Origin of “Thunder Road” Trademarks
You may have encountered the name “Thunder Road” in recent years on a beer or liquor menu and wondered at its meaning. Deep in the Appalachian mountain region during the Prohibition era of the 20th century, the nickname “Thunder Road” was given to a clandestine moonshining route. This route was frequented by liquor runners who would remove the back seats of their cars to make space for half-gallon jars of whiskey. The most audacious runners would replace their ordinary car motors with self-engineered, high-speed motors allowing them to evade law enforcement on the winding roads. This culture of Southern, backwoods racecar tinkering ultimately birthed NASCAR. “Thunder Road” also inspired the movie Thunder Road and its iconic theme song. It’s not surprising then that in recent years as microbreweries and micro-distilleries have surged, in response to looser local regulations, some of these upstarts would gravitate to Thunder Road as business and product names.
“Thunder Road” Trademarks Today
Today there are dozens of active Thunder Road trademark files at the USPTO.
The majority of them are for goods and services unrelated to alcohol. Some examples include: “Thunder Roads” for motorcycle parts and accessories; “Thunder Road Guitars” for retail store services for vintage and pre-owned guitars; “Thunder Road” for entertainment services; and “Thunder Road” for gaming software. Out of the seventeen registrations currently active, two registrations use the same term “Thunder Road” in relation to alcohol products. The first is “Thunder Road” registered in 2009 by Thunder Road Brands, LLC. The registration is for alcoholic beverages, namely, Tennessee sour mash whiskey and moonshine. The second is “Thunder Road” used for beer by Copper Cellar Corporation (parent company of Calhoun’s).
So, how is it possible for the same name to be registered to one company for alcohol and another company for beer? The answer is distinct trade channels.
The cornerstone of trademark protection is avoidance of consumer confusion as to the source of products and services consumers purchase in the marketplace. When evaluating trademark applications for registration, one of the first things that trademark examiners do is compare proposed marks against previously pending and registered marks for related goods and services. (Similar goods and services are grouped together in “classes,” with certain goods and services formally recognized by subclasses in the USPTO Trademark ID Manual).
For alcoholic beverages, goods that are generally related for purposes of confusion include wine, cider, beer, and liquor, as well as the brewing, winemaking, distilling and bar and restaurant services for such goods. Trademark examiners have even included water and energy drinks or other non-alcoholic beverages in their examination of related goods and services. This expansive search protocol attempts to ensure that any approval of a mark for any beverage, alcoholic or not, will not cause a potential consumer to assume the two similarly named beverage products are from the same source. There is less chance that a consumer will confuse products even for related goods and services when they cannot be found in the same trade channel. This is why having distinct channels of trade is very important for a company seeking trademark registration. (Notably, liquor (class 033) and beer (class 032) are actually officially categorized in distinct classes.)
Importance of Differentiating Trade Channels
For beverages in particular, many are sold in the same channels of trade. Common channels of trade for beverages include restaurants, bars, grocery stores, supermarkets, gas stations, and liquor stores. Further, it is common that consumers will be confused as to the source of goods when they face multiple products with same or similar names present in the same trade channel. This is due to the beverage company trend to have expansive portfolios. For example, Coca-Cola Company products include BodyArmour, Costa Coffee, Dasani, Coke, Gold Peak Tea as well as Topo Chico hard seltzer and Jack Daniels Tennessee Whiskey and Coca-Cola. Thus, it is likely a consumer browsing a grocery store and seeing two products with the same or similar name in the same isle would assume they are from the same source. Given this dilemma, courts have found “similar names cannot exist without consumer confusion unless producers are able to differentiate their target customers or trade channels.”
In relation to the “Thunder Road” mark, the distinct trade channels for the two alcohol related products is how the two registrations may be able to stand with no holding of consumer confusion. Copper Cellar Corporation owns seven restaurant brands in the east Tennessee area. Copper Cellar restaurants serve beer brewed from at their very own Smoky Mountain Brewery. The “Thunder Road” trademark is used in connection with Smoky Mountain Brewery’s “Thunder Road Pilsner”. In addition to serving its beer at its restaurant brand locations, their beers are available at a few local retailers and venues in the greater Knoxville area. Thus, Copper Cellar Corporation’s trade channels for their beer include their restaurants and a few local retailers and venues around the Knoxville area. On the other hand Thunder Road Brand, LLC licenses the use of their mark to Old Tennessee Distilling Co. which in turn produces a corn whiskey called “Mitchum’s Thunder Road” and a rye called “Thunder Road Runner’s Rye”. Consumer have access to these “Thunder Road” trademarked products mainly at the distillery itself, located in the Knoxville area, where they can enjoy free tastings and purchase the products on site. Each brand has distinct trade channels that are narrow to its particular brand. Thus, one could surmise that a consumer is unlikely to be confused since it is unlikely, they will be presented with both the Smokey Mountain Brewery “Thunder Road Pilsner” and the Old Tennessee Distillery “Mitchum’s Thunder Road” corn whiskey or “Thunder Road Runners Rye” in the same place. On the other hand, the brands are operated in the same region, and less sophisticated consumers, in the sense of less local consumers visiting the region, could honestly think the two brands are associated.
Mechanics of a Thunder Road Trademark Dispute
In 2013, Copper Cellar filed its trademark application, Serial No. 85932711, for beer. The application was initially suspended pending the outcome of Thunder Road Brands’ prior application, Serial No. 77859042, for moonshine and Tennessee sour mash whiskey. Thunder Road Brands’ application was similarly previously suspended pending the disposition of yet another prior application, Serial No. 77885911, for beer by an Australian company. Thunder Road Brands was able to obtain a consent letter by the Australian company Elixir Signature Pty to move forward. Once Thunder Road Brands’ application registered for moonshine and whiskey, it formed the basis for a 2020 Office Action against Copper Cellar’s application. Copper Cellar was unable to persuade the Examiner that there would be a lack of confusion between their beer and Thunder Road Brands’ sour mash whiskey. Specifically, Copper Cellar argued that the USPTO, Trademark Office, already determined that Thunder Road used in relation to both beer and sour mash whiskey was not related and thus not confusingly similar. This argument was based on the fact that the Trademark Office allowed registration for both Thunder Road Brands’ “Thunder Road” sour mash whiskey and Elixir Signature’s “Thunder Road” beer. The Examiner rejected Copper Cellar’s argument because registration was only allowed due to a consent agreement between the two parties, not because the Examiner found beer and sour mash whiskey to be unrelated with no likelihood of confusion. In addition, since Copper Cellar was not a party to the consent agreement, it could not use evidence of such as a defense to a determination of likelihood of confusion. Ultimately, the Examiner found likelihood of confusion based on a conclusion that the use of Thunder Road for both beer as well as sour mash whiskey and moonshine were identical in appearance, sound, meaning, and overall commercial impression; the goods themselves were related; and the goods were found in the same trade channels.
Of most importance, the Examiner made the determination that beer and liquor were related goods even though they are in different trademark classifications. Beer is Class 32 while liquor is Class 33. While the goods are not identical, such is not needed. In fact, the goods do not even need to be in competition with each other to be considered related. Instead, the goods only need to be related in some manner that could give rise to the mistaken belief they come from the same source. Today, it is common for entities to produce Class 32 non-alcoholic beverages and beer, Class 33 liquor, and Class 30 coffee all under the same entity name. As a result, consumers who see any two beverage products, no matter the type, with the same brand name will likely assume they derive from the same source. Thus, even though beer and non-alcoholic beverages, liquor, and coffee are all different trademark classes, they can still be held related and capable of confusion. Based on the foregoing, the Examiner supported his likelihood of confusion conclusion by pointing to Bent Brewstillery, Ellison Brewery + Spirits, The Depot, Dogfish Head Craft Brewery, and Lexington Brewing & Distilling Co. who all manufacture, produce, and provide beer and sour mash whiskey under the same entity name. In turn, consumers seeing Copper Cellar’s beer and Thunder Road Brands’ sour mash whiskey and moonshine all bearing the name “Thunder Road” would likely assume they are derived from the same source. Thus, the goods were found to be related and the Examiner held that likelihood of confusion between the two marks must be found to exist.
Consequently, Copper Cellar instituted a Cancellation Proceeding No. 92077084 against Thunder Road Brands to cancel their mark, that settled with a consent agreement by Thunder Road Brands to agree that it would not be harmed by Copper Cellar’s registration. A consent agreement may be introduced into the record of a trademark prosecution for the purpose of obtaining registration. Essentially, in a consent agreement the owner of the registered trademark, held to be confusingly similar to the applicant’s mark, may give registration permission to the applicant. In a consent agreement, parties will include details pertaining to why each believes confusion is unlikely to begin with and steps each party will take to reduce any confusion that may arise. Being that the consent agreement reflects the opinions of the two parties who are most familiar with the conflicting marks uses in the marketplace, the Trademark Office places great weight in such agreements. Thus, a consent agreement is an important tool for an applicant to use when they seek to get around a Trademark Office registration rejection based on likelihood of confusion. In the Thunder Road proceeding, Copper Cellar utilized a “strong arm” tactic to receive a consent agreement with Thunder Road Brands. Compared to Thunder Road Brands, Copper Cellar is a “corporate giant” so to speak. Copper Cellar owns a variety of restaurants including Calhoun’s Smoky Mountain Brewery, Chesapeake’s, Cherokee Grill, Copper Cellar, Cappuccino’s, Corner16, Copper Cellar Marketplace, and Copper Cellar Catering. Further, Copper Cellar is an established beer producer as they claim to have been selling beer as early as 1995. On the other hand, Thunder Road Brands is a newer brand as they began selling whiskey and moonshine in 2015 and only sell their Thunder Road liquor at their Old Tennessee Distilling Company and a few liquor stores. Given the position of Copper Cellar in relation to Thunder Road Brands, Thunder Road Brands decided to enter into the consent agreement with Copper Cellar giving them permission to use the Thunder Road mark in relation to beer instead of attempt to fight the Cancellation Proceeding and face the risk of losing their own registration. In the agreement, the parties referenced the fact that both have been selling their respective goods simultaneously since 2015 without confusion. Further, the parties stated their belief that no likelihood of confusion exists given that: (1) Copper Cellar sells its beer primarily in Copper Cellar owned restaurants and niche beer retailers while Thunder Road Brands primarily sells its whiskey and moonshine in Old Tennessee Distilling Company distillery as well as liquor stores; (2) the locations Copper Cellar beer is sold does not sell liquor and the Thunder Road Brands’ point of sale locations do not sell beer; and (3) no common retailer sells both parties’ products. Last but not least, the parties agreed to take steps to reduce or eliminate any confusion that does arise. With the consent agreement entered into the trademark prosecution, the Trademark Office allowed Copper Cellar to receive trademark registration despite its previous likelihood of confusion holding.
Takeaways: How to Force Consent through TTAB Actions
There are two major takeaways from the Thunder Road trademark proceedings. For starters, marks in different classes can still be rejected based on likelihood of confusion. As the Examiner pointed out, goods do not need to be in competition with each other to be considered related. The determining factor for relatedness is whether consumers will likely believe that the goods are from the same source. For Thunder Road, beer and liquor were held as related despite different trademark classifications since consumers would likely believe they were from the same source. Thus, when registering a mark for your good/service it is important to keep in mind that having a different classification from similar or identical marks may not be enough. Instead, one must look beyond the classification of their good/service to the classifications for goods/services often associated in the market with their own. By doing this, one will become aware of all potential marks raising a likelihood of confusion issue. Second, a likelihood of confusion determination by the Trademark Office does not kill all potential for one’s mark to be registered. Instead, one can always attempt to “strong arm” the owner of the registered conflicting mark into giving permission for registration through a consent agreement. The “strong arm” tactic is especially useful when the applicant is a larger, more established company compared to the owner of the registered conflicting mark. Thus, using one’s position in the marketplace to negotiate directly with the conflicting registered mark owner is a great way to avoid a likelihood of confusion holding by the Trademark Office and take registration into one’s own hands. Thus, it is important not to forget about consent agreements when attempting to register a trademark as they may be the difference between registration and rejection of a mark.
Read more Rockridge® insights on Trademarks here.
About Micah Gonzalez, CIPP
Micah Gonzalezi, CIPP, is a brand and data privacy attorney at Rockridge®, a Certified B Corp and RealLeaders Top 150 global impact company. Micah is a former collegiate volleyball player and began her career with Rockridge as an NIL Fellow. She previously worked for the Nashville Predators, and helps athletes, entertainers, and influencers monetize their rights, and helps companies and organizations build brand pipelines. As a Certified Intellectual Privacy Professional under the IAPP, Micah helps e-commerce, health, and technology companies properly manage customer data and build strategies for asset development stemming from proprietary data sets.
Micah’s practice areas include:
- athlete and entertainer rights;
- brand law, including copyright and trademark practice;
- data privacy; and,
- social enterprise, ESG, and B Corps.
Contact
Email Micah Barrett directly at micah@rockridgelaw.com.
