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Wednesday, May 1, 2013

A Hit Like a Ton of BRIX - Trademark Office Protects Restaurant's Rights in BRIX Trademark


One of the many benefits of obtaining federal trademark or service mark protection is that the Trademark Office will prevent registration of marks which are confusingly similar.

Yountville Partners, Inc., simply by registering its marks BRIX and BRIXX for restaurant and bar services, was successful in preventing the registration of the marks BRIX WINE CELLARS, BRIX CELLARS and BRIX WINE CELLARS and Design for wine bars and restaurant services (“other BRIX marks”).  The Trademark Office refused to register the other BRIX marks for wine bars and restaurant services finding a likelihood of confusion with BRIX/BRIXX marks for restaurant services.  First, the Trademark Office determined that the marks were virtually identical giving no weight to the argument that the words “wine” and “cellars” helped to distinguish the marks.  

Second, the Trademark Office found that the “restaurant services” and "wine bars" and the other services recited in the applications and registrations were deemed to be legally identical.  Applicant’s arguments that its wine bar is “somewhat dark and sophisticated and has a relatively enclosed atmosphere,” while registrant restaurant establishment “has a relatively light and airy atmosphere overlooking outdoor vistas” was unpersuasive.  Further, the Trademark Office was not convinced that restaurant consumers were “sophisticated” stating that “restaurant and bar services can run the gamut in terms of cost and clientele.”

Finally, Yountville Partners, Inc. enjoyed a presumption of exclusive right to nationwide use of the registered marks regardless of its actual extent of use. Thus, the argument that the other BRIX marks were only used in Houston so there would be no likelihood of confusion was unpersuasive.

In the United States, the Trademark Office will work to protect the value of marks for those that avail themselves of the relatively inexpensive trademark and service mark registration system.  However, the USPTO makes decisions as to registration of marks but has no jurisdiction to stop a party from using a mark.  Such jurisdiction rests exclusively with the state and federal courts.  

This opinion, which is not a precedent, was recently obtained in a proceeding before the U.S. Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board (“TTAB”) In re Brix Cellars LLC dba Brix Wine Cellars, Serial Nos. 85111647, 85111682 and 85112408 (TTAB 2013).  The following is a link to the opinion:  http://ttabvue.uspto.gov/ttabvue/ttabvue-85111647-EXA-20.pdf.

For any questions or assistance on trademark matters contact Katja Loeffelholz at kl@dpf-law.com.

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