For some, the mention of a Long Island Iced Tea may bring back memories of fun nights out at a bar or club. For others, the name may evoke regret of an overly enthusiastic night. In any case, most people would immediately think of the infamous, five-liquor mixed cocktail when hearing the name.
Nonetheless, one New York-based beverage company decided to take this preconception on, and after three years of trademark proceedings, it may have managed to take its first shaky step to success.
Earlier this month, the Long Island Iced Tea Corp. announced to its investors that it was issued a trademark for Long Island Iced Tea® in International Class 30 for beverages made of tea, beverages with a tea base, fruit teas, tea-based beverages, and tea-based beverages with fruit flavoring. This issuance, according to the corporation, “solidifies the company’s legal ownership of the mark Long Island Iced Tea® for use in marketing and other business related matters—a mark that has been in continuous use since 2011.”
To many, this trademark registration may sound rather shocking—and it may raise a few questions. For one, how was the trademark registered when the alcoholic beverage has reportedly been around since 1972?
And how did the company register the name “Long Island Iced Tea” for pre-bottled iced tea when most know it as an alcoholic beverage?
These concerns came up during the Long Island Iced Tea Corp.’s federal registration application process, and settlement of these concerns are the reasons the application took a few years to be fully processed. On July 23, 2013, the brand sought federal registration for the name “Long Island Iced Tea” on the US Patent and Trademark Office (USPTO) Principal Register. By November of that year, the USPTO slapped the corporation with an office action. In its office action, the USPTO argued that the “Long Island Iced Tea” mark was deceptively misdescriptive, given the generic knowledge of the name as one for an alcoholic beverage. It also argued that the “Long Island Iced Tea” mark was likely to cause confusion with another USPTO registered mark, “Long Island,” in International Class 30 for iced teas.
Determined to gain registration for the mark, the corporation filed a response to the office action in May of 2014. Here, it claimed that the “Long Island Iced Tea” mark was not deceptively misdescriptive, as the mark had no clear reference to alcohol in it. In response to the likelihood of confusion argument, the corporation boldly filed for a petition to cancel the already-registered “Long Island” mark that the USPTO was claiming could cause confusion.
A few years later, not only did the corporation manage to successfully cancel the “Long Island” mark’s registration, but it also fended off a second and final office action from the USPTO. Finally, on April 19, 2016, the USPTO granted the Long Island Iced Tea Corp. registration for the “Long Island Iced Tea” mark. However, instead of granting the corporation registration on the USPTO’s Principal Register, it instead issued a registration for the mark on its Supplemental Register.
With a registration on the USPTO’s Supplemental Registration instead of the Principal Register, the legal ownership of the “Long Island Iced Tea” mark may not be as solidified as the corporation’s press release claims. Key differences between the two registers may complicate the future of the mark.
The Supplemental Register is reserved only for marks that are descriptive, and while the owner of a mark on the Supplemental Register can still bar subsequent applications or use the federal ® sign as a way to warn others of the mark’s registration, the mark can never achieve incontestability. And registration of the mark on the Supplemental Register does not serve as prima facie evidence of ownership and use of the mark in legal matters involving that mark.
Most frighteningly, third parties can also still move to cancel a registered mark on the Supplemental Register. However, if the Long Island Iced Tea Corp. manages to use the “Long Island Iced Tea” mark exclusively for nonalcoholic tea beverages while registered on the Supplemental Register for five years, it may file a new application for registration on the Principal Register, and that period of exclusive use could serve as evidence of the required distinctiveness a mark needs for successful registration.
So what does this mean for the future of the notorious cocktail? For now, you can still flag down your bartender and order an LIIT, as the Long Island Iced Tea Corp. only registered the mark in Class 30 and not Class 33 for alcoholic beverages. However, if it can manage to survive during its time on the Supplemental Register, don’t be surprised to see it try to push its claims of ownership a little further!
—Mike Ortega is an Associate Trademark Consultant for Interbrand in New York.