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The NORTH STAR Guides One to Trademark Issues

Minnesota is known as the North Star State – L’Étoile du Nord.  The state of hipsters, unique dining experiences, bitter cold winters, gorgeous summer nights, and fantastic craft brewers also has an impressive craft cocktail scene.  One of its stars has been  Johnny Michaels, formerly barman at La Belle Vie, a restaurant that is consistently recognized by the James Beard Foundation as one of the top in the nation.  Johnny filed a trademark application for NORTH STAR COCKTAILS for “alcoholic cocktail mixes” which based on his website appear to be pre-mixed alcoholic beverages featuring rum, bourbon, rye whiskey, and tequila drinks.  For the moment, let’s set aside the fact that the the filed mark does not match with the example below.

Northstarcocktails

Incidentally, Johnny also wrote a bartending book of the same name, but note the difference in spacing.

NorthStarBook

Johnny’s trademark application for NORTH STAR COCKTAILS has been refused registration based on a likelihood of confusion with a registration for NORTHSTAR for “wine” by Ste. Michelle Wine Estates in Washington State.

NorthstarWine

This same registration was used to refuse registration of the following mark for “beer”:

NorthstarLight

Schell’s, however, filed an application for STAR OF THE NORTH for beer, which was approved and is registered.

This goes back again to the concept that we have previously discussed at least here about the USPTO’s practice to consider beer, wine, and distilled spirits to be related enough that consumers are likely to be confused as to source if similar marks are used on, for instance, beer by one company and distilled spirits by another.

In responding to the refusal, the applicant argued that the goods are unrelated, attempted to amend the mark to add “BY JOHNNY MICHAELS” (you generally cannot amend a mark after filing unless the amendment does not constitute a material alteration of the mark), and argued that the marks were different because of this additional wording.  The attorney also amended the identification of goods as follows: “pre-mixed alcoholic cocktail beverages, excluding beer and wine, derived exclusively from Johnny Michaels’s Copyright-Protected cocktail recipes, the content thereof limited to recipes combining distilled spirits with non-alcoholic additives.”  Much of this amendment unnecessarily limits the scope of the trademark protection to his recipes – diminishing the enforcement value of the trademark.  The Trademark Office has maintained the refusal arguing, essentially, that the cocktail mixes even if they aren’t sold as including wine may potentially be combined with wine, for example like a sangria.

Now back to the issue about the mark being different than on the labeling, Johnny also filed a new application for NORTH STAR COCKTAILS BY JOHNNY MICHAELS for “Alcoholic beverages, namely, digestifs; Alcoholic cocktail mixes.”    In maintaining the refusal of the prior application, the examining attorney stated that the refusal would be made with this mark as well since the mark wholly incorporates the NORTHSTAR mark.  The only other mark on beer, wine and distilled spirits is STAR OF THE NORTH for beer by Schell’s.  Given the broad goods description, it looks like the Trademark Office will likely refuse registration yet again for this newly filed mark.

We have also discussed the right to use versus the right to register, where given particular branding decisions, other indications of source near the mark, and differences in channels of trade or consumers, the likelihood of consumers confusing the goods in use may differ from a determination of a likelihood of consumer confusion within the Trademark Office.   A review of one’s right to use necessarily considers other factors than what is generally before the Trademark Office when making a determination on the right to register.  It’s possible that the winery and Johnny Michaels could come to some agreement regarding use of the mark that reduces likelihood of confusion, and where the winery allows Johnny’s registration to co-exist with its registration.

Practically speaking, I am wondering if any of you think that consumers encountering the North Star Cocktails bottle and the Northstar wine would be confused into believing that the two were related or emanated from the same source.

Do you think the Northstar Light application should have been refused too, especially where “light” in the industry generally if not always refers to beer?

Does it matter at all if wine drinkers are a certain class of consumer, where bourbon or tequila mixed drinks may be consumed by a totally different class of consumer?  Their labels certainly seem to attract different consumers.  I’m pretty sure I would never mix any of his cocktails with wine.