Congregation Ale House (AZUSA Chapter) LLC

Trademark Trial and Appeal Board

Sep 9, 2014

No. 85744747 (T.T.A.B. Sep. 9, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
September 9, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Congregation Ale House (AZUSA Chapter) LLC
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Serial No. 85744747
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Robert Jystad of Channel Law Group, LLP for Congregation Ale House (AZUSA
Chapter) LLC.

Zachary Bello, Trademark Examining Attorney, Law Office 111 (Robert L. Lorenzo,
Managing Attorney).
_____

Before Kuhlke, Ritchie, and Masiello, Administrative Trademark Judges.
Opinion by Masiello, Administrative Trademark Judge:
Congregation Ale House (AZUSA Chapter) LLC (“Applicant”) has filed an
application to register on the Principal Register the mark DARK OF THE
COVENANT in standard characters for “Beer.”1
The Trademark Examining Attorney refused registration under § 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, as used
in connection with Applicant’s goods, so resembles the registered mark COVENANT

1 Application Serial No. 85744747, filed October 3, 2012 under Trademark Act § 1(b), 15
U.S.C. § 1051(b), on the basis of Applicant’s bona fide intent to use the mark in commerce.
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(in standard characters) as to be likely to cause confusion, or to cause mistake, or to
deceive. The cited mark is registered for “”Wine.”2 The Examining Attorney also
required that Applicant disclaim the exclusive right to use DARK apart from the
mark as shown. Applicant did not comply with this requirement. When the refusal
under Section 2(d) and the disclaimer requirement were made final, Applicant
brought this appeal. Applicant and the Examining Attorney have filed briefs and
Applicant has filed a reply brief.
1. Evidentiary matter.
We turn first to an evidentiary objection raised by the Examining Attorney in
his brief.3 Applicant submitted, within the text of its brief, images of the labels and
other trade dress of Applicant and Registrant and sales figures for Applicant’s
goods. Applicant also submitted, as an attachment to its brief, a page of press
notices taken from the website of Registrant. None of this evidence was made of
record during the prosecution of the application. As it is untimely, we have not
considered it. “The record in the application should be complete prior to the filing of
an appeal. The Trademark Trial and Appeal Board will ordinarily not consider
additional evidence filed with the Board by the appellant or by the examiner after
the appeal is filed.” 37 C.F.R. § 2.142(d). See also TBMP § 1207.01. The Applicant
has the responsibility to make sure that the record is complete prior to filing a
notice of appeal. In re Van Valkenburgh, 97 USPQ2d 1757, 1768 n. 32, 1769 (TTAB

2 Registration No. 3077476, issued April 4, 2006; Section 8 affidavit accepted; Section 15
affidavit acknowledged.
3 Examining Attorney’s brief at 4.
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2011). Applicant’s request, set forth in its reply brief at 1, that we remand the case
to the Examining Attorney “for the purpose of developing a more adequate record”
comes very late in this proceeding and lacks any demonstration of good cause. In re
Luxuria s.r.o., 100 USPQ2d 1146 (TTAB 2011) (denial of request for remand made
after appeal briefs were filed and without a showing of good cause). See also TBMP
§ 1207.02. Accordingly, the request is denied.
2. Refusal under Section 2(d).
Our determination under Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the factors bearing on the issue of
likelihood of confusion as set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973).4 In any likelihood of confusion analysis,
two key considerations are the similarities between the marks and the similarities
between the goods and services at issue. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). In this case, Applicant
and the Examining Attorney have also submitted arguments regarding trade
channels, careful selection of the goods by customers, absence of actual confusion,
absence of bad intent on the part of Applicant, and First Amendment
considerations.

4 Applicant has argued its case by reference to the standards of the 9th Circuit Court of
Appeals. The Board’s primary reviewing Court is the Federal Circuit Court of Appeals,
which has adopted, as its standard for analyzing likelihood of confusion, the 13 factors set
forth by its predecessor Court in In re du Pont, cited above. The du Pont factors are
sufficiently comprehensive to afford consideration to all of the arguments advanced by
Applicant.
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(a) The marks.
We first consider the similarity or dissimilarity of the marks at issue in terms
of appearance, sound, meaning, and overall commercial impression. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689, 1692
(Fed. Cir. 2005). In a particular case, any one of these means of comparison may be
critical in finding the marks to be similar. See, e.g., Coach Servs., Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). We base
our determination on a consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). However,
there is nothing improper in stating that, for rational reasons, more or less weight
has been given to a particular feature of a mark, provided the ultimate conclusion
rests on a consideration of the marks in their entireties. Id.
The Examining Attorney argues that Applicant’s mark incorporates the
entirety of the registered mark, COVENANT, and that COVENANT is the
dominant component of Applicant’s mark because it is arbitrary as applied to the
goods. The Examining Attorney argues further that the word DARK in Applicant’s
mark “has no strong significant distinguishing factor or Trademark value because it
is descriptive of [a] characteristic or feature of the identified goods and nothing
else.”5
Applicant argues as follows:
[The mark] is intended to be a satirical play on the
biblical phrase “Ark of the Covenant.” As such it is a

5 Examining Attorney’s brief at 5-6.
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humorous reference to antireligious sentiments … or,
alternatively, is a tongue in cheek reference to suggest a
rejection of the negative view some segments of society
have toward social drinking. … Applicant is not
marketing a beer called Covenant of which this is the
dark version. That the word “dark” describes the beer is
incidental to the name and is part of the satire or humor.6
Applicant refers to Registrant’s website for purposes of characterizing the
connotation of Registrant’s mark; however, no portion of that website was ever
made of record.7 Nor is there any evidence of record with respect to “the biblical
phrase ‘Ark of the Covenant.’” Applicant explained this phrase during prosecution
as follows:
The ark of the covenant was a special chest that was
constructed to contain the two stone tablets containing
the Ten Commandments delivered by God to Moses on
Mt. Sinai. Exodus 25:10-22. The “ark” was made popular
in Steven Spielberg’s blockbuster movie “Raiders of the
Lost Ark.”8
The Board cannot take judicial notice of the impact of a movie upon the public’s
understanding of the phrase “ark of the covenant.” While we do not wholly rule out
the option of taking judicial notice of a canonical ancient text like Exodus, in this
case we decline to do so. (Applicant should simply have submitted a copy of
whatever text it wished the Board to read.) We will, however, take notice of the
following dictionary definition of “ark”:

6 Applicant’s brief at 2.
7 The citations to the URL of Registrant’s website in Applicant’s response of August 2, 2013
are not sufficient to make the content of that website of record. “The Board will not utilize
a link or reference to a website’s internet address to consider content that may appear
there.” TBMP § 1208.04. See also In re HSB Solomon Associates LLC, 102 USPQ2d 1269
(TTAB 2012).
8 Response of August 2, 2013, fn.1.
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2. Also called ark of the covenant. A chest or box
containing the two stone tablets inscribed with the Ten
Commandments, carried by the Israelites in their
wanderings in the desert after the Exodus: the most
sacred object of the tabernacle and the Temple in
Jerusalem, where it was kept in the holy of holies.
113 THE RANDOM HOUSE DICTIONARY OF THE ENGLISH LANGUAGE (2d. ed., 1987).9
In response to Applicant’s contention that the mark refers to the “ark of the
covenant,” the Examining Attorney argues:
[A]pplicant’s assumed tongue in cheek reference will not
offset or dilute the similarity in commercial impression
because the wording DARK describes the nature of the
identified alcoholic beverages. Relevant consumers will
assume the addition of the term DARK merely indicates
the style or color of the parties’ goods. … Here, relevant
consumers will assume that the wording DARK is nothing
but a color or style variation of the COVENANT labeled
alcoholic beverages.10
In support of the Examining Attorney’s contention, there is much evidence of record
to show that the word “dark” is used widely to describe a feature of certain beers.11
As the dictionary shows, “ark of the covenant” is a recognized expression
having a specific meaning. Applicant’s mark, by substituting the word DARK for
“ark,” clearly effects a play on words that refers to the phrase “ark of the covenant,”
with an irreverent reference to the dark quality of Applicant’s beer. We therefore
do not agree with the Examining Attorney’s contention that DARK, as used in the
mark, “merely indicates the style or color” of the goods and, accordingly, lacks

9 The Board may take judicial notice of dictionary definitions. Univ. of Notre Dame du Lac
v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
10 Examining Attorney’s brief at 7.
11 Office Action of February 3, 2013 at 6-24; Office Action of August 26, 2013 at 9-31.
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“significant … Trademark value.” While the word COVENANT, appearing in both
marks, is a point of similarity in appearance, sound, and meaning, the play on
words created by the additional wording in Applicant’s mark shifts the commercial
impression of the mark in another direction, resulting in a somewhat nonsensical
phrase12 that strongly suggests the arbitrary image of the “ark of the covenant.”
Because we find that the overall commercial impression of Applicant’s mark is
substantially different from that of the cited registered mark, the du Pont factor of
the similarity or dissimilarity of the marks weighs against a finding of likelihood of
confusion.
(b) The goods.
We next address the similarity or dissimilarity of the goods at issue. The
Examining Attorney points out that both parties’ goods are alcoholic beverages; that
they travel through common trade channels; and that the Board and its principal
reviewing Court have, in the past, found various alcoholic beverages to be related
for purposes of a Section 2(d) analysis. Inasmuch as du Pont enumerates “trade
channels” as a separate factor that must be considered, we will keep the trade
channels factor separate from our consideration of the similarity or dissimilarity of
the goods.

12 We appreciate the Examining Attorney’s argument that customers might interpret
Applicant’s mark to mean a dark beer offered under the COVENANT brand. However,
“dark of the [brand]” is not a conventional way of describing such a product. Rather, the
record suggests that a more conventional formula is “[brand] dark”: e.g., “Beck’s Dark,”
“Augsburger Dark,” “Trader José Dark,” “Leinenkugel’s Creamy Dark,” “Rickard’s Dark,”
“Alexander Keith’s Dark Ale,” and “Chicago Dark.” See Office Action of August 26, 2013 at
14-31.
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While beer and wine are both alcoholic beverages, they are also, to some
extent, different in nature, ingredients, and method of production, such that
customers might reasonably doubt that a single producer would be the source of
both products. There is no evidence in this record to show that beer and wine have
ever been offered under the same mark, or that they have been produced by a single
maker. The cases cited by the Examining Attorney relating to different pairs of
alcoholic beverages (e.g., beer and tequila, scotch and gin) say nothing about beer
and wine. Moreover, many of the cited cases turned upon the separate factor of
similarity of trade channels. See, e.g., In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003). The decision in In re Salierbrau Franz Sailer, 23
USPQ2d 1719 (TTAB 1992), which related to beer and sweet wine, does not reveal
the factual basis for its finding that the goods were related.
Beer and wine are somewhat related in that they are both alcoholic
beverages, but evidence is lacking to indicate whether they may emanate from a
single source; and, given the dissimilarity in the marks, this level of relatedness is
not sufficient to weigh in favor of finding likely confusion.
(c) Trade channels.
The goods of Applicant and Registrant (“beer” and “wine,” respectively) are
identified without limitation as to their nature, type, channels of trade or classes of
purchasers. Accordingly, the Board must presume that they encompass all goods of
the nature and type described, that they move in all channels of trade that would be
normal for such goods, and that they would be purchased by all potential customers.
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See Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 1373,
107 USPQ2d 1167, 1173 (Fed. Cir. 2013). Normal trade channels for both beer and
wine would include liquor stores, grocery stores, bars and restaurants. The
Examining Attorney has submitted internet evidence showing that retail stores
carry both beer and wine and, in fact, market them together. For example, the
webpage of Market of Choice promotes “Beer & Wine” under a single pull-down
menu, describes some of its stores as “Wine and Beer Shop[s],” and advertises that
it has “experienced beer and wine stewards” in its stores.13 The online
advertisement of Fenwick Beer and Wine refers to its store as a “beer and wine
shop” that carries “an outstanding selection of American craft beers, Belgian,
English and German beers, and boutique wines.”14 The evidence is sufficient to
show that the goods of Applicant and Registrant are found in the same trade
channels in close proximity to each other. This du Pont factor weighs in favor of a
finding of likelihood of confusion.
(d) Conditions of sale; Customers.
We next consider “the conditions under which and the buyers to whom sales
are made.” Du Pont, 177 USPQ at 567. Because wine and beer are consumer items,
the customers would include any adult member of the general public who drinks
wine or beer or purchases them for others. Inasmuch as the application and
registration identify their respective goods without reference to price range, we

13 Office Action of August 26, 2013 at 34-36.
14 Office Action of February 3, 2013 at 25-27.
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must consider the goods at issue to include wines and beers of all prices within a
normal range for such goods. These would include inexpensive beer and wines.
Applicant argues that customers for Registrant’s goods would exercise a
degree of care greater than that of the ordinary wine customer, because Registrant’s
goods are Kosher wines for sacramental use.15 However, the registration is not
limited to Kosher or sacramental wine, and we must therefore treat it as relating to
all kinds of wine. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981), citing Kalart Co.,
Inc. v. Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958). Nothing in the record
indicates that the goods of either Applicant or Registrant would be selected with a
heightened degree of care.
As the goods at issue include inexpensive consumer goods that would be
offered in ordinary retail settings and selected with only ordinary care, we find that
the du Pont factor of the conditions of sale and the buyers to whom sales are made
favors a finding of likelihood of confusion.
(e) Absence of actual confusion.
Applicant notes, without elaboration, that “There is no evidence of actual
confusion.”16 Unsupported statements of no known instances of actual confusion
are of little to no weight in an ex parte context. See In re Majestic Distilling, 65
USPQ2d at 1205; In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529
(CCPA 1973); J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435,
438 (CCPA 1965). Accordingly, this du Pont factor is considered neutral.

15 Applicant’s brief at 9.
16 Id.
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(f) Applicant’s lack of bad intent.
Applicant argues that it “did not have any intent to capitalize on the existing
mark.”17 The record presents us with no reason to doubt this assertion. However,
Applicant’s good faith “does very little to obviate a finding of likelihood of confusion
because it is expected that applicants are acting in good faith.” Mag Instrument Inc.
v. Brinkmann Corp., 96 USPQ2d 1701, 1713 (TTAB 2010). See also J & J Snack
Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir.
1991) (“Whether there is evidence of intent to trade on the goodwill of another is a
factor to be considered, but the absence of such evidence does not avoid a ruling of
likelihood of confusion.”) Accordingly, Applicant’s lack of bad intent is a neutral
factor in our analysis.
(g) First Amendment protections.
Applicant argues that its mark constitutes a “satirical statement regarding
religious practices,” that this case therefore implicates Applicant’s rights under the
First Amendment of the U.S. Constitution, and that, in such cases, “the standard
for denying registration to a trademark applicant is heightened.”18 This argument
is unavailing. Regardless of whether Applicant’s mark is protected free speech, the
Board’s decisions regarding the registration of trademarks do not implicate the
First Amendment speech rights of applicants, because a refusal to register a mark
does not affect the applicant’s right to use the mark. In re Fox, 105 USPQ2d 1247,
1248 (Fed. Cir. 2012); In re Mavety Media Group Ltd., 33 F.3d 1367, 31 USPQ2d

17 Id. at 8.
18 Applicant’s brief at 10.
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1923, 1928-29 (Fed. Cir. 1994); and In re McGinley, 660 F.2d 481, 211 USPQ 668,
672 (CCPA 1981). The case cited by Applicant, Mattel, Inc. v. Walking Mountain
Productions, 353 F.3d 792 (9th Cir. 2003), involved a request for an injunction
against an artist’s incorporation of a trademark into artwork, and is clearly
distinguishable from the case before us.
(h) Conclusion.
We have considered the arguments and evidence of record, including those
not specifically discussed herein, and all relevant du Pont factors. We have found
that the marks at issue are substantially different in overall commercial
impression. We have found that the goods at issue are marketed in close proximity
to each other in the same channels of trade, although the goods themselves have not
been shown to emanate from the same source or to be so related that confusion
would be likely in this case. We have also found that the goods are directed to the
same customers who exercise only an ordinary degree of care in selecting the goods.
Overall, we find the marks to be sufficiently different in commercial impression
such that, when used on the respective goods of Applicant and Registrant, confusion
as to source is not likely. See Kellogg Co. v. Pack’em Enterprises Inc., 951 F.2d 330,
21 USPQ2d 1142, 1145 (Fed. Cir. 1991). Accordingly, we reverse the refusal of
registration under Section 2(d).
3. Requirement of a disclaimer.
The Examining Attorney required Applicant to disclaim the exclusive right to
use the term DARK, apart from the mark as shown, on the ground that this term is
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merely descriptive of Applicant’s goods. The Director of the U.S. Patent and
Trademark Office “may require the applicant to disclaim an unregistrable
component of a mark otherwise registrable.” Trademark Act § 6(a), 15 U.S.C.
§1056(a). A mark or component is unregistrable if, “when used on or in connection
with the goods of the applicant,” it is “merely descriptive … of them.” Trademark
Act § 2(e)(1), 15 U.S.C. §1052(e)(1). The Patent and Trademark Office may require
a disclaimer as a condition of registration if the term at issue is merely descriptive
of any of the identified goods or services. In re Stereotaxis Inc., 429 F3d 1039, 77
USPQ2d 1087, 1089 (Fed. Cir. 2005).
Our principal reviewing Court has explained that Section 6(a) does not
permit the disclaimer of a component of a “unitary” mark, because “A unitary mark
simply has no ‘unregistrable component,’ but is instead an inseparable whole. A
unitary mark cannot be separated into registrable and nonregistrable parts.” Dena
Corp. v. Belvedere International Inc., 950 F.2d 1555, 21 USPQ2d 1047, 1051 (Fed.
Cir. 1991). The Court explained further:
A unitary mark has certain observable characteristics.
Specifically, its elements are inseparable. In a unitary
mark, these observable characteristics must combine to
show that the mark has a distinct meaning of its own
independent of the meaning of its constituent elements.
In other words, a unitary mark must create a single and
distinct commercial impression.
Id. at 1052.
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The Examining Attorney has ably demonstrated that the word DARK is used
widely to describe a feature of certain beers.19 However, we have found that
Applicant’s mark, as a whole, constitutes a play on words that refers to the “ark of
the covenant.” This play on words is “a distinct meaning [that is] independent of
the meaning of” the word DARK. We therefore find that Applicant’s mark DARK
OF THE COVENANT is a unitary mark and, accordingly, that a disclaimer of the
component word DARK should not be required.
Decision: The refusal of registration under Section 2(d) is reversed. The
requirement of a disclaimer of the term DARK is reversed.

19 Office Action of February 3, 2013 at 6-24; Office Action of August 26, 2013 at 9-31.