Coors Brewing Co.

Trademark Trial and Appeal Board

Jul 31, 2002

No. 75599304 (T.T.A.B. Jul. 31, 2002)

Hearing: Mailed: 31 JUL 2002
21 MAY 2002 Paper No. 14
AD

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Coors Brewing Company
________

Serial No. 75/599,304
_______

Sabrina C. Stavish of Sheridan Ross P.C. for Coors Brewing
Company.

Yvonne Jones, Trademark Examining Attorney, Law Office 101
(Jerry Price, Managing Attorney).
_______

Before Hanak, Hairston and Drost, Administrative Trademark
Judges.

Opinion by Drost, Administrative Trademark Judge:

On December 3, 1998, Coors Brewing Company (applicant)
applied to register the following mark on the Principal
Register for “beer” in International Class 321:

1 Serial No. 75/599,304. The application claims a date of first
use and date of first use in commerce of February 1997. The
drawing, which does not reproduce well, contains in larger
letters the words BLUE MOON and in smaller letters at the bottom
of the drawing the words BLUE MOON BREWING CO. The application
contains a disclaimer of the words “Brewing Co.”
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 75/599,304

2

The examining attorney2 ultimately refused to register
the mark because the examining attorney held that there is
a likelihood of confusion between applicant’s mark for beer
and the following three registrations. The first
registration, shown below, is for “restaurant services” in
International Class 42.3

The examining attorney also cited two other
registrations for the mark BLUE MOON, typed4 and with a
design shown below, owned by the same entity, for “wine” in
International Class 33.

2 The present examining attorney was not the original examining
attorney in this case.
3 Registration No. 1,770,568 issued May 11, 1993. Affidavits
under Section 8 and 15 have been accepted and acknowledged
respectively. The lines in the drawing are design features and
not an indication of color.
4 Registration No. 2,224,435 issued February 16, 1999.
Ser No. 75/599,304

3
5
After the Examining Attorney made the refusals final,
this appeal followed. Both applicant and the examining
attorney filed briefs. An oral hearing was held on May 21,
2002.
Both the applicant and the examining attorney have
filed a significant amount of evidence. A summary of their
respective positions and the evidence that supports those
positions follows.
The examining attorney held that the cited
registrations and applicant’s mark were confusingly
similar. Regarding Registration No. 1,770,568, the
examining attorney argues that the dominant portion of both
the registration and application is the BLUE MOON word
portion. Further, the examining attorney noted the design
in both marks includes an image of a moon. As to the goods
and services, the examining attorney provided the following
evidence to support a determination that beer and

5 Registration No. 2,068,550 issued June 10, 1997.
Ser No. 75/599,304

4
restaurant services are related. First, the evidence shows
that restaurants often have their own private label beer.
[S]ome microbreweries have become suppliers of private
label beers to restaurants and supermarkets.
The Business Press/California, October 23, 1995, p. 1.

His original restaurant was packing them in. He
expanded the menu, added fireplaces, and even brewed a
private label beer.
Success, July 1995, p. 33.

Red River Barbeque & Grille’s private label beer, Red
Amber, now is sold by local distributors, too.
Pittsburgh Post-Gazette, June 18, 1995, p. H12.

But he lost track of time sampling private-label beer
at the Berghoff Restaurant.
Chicago Sun-Times, September 10, 1994, p. 6.

Brandevor produces Wild Boar Special Amber Beer,
private-label beers for TGI Friday’s Restaurants and a
Florida restaurant chain, and imports Simpatico beer
from Mexico.
Seattle Times, November 6, 1992, p. C8.

Huber, on the other hand has 90,000 barrels of beer on
hand and says he has had inquiries from about 20
restaurants and hotels to supply private label beer.
Chicago Tribune, March 23, 1989, p. 15A.

Second, there are restaurants called “brewpubs,” which
are defined as “a small brewery that serves most of its
beer on the premises, often through an associated
restaurant or taproom.” The Encyclopedia of Beer, p. 114.
See also The Capital, October 13, 1996, p. B1 (“Restaurants
can be tricky, and brewpubs more so”); St. Louis Post-
Dispatch, October 6, 1996, p. 6T (“Tourist officials point
out that you can visit the state’s major ski resorts … and
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find a brewpub (a restaurant that produces less than 15,000
barrels of beer annually)”; Baltimore Sun, October 2, 1996,
p. 1F (“The Brewer’s Art, a new brewpub and restaurant on
North Charles Street”); and The Pittsburgh Post-Gazette,
September 30, 1996, p. B-3 (“Christopher Passodelis … is
working with several partners to turn a nondescript Strip
District warehouse into a new brewpub and restaurant”).
Third, there are registrations for the same mark for
both beer and restaurant services. See, e.g., Registration
No. 2,047,236 (beer and restaurant services); Registration
No. 2,020,560 (beer and bar and restaurant services);
Registration No. 2,181,182 (beer and restaurant services);
Registration No. 2,232,672 (beer, ale and stout and
restaurant and bar services); Registration No. 2,130,659
(malt beverages, namely, beer, ale, stout, porter, malt
liquor and restaurant services); Registration No. 2,139,104
(beer and restaurant services); Registration No. 2,261,244
(beer, ale and porter and restaurant services, take out
restaurant services; brew pub restaurant services); and
Registration No. 2,086,698 (beer and ale and restaurant
services). Based on this evidence, the examining attorney
concluded that there is a likelihood of confusion when
applicant’s and registrant’s BLUE MOON marks are used on
beer and restaurant services.
Ser No. 75/599,304

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Regarding the registrations for BLUE MOON in typed
form and with a design for wine (Registration Nos.
2,068,550 and 2,224,435), the examining attorney points to
applicant’s concession that “Applicant’s beer could be sold
in the same stores to the same class of customers as the
wine products of the Registrant.” Applicant’s Br. at 5.
The examining attorney then refers to several registrations
for the same marks for beer and wine. Registration No.
2,162,683 (beer, wine and liquors); Registration No.
1,996,820 (champagne, cognac, distilled spirits, liquors,
whiskey, wine, ale, beer, and stout); and Registration No.
1,861,111 (ale, beer, fruit juices, cider (sweet) and
(hard), wine, cooking wine, aperitif wines)6.
Applicant, on the other hand, argues that there is no
confusion between these two marks. Initially, applicant
points out that “the word portion of the Applicant’s mark
is more common as it is based on the phrase ‘once in a blue
moon.’” Applicant’s Br. at 5. Applicant provided various
evidence to support its argument that “Blue Moon” was

6 Several other registrations are also in the record but these
registrations were either house marks or for such a wide variety
of goods that their probative value is minimal. See, e.g.
Registration No, 1,890,019 (ice cream, fruit juices, beer, wine,
and gourmet fruits and cheeses); Registration No. 1,736,992
(movie theater services, resort hotel services, T-shirts, beer,
ale, and wine); and Registration No. 1,553,878 (management
services rendered to public facilities, French fries, pickles,
and milk).
Ser No. 75/599,304

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either a weak mark or that the services and goods were not
related. First, there are copies of registrations in which
the same marks are registered to different parties for beer
and restaurant services. See Registration No. 1,763,162
(TAJ MAHAL for beer) and 1,158,610 (TAJ MAHAL for
restaurant services); No. 1,968,311 (PULLMAN for beer) and
No. 1,480,112 (PULLMAN for restaurant services); and No.
1,788,369 (TROPICAL for beer) and No. 1,666,109 (TROPICALE
for providing lodging services, restaurant services,
catering services and party facilities rental services on
board ships). Second, applicant provided listings in
telephone directories and a Dun & Bradstreet report showing
the mark BLUE MOON associated with other restaurants. The
Dun & Bradstreet report identifies more than 60 listings
for restaurant-type businesses with the term “Blue Moon” in
the name of the establishment or the owner. Telephone book
listings also identify numerous “Blue Moon” restaurants
such as BLUE MOON CAFE (Greater San Antonio), BLUE MOON
CAFE (Muskogee, OK); BLUE MOON RESTAURANT, INC. (Ponca
City, OK), BLUE MOON CAFE (Baton Rouge, LA), BLUE MOON
SALOON (Wichita, KS), and BLUE MOON GOURMET PIZZA (Nevada).7
Third, applicant submitted registrations and applications

7 The Dun & Bradstreet listings frequently overlap with the other
listings applicant has made of record.
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for BLUE MOON owned by others for food items. See
Registration No. 2,141,022 (BLUE MOON SORBET for sorbet and
fruit ice); No. 1,019,524 (BLUE MOON and design for
cheese); No. 2,343,774 (BLUE MOON BERRY for soft drinks)
and Serial No. 75/510,616 (BLUE LUNA Café for dips,
pretzels, and fruit juices). Fourth, applicant included
printouts from the NEXIS automated database that refer to
BLUE MOON eating establishments and bars. See, e.g.,
Chicago Daily Herald, January 11, 2000, p. 5 (“during a
press conference at the Blue Moon restaurant in North
Chicago”); Madison State Journal, December 23, 1999, p. 8
(“State Bar & Grill’s sister restaurant, the Blue Moon”);
Commercial Appeal, September 16, 1999, p. NT1 (“Laura Moon
and her daughter, Denise Moon, hope their new Blue Moon
Café takes the place of the pharmacy”). Fifth, the
evidence shows that by the mid 1990’s there were 815,000
restaurants in the United States, New York Times, September
6, 2000, p. F1, compared with “about 1,450 brewpubs,
microbreweries and regional specialty breweries.” Richmond
Times Dispatch, June 8, 2000, p. D-26.
Based on this evidence, applicant concludes that
“while it can be argued that the beer for which
registration is sought is related in that brewpubs make
beer and contain restaurants, given the great number of
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restaurants and the small number of brewpubs, it is
unlikely that consumers will assume that beer sold under
Applicant’s BLUE MOON AND DESIGN mark originates from the
same source as the restaurant services.” Applicant’s Br.
at 2. Regarding the refusal based on the ‘435 and ‘550
registrations for BLUE MOON, typed and with a design, for
wine, applicant argues that “consumers are aware that wine
is made from grapes and beer from grains. The processes
and the fact that wineries and breweries make different
products are well known to consumers.” Applicant’s Br. at
5-6.
Determining whether there is a likelihood of confusion
requires consideration of the factors set forth in In re E.
I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973). See also Recot, Inc. v. Becton, 214 F.3d
1322, 54 USPQ2d 1894, 1896 (Fed. Cir. 2000).
In considering the evidence of record on these
factors, we must keep in mind that “[t]he fundamental
inquiry mandated by § 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).
Refusal based on Registration No. 1,770,568
Ser No. 75/599,304

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We begin by addressing the refusal of applicant’s mark
because of the mark shown below for restaurant services:

The first factor we consider is whether the
applicant’s goods, beer, are related to registrant’s
restaurant services. We start by noting that there is no
per se rule that requires a determination of likelihood of
confusion when similar marks are used on restaurant
services and food items. Jacobs v. International
Multifoods Corp., 668 USPQ F.2d 1234, 212 USPQ 641, 642
(CCPA 1982) (BOSTON TEA PARTY for tea not confusingly
similar to BOSTON SEA PARTY for restaurant services). We
must consider the case under its own facts after examining
the particular marks and the particular goods and services.
Compare In re Central Soya Co., 220 USPQ 914, 917-18 (USPQ
1984) (No likelihood of confusion between POSADA (stylized)
for Mexican style prepared frozen enchiladas and LA POSADA
for lodging and restaurant services; weak terms entitled to
narrower scope of protection) with In re Azteca Restaurant
Enterprises Inc., 50 USPQ2d 1209, 1212 (TTAB 1999) (AZTECA
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MEXICAN RESTAURANT confusingly similar to AZTECA for
Mexican food items; AZTECA not “so highly suggestive”).
We must compare the goods and services as set out in
the respective identifications in the application and
registration. See Paula Payne Products v. Johnson
Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973)
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods”). See also Octocom Systems, Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990) (“The authority is legion that
the question of registrability of an applicant’s mark must
be decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”); In re Dixie
Restaurants, 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir.
1997)(quotation marks omitted) (“Indeed, the second DuPont
factor expressly mandates consideration of the similarity
or dissimilarity of the services as described in an
application or registration”).
Here, we find that restaurant services and beer are
related goods and services. We find it significant that
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beer is not simply an item sold in restaurants. That alone
would amount to almost a per se rule that restaurants and
food items sold in restaurants are related. Rather, in
this case, the examining attorney has shown that
restaurants do not only serve beer but restaurants
themselves are the source of beer either as a brewpub or as
a distributor of their own private label beer. We find
that this evidence meets the requirement that there be
“something more than that similar or even identical marks
are used for food products and for restaurant services.”
Jacobs, 212 USPQ at 642. It is significant that
restaurants can be brewpubs that produce their own beer or
they can also be the source of their own private label
beer.
Applicant makes several arguments in response to the
evidence concerning restaurants/brewpubs. First, it argues
that there is no evidence that the cited registration is
for brewpub services. Applicant’s Br. at 2. However, it
is clear that “brewpubs” are a type of restaurant. St.
Louis Post-Dispatch, October 6, 1996, p. 6T (“brewpub (a
restaurant that produces less than 15,000 barrels of beer
annually”)); The Encyclopedia of Beer, p. 114 (brewpub - “a
small brewery that serves most of its beer on the premises,
often through an associated restaurant or taproom”).
Ser No. 75/599,304

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Inasmuch as restaurants can include brewpubs, there is no
basis to exclude brewpubs from the type of services
included within registrant’s identification of services.
We will not read a limitation into registrant’s
identification of services that it is not a brewpub. See
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940
(Fed. Cir. 1983) (“There is no specific limitation here,
and nothing in the inherent nature of Squirtco’s mark or
goods that restricts the usage of SQUIRT for balloons to
promotion of soft drinks. The board, thus, improperly read
limitations into the registration”).
Second, applicant argues that there are “a total of
1,450 brewpubs, microbreweries and regional specialty
breweries.” Applicant’s Br. at 2. Applicant then points
out that there are approximately 815,000 restaurants, and
“given the great number of restaurants and the small number
of brewpubs, it is unlikely that consumers will assume that
beer sold under Applicant’s BLUE MOON AND DESIGN mark
originates from the same source as restaurant services sold
under Registrant’s BLUE MOON AND DESIGN mark where the
designs are very different.” Id. Applicant’s argument is
not persuasive. While brewpubs may constitute a small part
of the restaurant industry, it is hardly insignificant.
“Even if the overlap between consumers of registrant’s
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RIGHT-A-WAY services [distributorship services in the field
of automobile-related parts] and Shell’s RIGHT-A-WAY
services [service station oil and lubrication change
services] were small in relation to the total number of
Shell customers, it is not de minimis in relation to the
registrant’s customers. In re Shell Oil Co., 992 F.2d
1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993). Here, there
is a non-de minimis overlap between prospective customers
of registrant’s services and applicant’s goods.
In addition, 1,450 restaurants/brewpubs is hardly an
insignificant number of restaurants. Again, there is no
reason to believe that patrons of these brewpubs would not
be virtually identical to purchasers of applicant’s beer.
Finally, the number of brewpubs does not take into
consideration the fact that there are restaurants that
simply market a house brand of beer without brewing the
beer themselves. See, e.g., The Business Press/California,
October 23, 1995, p. 1 (“[S]ome microbreweries have become
suppliers of private label beers to restaurants and
supermarkets”) and Chicago Sun-Times, September 10, 1994,
p. 6 (“But he lost track of time sampling private-label
beer at the Berghoff Restaurant”). Thus, beside the more
than one thousand brewpubs, there are numerous restaurants
that also sell their own private label brand of beer brewed
Ser No. 75/599,304

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by others. This beer can also be sold outside the
restaurant establishment itself. Pittsburgh Post-Gazette,
June 18, 1995, p. H12 (“Red River Barbeque & Grille’s
private label beer, Red Amber, now is sold by local
distributors, too”). Because of the evidence of restaurant
brewpubs and private label beer sold by restaurants, we
find that there is significant evidence to support the
examining attorney’s conclusion that beer and restaurant
services are related. This evidence provides the
“something more” the CCPA referred to in the Jacobs case as
necessary to hold that food products and restaurant
services are related.
Next, we consider whether the marks are similar in
sound, appearance, meaning or commercial impression. du
Pont, 177 USPQ at 567. It is well settled that it is
improper to dissect a mark. Shell Oil, 26 USPQ2d at 1688.
However, more or less weight may be given to a particular
feature of a mark for rational reasons. In re National
Data Corporation, 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985). Also, when we compare marks, “[s]ide-by-side
comparison is not the test. The focus must be on the
‘general recollection’ reasonably produced by appellant’s
mark and a comparison of appellee’s mark therewith.”
Johann Maria Farina Gegenuber Dem Julichs-Platz v.
Ser No. 75/599,304

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Chesebrough-Pond, Inc., 470 F.2d 1385, 176 USPQ 199, 200
(CCPA 1972) (citation omitted).
Both marks contain the identical words “Blue Moon.”
The only additional wording in applicant’s mark consists of
the disclaimed words “Brewing Co.” Disclaimed matter is
often “less significant in creating the mark’s commercial
impression.” In re Code Consultants Inc., 60 USPQ2d 1699,
1702 (TTAB 2001). It would be particular unlikely that the
disclaimed matter here would significantly distinguish the
marks because it is printed in much smaller, harder-to-read
print. See Azteca Restaurant, 50 USPQ2d at 1211 (“On
applicant's menus, which are the specimens of record, the
[disclaimed] words appear on a line below the term AZTECA
and are in smaller type than the term AZTECA. Certainly,
when applicant's mark is viewed as a whole, it is the term
AZTECA which is the dominating and distinguishing element
thereof”).
The only significant difference between the marks
consists of their designs. Even here, the designs are not
entirely different. Both applicant’s and registrant’s
design consist of a moon design. Beyond that similarity,
applicant’s mark is of a moon design over a forest scene
while applicant’s design is of a moon wearing sunglasses.
The designs do not lead to a conclusion that the marks are
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dissimilar. The Federal Circuit in a case involving
different arrow designs agreed with the Board’s conclusion
that despite the different arrow designs the marks were
similar:
Without doubt the word portions of the two marks are
identical, have the same connotation, and give the
same commercial impression. The identity of words,
connotation, and commercial impression weighs heavily
against the applicant. We agree with the Board that
the words dominate these marks, and that their
differences in script and arrow design do not diminish
their substantial identify when viewed as a whole.

Shell Oil, 26 USPQ2d at 1688 (citation omitted). See also
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 464-65, 6
USPQ2d 1025, 1026 (Fed. Cir. 1988) (BIGG’S and design for
grocery and general merchandise store services found likely
to be confused with BIGGS and different design for
furniture).
In the present case, the identical nature of the non-
disclaimed words and the fact that both marks contain a
moon design lead us to conclude that the commercial
impressions of the marks are similar and that prospective
customers would not rely on the differences in the designs
in the marks to distinguish applicant’s goods from
registrant’s services. These words would be pronounced the
same, and they would have a similar appearance because of
the use of the identical wording, “Blue Moon.” The moon
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designs reinforce the “Blue Moon” wording. We also take
into consideration the fallibility of human memory. See
Clorox Company v. State Chemical Mfg. Co., 197 USPQ 840,
844 (TTAB 1977) (“[T]aking into account, as we must, the
fallibility of the human memory over a period of time, we
conclude that applicant’s mark “FORMULA 999’ so resembles
opposer’s mark ‘FORMULA 409’ as to be likely” to cause
confusion); Richardson-Vicks Inc. v. Franklin Mint Corp.,
216 USPQ 989, 992 (TTAB 1982) (The Board found that “the
fallibility of the human memory over a period of time”
supported the conclusion that confusion was likely).
Also, there is no significant difference in meaning between
the marks as both marks contain the wording “Blue Moon” and
the accompanying designs illustrate a moon. Therefore, we
conclude that applicant’s and registrant’s marks are
similar.
Applicant argues that it has presented evidence in the
form of registrations that shows that “substantially the
same mark[s] for beer and restaurant services [are] owned
by different parties.” Applicant’s Br. at 2-3. The
examining attorney has offered her own registrations as
evidence that the same marks are used by the same parties
on both restaurant services and beer. Although third-party
registrations “may have some probative value to the extent
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that they may serve to suggest that such goods or services
are the type which may emanate from a single source,” (In
re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988)), in this case the registration evidence is
offsetting. Also, the fact that applicant has included
three registrations for other food items does not mean that
there is no likelihood of confusion between the marks and
goods and services in this case. The food items in the
third-party registrations include soft drinks, sorbet, and
cheese, and they are significantly different than beer.8 In
addition, we do not have the files of those registrations,
but in this case we have substantial evidence that beer and
restaurant services are related.
Applicant’s more significant evidence consists of
telephone entries showing listings for restaurant-type
establishments that use the “Blue Moon” in their names.
Applicant relies on the In re Broadway Chicken, Inc. case.
38 USPQ2d 1559 (TTAB 1996). In that case, the Board
referred to the fact that there were “575 entities whose
names contain the term BROADWAY and which offer restaurant
and/or related services or goods. Of these, we count well
over 300 entities which are designated in the American

8 The applications that applicant refers to are even less
relevant.
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Business Directory search report as restaurants and/or
eating places.” Id. at 1562 (footnote omitted). The Board
went on to find that BROADWAY CHICKEN was not confusingly
similar to BROADWAY PIZZA and BROADWAY BAR & PIZZA, all for
restaurant services. The Board relied on the fact that
many of the third-party restaurants referred to were
located on “a street, road, avenue, etc., named BROADWAY.”
Id. at 1566.
In an inter partes case involving third party use, the
Board noted that “applicant has not furnished any evidence
regarding the extent of use of the marks by these third
parties” and “the pictures of these restaurants tend to
indicate that the operations are small and local in
nature.” Carl Karcher Enterprises Inc. v. Stars
Restaurants Corp., 35 USPQ2d 1125, 1131 (TTAB 1995).
Similarly, we do not have evidence here of the extent of
these third parties’ use and it appears that these examples
are small and local in nature. In addition, we note that
applicant has referred to a New York Times article
indicating that by the mid 1990’s there were more than
815,000 restaurants in the United States. Applicant’s Br.
at 2. Considering that there are more than 800,000
restaurants in the United States, it is hardly surprising
that there would be some use of the same term by other
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restaurants throughout the entire United States. To rely
on this evidence of scattered third party use by itself as
convincing evidence of no likelihood of confusion, when the
marks are very similar, would condemn most restaurant marks
to the category of weak marks. The limited evidence of
local and scattered third party use is not sufficient to
reach that conclusion. In addition, unlike in Broadway
Chicken, there is no evidence that “Blue Moon” is used
because it refers to the road or street on which the
restaurants are located. Obviously, there is much less
likelihood of confusion if the record establishes that a
term is used in hundreds of cases for restaurants located
on a street named “Broadway” as opposed to scattered
instances where other restaurants appear to have similar
names.
Finally, even if we had doubts about the issue of
likelihood of confusion, we must resolve them against
applicant.
If there be doubt on the issue of likelihood of
confusion, the familiar rule in trademark cases, which
this court has consistently applied since its creation
in 1929, is that it must be resolved against the
newcomer or in favor of the prior user or registrant.
The rule is usually applied in inter partes cases but
it applies equally to ex parte rejections.

In re Pneumatiques, Caoutchouc Manufacture et Platitudes
Kleber-Colombes, 487 F.2d 918, 179 USPQ 729, 729 (CCPA
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1973). See also Dixie Restaurants, 41 USPQ at 1535 (“Dixie
argues alternatively that the PTO should pass the mark to
publication and allow the registrant to oppose the
applicant's mark, if it chooses. But it is the duty of the
PTO and this court to determine whether there is a
likelihood of confusion between two marks”). Here, even if
the evidence of third party use raised doubts about whether
there was a likelihood of confusion in this case, we must
resolve them in the registrant’s favor.
Refusal based on Registration
Nos. 2,068,550 and 2,224,435
We now address the refusal based on the marks BLUE
MOON and BLUE MOON and design for wine. With regard to
these registrations, we reach the opposite conclusion. As
with food items and restaurant services, there is no per se
rule that all food and beverages are related. Interstate
Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926,
198 USPQ 151, 152 (CCPA 1973). See also In re Mars, Inc.,
741 F.2d 395, 222 USPQ 938 (Fed. Cir. 1984) (Federal
Circuit held that there was no likelihood of confusion
between the same mark CANYON for candy bars and fresh
citrus fruit). Likewise there is no per se rule that holds
that all alcoholic beverages are related. See G.H. Mumm &
Cie v. Desnoes & Geddes Ltd., 917 F.2d 1292, 16 USPQ2d
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1635, 1638-39 (Fed. Cir. 1990) (RED STRIPE and design for
beer was not confusingly similar to a design of a red
stripe for wines and sparkling wines); National Distillers
and Chemical Corp. v. William Grant & Sons, Inc., 505 F.2d
719, 184 USPQ 34 (CCPA 1974) (DUET on prepared alcoholic
cocktails, some of which contained brandy, and DUVET for
French brandy and liqueurs not confusingly similar).
The examining attorney has introduced some evidence
that beer and wine are sold by the same party under the
same mark. However, as discussed earlier, many of these
registrations are for a house mark or registrations
containing a wide variety of goods and services such as
meats, fish, and vegetables (Registration No. 1,423,066);
resort hotel services and movie theater services
(Registration No. 1,736,692); and French fries and
management services rendered to owners of public facilities
(Registration No. 1,553,878). The few remaining
registrations are not sufficient to convince us that beer
and wine are sufficiently related that the contemporaneous
use of the involved marks thereon is likely to cause
confusion.
Decision: The Examining Attorney’s refusal to
register applicant’s mark on the ground that it is likely
to cause confusion with Registration Nos. 2,068,550 and
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2,224,435 under Section 2(d) of the Trademark Act is
reversed. The Examining Attorney’s refusal to register
applicant’s mark on the ground that it is likely to cause
confusion with Registration No. 1,770,568 under Section
2(d) of the Trademark Act is affirmed.
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Hanak, Administrative Trademark Judge, concurring in part
and dissenting in part:

I concur with the majority’s decision to reverse the
“refusal to register applicant’s mark on the ground that it
is likely to cause confusion with Registration Nos.
2,068,550 and 2,224,453 under Section 2(d) of the Trademark
Act.” However, I respectfully disagree with the conclusion
of the majority that the contemporaneous use of applicant’s
mark for beer and the mark of Registration No. 1,770,568
for restaurant services is likely to cause confusion.
As the majority correctly notes, “the fundamental
inquiry mandated by Section 2(d) goes to the cumulative
effect of differences in the essential characteristics of
the goods [and services] and differences in the marks.”
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976).
Considering first the marks, it is critical to
remember that “the basic principle in determining confusion
between marks is that marks must be compared in their
entireties and must be considered in connection with the
particular goods or services for which they are used.” In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 750
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(Fed. Cir. 1985). Obviously, both marks contain the common
term “blue moon.” This term is defined as “a very long
period of time – usually used in the phrase ‘once in a blue
moon.’” Webster’s Third New International Dictionary
Unabridged (1993). The common nature of this term is
reflected by the fact that applicant has made of record
evidence demonstrating that there are over 100 restaurants
in the United States whose names incorporate this term.
Applicant’s evidence consists of telephone directory
listings, Nexis news stories and a Dun & Bradstreet Report.
Given the common nature of the term “blue moon,” it is
my belief that the design features of applicant’s mark for
beer and registrant’s mark for restaurant services play an
important role in enabling consumers to distinguish the two
marks. To cut to the quick, registrant’s restaurant mark
has an extremely distinctive design feature which is
decidedly larger than the words BLUE MOON in registrant’s
mark. The distinctiveness of registrant’s moon results
from the fact that the moon is wearing sunglasses and has a
very mean expression on its “face.” Not to belabor the
obvious, it is highly incongruous for a moon, which is
associated with the night, to be wearing sunglasses.
In stark contrast, applicant’s moon is depicted in a
far more natural, nocturnal setting above a grove of pine
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trees and with stars to its right. The only commonality
between applicant’s composite mark and registrant’s
composite mark is that in each case the very different
design elements are decidedly larger than are the words
BLUE MOON.
The majority correctly notes that marks are not
compared on a side-by-side basis and that one must take
into account that consumers usually have only a general
recollection of marks. Nevertheless, given the very
significant differences in design elements of applicant’s
beer mark and registrant’s restaurant mark, I am of the
belief that if a consumer were to see one mark in July and
were later to see the other mark in August, she would be
able to discern that they are simply not the same marks,
nor are they even “related” marks.
I turn now to a consideration of the relationship
between applicant’s goods (beer) and registrant’s services
(restaurant services). Twenty years ago, the predecessor
to our primary reviewing Court set forth a rule of law that
“to establish likelihood of confusion a party must show
something more than that similar or even identical marks
are used for food [or beverage] products and for restaurant
services.” Jacobs v. International Multifoods Corp., 668
F.2d 1234, 212 USPQ 641, 642 (CCPA 1982) (emphasis added).
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In Jacobs, the Court indicated that one way that the
“something more” requirement could be satisfied would be if
it was established that the prior mark was famous. Jacobs,
212 USPQ at 642, first footnote. The rule of law set forth
in Jacobs was reiterated by our primary reviewing Court in
Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25
USPQ2d 2027, 2030 (Fed. Cir. 1993) (“So the board’s
determination … disregards the requirement that ‘a party
must show something more than that similar or even
identical marks are used for food products and for
restaurant services.’”).
Of course, fame of the prior mark is not the only
means of providing the required “something more.” This
Board found confusion resulting from the use of MUCKY DUCKY
for mustard and THE MUCKY DUCK for restaurant services. In
re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988), aff’d
as not citable precedent 88-1444 (Fed. Cir. November 14,
1988). The “something more” in Mucky Duck was the
“particularly unique and strong nature” of the prior mark
THE MUCKY DUCK. Mucky Duck, 6 USPQ2d at 1469. Indeed, in
the Mucky Duck case applicant did not argue that there were
any third-party registrations or uses of marks even
remotely similar to MUCKY DUCK. Mucky Duck, 6 USPQ2d at
1469.
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Besides the fame of the prior mark or the highly
distinctive character of the prior mark, the required
“something more” can be established if the restaurant
services and the food and beverage items involve the
identical cuisine. This was the case in In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999).
The Board found that applicant’s mark AZTECA MEXICAN
RESTAURANT for restaurant services was confusingly similar
to the previously registered mark AZTECA for various
Mexican food items. In so doing, the Board emphasized that
“applicant’s mark itself makes it clear that its restaurant
serves Mexican food, and a review of applicant’s menu shows
that applicant serves a variety of Mexican fare, including
tacos, tortillas and salsa (that is, the very items listed
in the cited registrations).” Azteca Restaurant, 50 USPQ2d
at 1211. Moreover, in Azteca Restaurant there was a second
“something more,” namely the fact that “applicant [the
restaurant] already is marketing for retail sale a food
product under the mark AZTECA.” Azteca Restaurant, 50
USPQ2d at 1211.
In stark contrast to the foregoing cases, I find
nothing in the present case that satisfies the “something
more” requirement. There is absolutely no evidence that
registrant’s mark BLUE MOON and design is famous.
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Moreover, registrant’s mark does not contain a phrase that
is even remotely unique, but rather contains a well-known
term which is incorporated into the names of over 100 other
restaurants. Finally, unlike the situation in Azteca
Restaurant, there is nothing in the record to suggest that
registrant’s restaurant is a brewpub, or that registrant’s
restaurant offers its own private label beer.
Indeed, there is nothing in the record to even suggest that
registrant’s restaurant is known for carrying a large
selection of beers.
The majority is of the view that the “something more”
requirement is not met simply because some restaurants
serve beer, but rather because “the examining attorney has
shown that … restaurants themselves are the source of beer
either as a brewpub or as a distributor of their own
private label beer.” I concur with the majority that the
“something more” requirement is not met merely because some
restaurants serve beer. Many restaurants serve an
extremely wide array of food and beverage items. If the
mere fact that many restaurants serve a particular food or
beverage item was sufficient to meet the “something more”
requirement, then the “something more” requirement would
become meaningless. Virtually every food or beverage item
could be found in a substantial number of restaurants, and
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most food and beverage items could be found in the majority
of restaurants. In finding no likelihood of confusion when
the identical mark was used for restaurant services and an
array of food items, another Court of Appeals summed
matters up nicely when it stated that “about the only
things they have in common are that they are edible.”
Amstar Corp. v. Domino’s Pizza, Inc., 615 F.2d 252, 205
USPQ 969, 977 (5th Cir. 1980), cert. denied 449 U.S. 899
(1980).
With regard to the majority’s focus on brewpubs, it
should be noted that applicant has established that there
are about 815,000 restaurants in the United States.
Applicant has also established that in the United States
there are about 1,450 brewpubs, microbreweries and regional
specialty breweries. There is no breakdown between the
number of brewpubs (which could be considered restaurants)
and microbreweries and regional breweries (which could not
be considered restaurants). However, even if we were to
assume that there were as many as 1,450 brewpubs in the
United States, this would represent but a tiny fraction of
one percent of all of the restaurants in the United States.
As for the majority’s focus on restaurants which
distribute their own private label beer, the Examining
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Attorney made of record evidence reflecting that only a
handful of restaurants (two or three) engage in this
practice.

Our primary reviewing Court has made it clear that in
deciding whether there exists a likelihood of confusion,
“we are not concerned with mere theoretical possibilities
of confusion, deception, or mistake or with de minimis
situations but with the practicalities of the commercial
world, with which the trademark laws deal.” Electronic
Design & Sales v. Electronic Data Systems, 954 F.2d 713, 21
USPQ 1388, 1391 (Fed. Cir. 1992)(emphasis added).
In short, given the extremely tiny number of brewpubs
and restaurants that distribute private label beers, I am
of the view that the “something more” requirement set forth
in Jacobs and Lloyd’s Food Products is simply not met. In
the words of the Court in Electronic Design & Sales,
brewpubs and restaurants that distribute private label
beers constitute “de minimis situations” vis-a-vis the
815,000 restaurants in the United States.
In sum, given the significant dissimilarities in the
marks when considered in their entireties, and the fact
that the Examining Attorney has simply failed to meet the
“something more” requirement for showing a relationship
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between beer and restaurant services, I would respectfully
find that there exists no likelihood of confusion between
applicant’s mark for beer and registrant’s mark for
restaurant services.