News & Insights

Hamilton Brook Smith Reynolds Trademark Win at the TTAB Iron Balls International Ltd. v. Bull Creek Brewing, LLC

By: John L. DuPré and Daniel A. Fleisher

Hamilton Brook Smith Reynolds secured a significant trademark win for client Bull Creek Brewing after a full Hearing before the Trademark Trial and Appeal Board (TTAB) in the matter of Iron Balls International Ltd. v. Bull Creek Brewing, LLC, Cancellation No. 92079099. The action involved Bull Creek’s registered IRON BALLS brand for beer.

On June 4, 2024, the TTAB issued a 49-page precedential decision rejecting a request for partial cancellation of Bull Creek’s IRON BALLS trademark that sought to narrow the identification of goods from “beer” to so-called “micro-brewed craft beer.” Hamilton Brook Smith Reynolds attorneys John DuPré and Dan Fleisher, as well as former Hamilton Brook Smith Reynolds attorney Kristen Keriakos, were instrumental in achieving this excellent result for the client. This ruling not only upholds the full scope of the identification of goods for Bull Creek’s IRON BALLS trademark, but also sets a precedent that could influence future trademark cases.

Overall, the TTAB concluded that a restriction from “beer” to “micro-brewed craft beer” would not avoid a likelihood of confusion between the challenger’s alleged IRON BALLS mark for Gin and Bull Creek’s IRON BALLS trademark for Beer. In particular, the TTAB held that Bull Creek’s trademark is “conceptually strong.” The TTAB also found that the challenger’s alleged mark “comes too close, appropriating IRON BALLS as the most prominent, dominant part of its mark.”

In an especially noteworthy aspect of the decision, the TTAB held that the doctrine of collateral estoppel (i.e., issue preclusion) barred re-litigation of the first DuPont factor—comparison of the marks—based on the challenger’s previous unsuccessful ex parte appeal, where the challenger’s alleged mark was found confusingly similar to IRON BALLS. This is exactly the result that Hamilton Brook Smith Reynolds had advocated for—that a finding from a party’s ex parte appeal can have preclusive effect in a later inter partes proceeding, such as the instant cancellation, brought by that same party.

Also notable was the TTAB’s holding for the second DuPont factor—relatedness of the goods—that a restriction to so-called “micro-brewed craft beer” would “not affect the nature of the beer” that Bull Creek produces and thus “does not impose a meaningful limitation for purposes of likelihood of confusion analysis.” (emphasis added) Given this finding, as well as the TTAB’s conclusion for the third DuPont factor that the challenger’s “[g]in and ‘micro-brewed craft beer’ would travel through overlapping channels of trade to a broad class of customers … who could well perceive the parties’ goods as related,” the TTAB denied the request for partial cancellation.

John DuPré stated, “We are delighted to obtain this result for our client, who has worked hard over the years to build a business producing a variety of beers, including IRON BALLS beer, which have been enjoyed for years by Bull Creek’s consumers. In particular, we feel vindicated by the TTAB’s finding that so-called ‘micro-brewed craft beer’ fails to meaningfully describe the nature of Bull Creek’s IRON BALLS beer.”

Dan Fleisher stated, “From the outset, we have urged the TTAB to see this case for what it really was—a thinly-veiled attempt to resurrect the challenger’s earlier failed effort to register its confusingly similar alleged mark. The TTAB’s decision—especially its rejection of the proposed restriction as mere window dressing—is a welcome validation of our arguments.”

The TTAB’s decision has received coverage in both Law360 and The TTABlog.

John DuPré, Senior Counsel at Hamilton Brook Smith Reynolds

John.DuPre@hbsr.com  LinkedIn

Dan Fleisher, Associate at Hamilton Brook Smith Reynolds

Daniel.Fleisher@hbsr.com  LinkedIn

About Hamilton Brook Smith Reynolds  Hamilton Brook Smith Reynolds is among New England’s largest law firms devoted to the practice of intellectual property law. The firm specializes in patents, trademarks, intellectual property litigation, copyrights, licensing, due diligence, opinions, trade secrets, and intellectual property counseling. The firm’s legal staff provides comprehensive intellectual property expertise in a wide range of technical areas such as biotechnology & life sciences, biologics & immunotherapies, bioinformatics, chemistry, computer hardware and software, telecommunications, materials science, medical devices, pharmaceuticals, physics, optics, nanotechnology, and electrical, chemical and mechanical engineering.