour and smell,
- The very different alcoholic content. Beer is a long drink and gin is a spirit, drunk in short measures
- They are not in the same ‘family’ of alcoholic beverages
- They are not complementary
- There is less competition between beer and gin than between beer and wine
- But it is common to find the sale of various alcoholic drinks in the same outlet.
Indeed, the UK Examiner went on to state that “Weighing them all, including what I said in Old Tom, I conclude that there is a very low degree of similarity between, on the one hand, beer, ale and porter, and on the other hand, gin, based upon a very low degree of competition and the potential for shared distribution channels (and then, as in the wine v. rum GC case, they are not sold on the same shelves).” Id. at par. 19.
In reaching that conclusion, the Examiner noted several relevant market and marketing differences including:
“In Bodegas Montebello, SA v OHIM, Case T-430/07, the Court made a comparison in that case between wine and rum. It found that wine and rum are not composed of the same ingredients, their method of production is also different, and the end products are different as regards their taste, colour and smell. Consequently, the public perceives wine and rum as different in It also found that wines are normally consumed as an accompaniment to a meal but that rum is not served at a meal, so that the two types of product are consumed on different occasions. The Court observed that the alcoholic content of the two products is very different and that even though the wine and rum might share distribution channels, they will not generally be sold on the same shelves. The Court considered there was no competing or complementary consideration and concluded that wine and rum are clearly distinguished by their nature, method of production, provenance, use and alcoholic content, with the overall result that there was no similarity between them.”
[Id. at par. 13 [quoting para. 16 of earlier decision, citation omitted; emphasis added].
“The findings of the GC are helpful in making a comparison between ale, on the one hand, and gin and gin-based drinks on the other. Although, for example, lemonade can be added to ale to make a shandy, I bear in mind that ale is generally drunk without modification whereas gin is usually drunk in combination with another component, such as tonic water or a fruit juice as a mixer. Even though they both contain alcohol, the nature of the goods is quite different: they do not belong to the same family of alcoholic beverages. As in the first of the two GC cases, it is my perception that, in the UK, the two types of product would come from different undertakings. There has been no evidence to suggest otherwise. I bear in mind that the GC said that beer and wine compete to a certain extent because they are both capable of meeting identical needs: consumption during a meal or as an aperitif. In the case before me, I think there is a further distance in that ale is not traditionally regarded as an aperitif and gin, liqueurs and cocktails are not commonly drunk during a meal. The goods are very different in relation to taste, colour, smell, alcoholic content and the measures in which they are sold. The goods are sold in different areas of shops and bars and there is no evidence of common producers of ale and gin, or of common ingredients. …For all these reasons, I conclude that there is no similarity between ale and gin…”
[Id. at par. 13 [quoting para. 17-18 of earlier decision, citation omitted; emphasis added].
After similarly detailing legal precedent on the differences between wine and beer, as well as the Examiner’s own observation, the Examiner concluded that “I remain of the view that the element of competition between beer and gin is less than that between beer and wine. From my own experience, I think that a choice is more likely to be made between drinking wine and beer, e.g. when dining out, than between drinking beer and gin.” Id. at par. 15.
Thus, as described above, different tribunals have reached different decisions on whether beer, wine and spirits are related or competing goods. Many of these differences in result seem to flow in large part from the way in which courts or examiners view the relevant purchasers of the products. Where the purchaser is viewed as a somewhat indiscriminate consumer, courts and examiners tend to find a likelihood of consumer and a relationship between the products. Conversely where the purchaser is viewed as a somewhat sophisticated connoisseur, then overlapping registrations are allowed. This trend was recognized by Justin P. Weinberg and O. Joseph Balthazor Jr. in their 2017 CYBARIS article “Stop Letting Wine Crash the Wedding: Craft Beer Consumers Are Sophisticated Buyers.” This is borne out in many of the decisions in this area, whether in the United States or elsewhere:
- Cases that found buyers sophisticated often allowed seemingly similar trademarks to register. See Star Indus., Inc. v. Bacardi & Co., 412 F.3d 373, 390 (2d Cir. 2005) (advising that consumers in a liquor store exercise the requisite level of sophistication to distinguish between two similar vodka marks); H. Mumm & Cie v. Desnoes & Geddes, Ltd., 917 F.2d 1292, 1295 (Fed. Cir. 1990) (reasoning that because a champagne producer marketed its product as a “premium” good, the purchaser of its champagne will exercise a higher degree of focus while making a decision); Banfi Prod. Corp. v. Kendall-Jackson Winery, Ltd., 74 F. Supp. 2d 188 (E.D.N.Y. 1999) (finding no likelihood of confusion between two similar marks for wine, wherein one type of wine was more expensive than the other, relying on evidence suggesting wine purchasers are “likely to be older, wealthier, and better educated than the general population”); Yilmaz v. Office for Harmonisation in the Internal Market (OHIM) (Case T-584/10, October 3 2012) (consumers differentiate wine from beer based on price); Trade Mark Application No. 3035040 By Jeffrey Joshua Lawrence To Register The Trade Mark TIGER GIN In Class 33 And The Opposition Thereto Under No. 401915 By Everards Brewery Limited, at par. 23 (describing attention paid by consumer-purchasers of alcohol).
- But where consumers were thought less discerning, a likelihood of confusion was found, and trademark registrations precluded. See In re Fiddlehead Brewing, at 17 (“There is no evidence that purchasers of beer or other alcoholic products are sophisticated or careful in making their purchasing decisions”); In re Majestic Distilling Co., 315 F.3d 1311, 1316 (Fed. Cir. 2003) (affirming decision where “the Board found that malt liquor and tequila are both relatively inexpensive products that are likely to be purchased on impulse rather than selected with careful, studied consideration and sophistication”); In re Sailerbrau Franz Sailer, 23 U.S.P.Q.2d 1719 (T.T.A.B. 1992) (“Contrary to applicant’s argument, both beer and wine may be found in the same outlets, whether they be liquor stores or supermarkets. We do not agree with applicant that purchasers are necessarily discriminating. While some may have preferred brands, there are just as likely to be purchasers who delight in trying new taste treats. Furthermore, these are not expensive items requiring one to exercise careful thought and/or expertise in their purchase. More often than not they are shelf items which are purchased on a somewhat casual basis.”); Schieffelin & Co. v. Molson Cos., 9 U.S.P.Q.2d 2069 (T.T.A.B. 1989) (“While we have no doubt that purchasers are not likely to consume a malt liquor thinking that it is Cognac brandy, in view of the similarities in the marks it is reasonable to assume that purchasers may believe that BRADOR malt liquor is another premium imported alcoholic beverage sold by the same company which sells the expensive BRAS D’OR Cognac brandy. .. A typical consumer of alcoholic beverages may drink more than one type of beverage and may shop for different alcoholic beverages in the same liquor store.”).
Whether applying the facts to this factor led to these results, or whether the findings under this factor were reversed engineered is often difficult to tell.
So in the end it would seem to have distilled down to this–we are likely left with some confusion over what will establish a likelihood of confusion, at least when applied to wine, beer and spirits. But perhaps that that is fitting in a world where the same wine is claimed both health and unhealthy, the same beer can both taste great and be less filling (as referenced in an interstellar Easter Egg for loyal readers of one or more past blogs), and where the same spirit can be both a “devil’s brew… that defiles innocence, dethrones reason, destroys the home, [and] creates misery and poverty” and “the oil of conversation, the philosophic wine, the ale that is consumed when good fellows get together, that puts a song in their hearts and laughter on their lips, and … which enables a man to magnify his joy, and his happiness.” Thus in the law, we continue to search for our clarety clarity, as it were. Or, as Emily Dickinson noted, we thirst for a rule crisper and neater then we have sampled to date, “to taste a liquor never brewed,” to “but drink the more!/…To see the little Tippler/Leaning against the sun!,” hoping that that sun will light a path out of our confusion over confusion.Connect with Jim on LinkedIn.