Standing Challenge Brews Trouble in Trademark Dispute

Addressing for the primary time Article III standing in a trademark case, the US Courtroom of Appeals for the Federal Circuit held that hypothetical future damage is inadequate to ascertain standing to oppose a trademark utility. Brooklyn Brewery Corp. v. Brooklyn Brew Store, LLC, Case No. 20-2277 (Fed. Cir. Oct. 27, 2021) (Dyk, J.)

Brooklyn Brewery brews and sells craft beers. Brooklyn Brew Store (BBS) sells beer-making kits and associated equipment. Between 2011 and 2016, the Brewery and BBS collaborated on the sale of co-branded beer-making kits. In 2011, BBS obtained a trademark in its title for beer-making kits. In 2014, BBS filed an utility to register a mark in its title for a number of Class 32 items, together with numerous varieties of beer and beer-making kits, in addition to Class 5 “sanitizing preparations.”

In 2015, the Brewery petitioned for cancellation of BBS’s 2011 trademark registration and filed a discover of opposition to BBS’s 2014 trademark utility. The Trademark Trial & Attraction Board (TTAB) denied the petition for cancellation and rejected the opposition. The Brewery appealed.

On enchantment, the Federal Circuit first addressed whether or not the Brewery had standing to enchantment the TTAB’s choice. The Courtroom famous that whereas it “ha[d] not yet had occasion to address Article III standing in a trademark case,” a celebration interesting a TTAB choice should fulfill each statutory and Article III necessities. The Courtroom held that the Brewery didn’t have Article III standing to enchantment the TTAB’s choice dismissing the opposition with respect to the Class 5 sanitizing preparations as a result of the Brewery didn’t make or promote sanitizing preparations. The Courtroom discovered the likelihood that the Brewery may sometime broaden its enterprise to incorporate the sale of sanitizing preparations was not sufficient to ascertain the injury-in-fact prong of the Article III standing check. Nevertheless, the Courtroom discovered that the Brewery’s previous involvement in the sale of co-branded beer-making kits with BBS was adequate to ascertain the Brewery’s standing to problem BBS’s registration and utility for Class 32 beer-making kits.

On the deserves, the Federal Circuit affirmed the TTAB’s choice with respect to BBS’s 2011 trademark registration. The Courtroom agreed with the TTAB that the Brewery failed to ascertain inevitable confusion as to the beer-making kits and failed to ascertain that BBS’s mark was merely descriptive. The Courtroom vacated the TTAB’s choice with respect to the 2014 trademark utility, discovering that the TTAB erred by not contemplating whether or not BBS proved acquired distinctiveness of its utility and remanded for additional proceedings.

Follow Word: Earlier than searching for overview of a TTAB choice in federal court docket, a celebration ought to be certain that it has happy the three-part check for Article III standing.

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