8 BIT Aleworks Appeal And Need to Seek Trademark Advice

Takeaway: This case highlights the importance of adequately preparing trademark applications and appeals. Always seek the assistance of an experienced intellectual property professional to deal with the USPTO.

The TTAB (Trademark Trial and Appeal Board) handed down its appellate decision concerning a rejected trademark application for “8-BIT ALEWORKS.” 8-Bit Brewing LLC, an Arizona craft beer company, applied for the standard character mark “8 BIT BREWING COMPANY” and was rejected due to a likelihood of confusion (15 U.S.C. §1052(d)) with existing trademarks registered in the same class. The TTAB affirmed the refusal because they determined that the marks were nearly identical and that a consent agreement between companies was not adequate to mitigate the likelihood for consumer confusion presented by this similarity.

The trademark that presented the highest likelihood of confusion was the standard character mark “8 BIT BREWING COMPANY.” (Reg. No. 4564603) The board found that the terms “8-BIT” and “8 BIT” are “virtually identical,” as they are both meant to evoke classic video games and the 8-bit architecture of classic gaming consoles. Additionally, the judges opined that “BREWING COMPANY” and “ALEWORKS” were highly descriptive and generic terms when used in association with beer. Therefore, these generic terms were mostly excluded from their analysis, leading them to conclude that the marks are nearly identical and present a strong likelihood of consumer confusion.

8-Bit Brewing LLC seemingly anticipated that the USPTO would deem that the marks present a likelihood of confusion, so they sought and came to an agreement with the owner of the similar mark to take steps to minimize the risk of consumer confusion. According to the judges, “consent agreements are frequently entitled to great weight,” but the TTAB held that in this instance the likelihood persists even in light of the agreement. In fact, the judges refer to portions of the consent agreement as “vague” and “ambiguous.”

Ultimately, as seen in the images above, the marks bear remarkable similarity and are likely to be confused by the average consumer. It seems that, if the applicant had presented an adequate consent agreement, the applicant may have been able to overcome the rejection.