Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
`ESTTA1236534
`09/19/2022
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`ESTTA Tracking number:
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`Filing date:
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`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
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`Notice of Opposition
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`Notice is hereby given that the following party opposes registration of the indicated application.
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`Opposer information
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`Name
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`Entity
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`Address
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`Correspondence
`information
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`The Old Pogue Distillery, LLC
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`Limited Liability Company
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`Citizenship
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`Kentucky
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`716 WEST SECOND STREET
`MAYSVILLE, LA 41056
`UNITED STATES
`
`PETER H POGUE
`THE OLD POGUE DISTILLERY, LLC
`716 WEST SECOND STREET
`MAYSVILLE, KY 41056
`UNITED STATES
`Primary email: info@oldpogue.com
`Secondary email(s): ppogue@schultzpoguelaw.com
`3176975039
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`Applicant information
`
`Application no.
`
`97085455
`
`Opposition filing
`date
`
`Applicant
`
`09/19/2022
`
`Peristyle, LLC
`4445 MCCRACKEN PIKE
`FRANKFORT, KY 40601
`UNITED STATES
`
`Goods/services affected by opposition
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`Publication date
`
`09/13/2022
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`Opposition period
`ends
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`10/13/2022
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`Class 040. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Spirits distillery services
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`Grounds for opposition
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`Priority and likelihood of confusion
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`Trademark Act Section 2(d)
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`The mark is deceptively misdescriptive
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`Trademark Act Section 2(e)(1)
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`The mark is primarily geographically deceptively
`misdescriptive
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`Trademark Act Section 2(e)(3)
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`Mark cited by opposer as basis for opposition
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`U.S. application/ registration
`no.
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`Register
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`Registration date
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`NONE
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`NONE
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`NONE
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`Application date
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`NONE
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`ESTTA1236534
`09/19/2022
`
`ESTTA Tracking number:
`
`Filing date:
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Notice of Opposition
`
`Notice is hereby given that the following party opposes registration of the indicated application.
`
`Opposer information
`
`Name
`
`Entity
`
`Address
`
`Correspondence
`information
`
`The Old Pogue Distillery, LLC
`
`Limited Liability Company
`
`Citizenship
`
`Kentucky
`
`716 WEST SECOND STREET
`MAYSVILLE, LA 41056
`UNITED STATES
`
`PETER H POGUE
`THE OLD POGUE DISTILLERY, LLC
`716 WEST SECOND STREET
`MAYSVILLE, KY 41056
`UNITED STATES
`Primary email: info@oldpogue.com
`Secondary email(s): ppogue@schultzpoguelaw.com
`3176975039
`
`Applicant information
`
`Application no.
`
`97085455
`
`Opposition filing
`date
`
`Applicant
`
`09/19/2022
`
`Peristyle, LLC
`4445 MCCRACKEN PIKE
`FRANKFORT, KY 40601
`UNITED STATES
`
`Goods/services affected by opposition
`
`Publication date
`
`09/13/2022
`
`Opposition period
`ends
`
`10/13/2022
`
`Class 040. First Use: None First Use In Commerce: None
`All goods and services in the class are opposed, namely: Spirits distillery services
`
`Grounds for opposition
`
`Priority and likelihood of confusion
`
`Trademark Act Section 2(d)
`
`The mark is deceptively misdescriptive
`
`Trademark Act Section 2(e)(1)
`
`The mark is primarily geographically deceptively
`misdescriptive
`
`Trademark Act Section 2(e)(3)
`
`Mark cited by opposer as basis for opposition
`
`U.S. application/ registration
`no.
`
`Register
`
`Registration date
`
`NONE
`
`NONE
`
`NONE
`
`Application date
`
`NONE
`
`
`
`Mark
`
`Goods/services
`
`DISTILLED SPIRITS
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`Attachments
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`BOB two small jpegjpg.jpg
`Notice of Opposition Castle and Key Application.pdf(94645 bytes )
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`Signature
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`/Peter H. Pogue/
`
`Name
`
`Date
`
`Peter H Pogue
`
`09/19/2022
`
`
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`In the Matter of Application Serial No. 97085455
`For the trademark BIRTHPLACE OF BOURBON
`HOSPITALITY
`Published in the Official Gazette September 13, 2022
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`THE OLD POGUE DISTILLERY, LLC,
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`Opposer,
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`Peristyle, LLC DBA Castle & Key )
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`Applicant.
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`Opposition No.:
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`NOTICE OF OPPOSITION
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`
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`The Old Pogue Distillery, LLC (“Opposer”) hereby opposes the above-referenced
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`application to register the BIRTHPLACE OF BOURBON HOSPITALITY mark filed by Peristyle,
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`LLC, DBA Castle & Key (“Applicant”). The grounds for opposition are as follows:
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`THE PARTIES
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`1.
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`Opposer is a Kentucky limited liability company with a place of business at 716
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`West Second Street, Maysville, KY 41056.
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`2.
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`Applicant is a Kentucky limited liability company with a place of business at 4455
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`McCracken Pike, Frankfort, KY 40601.
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`FACTUAL BACKGROUND
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`3.
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`Opposer produces, markets, and sells a number of different types and brands of
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`alcoholic beverages, namely distilled spirits, specifically Kentucky bourbon and rye whiskey,
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`distilled, bottled, marketed and sold in the United States, and originating in Maysville, Mason
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`County, Kentucky, with a history dating to 1876.
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`4.
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`Opposer is the owner of substantial trademark rights in the mark THE
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`BIRTHPLACE OF BOURBON.
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`5.
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`Opposer has been using the mark THE BIRTHPLACE OF BOURBON to promote
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`its products and related services since 2014. Since that time, Opposer has established extensive
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`and valuable goodwill in the mark and has spent significant amounts of time and money
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`establishing this goodwill.
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`6.
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`THE BIRTHPLACE OF BOURBON mark has come to indicate and stand for the
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`high-quality products and services offered by Opposer.
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`7.
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`As a result of Opposer’s use of THE BIRTHPLACE OF BOURBON mark, THE
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`BIRTHPLACE OF BOURBON mark has become valuable property of Opposer.
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`8.
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`Trademark App. Ser. No. 97085455 (the “Application”) was filed by Applicant for
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`the BIRTHPLACE OF BOURBON HOSPITALITY mark on October 21, 2021.
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`9.
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`The Application is an intent-to-use application and covers spirits distillery services.
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`10.
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`Extensive historical documentation by academicians and historians document
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`Maysville, Kentucky, as the origin of bourbon whiskey, not Frankfort, Kentucky.
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`11.
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`Opposer, not Applicant, is incorporated in the community commonly and
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`historically documented as the “Birthplace of Bourbon.”
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`1st Ground for Opposition -
`Likelihood of Confusion
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`12.
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`Opposer incorporates by reference paragraphs 1-11 and re-alleges them as if stated
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`herein.
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`13.
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`Opposer’s actual, continuous, and continuing use of THE BIRTHPLACE OF
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`BOURBON mark in commerce began well before Applicant filed its Application and/or began
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`using the BIRTHPLACE OF BOURBON HOSPITALITY mark.
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`14.
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`Applicant’s use and registration of
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`the BIRTHPLACE OF BOURBON
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`HOSPITALITY mark for the services listed in the Application is likely to cause confusion,
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`mistake, and/or lead to deception as to the origin of Applicant’s services in violation of Sections
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`32 and 43(a) of the Lanham Act, 15 U.S.C. §§1114 and 1125(a).
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`15.
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`The likelihood of confusion is apparent in this instance because: (a) the parties are
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`using practically identical marks; and (b) Opposer and Applicant will use their respective marks
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`in connection with the goods and services related to bourbon and other distilled spirits.
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`16.
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`Applicant’s use and registration of
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`the BIRTHPLACE OF BOURBON
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`HOSPITALITY mark is likely to result in confusion and substantial damage and injury to Opposer.
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`Persons familiar with Opposer’s business and its use of THE BIRTHPLACE OF BOURBON mark
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`are likely to believe that Applicant’s services originate with, or are licensed, sponsored, or
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`approved by Opposer. Any such confusion would inevitably result in damage to the goodwill and
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`reputation that Opposer has established in THE BIRTHPLACE OF BOURBON mark.
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`2nd Grounds for Opposition –
`Deceptively Misdescriptive Mark
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`Opposer incorporates by reference paragraphs 1-16 and re-alleges them as if stated
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`17.
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`herein.
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`18.
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`The intended use of the BIRTHPLACE OF BOURBON HOSPITALITY mark by
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`Applicant is deceptively misdescriptive in violation of Sections 2(e) of the Lanham Act, 15 U.S.C.
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`§1052(e).
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`19.
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`Applicant’s intended use of the BIRTHPLACE OF BOURBON HOSPITALITY
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`mark would suggest that bourbon originated in Frankfort, Kentucky, which is false. Extensive
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`historical documentation by academicians and historians document Maysville, Kentucky, as the
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`origin of bourbon whiskey.
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`20.
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`Prospective consumers, tourists, and other individuals of the consuming public, are
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`likely to falsely believe, based on Applicant’s use and registration of the BIRTHPLACE OF
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`BOURBON HOSPITALITY mark, that Applicant’s city, Frankfort, Kentucky, is the location
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`where bourbon whiskey was first distilled and where it is named after.
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`21.
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`Opposer is incorporated in the community commonly and historically documented
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`as the “Birthplace of Bourbon,” and Opposer will be damaged by Applicant’s registration of the
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`BIRTHPLACE OF BOURBON HOSPITALITY mark, as such use and registration will deceive
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`the public as to the historic nature of bourbon, bourbon’s birthplace, and falsely believing the city
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`of Frankfort is its origin.
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`WHEREFORE, Opposer prays that the Application be rejected on the foregoing grounds
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`Dated this 19th day of September, 2022.
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`Respectfully submitted,
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`By:
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`/Peter H. Pogue/
`Peter H. Pogue
`President
`The Old Pogue Distillery, LLC
`716 West Second Street
`Maysville, KY 41056
`(317) 697-5039
`info@oldpogue.com
`
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