Beer Dispute Still Brewing: Federal Circuit Ruling Leaves Fate of BROOKLYN BREW SHOP Mark Partially Undecided

In Brooklyn Brewery Corp. v. Brooklyn Brew Shop, LLC, No. 20-2277 (Fed. Cir. Oct. 27, 2021), the Federal Circuit dismissed in part, affirmed in part, and vacated in part the TTAB’s denial of Brooklyn Brewery Corp.’s (“BBC”) petition to cancel the BROOKLYN BREW SHOP mark and BBC’s opposition to Brooklyn Brew Shop’s (“BBS”) application to register a stylized version of the same mark.

With respect to BBC’s cancellation petition, the Federal Circuit held that the TTAB properly denied BBC’s petition due to laches in light of BBC’s four-year delay in bringing an action.  With respect to BBC’s opposition to BBS’s application for goods in Class 5, the Court found that BBC lacked Article III standing to appeal the TTAB’s decision because it does not make or sell goods in this class and, thus, could not establish an injury in fact.  With respect to BBC’s opposition to BBS’s application for goods in Class 32, the Court found that the TTAB did not err in rejecting BBC’s likelihood-of-confusion claims or in failing to consider BBC’s geographic descriptiveness claim.  However, the Court found that the TTAB erred in evaluating whether BBS demonstrated that the applied-for mark has acquired distinctiveness as to beer-making kits in Class 32.  Thus, the Court vacated and remanded on that issue.