Alaskan Brewing & Bottling Co. v. N. Hosp. Grp.

• Docket Number: 91264066
• Decision Date: 21 June 2023
• Parties: Alaskan Brewing & Bottling Co. v. Northern Hospitality Group, Inc.
• Court: Trademark Trial and Appeal Board

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Alaskan Brewing & Bottling Co. v. Northern Hospitality Group, Inc.

No. 91264066

United States Patent and Trademark Office, Trademark Trial and Appeal Board

June 21, 2023

This Opinion is Not a Precedent of the TTAB

John B. Crosetto and Matthew Seror of Buchalter, A Professional Corporation, for Alaskan Brewing & Bottling Co.

Daniel J. McCarthy III and Keith R. Krider of Goldstine, Skrodzki Russian, Nemec & Hoff, Ltd., for Northern Hospitality Group, Inc.

Before Taylor, Greenbaum and Lebow, Administrative Trademark Judges.

OPINION

Greenbaum, Administrative Trademark Judge

Northern Hospitality Group, Inc., dba 49^th State Brewing Company, ("Applicant") seeks registration on the Principal Register of the standard character marks ALASKA TRAILS PALE ALE (ALASKA and PALE ALE disclaimed), ALASKA 8 STAR LAGER (ALASKA and LAGER disclaimed), and ALASKA EIGHT STAR LAGER (ALASKA and LAGER disclaimed) for "beer, ale and lager" in International Class 32.^[1] ("ALASKA Marks"). Alaskan Brewing & Bottling Co. ("Opposer") opposes registration of Applicant's

ALASKA Marks under Section 2(d) of the Trademark Act, 15 U.S.C § 1052(d), asserting priority and a likelihood of confusion with:

• ALASKAN (typset format) for "beer and ale" in International Class 32. The registration includes a claim of acquired distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f) ("Section 2(f) claim"), as to ALASKAN;^[2]

• ALASKAN WINTER ALE (typeset format) for "beer and ale" in International Class 32. The registration includes a Section 2(f) claim as to ALASKAN, and a disclaimer of WINTER ALE;^[3]

• ALASKAN AMBER ALT STYLE ALE (in standard characters) for "ale" in International Class 32. The registration includes a Section 2(f) claim as to ALASKAN and a disclaimer of AMBER ALT STYLE ALE;^[4] • ALASKAN ICY BAY (in standard characters) for "ale" in International Class 32. The registration includes a Section 2(f) claim as to ALASKAN and a disclaimer of ICY BAY;^[5]

• ALASKAN SUMMER KOLSCH STYLE ALE (in standard characters) for "ale" in International Class 32. The registration includes a Section 2(f) claim as to ALASKAN and a disclaimer of SUMMER KOLSCH STYLE ALE;^[6]

• ALASKAN SUMMER KOLSCH STYLE ALE and design, displayed as (Image Omitted) for "ale" in International Class 32. The registration includes a Section 2(f) claim as to ALASKAN and a disclaimer of SUMMER KOLSCH STYLE ALE;^[7]

• ALASKAN HARD SELTZER (in standard characters) for "alcoholic beverages, namely, hard seltzer" in International Class 33. The registration includes a Section 2(f) claim as to ALASKAN and a disclaimer of HARD SELTZER;^[8] and

• ALASKAN DISTILLING CO. (in standard characters) for "distilled spirits; spirits and liqueurs" in International Class 33. The application includes a Section 2(f) claim as to ALASKAN and a disclaimer of DISTILLING CO.^[9]

Applicant, in its Answer, denies the salient allegations of Opposer's Notice of Opposition. 4 TTABVUE.

The parties filed briefs, 36-38 TTABVUE, and appeared at an oral hearing on March 7, 2023.

I. Evidentiary Issue

Applicant, in its brief, refers to "over 2,000" third-party "entities registered in the State of Alaska which contain the term 'Alaska' or 'Alaskan' in their entity names, outside the alcoholic beverage market," citing as support an exhibit attached to Applicant's Response to Opposer's Summary Judgment Motion. App. Br., 37 TTABVUE 13. Opposer objects to this evidence, as it is not of record. Opp. Reb. Br., 38 TTABVUE 9 n.1.

In the November 16, 2021 Board Order denying Opposer's motion for summary judgment, the Board explained that "[a]bsent an agreement to proceed under ACR," which is not present here, "evidence submitted in connection with Opposer's motion for summary judgment is of record only for consideration of that motion. To be considered at final hearing, any such evidence must be properly introduced during the appropriate trial period." 21 TTABVUE 16 n.20 (citing, inter alia, Levi Strauss & Co. v. R. Josephs Sportswear Inc., 28 U.S.P.Q.2d 1464, 1465 n.2 (TTAB 1993)).

The objection is sustained because Applicant did not properly make the evidence of record at trial. See Trademark Rules 2.121 ("Assignment of times for taking testimony and presenting evidence"), 2.122 ("Matters in evidence") and 2.123 ("Trial testimony in inter partes cases"), 37 C.F.R. §§ 2.121, 2.122 and 2.123.^[10]

II. Record

The record consists of the pleadings and, by operation of Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), the files of Applicant's applications. The record also includes:

• Opposer's Notice of Reliance on Trademark Electronic Search System (TESS) printouts of Opposer's pleaded registrations and application (Exhibits 1-8), and Applicant's responses to Opposer's Interrogatories (Exhibit 9). 24 TTABVUE;

• Testimony Declaration of Linda Thomas ("Thomas Test. Decl."), Opposer's CEO, with exhibits. 25 TTABVUE;

• Applicant's Notice of Reliance on (i) the files for Applicant's three applications;^[11] (ii) Applicant's applications and resulting registrations for the ALASKA Marks in the State of Alaska; (iii) Opposer's Responses to Applicant's Interrogatories; (iv) printouts from the Trademark Status and Document Retrieval (TSDR) database of third-party registrations for ALASKA-inclusive marks;^[12] and (v) various other official documents from the State of Alaska pertaining to entities affiliated with or owned by Applicant (Denali Visions 3000 Corporation, Alaska Eight Star Brewing, Alaska Pacific Beverage Company, LLC and Alaska Pacific Brewery Equipment, LLC). 26 TTABVUE;

• Testimony Declaration of Jayson Motyka ("Motyka Test. Decl."), Applicant's CFO, with exhibits. 30 TTABVUE; and

• Transcript of the Oral Cross-Examination of Jayson Motyka, with exhibits. 34 TTABVUE.

III. Preliminary Issue -- Grounds for Opposition

A. Family of Marks

In its brief, Opposer raised for the first time a claim that it is the owner of a "family of ALASKAN marks, all of which use 'ALASKAN' as the initial term and source identifier." Opp. Br., 36 TTABVUE 11; see also id., at 6, 9, 10, 22, 27, and Opp. Reb. Br., 38 TTABVUE 15. We do not further consider Opposer's references in its briefs to a family of marks because Opposer did not plead that it owns a family of "ALASKAN" marks and that Applicant's marks are likely to cause confusion with that family, nor was the claim tried by the express or implied consent of the parties under Fed.R.Civ.P. 15(b).^[13] See Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La Michoacana Inc., 98 U.S.P.Q.2d 1921, 1927 (TTAB 2011) (petitioner's "family of marks" claim, raised for the first time in its brief not considered because it was neither pleaded nor tried by the parties); see also Standard Knitting Ltd. v. Toyota Jidosha K. K., 77 U.S.P.Q.2d 1917, 1929 n.17 (TTAB 2006) ("Opposer's reference to a family of marks in its brief, will not be considered as this claim was neither pleaded nor tried by the parties.").

B. Failure to Use the Marks in Commerce

In addition, because we sustain the Opposition on the pleaded Section 2(d) ground for the reasons discussed below, we do not reach the unpleaded claim that Applicant failed to use the marks in commerce, including the threshold question of whether the claim was tried by the express or implied consent of the parties under Fed.R.Civ.P. 15(b).^[14] Opp. Br., 36 TTABVUE 23-27. See Azeka Bldg. Corp. v. Azeka, 122 U.S.P.Q.2d 1477, 1478 (TTAB 2017) (the Board has "discretion to decide only those claims necessary to enter judgment and dispose of the case") (quoting Multisorb Tech., Inc. v. Pactive Corp., 109 U.S.P.Q.2d 1170, 1171 (TTAB 2013)); Am. Paging Inc. v. Am. Mobilphone Inc., 13 U.S.P.Q.2d 2036, 2039-40 (TTAB 1989), aff'd, 923 F.2d 869 (table), 17 U.S.P.Q.2d 1726 (Fed. Cir. 1990) (non-precedential).

IV. The Parties

Opposer and Applicant are both based in the State of Alaska.^[15] See, e.g., Thomas Test. Decl., 25 TTABVUE 3, ¶ 5 ("the ALASKAN brand has been marketed to millions of tourists that have visited Alaska, and Juneau specifically where [Opposer] maintains three physical locations...."); Motyka Test. Decl., 30 TTABVUE 6, ¶ 1 ("Since July, 2016, [Applicant] has operated as its principal business a full-service restaurant brew-pub in Anchorage, Alaska known as '49^th State Brewing Company,' .").

Opposer has sold ALASKAN beer since 1986. Thomas Test. Decl., 25 TTABVUE 2, ¶ 3. Opposer's annual advertising and promotional expenditures for ALASKAN beer exceed $4,000,000 annually. Id. at 4, ¶ 5. Opposer has received numerous national and international awards, including at the Great American Beer Festival and the World Beer Cup. Id. at 4, ¶¶ 7-11, referencing Exhibits B-D, 25 TTABVUE 11-36. In 2020, The Brewers Association (a not-for-profit trade association dedicated to independent and small brewers in the U.S.) ranked Opposer number 22 out of the top 50 producing craft brew companies in the U.S., and number 32 overall based on beer sales volume. Id. at 4-5, ¶ 12, referencing Exhibit E, 25 TTABVUE 37-44.

Applicant and its affiliates operate brew-pubs and restaurants in Anchorage, Denali and Healy, Alaska, including the full-service restaurant/brew-pub in Anchorage about which Mr. Motyka testified. Motyka Test. Decl., 30 TTABVUE 6, ¶ 3. Applicant has spent more than $100,000 to develop and promote Applicant's ALASKA Marks. Id. at 8, ¶ 15. Applicant's beer was featured in ALASKA BUSINESS MAGAZINE (ALONG WITH OPPOSER) FOR WINNING SEVERAL 2022 CRAFT BEER MARKETING AWARDS. Id. at 8, ¶ 17, referencing Exhibit K, 30 TTABVUE 35-37.

V. Entitlement to a Statutory Cause of Action

Entitlement to a statutory cause of action, formerly referred to as "standing" by the Federal Circuit and the Board must be established by the plaintiff in...